Summary of Opinion

Factual and Procedural Background

This is an appeal under the Trade and Merchandise Marks Act, 1958 from a decision of the learned Deputy Registrar refusing the appellant's application for registration of the trade mark "FORMIS" in Class 3 for "Cosmetics". The application was advertised under the proviso to Section 20(1). On 7 June 1973 Colgate Palmolive Company of U.S.A. filed a notice of opposition. At the hearing before the Deputy Registrar the opponent first contended that the mark was not adapted to distinguish within the meaning of Section 9 (arguing that "FORMIS" was phonetically equivalent to "FOR MISS" and referred to character/quality). That contention was rejected by the Deputy Registrar. The opponent further relied on Section 11(a), arguing that registration was likely to deceive or cause confusion with the opponent's mark "CHARMIS". The Deputy Registrar found for the opponent on the basis of likelihood of confusion and also sustained an objection under Section 12(1). The Deputy Registrar further held the appellant was not entitled to protection under Section 12(3) because the appellant had used the mark for only one month prior to the date of application. The appellant appealed; the court dismissed the appeal and ordered each party to bear its own costs.

Legal Issues Presented

Whether the trade mark "FORMIS" is adapted to distinguish within the meaning of Section 9 of the Trade and Merchandise Marks Act, 1958.
Whether the registration of "FORMIS" is precluded under Section 11(a) because its use is likely to deceive or cause confusion with the opponent's mark "CHARMIS".
Whether an objection under Section 12(1) (relating to deceptively similar or non-distinct marks) is sustainable.
Whether the appellant is entitled to protection under Section 12(3) on the basis of its one-month prior use of the mark (concurrent user or special circumstances).

Arguments of the Parties

Opponent's Arguments

The mark "FORMIS" was not adapted to distinguish because it is phonetically equivalent to "FOR MISS" and thus directly refers to the character or quality of the goods (Section 9 argument).
Registration should be refused under Section 11(a) because the use of "FORMIS" was likely to deceive or cause confusion with the opponent's earlier mark "CHARMIS".

Appellant's Arguments

The Deputy Registrar's finding that cosmetics are used "irrespective of class and creed" and by both literate and illiterate persons was without basis and unsupported by evidence.
The appellant relied on its application and (implicitly) its limited prior use, seeking registration; it also argued against the finding of likelihood of confusion (as reflected by challenge to the Deputy Registrar's conclusions).

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449	Principle that the Act does not prescribe fixed criteria for what is likely to deceive or cause confusion; each case depends on its facts; the relevant test is likelihood (not actual confusion).	The court relied on this principle to emphasise that the question of deceptive similarity depends on surrounding circumstances and likelihood rather than proof of actual confusion.
Re: Pianotist Co.'s Application, (1906) 23 RPC 774 (Parker, J.)	Test for confusion: compare marks by look and sound; consider the goods, the likely customers, and all surrounding circumstances to assess likely effects of normal use.	The court applied this multifactor test (look and sound, nature of goods, class of purchasers, surrounding circumstances) in assessing whether "FORMIS" was likely to be confused with "CHARMIS".

Court's Reasoning and Analysis

The court applied the cited principles that likelihood of confusion is the relevant test and that each case must be judged on its particular facts. The analysis proceeded as follows:

Letter and phonetic comparison: The court noted that both marks share the four letters "RMIS" and differ only in their prefixes ("FORM" v. "CHA").
Similarity of goods and users: The marks were used for similar goods (cosmetics and toilet preparations). The Deputy Registrar's finding that cosmetics are commonly used across classes and by both literate and illiterate consumers was accepted by the court as a permissible reliance on common knowledge.
Likelihood, not actual confusion: Relying on precedent, the court emphasized likelihood of confusion as the guiding standard and found there was scope for confusion given the phonetic similarity and the nature of the goods and purchasers.
Section 12(1): Both marks were "invented" words with no definite meaning, but phonetically "FORMIS" was found deceptively similar to "CHARMIS", sustaining objection under Section 12(1).
Section 12(3) (concurrent user/special circumstances): The appellant had used the mark for only one month prior to the application; the court held this did not constitute concurrent user in the context of the respondent's long prior use, and no special circumstances were shown. Therefore Section 12(3) did not apply.
Conclusion: On these bases the court found no reason to interfere with the Deputy Registrar's decision to refuse registration.

Holding and Implications

HOLDING: The appeal is dismissed and the decision of the Deputy Registrar refusing registration of the trade mark "FORMIS" is upheld.

Implications:

Direct effect: The appellant's application to register "FORMIS" in Class 3 for cosmetics remains refused; the Deputy Registrar's findings (likelihood of confusion with "CHARMIS" and inapplicability of Section 12(3) protection) stand.
Costs: Each party was directed to pay and bear its own costs.
No broader precedent was announced beyond application of established principles (likelihood of confusion, multifactor comparison) illustrated by the court's reliance on cited authorities.

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Banwaridas Pugalia v. Colgate Palmolive Co. And Others

1. This is an appeal under the Trade and Merchandise Marks Act, 1958 from a decision by the learned Deputy Registrar. By the said decision the learned Deputy Registrar has refused the application of the appellant for grant of a trade mark. It appears that the appellant filed an application to register in part A of the register a trade mark consisting of the word “FORMIS” in Class 3 in respect of ‘Cosmetics’. The application was in due course advertised before acceptance under the proviso to Section 20(1) of the Act in the appropriate journal. On 7th June, 1973, Colgate Palmolive Company of U.S.A filed a notice of opposition to the registration. The said application thereafter came up for hearing before the learned Deputy Registrar. It was contended before the learned Deputy Registrar that the mark in respect of which the appellant was seeking registration was not adapted to distinguish within the meaning of S. 9 of the Act on the ground that the trade mark FORMIS was phonetically equivalent to the expression ‘FOR MISS’ and as such had a direct reference to the character and quality of the goods. The learned Deputy Registrar has rejected this opposition for registration. I am of the opinion that the learned Deputy Registrar was right in rejecting this contention. Thereafter it was contended on behalf of the opponent that under Section 11(a) of the Act, the appellant was not entitled to the registration of the mark. S. 11(a) lays down that a mark, the use of which was likely to deceive or cause confusion shall not be registered as a trade mark. The principle is, as mentioned in the decision in the case of Amritdhara Pharmacy v. Satya Deo Gupta , AIR 1963 SC 449 that the Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on particular facts and the value of the authorities lies not so much in the actual decision as in the test applied for determining what is likely to deceive or cause confusion. It is important to remember that the Section does not require actual confusion but the likelihood of confusion to be the test in guiding this matter. In the case of Re : Pianotist Co.'s Application, (1906) 23 RPC 774 Parker, J. observed as follows at:

“You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”

2. Bearing the aforesaid principles in mind I have to examine whether the two words are likely to cause confusion as held by the learned Deputy Registrar. It is to be noted that the words consisted of four common letters viz. ‘RMIS.' While the mark of the appellant was prefaced by the word ‘FORM’, the mark of the respondent was prefaced by the word ‘CHA’. Apart from this, the other words were common. They are in respect of similar types of goods, viz. cosmetics and toilet preparation, if not identical. The Deputy Registrar has proceeded on the basis that now-a-days it is common knowledge that the cosmetics are used irrespective of class and creed. These are used both by literate and illiterate, rich and poor. Learned counsel on behalf of the appellant urged before me that this was without basis and the learned Deputy Registrar has come to that conclusion without evidence. I am unable to sustain this objection. After all the learned Deputy Registrar was competent to rely on what he called the common khowledge. It is true that now-a-days cosmetics are used irrespective of class and creed and both by literate and illiterate and the fact that both the words contain four common letters ‘RMIS’. In my opinion, there was scope for confusion, as was held by the learned Deputy Registrar. However, as is well-known apparently both the words can be confusing having regard to the stage of development in pronunciation both among the literate and the illiterate. As I have mentioned before, it is not actual confusion but the likelihood to cause confusion, that is the guiding factor. In view of the type of the goods, the people who use it and the alphabetical use of the words in the two trade marks in my opinion, if a view is taken or conclusion is made that FORMIS is likely to be confused as CHARMIS it cannot be said that such a view was unjustified. There was also a question whether under Section 12(1) of the Act the registration should not be granted. Both are invented words having no definite use. For the reasons mentioned hereinbefore, phonetically the impugned mark is deceptively similar to the opponent's trade mark CHARMIS. Therefore, objection under S. 12 was also sustainable.

3. It is to be noted that the appellant had started the use of mark just one month prior to the date of the application and therefore the learned Deputy Registrar held the appellant was not entitled to the benefit under Section 12(3) of the Act. Section 12(3) of the Act requires concurrent user or other special circumstances. In this case the use for one month in the background of the user for a long period by the respondent of their own mark, in my opinion, cannot be described as concurrent user. There are no other special circumstances indicated in this case. Therefore. Section 12(3) was not attracted. In the premises, in my opinion, the decision of the Deputy Registrar cannot be interfered with.

4. The appeal therefore fails and is accordingly dismissed. Each party will pay and bear its own costs.

5. Appeal dismissed.

Banwaridas Pugalia v. Colgate Palmolive Co. And Others

Summary of Opinion

Factual and Procedural Background

Legal Issues Presented

Arguments of the Parties

Opponent's Arguments

Appellant's Arguments

Table of Precedents Cited

Court's Reasoning and Analysis

Holding and Implications

Banwaridas Pugalia v. Colgate Palmolive Co. And Others

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