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K. R. Chinna Krishna Chettiar v. Shri Ambal And Co., Madras And Another
Factual and Procedural Background
The appellant, a sole proprietor trading as Radha and Co., and the respondents, a partnership firm operating under the name Ambal and Co., are both long-standing manufacturers and dealers in snuff with business inside and outside Madras. On 10 March 1958 the appellant applied (Application No. 183961) to register a composite label mark for “Sri Andal Madras Snuff” in Class 34. The respondents opposed the application on the ground that the proposed mark was deceptively similar to their two registered marks—No. 126808 (a label featuring the deity Sri Ambal and the words “Sri Ambal parimala snuff”) and No. 146291 (the expression “Sri Ambal”).
The Registrar of Trade Marks rejected the opposition, finding no deceptive similarity. The respondents successfully appealed to a single judge of the Madras High Court, who held the marks phonetically indistinguishable. A Division Bench dismissed the appellant’s letters-patent appeal, concurring that Section 12(1) of the Trade and Merchandise Marks Act, 1958 barred registration and that the appellant had not proved “honest concurrent use” under Section 12(3). The present appeal to the Supreme Court was brought by special leave under Article 136 of the Constitution.
Legal Issues Presented
- Whether the appellant’s proposed trade mark “Sri Andal” (in label form) is deceptively similar to the respondents’ registered marks “Sri Ambal” within the meaning of Section 12(1) of the Trade and Merchandise Marks Act, 1958.
- Whether any evidence of “honest concurrent use” brings the case within the exception in Section 12(3).
Arguments of the Parties
Respondents’ Arguments
- The essential feature of their registered marks is the word “Ambal”, to which the appellant’s mark “Andal” is phonetically identical or at least deceptively similar.
- Under settled law a trade mark encompasses both the pictorial device and its descriptive name; copying or colourable imitation of the name alone constitutes infringement.
- Because orders are usually placed by word of mouth, phonetic resemblance is decisive notwithstanding visual differences.
Appellant’s Arguments
- The Registrar’s specialised finding of no deceptive similarity should be accorded deference.
- “Ambal” and “Andal” refer to entirely different Hindu divinities, conveying distinct ideas that negate the likelihood of confusion.
- Reliance was placed on authorities such as Kerly on Trade Marks, Venkateswaran on Trade and Merchandise Marks, and the decision in Application by Thomas A. Smith Ltd. (1913 30 RPC 363) where “limit” and “summit” were both allowed because each conveyed a definite, different idea.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| In re Broadhead’s Application (1950 57 RPC 209) | Test: Whether normal and fair use of the competing marks would likely cause deception. | Supreme Court adopted this test to compare “Andal” and “Ambal” and found a real danger of confusion. |
| Coca-Cola Co. of Canada v. Pepsi-Cola Co. of Canada Ltd. (1942 59 RPC 127) | When a common element is widely used, the distinctive feature lies in the remaining part of the mark. | “Sri” was treated as common; the distinctive elements were “Ambal” and “Andal”, which the Court held phonetically similar. |
| De Cordova v. Vick Chemical Co. (1951 68 RPC 103) | Infringement may occur if a trader uses any essential feature of another’s mark even without copying it in entirety. | Supported the view that use of “Andal” (essential feature) alongside a pictorial device does not remove deceptive similarity with “Ambal”. |
| Application by Thomas A. Smith Ltd. (1913 30 RPC 363) | Distinct meanings (“limit” vs “summit”) can negate confusion despite some phonetic resemblance. | Relied upon by the appellant; the Court distinguished it on the facts, noting customers outside South India would not perceive the theological distinction between Andal and Ambal. |
Court's Reasoning and Analysis
The Court acknowledged the Registrar’s expertise but emphasised that two lower courts had reversed his decision, creating a concurrent finding of deceptive similarity entitled to weight under Article 136. It identified “Ambal” as the essential and distinctive feature of the respondents’ marks, “Sri” being merely descriptive.
Applying the Broadhead test, the Court compared the marks as wholes with special attention to their “ear” impact. Though the visual designs differ, ocular resemblance is not decisive; phonetic similarity carries equal importance. The Court found a “striking similarity and affinity of sound” between “Andal” and “Ambal”, sufficient to create a real risk that average purchasers with imperfect recollection would assume a trade connection.
The absence of evidence of actual confusion was considered immaterial because the appellant’s use was recent. Arguments based on the distinct religious identities of the goddesses were rejected as unrealistic in a diverse consumer base spread beyond South India. Citing De Cordova, the Court held that adding a picture of Sri Andal does not neutralise the phonetic deception inherent in the word element.
Finally, because the appellant failed to prove honest concurrent use under Section 12(3), the statutory bar in Section 12(1) remained absolute.
Holding and Implications
Appeal Dismissed with Costs; the refusal of registration of the appellant’s mark “Sri Andal” is affirmed.
Direct Effect: The appellant cannot register or use the proposed mark in a manner that infringes the respondents’ rights. Broader Implication: The decision reinforces that phonetic resemblance alone can render marks deceptively similar, even where visual elements differ and even when the words have distinct meanings to a subset of consumers.
R.S Bachawat, J.— The appellant is the sole proprietor of a trading concern known as Radha and Co. The respondents Ambal and Co., are a partnership firm. The respondents as also the appellant are manufacturers and dealers in snuff carrying on business at Madras and having business activities inside and outside the State of Madras. On March 10, 1958, the appellant filed Application No. 183961 for registration of a trade mark in Class 34 in respect of “snuff manufactured in Madras”. The respondents filed a notice of opposition. The main ground of opposition was that the proposed mark was deceptively similar to their registered trade marks. The respondents were the proprietors of the registered Marks Nos. 126808 and 146291. Trade Mark No. 126208 consists of a label containing a device of a goddess Sri Ambal seated on a globe floating on water enclosed in a circular frame with the legend “Sri Ambal parimala snuff” at the top of the label, and the name and address “Sri Ambal and Co., Madras” at the bottom. Trade mark No. 146291 consists of the expression “Sri Ambal”. The mark of which the appellant seeks registration consists of a label containing three panels. The first and the third panels contain in Tamil, Devanagri, Telgu and Kannada the equivalents of the words “Sri Andal Madras Snuff”. The centre panel contains the picture of goddess Sri Andal and the legend “Sri Andal”.
2. Sri Andal and Sri Ambal are separate divinities. Sri Andal was a vaishnavite woman saint of Srivilliputur village and was deified because of her union with Lord Ranganatha. Sri Ambal is the consort of Siva or Maheshwara.
3. The respondents have been in the snuff business for several decades and have used the word Ambal as part of their work for more than half a century. The question in issue is whether the proposed mark is deceptively similar to the respondents' marks. “Mark” as defined in Section 2 (j) of the Trade and Merchandise Marks Act, 1958, includes “a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof”. Section 12(1) provides that “save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods”. The Registrar of Trade Marks observed:
“In a composite mark the distinctive words, appearing on it play an important part. Words always talk more than devices, because it is generally by the word part of a composite mark that orders will be given. Apart from that, the opponents have a registered mark consisting of the expression Sri Ambal. I have, therefore, to determine whether the expression Sri Andal, is deceptively similar to Sri Ambal.”
He held:
“the sound of ‘Ambal’ does not so nearly resemble the sound of ‘Andal’, in spite of certain letters being common to both the marks, as to be likely to cause confusion or deception among a substantial number of persons.”
The respondents filed an appeal in the Madras High Court. Jagadishan, J., observed:
“It is settled law that a trade mark comprehends not merely the picture design or symbol but also its descriptive name. A copy of colourable imitation of the name, would constitute an infringement of the mark containing the name. Nobody can abstract the name or use a phonetical equivalent of it and escape the charge of piracy of the mark pleading that the visual aspect of his mark is different from the mark of the person opposing its registration.”
He held:
“The words, Ambal and Andal, have such great phonetic similarity that they are undistinguishable having the same sound and pronunciation. In whatever way they are uttered or spoken, slowly or quickly, perfectly or imperfectly, meticulously or carelessly and whoever utters them, a foreigner or a native of India, wherever they are uttered in the noisy market place or in a calm and secluded area, over the phone or in person, the danger of confusion between the two phonetically allied names is imminent and unavoidable.”
Accordingly, he allowed the appeal and dismissed the appellant's application for registration of the trade mark. The appellant filed a letters patent appeal. The Divisional Bench of the High Court dismissed the appeal. The learned Registrar and the two courts below concurrently found that the appellant failed to prove honest concurrent use so as to bring his case within Section 12(3). The present appeal has been filed by the appellant after obtaining special leave.
4. The Registrar was of the view that the appellant's mark was not deceptively similar to the respondents' trade marks. He has expert knowledge of such matters and his decision should not be lightly disturbed. But both the courts have found that he was clearly wrong and held that there is a deceptive similarity between the two marks. In an appeal under Article 136 of the Constitution the onus is upon the appellant to show that the concurrent finding of the courts below is erroneous. The appellant must satisfy the court that the conditions of Section 12(1) have been satisfied. If those conditions are not satisfied his mark cannot be registered.
5. Now the words “Sri Ambal” form part of Trade Mark No. 126808 and are the whole of Trade Mark No. 146291. There can be no doubt that the word “Ambal” is an essential feature of the trade marks. The common “Sri” is the subsidiary part, of the two words “Ambal” is the more distinctive and fixes itself in the recollection of an average buyer with imperfect recollection.
6. The vital question in issue is whether, if the appellant's mark is used in a normal and fair manner in connection with the snuff and if similarly fair and normal user is assumed of the existing registered marks, will there be such a likelihood of deception that the mark ought not to be allowed to be registered (see In the matter of Broadhead's Application (1950) 57 RPC 209 for registration of a trade mark). It is for the court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature “Andal”. There is a striking similarity and affinity of sound between the words “Andal” and “Ambal”. Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danger of confusion between the two marks.
7. There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.
8. In the case of Coca-Cola Co. of Canada v. Pepsi-Cola Co. of Canada Ltd. 1942 59 RPC 127 it was found that cola was in common use in Canada for naming the beverages. The distinguishing feature of the mark Coca Cola was coca and not cola. For the same reason the distinguishing feature of the mark Pepsi Cola was Pepsi and not cola. It was not likely that any one would confuse the word Pepsi with Coca. In the present case the word “Sri” may be regarded as in common use. The distinguishing feature of the respondent's mark is Ambal while that of the appellant's mark is Andal. The two words are deceptively similar in sound.
9. The name Andal does not cease to be deceptively similar because it is used in conjunction with a pictorial device. The case of De Cordova v. Vick Chemical Co. 1951 68 RPC 103 is instructive. From the appendix printed at p. 270 of the same volume it appears that Vick Chemical Company were the proprietors of the registered trade mark consisting of the word “Vaporub” and another registered trade mark consisting of a design of which the words “Vicks Vaporub Salve” formed a part. The appendix at p. 226 shows that the defendants advertised their ointment as “Karsote Vapour Rub”. It was held that the defendants had infringed the registered marks. Lord Radcliffe said: “... a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features”.
10. Mr Sen stressed the point that the words Ambal and Andal had distinct meanings. Ambal is the consort of Lard Siva and Andal is the consort of Ranganatha. He said that in view of the distinct ideas conveyed by the two words a mere accidental phonetic resemblance could not lead to confusion. In this connection he relied on Venkateswaran Law of Trade and Merchandise Marks, 1963 Ed., p. 214, Kerly Law of Trade marks and Trade Names, 9th Edn., p. 465, Article 852 and the decision Application by Thomas A. Smith Ltd., to Register a trade mark. 1913 30 RPC 363 In that case Neville, J., held that the words “limit” and “summit” were words in common use, each conveying a distinctly' definite idea; that there was no possibility of any one being deceived by the two marks; and there was no ground for refusing registration. Mr Sen's argument loses sight of the realities of the case. The Hindus in the south of India may be well aware that the words Ambal and Andal represent the names of two distinct Goddesses. But the respondent's customers are not confined to Hindus alone. Many of their customers are Charistians, Parsees, Muslims and persons of other religious denominations. Moreover, their business is not confined to south of India. The customers who are not Hindus or who do not belong to the south of India may not know the difference between the words Andal and Ambal. The words have no direct reference to the character and quality of snuff. The customers who use the respondent's goods will have a recollection that they are known by the word Ambal. They may also have a vague recollection of the portrait of a benign goddess used in connection with the mark. They are not likely to remember the fine distinctions between a Vaishnavite goddess and a Shivaite deity.
11. We think the judgment appealed from is right and should be affirmed. We are informed that the appellant filed another Application No. 212575 seeking registration of labels of which the expression “Radha's Sri Andal Madras Snuff” forms a part. The learned Registrar has disposed of the application in favour of the appellant. But we understand that an appeal is pending in the High Court. It was argued that there was no phonetic similarity between Sri Ambal and Radha's Sri Andal and the use of the expression Radha's Sri Andal was not likely to lead to confusion. The Divisional Bench found force in this argument. But as the matter is sub-judice we express no opinion on it.
12. In the result, the appeal is dismissed with costs.
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