1. This is an appeal preferred by original respondent No. 1 in Miscellaneous Petition No. 42 of 1989 to challenge the legality of judgment dated February 6, 1990 delivered by learned Single Judge. By the impugned judgment, the learned Judge set aside the order dated April 19, 1989 passed by the Assistant Registrar of Trade Marks and directed that the Assistand Registrar should register the trade mark of the respondent No. 1 with the condition that respondent No. 1 shall not be entitled to use the mark ‘MJTONE’ on any preparation used for treatment of Leucorrhae. The facts which gave rise to the passing of this order are as follows:
2. On August 10, 1983, respondent No. 1 filed an application under Application No. 409450 to register a trade mark ‘MJTONE’ in respect of specification of goods which reads as:
“Pharmaceutical and Medicicinal Vitamin preparations”.
3. The application was accepted for registration in Part ‘B’ subject to disclaimer of the word ‘TONE’ and was advertised in Trade Marks Journal on July 1, 1987. On July 29, 1937, the appellants filed notice of opposition on various grounds. The appellants claimed that the appellants and the predecessors-in-title are one of the leading manufacturers of medicinal and pharmaceutical preparations for several years. It was further claimed that the appellants are registered proprietors of trade mark ‘M-2 TONE’ in Class 5 in respect of pharmaceutical and medicinal preparations and the registration is valid and subsisting. The appellants also claimed that the registered trade mark was in use since many years and the goods bearing the trade mark command extensive sales. The appellants claimed that the goods beating trade mark ‘M-2 TONE’ are sold throughout the length and breadth of the country and the mark has acquired reputation and as such the appellants are exclusively entitled to use the mark. The appellants also claimed that the mark proposed to be registered by the respondent No. 1 is visually and phonetically similar to the registered trade mark of the appellants. It was further claimed that the mark set up by respondent No. 1 is not distinctive and respondent No. 1 are not the proprietors of the mark. The respondent No. 1 filed counter statement which consists of general denials. The parties led evidence in support of their claims and thereafter the Assistant Registrar by Order dated April 19, 1989 upheld the opposition filed bp the appellants and the application for registration of mark ‘MJTONE’ was refused.
4. The Assistant Register held that the mark set up by respondent No. 1 is deceptively similar to the registered mark of the appellants and appellants objection under. Section 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the ‘Act’) requires to be upheld, The Assistant Registrar further held that there is a tangible danger of confusion and deception amongst substantial number of persons if the mark of respondent No. 1 is registered and, therefore, the objection under Section 11(a) of the Act is required to be upheld. The Assistant Registrar further held that respondent No. 1 are not entitled to claim benefit of provisions of sub-section (3) of Section 12 of the Act as the question of honest concurrent user cannot arise as the mark was used by the respondents for a duration of only 49 days before the date of filing of the application for registration.
5. The respondent No. 1 preferred appeal under Section 109 of the Act to this Court and the appeal was heard by the learned Single Judge and allowed by judgment dated February 6, 1990. The learned Judge held that the registered mark of the appellants and the proposed mark of respondent No. 1 are completely distinct and different and there is no likelihood of any deception or confusion. The learned Judge held that as the medicinal preparation sold by the appellants with the registered trade mark is available only on medical prescription, there is no possibility of the respondent No. 1 trading on the reputation acquired by the appellants. The learned Judge ovserved that though the proceedings were pending before the Assistant Registrar from August 19, 1983 till April, 1989, appellents were unable to produce a si???gle instance of confusion and the fact that the mark of respondent No. 1 has been in use for a number of years without there having been any confusion is a relevant factor. The learned judge, after recordings this findings, examined the issue as to whether respondent No. 1 are not entitled to benefit of honest concurrent user and observed that even though the mark was in use only for a duration of 49 days before the date of application, the Assistant Registrar ought to have taken into consideration the sale figures from year 1983 till September, 1988 and should have granted relief under sub-Section (3) of Section 12 of the Act. The decision of the learned Single Judge is under challenge.
6. Shri Tulzapurkar, learned counsel appearing on behalf of the appellants submitted that the learned Single Judge was in error in disturbing the well considered order passed by Assistant Registrar of Trade Marks. It was contended that the finding of the learned Judge holding that the two marks are dissimilar and different is incorrect. Shri Tulzapurkar further submitted that the reasoning of the learned Judge that for grant of relief under sub-section (3) of Section 12 of the Act, it is necessary for the Assistant Registrar to consider the sale figures not only at the time of filing of the application but till the date of decision of the application is unsustainable. Shri Daruwalla, learned counsel appearing on behalf of the respondent No. 1, on the other hand, submitted that the learned Judge was justified in reversing the finding of the Assistant Registrar on the issue as to whether the two marks were similar and whether there was likelihood of deception or confusion by registering the mark set up by respondent No. 1. Shri Daruwalla with his usual fairness conceded that the reasoning of the learned Single Judge that for considering the benefit of grant of honest concurrent user, the sale figures till the date of disposal of the application can be taken into consideration is not accurate. In view of the rival contentions, the first question which requires determination is whether the mark proposed by respondent No. 1 is deceptively similar to the registered mark of the appellants.
7. Section 11(a) of the Act provides that the mark, the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark. Section 12(1) of the Act provides that 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 respent of the same goods or description of goods. The principles to be borne in mind while determining whether the proposed mark of respondent No. 1 resembles the registered mark the appellants so as to be likely to deceive or cause confusion are well settled by a catena of decisions of English Courts as well as the Supreme Court. The well established rule of comparison of two marks was enunciated in the case reported in 1906 R.P.C 744 (Pianotist Co. Ltd's application) by Justice Parker. The learned Judge observed:
“You must take the two words. You must judge of 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 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”.
8. The test for comparision of the two word marks formulated by Lord Parkar was referred to with approval by the Supreme Court in the decision reported in (1969) 2 SCC 716 : A.I.R 1970 Supreme Court 2062 (F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd.) Bearing these principles in mind, it is necessary to examine whether the mark proposed by respondent No. 1 is likely to cause confusion or deception in the mind of the customers in view of the reputation acquired by the registered mark of the appellants. The appellants' mark was registered on August 18, 1965. It is not in dispute that the goods with the mark ‘M-2 TONE’ are sold throughout the length and breadth of the country and the mark has acquired reputation. The appellants are one of the leading manufacturers of Ayurvedic pharmaceutical preparations and invented and adopted trade mark ‘M-2 Tone’ in respect of treatment of certain female diseases. The sales figures of the goods bearing mark ‘M-2 TONE’ from year 1979–80 to???986-87 show that the sales rose from Rs. 22,50,192/- to Rs. 1,53,93,316/-. The application for registration of mark ‘MJTONE’ by respondent No. 1 was filed on August 19, 1983 and the application sets out that respondent No. 1 have used the mark only from July 1, 1983. Turning to the two marks, it is obvious that the beginning and ending of the two marks is similar and indeed except for the letter ‘J’ in the mark of respondent No. 1 the two marks are identical. The only difference in the mark proposed by respondent No. 1 with that of the applicants is that instead of figure ‘2’ letter ‘J’ is substituted. On the first impression, it is obvious that there is every likelihood of deception or confusion by the user of the mark of respondent No. 1. It is now well settled that the Court while considering likelihood of deception or confusion must make alllowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. Shri Daruwalla submitted that the difference between the two marks is noticeable because the mark of the appellants uses the figure ‘2’, while respondent No. 1, letter ‘J’. It is not permissible to make a meticulous comparison of the words, leter by letter and syllable by syllable, and the two marks must be taken as a whole to ascertain whether there is a likelihood of deception or confusion. The principle that the marks must be compared as a whole is well settled and it is incumbent upon the Court to consider whether the totality of the proposed trade mark is such that it is likely to cause deception or mistake in the mind of the person accustomed to the existing trade mark. The learned Single Judge reversing the finding of the Assistant Registrar observed that the visual impression of the two marks is completely different and the design which accompanies the label leaves no doubt that there would be no confusion. It was not correct to examine the label affixed on the product to determine likelihood of deception in cases where the disputed markis a letter mark. Shri Daruwalla referred to the decision reported in 1967 Fleet street Patent Law Reports 39 to show that the suffix ‘TEXT’ used in the mark of the four contestants was common to the trade and, therefore, it was held that there was no likelihood of deception or confusion. It was urged that the word ‘TONE’ is in common use in the trade and open to the trade use The submission proceeds on the assumption that the word ‘TONE’ is in common use in the trade. Shri Tulzapurkar co???toverts the claim by submitting that there is no evidence on record to indicate that the word ‘TONE’ is common to the trade of medicinal and pharmaceutical preparations. Shri Daruwalla attempted to refer to the affidavit filed by Kishore Dharnidhar Shroff, one of the partners of the appellants, on Marh 12, 1968 in some other proceedings. It is not permissible to refer to the said affidavit without the affidavit being on record and withont giving an opportunity to the appellants to meet the claim. Shri Daruwalla did not dispute that there is nothing on record to establish that there are several marks on the Register using the suffix ‘TONE’. Even assuming that some marks are registered using the suffix ‘TONE’ that by itself is not sufficient to assume that there would be no likelihood of deception or confusion. It is now well settled that the mere fact that the mark is on the Register is not sufficinent but it is necessary to establish the user of such mark in the market. In absence of any material, it is not possible to accede to the submission of Shri Daruwalla that the suffix ‘TONE’ is common to the trade. In our judgment, on the facts and circumstances of the case, the conclusion is inescapable that the mark proposed by respondent No. 1 is similar to the registered mark of the appellants and the mark of respondent No. 1 is deceptively similar and is likely to deceive or cause confusion. Shri Daruwalla submitted that the chances of deception or confusion are negligible as the preparations of the appellants are sold only on medical prescription. The learned single Judge placed srtong reliance upon this fact, but, in our judgment, nor correctly as the said fact is merely one of the circumstances to determine as to whether there is likelihood of confusion or deception and can by no stretch of imagination be conclusion. In our judgment, the learned Judge was in error in reversing the finding of the Assistant Registrar.
9. Shri Tulzapurkar submitted that the Assistant Registrar very rightly held that respondent No. 1 cannot seek the benefit of provisions of sub-section (3) of Section 12 of the Act because of short user of 40 days which can hardly be called concurrent user. The learned counsel complained that the observations made by the learded Single Judge that the Assistant Registrar ought to have taken into consideration the sales figures not on the date of the application, but at the time of disposal of the application for grant of honeet concurrent user is entirely unsustainable. The submission is correct and deserves acceptance. Sub-section (3) of Section 12 of the Act, inter-alia, provides that the Registrar may permit the registration of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods in case of honest concurrent use or of any other special circumstances subject to conditions and limitations. The factors to be taken into consideration have been explained in a number of reported cases and particularly in Maeder's Application, and Alex, Pirie & Sons Ltd's Application. The principles to ba borne in mind are:
(a) “The quantum of concurrent user shown by the Applicant having regard to the duration, area, and volume of trade and to the goods concerned,
b) the degree of confusion likely to ensue from the resemblance of the Applicant's and Opponent's marks, which is to a large extent indicative of the measure of public inconvenience.
c) the honesty of the concurrent user,
d) whether any instances of confusion have in fact been proved and
e) the relative inconvenience which would be caused to the parties if the Applicant's mark should be registered”.
10. To enable the Registrar to grant benefit of registration under sub-section (3) of Section 12 of the Act on the basis of honest concurrent user, it is necessary that the proposed mark should have been used for a substantial period. It is not possible to lay down any rule as to the minimum period necessary to justify the concurrent user, but such user must be continuous and must be substantially long. In the reported English oases, the concurrent user was shown to be between four years and 25 years. It is obvious that before the benefit of honesr concurrent user can be claimed, it must be established that the user is for a substantial duration as well as the extent of use is considerable. The respondent No. 1 mentioned in the application for registration filed on August 19, 1983 that the proposed mark was used only from July 1, 1983, i.e hardly for a duration of 49 days. It is impossible even to imagine how such short user can be treated as honest concurrent user. As the user was only for a period of 49 days, the respondent No. 1 could not produce any sale figures. The Registrar, therefore, very rightly declined to make available the benefit of sub-section (3, of Section 12 of the Act to the mark proposed by respondent No. 1. The learned Single Judge observed that as respondent No. 1 had filed evidence to show the sales figures from July 1983 to September 1988, the Assistant Registrar ought to have accepted those figures and should not have proceeded on the basis that the concurrent user was only for a duratian of 49 days. The learned Judge after taking the sale figures into consideration concluded that respondent No. 1 were entitled to the benefit of honest concurrent user. It is impossible to sustain this finding. The principle is well settled that to secure benefit of honest concurrent user the user must be for a period prior to the date of application and the party is not entitled to take advantage of user for over several years merely because the application for registration remains pending before the Registrar. It connot be overlooked that the registration relates back to the date of application and therefore, while examining grant of relief under-section (3) of Section 12 of the Act, the relevant date is the date of the application and subsequent user shall be ignored.
11. In case respondent No. 1 have used the proposed mark for a considerable length of time after the date of the application, that may give separate cause of action to approach the Registrar. In our judgment, the conclusion of the learned Single Judge that respondent No. 1 were entitled to the benefit of sub-section (3) of Section 12 of the Act is unsustainable and the reasoning and the conclusion is required to be set aside. In our judgement, the learned Single Judge was not right in disturbing the conclusion of the Assistant Registrar and the appeal must succeed.
12. Accordingly, appeal is allowed and impugned judgment dated February 6, 1990 in Miscellaneous Petition No. 42 of 1989 is set aside and that passed by the Assistant Registrar of Trade Marks on April 19, 1989 is restored. The respondent No. 1 shall pay the costs.