The Respondent (Satyadeo Gupta) had applied for the registration of trade name of a medicinal preparation “Lakshmandhara” in relation to the medicinal preparations that were followed since 1923.
It was admitted by the Respondent that the Respondent’s product was mainly sold in the State of Uttar Pradesh and there were only sporadic sales in other states.
The Appellant (Amritdhara Pharmacy) opposed the registration of the mark ‘Lakshmandhara’ on the ground that it had an exclusive proprietary interest in the trade mark “Amritdhara” which was in relation to a similar medicinal preparation. Moreover, their preparation had acquired considerable reputation since 1901 and thus the Respondent’s trade name “Lakshmandhara” was likely to deceive and cause confusion amongst consumers and therefore the registration was prohibited by Sections 8 and 10(1) of the Trade Marks Act, 1940.
In response to the same the Respondent filed a counter affidavit, raising the defenses of honest concurrent user and acquiescence on part of the Appellant as the Respondent was using the mark ‘Lakshmandhara’ since 1923.
ISSUE:
Whether the mark, “Lakshmandhara”, was likely to deceive and cause confusion under section 8 and section 10 of the Trademark Act?
Whether there was any acquiescence for “Lakshmandhara”, as to bring it under special circumstances, mentioned in section 10(2) of the Trademark Act?
HELD:
The Apex court held that there was an overall similarity to the names, and it is very likely to deceive and confuse average consumers who are mainly uneducated and unwary.
The Apex court provided that the whole trademark name is to be compared in such cases and, thus, the High Court was wrong in comparing them by separating the words.
The court held that the product names were likely to cause confusion, and that the registrar of Trademark was right about the first issue, i.e., the similarity was likely to cause confusion.
Deceptively similar trademarks are not eligible for registration to prevent consumer confusion and safeguard the rights of trademark owners. The comparison standard between similar trademarks is based on the viewpoint of an average person with imperfect recollection.
On the question of acquiescence, the court held that if a trader allows others to build a reputation under a mark to which he has rights; he may lose his right of opposition and as there was an honest usage of the mark name “Lakshmandhara” on behalf of the Respondent and that the Appellant knew of the product by being in the same business, the conditions were enough to bring it under special circumstances of section 10(2).
The Supreme Court set aside the judgment of the High court; the decision of the registrar was restored. Moreover, the registration was allowed by the Supreme Court with the limitation of the sale in only Uttar Pradesh.