P L D 1965 Dacca 41 (PLP)

The main contentions raised on behalf of the said opponents were of two‑fold nature. According to the opponents, the goods under the proposed amended trade mark were of the same description and Nacre likely to create confusions in the minds of the customers. It was further contended that it could not be registered concurrently under section 10 (2) of the Act with or without any limitation. On behalf of the applicants, however; it was contended that although there was a kind of amendment before advertisement yet in substance there was no material or substantial alteration in the proposed trade mark except in regard to the fact that the portrait of Dr. Jogesh Chandra Ghose was an additional feature conse quent upon the amendment. It was, however, contended that the mark "Dantol" has been continuously in use for more than 40 years and there was no occasion for confusion ever since 1914 or at least from 1936 when the trade marks "Dettol" or other allied marks of the opponents came into being. It was further con tended that even if it were thought that there was any more chance of any kind of confusion, justice of the case demanded that the amended trade mark might be registered with some condition or limitation appropriate for the purpose of avoiding any such confusion. The learned Deputy Registrar after consideration of the materials on record has come to the conclusion that the goods are of the same description although they may not be identical. It has also been held that there is likelihood of confusion visually or phonetically between the two words "Dentol" and "Dettol". He has, however, held that there is no proof of adequate use to bring the case within the ambit of section 10 (2) of the Act. In this view of the matter, he has refused the registration of the proposed trade mark. As regards the amendment which took place before the advertisement, it seems quite clear that although the portrait of Dr. Jogesh Chandra Ghose was made an additional feature yet the original word "Dantol" cannot be said to have undergone a material alteration in so far as it was replaced by the word "Dentol". Even though the amended mark was a composite mark along with the portrait of Dr. Jogesh Chandra Ghose yet dispute between the parties centered round the two words "Dentol" and "Dettol". The leading and essential feature of the trade mark proposed to be registered could be said to be the word "Dentol" and the opponents seem to have taken the stand that it is that part of the composite trade mark which is objection able. In this view of the matter, we are inclined to think that the parties understood that the leading and essential part of the proposed amended trade mark did not undergo any substantial change by reason of the amendment. It is not disputed that "Dettol" is used for varieties of reasons and purposes including mouth washes and gargles. On the other hand, there is no evidence to suggest that "Dentol" is used for any purpose other than toothache alone. The manner or process of using or applying the same is not very much material but there is no doubt about the fact that Dentol can never be used except in case of dental troubles ; whereas Dettol may be used not only for dental troubles but also for mere mouth washes and gargles. It has, therefore, been argued that both the sets of goods are more or less of similar description. In our view, the functions of Dettol are much more than that of Dentol. It is possible that Dentol is used for a limited purpose, whereas Dettol is used for a variety of purposes. It is not disputed by Mr. Shaha that detached from other parts of the proposed composite marks the word D ntol phonetically will sound almost similar to the word Dettol. His contention, however, is that for the purpose of likelihood of any confusion in the mind of the prospective consumer mere phonetic similarity is not enough. Visual representation is also to be considered in this case. It appears that the trade mark "Dettol" consists not only of the word "Dettol" but also of a device of a sword thereby making it composite mark. On the other hand, the proposed trade mark after amendment including the portrait of Dr. Jogesh Chandra Ghose may also be regarded as a composite mark. But as already pointed out the essential feature, namely, Dentol, is likely to be confused with the corresponding essential feature of the opponents trade mark, namely, "Dettol". The portrait of Dr. Jogesh Chandra Ghose seems to have been placed in an obscure position. It is difficult to conceive of the degree, if any, of confusion if the portrait and the word "Dantol" were really placed together without either of them being detached or separated from the other. Be that as it may, if the two composite marks are considered side by side along with the relative containers, there are certain distinctive features noticeable to the naked eye. The phial of Dettol is much bigger in size and is of a different shape. It is not known whether the opponents also used Bengali for the purpose of pushing the sale of Dettol ; whereas the phial used by the applicants contains only one dram of liquid whose colour being white is also quite different the phial is also of a different shape and it appears that the applicants used English, Bengali and Urdu for the purpose of pushing the sale of this kind of medicine. Conceding that both are used for medicinal purposes yet the scope or likelihood of confusion may not be very high in the estimation of a habitual consumer of either of the two. It is true that if an order is placed over the telephone, the phonetic similarity might create some confusion with the dealer concerned but one who has used Dentol will certainly not be confused at the time of delivery if instead of Dentol, Dettol is given to him. Similarly, one who is in the habit of using Dettol will not by mistake accept delivery of Dentol even though erroneously the dealer might offer him in that way. According to Mr. Pal, there is still some scope of confusion between the two words. We do not think mere phonetic test in this case is enough for the purpose of determining as to whether there is likelihood of confusion. Even though it is assumed that there is some kind of resemblance or similarity between the two sets of goods and even if it is assumed that there is some possibility of confusion yet it has to be seen whether in the peculiar facts and circum stances of the case the applicants can get any relief in the matter of their prayer for registration of the trade mark. There is no specific or categorical denial of the fact as stated in paragraph 5 of the affidavit sworn by Prafulla Ranjan Dutta to the effect that the trade mark Dental of the applicants has been in continuous use as specific medicine for tooth‑ache in India. since 1914 and after Partition the said mark also continued to be in use in the territories now included in Pakistan. As already indicated the sale of this kind of goods may not be as large as that of Dettol which is used for various purposes. There is no evidence that at least since 1936 when the opponents got their trade mark registered there was any occasion for confusion on the part of any individual in regard to the sale or purchase of either of these two goods. This supports the view that had there been any occasion for confusion during the period from 1936 to 1953 when the applicants made the application that would have been brought to the notice of the Deputy Registrar. Further if there had been any such occasion for confusion after 1953 that could also have been brought to the notice of the Tribunal. In the absence of any statement to that effect, we are inclined to accept the contention of Mr. Shaha that there was no occasion for confusion during those long years over the use of either of the two things. In the absence of a specific denial of the allegation of user since 1914 as made in paragraph 5 of the affidavit sworn by Prafulla Ranjan Dutta, it is not unlikely and unreasonable on the part of the applicants to think that no documentary evidence might be needed in support of that kind of statement. The learned Deputy Registrar, however, thinks that the evidence of user is not at all adequate. We do not, however, think it reasonable to hold that the user of Dantol or Dentol is almost negligible during all these years ever since 1914. In paragraph 12 of the affidavit sworn by Prafulla Ranjan Dutta and filed on 20th of July 1961, it has been frankly stated that the applicants sale is not so big as that of the opponents as the use of the applicants' medicine is very limited, that is, only meant for tooth‑ache and for no other purpose. It is not possible, in our view, to construe this statement as meaning no sale or little user as contended by Mr. Pal. In our view, after the statements made in the affidavit of Mr. Prafulla Ranjan Dutta was placed on record it was the duty o the opponents to come up with a specific and categorical denial in that behalf so that the applicants would be under a notice and under a necessity to produce their account books and other documents for the purpose of satisfaction of the Tribunal in the matter of proof of the extent of sale or user of this particular medicine. The learned Deputy Registrar in order to remove all possible doubts or likelihood of confusion ought to have considered the case from the stand point of extent of sale after imposing conditions or limitations as provided in section 10(2) of the Act. The applicants were in the field of business in regard to this kind of goods from before the opponents came into the picture. It appears that the applicants have been using the words "Sadhana DaNtol" in English ; in Bengali and "SADHNA DANTOL" in Urdu with a portrait of Dr. Jogesh Chandra Ghose in the same label. Mr. Shaha submits that his client is quite agreeable to the imposition of the limitation that the composite trade mark should contain the portrait of Dr. Jogesh Chandra Ghose along with the words "Sadhana Dentol" in Bengali and Urdu only (and not in English) and further that the phial should be of round shape containing only one dram of liquid medicine as now used. I our view, such a condition or limitation would obviate alll possible confusion if at all and would be quite consistent in view of the fact that both sets of goods are in concurrent use so far Pakistan is concerned. The learned Deputy Registrar, in. our opinion, was not correct in so far he thought : "I cannot also think of any conditions and limitations, which, if imposed would prevent confusion and deception of the public and, accordingly, I reject the plea for concurrent registration unde section 10(2) of the Act" . On the other hand, we are satisfied that the composite mark together with the limitations as indicated above, may be registered under section 10(2) of the Act. The result, therefore, is that this appeal is allowed, and the judgment and order as passed by the learned Deputy Registrar are set aside and it is directed that registration be allowed in respect of the composite trade mark as prayed for on behalf of the applicants after amendment subject to the condition that the word "Dentol" be pre‑fixed by the word "Sadhana" in Bengali and Urdu alone (and not in English) together with the portrait of Dr. Jogesh Chandra Ghose prominently beside the said words "Sadhana Dentol" and further that the phial should be of round shape and should not contain more than one dram of white liquid substance as now in use. In view, however, of the facts and circumstances of the case, we direct that each party do bear their own costs. M. R. KHAN, J.‑I agree. K. B. A. Appeal accepted.