Corn Products Refining Co. v. Shangrila Food Products Ltd. (1960)

Court: Supreme Court of India Case No.: Civil Appeal (arising from Trade Mark Application proceedings) Decided on: 8 October 1959 Bench: Justice A.K. Sarkar, Justice J.L. Kapur, Justice S.K. Das Citation: AIR 1960 SC 142; (1960) 62 Bom LR 162; [1960] 1 SCR 968

Background

The appellant, Corn Products Refining Co., was a corporation incorporated under the laws of the State of New Jersey, United States. On 31 August 1942, it had obtained registration of the trade mark ‘Glucovita’ under the Trade Marks Act, 1940, in Class 30 in respect of “Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient in food; glucose for food.” It had also registered the same mark in Class 5 in respect of “Infants’ and invalids’ foods.” The appellant marketed its glucose powder in small containers of one pound and four ounce capacities and had spent considerable sums on advertising the mark in popular journals, thereby building up a wide reputation and goodwill in the mark among the Indian buying public.

The respondent, Shangrila Food Products Ltd., was a manufacturer of biscuits. On 5 November 1949, it applied for registration of the mark ‘Gluvita’ in Class 30, in respect of biscuits – a category that also falls within Class 30 under the Trade Marks Act, 1940. The respondent had not used the mark prior to the date of its application. On the Registrar’s direction, the application was advertised before acceptance, with the respondent agreeing to limit its registration to biscuits only.

The appellant opposed the registration on the grounds that it should be refused under Section 8(a) (likelihood of deception or confusion) and Section 10(1) (same goods or description of goods) of the Trade Marks Act, 1940.

Procedural History

Before the Deputy Registrar: The Deputy Registrar held that biscuits and glucose powder mixed with vitamins, though both in Class 30, were not goods of the same description. He further held that ‘Glucovita’ and ‘Gluvita’ were neither visually nor phonetically similar and that the syllable ‘co’ absent from the respondent’s mark sufficiently distinguished the two. He accordingly allowed the respondent’s application, though he recorded a finding that the appellant had acquired reputation and goodwill in the mark ‘Glucovita’ among the public.

Before the Single Judge (Desai, J.) of the Bombay High Court: Desai, J., agreed that the goods were not of the same description and upheld the finding that the appellant’s mark had acquired a public reputation. However, he disagreed with the Deputy Registrar on the question of similarity, holding that the two marks were sufficiently similar to be reasonably likely to cause deception and confusion. He accordingly set aside the Deputy Registrar’s order and held that the respondent’s mark could not be registered under Section 8(a).

Before the Division Bench of the Bombay High Court (Chagla, C.J. and Shah, J.): The Division Bench reversed Desai, J.’s decision on two grounds. First, it held that the evidence showed reputation only among tradespeople, not the general public. Second, it held that the existence of a series of marks containing the prefix or suffix ‘Gluco’ or ‘Vita’ meant that these elements could not be exclusively associated with the appellant’s goods. It accordingly restored the Deputy Registrar’s order. The appellant then appealed to the Supreme Court.

Issues for Determination

Three principal questions arose for determination before the Supreme Court:

Whether the appellant’s trade mark ‘Glucovita’ had acquired a reputation among the general buying public in India, as distinct from tradespeople alone.
Whether the marks ‘Glucovita’ and ‘Gluvita’ were so similar as to be likely to cause deception or confusion among an average purchaser.
Whether the existence of a series of registered marks containing the common elements ‘Gluco’ or ‘Vita’ was relevant to negate the likelihood of confusion and if so, what was required to rely upon such a series.

Key Holding

The appeal was allowed. The Supreme Court set aside the order of the Division Bench of the Bombay High Court and restored the order of Desai, J., thereby refusing registration of the respondent’s mark ‘Gluvita’. The Court held that the appellant’s mark had acquired a reputation among the general buying public; that the two marks were similar enough to cause confusion in the mind of a person of average intelligence and imperfect recollection; and that the respondent had failed to establish that the series of marks containing ‘Gluco’ or ‘Vita’ were in actual and extensive use in the market, which was a precondition for relying upon such a series to defeat an opposition.

Statutory Provisions Involved

Section 8(a), Trade Marks Act, 1940 – prohibited registration of a mark the use of which would be likely to deceive or cause confusion or would be contrary to law or would be disentitled to protection in a court of justice.

Section 10(1), Trade Marks Act, 1940 – prohibited registration of a mark identical with or nearly resembling, a mark already registered in respect of the same goods or description of goods.

Reasoning of the Court

On Reputation Among the General Public

The Supreme Court held that the Division Bench had committed a manifest error in concluding that the appellant’s mark had acquired a reputation only among tradespeople. The Court examined the evidence on record comprehensively. The appellant had sold its products in small containers of one pound and four ounces – a fact that the Court held was conclusive evidence of sale to the general public rather than to tradespeople who would purchase in bulk. The appellant had invested heavily in advertising in popular journals, which would make commercial sense only if it was targeting a general consumer audience. Most significantly, the respondent’s own affidavits – filed in support of its application – contained statements by shopkeepers that “a number of customers come to buy the products ‘Gluvita’ and the products ‘Glucovita'”, which in the Court’s view established beyond doubt that ‘Glucovita’ was known to and sought by the general buying public.

The Court also took note of the respondent’s own grounds of appeal against Desai, J.’s order, in which the respondent did not dispute – and in fact assumed – that the appellant’s mark had acquired a reputation among the public. This was treated as an admission against the respondent’s position.

The Court further corrected an error in the Division Bench’s approach to the concept of reputation. It held that what is required for a passing off or trademark opposition is that the reputation should attach to the trade mark itself – not to the manufacturer behind the mark. A trade mark can acquire a reputation in connection with the goods it identifies, even if a buyer does not know who manufactured those goods. It is the association of the mark with the goods in the public mind that matters.

On Similarity of Marks

The Court held that the question of whether two marks are likely to give rise to confusion is a question of first impression, to be determined by the court itself from the perspective of a person of average intelligence and imperfect recollection. The Court affirmed Desai, J.’s view and disagreed with the Deputy Registrar.

The Court observed that phonetic similarity tests developed in English cases, based on how Englishmen pronounce English words, may not be suitable for India, where the marks in question are essentially foreign words to a large segment of the population. In such a context, the two marks must be considered holistically and as a whole, not dissected syllable by syllable. The Court held that apart from the single syllable ‘co’ present in ‘Glucovita’ but absent from ‘Gluvita’, the two marks were identical. The syllable ‘co’ was not, in the Court’s opinion, of sufficient prominence to enable the Indian buying public to distinguish between the two marks. The overall structural and phonetic similarity and the fact that both marks conveyed the same idea – glucose and life-giving properties of vitamins – made confusion reasonably likely.

On Trade Connection Between Different Goods

The Court rejected the argument that because biscuits and glucose powder were not goods of the same description (and therefore Section 10(1) was inapplicable), there could be no confusion. Even under Section 8(a), a trade connection between different goods can independently give rise to a likelihood of confusion, provided the marks are sufficiently similar. In this case, glucose is actually used as an ingredient in the manufacture of biscuits, establishing a direct trade connection between the appellant’s and respondent’s products. The Court noted that the appellant had itself received an enquiry from a tradesman asking whether it manufactured biscuits under its ‘Glucovita’ mark – evidence that the trade connection was real and not merely theoretical. The respondent’s own director had stated that the name ‘Gluvita’ was adopted to indicate that glucose was used in the manufacture of its biscuits, which further reinforced the trade link. An average purchaser, on seeing ‘Gluvita’ biscuits, was therefore reasonably likely to assume that they were made using the appellant’s ‘Glucovita’ glucose.

On the Series Marks Defence

The Court firmly rejected the Division Bench’s reliance on the existence of a series of registered marks containing the elements ‘Gluco’ or ‘Vita’. The Court, referring to the English decision in In re: Beck, Kollar & Company (England) Ltd. [64 R.P.C. 76] and In re: Harrods’ Application [52 R.P.C. 65], held that inopposition proceedings, a series of marks can assist the applicant only if those marks have been shown by evidence to have been in actual and extensive use in the market. The mere presence of marks on the Register is not evidence of their use – a mark may be registered but never used. Since the respondent had led no such evidence of actual user of the ‘Gluco’ or ‘Vita’ series marks, the Division Bench’s reliance on the Register search conducted by the Deputy Registrar was wholly impermissible. The Court also noted that marks such as ‘Glucose Biscuits’, ‘Gluco Biscuits’ and ‘Glucoa Lactine Biscuits’ cited by the appellant were ordinary dictionary-derived descriptions in which no one could claim a proprietary right and these could not constitute a series of trade marks with a common protectable element.

Doctrinal Significance

Corn Products Refining Co. v. Shangrila Food Products Ltd. is one of the foundational Supreme Court authorities on deceptive similarity and trade mark opposition in India, cited consistently by the Supreme Court itself in all its subsequent landmark trade mark decisions, including Amritdhara Pharmacy v. Satya Deo Gupta (1963), Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) and Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001).

The judgment makes four enduring contributions to Indian trade mark law.

It establishes that reputation in a trade mark is measured by the association of the mark with the goods in the general public’s mind and that the identity of the manufacturer need not be known to consumers. This disentangles trade mark reputation from product source attribution in a manner consistent with the communicative function of marks.
It firmly embeds the holistic comparison test in Indian law. Courts must compare marks as a whole, from the standpoint of a person of average intelligence and imperfect recollection and must not dissect the marks into their constituent syllables or elements. The Court’s specific observation that phonetic similarity tests developed in England may be inapt for the Indian context – where trade marks are often foreign words – reflects a deliberate localisation of the deceptive similarity standard to India’s sociolinguistic realities. This reasoning was later explicitly followed and expanded in Amritdhara and Cadila.
It authoritatively clarifies the law on trade connection between different goods under Section 8(a). Even where two marks cover products that are not of the same description (and therefore Section 10(1) is unavailable), the likelihood of confusion can still be established if there is a credible commercial or manufacturing link between the two categories of goods. This is now a well-settled principle, applied wherever an opponent’s goods serve as ingredients, components or complementary items to the applicant’s goods.
It lays down a clear and demanding standard for the series marks defence in opposition proceedings. An applicant seeking to rely on a crowded field of marks with common elements must affirmatively prove, by evidence, that those marks were in actual and extensive use in the market at the relevant time. Registry records alone are insufficient. This prevents applicants from using the mere existence of registrations to dilute the protection available to an established mark.

References

Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142
[1960] 1 SCR 968; (1960) 62 Bom LR 162
Indian Kanoon: https://indiankanoon.org/doc/1883538/
In re: Beck, Kollar & Company (England) Ltd. [64 R.P.C. 76]
In re: Harrods’ Application [52 R.P.C. 65]
In re: Smith Hayden & Co. Ltd. (“Ovax” case) [63 R.P.C. 97]
In re: Edward Hack (“Black Magic” case) [58 R.P.C. 91]
In re: Ladislas Jellinek (“Panda” case) [63 R.P.C. 59]
Harry Reynolds v. Laffeaty’s Ltd. (“Aquamatic” case) [1958 R.P.C. 387]
Willesden Varnish Co. Ltd. v. Young & Marten Ltd. [39 R.P.C. 285]
Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 (followed this judgment)
Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 (cited this judgment)

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