Corn Products Refining Co. vs Shangrila Food Products Ltd

Case Citation:

AIR1960SC142

Introduction:

The case involves an application for the registration of a trade mark under the Trade Marks Act, 1940. The respondent, Shangrila Food Products Ltd., applied for the registration of the mark ‘Gluvita’ in respect of biscuits. The appellant, Corn Products Refining Co., opposed the application, claiming that it would cause confusion with their registered mark ‘Glucovita’ used for glucose powder mixed with vitamins. The main issue before the Hon’ble Supreme court was whether the respondent’s mark should be registered considering the similarity with the appellant’s mark and the likelihood of confusion.

Procedural History:

The respondent’s application for registration of the trademark was opposed by the appellant. The Deputy Registrar initially held that the goods were not of the same description and that there was no likelihood of deception or confusion. The appellant appealed to the High Court at Bombay, where Desai, J., set aside the Deputy Registrar’s order, holding that the respondent’s mark was likely to cause deception or confusion. The respondent then appealed to a bench of the same High Court, consisting of Chagla, C.J., and Shah, J., who held that there was no evidence of the appellant’s mark acquiring a reputation among the public and that there were other marks with similar features, concluding that the respondent’s mark would not cause confusion or deception. The appellant then appealed to the Supreme Court.

Issue Presented:

The main issue before the Hon’ble Supreme Court was whether the respondent’s mark ‘Gluvita’ should be registered, considering the similarity with the appellant’s mark ‘Glucovita’ and the likelihood of confusion or deception.

Rule of Law:

The Hon’ble Supreme Court applied the provisions of the Trade Marks Act, 1940. The relevant sections were Section 8(a), which deals with marks likely to deceive or cause confusion, and Section 10(1), which deals with conflicting trademarks. The court also considered precedents and legal principles related to the reputation of a trade mark and the likelihood of confusion.

Analysis and Reasoning:

The Hon’ble Supreme Court examined the evidence presented by both parties. The court opined that the appellate Judges of the High Court had erred in holding that there was no evidence of the appellant’s mark acquiring a reputation among the public. The evidence showed that the appellant’s mark ‘Glucovita’ had acquired a reputation among the general buying public. The court also disagreed with the High Court’s view that the reputation should be attached to the maker of the goods rather than the trademark itself. Thus, the court clarified that the reputation of the trademark is what matters, and it is not necessary for the buyer to know the manufacturer of the goods. The court further addressed the High Court’s reasoning that other marks with similar features existed, stating that for such marks to be relevant, it must be proven that they had acquired a reputation through use in the market.

Holding and Decision:

The Hon’ble Supreme Court held that the appellant’s mark ‘Glucovita’ had acquired a reputation among the general public and that there was a reasonable apprehension of confusion or deception if the respondent’s mark ‘Gluvita’ was to be registered. The court set aside the judgment of the High Court and restored the order of the Deputy Registrar, refusing registration of the respondent’s mark.

Implications and Significance:

This case highlights the importance of the reputation of a trademark in determining the likelihood of confusion or deception. It establishes that the reputation should be associated with the trade mark itself and not necessarily with the manufacturer of the goods. The decision reinforces the protection of established trademarks and the need to prevent confusion or deception in the marketplace. It provides clarity on the interpretation of the Trade Marks Act, 1940, specifically regarding marks that are likely to cause confusion or deception.

The Hon’ble Supreme Court’s decision in this case has several implications. Firstly, it emphasizes the significance of trademark registration and the protection it provides to established brands. By refusing to register the respondent’s mark, the court recognized the appellant’s prior rights and the reputation associated with their mark ‘Glucovita’. This decision serves as a deterrent against potential infringers and reinforces the importance of respecting established trademarks and their enforcement in the market place.

Secondly, the case highlights the importance of considering the likelihood of confusion or deception when evaluating trademark applications. The court recognized that the marks ‘Glucovita’ and ‘Gluvita’ were phonetically and visually similar, and there was a reasonable apprehension that consumers could be misled or confused by the resemblance. This underscores the need to avoid similar marks that can create confusion in the minds of consumers and emphasizes the responsibility of the trademark office in evaluating such applications.

Furthermore, the court’s ruling emphasizes the importance of the reputation associated with a trademark. The appellant was able to demonstrate that their mark ‘Glucovita’ had acquired a reputation among the general public, which contributed to the court’s decision to refuse the registration of the respondent’s mark. This recognition of reputation as a key factor in determining the likelihood of confusion or deception reinforces the value of building a strong brand image and reputation in the marketplace.

Overall, the decision in Corn Products Refining Co. vs Shangrila Food Products Ltd. serves as an important precedent in trademark law in India. It highlights the significance of trademark registration, the need to prevent confusion or deception, and the importance of considering the reputation associated with a trademark. The case reinforces the protection granted to established trademarks and provides guidance for future cases involving similar issues of trademark infringement and registration.

Anil Shete

Author

I am a law graduate with a keen interest in intellectual property rights (IPR). I hold a degree of LL.B from the prestigious Government Law College, Mumbai, and am currently pursuing an LL.M degree from the University of Mumbai, specializing in IP law. I have successfully cleared UGC-NET in History and hold an M.A degree in History from the University of Mumbai.