The case of Kaviraj Pandit Durga Dutt Sharma Vs Navaratna Pharmaceutical Laboratories is a landmark judgment concerning trademark law in India. It highlights the interplay between statutory rights under the Trade Marks Act, 1940, and the common law remedy of passing off. The primary question revolved around whether the appellant’s use of the term "Navaratna" infringed the respondent's registered trademarks. In this case Appellant was the Defendant and Rectification Petitioner against registered Trademark of Respondent while Respondent was Plaintiff and registered proprietor of the mark against which Rectification petition was filed by the Appellant:

Plaintiff/Respondent's Business:
Navaratna Pharmaceutical Laboratories, a firm established in 1926 by Dr. Sarvothama Rao, manufactured Ayurvedic medicinal products. The firm initially operated under the name "Navaratna Pharmacy" before changing it to "Navaratna Pharmaceutical Laboratories" in 1945. Trademark Usage: Since inception, the respondent used the term "Navaratna" to identify its products, establishing its reputation in the market.

Trademark Registration: In 1928, the respondent declared ownership of the "Navaratna" and "Navaratna Pharmacy" marks with the Registrar of Assurances, Calcutta. Under the Cochin Trade Marks Act, 1944, the respondent registered "Navaratna" (January 31, 1947) and "Navaratna Pharmaceutical Laboratories" (February 17, 1948). These marks were further registered with the Trade Marks Registry in Bombay, as permitted under reciprocal recognition laws (Section 82-A of the Trade Marks Act, 1940).

Defendant/Appellant's Business Activities:
Appellant's Business: Kaviraj Pandit Durga Dutt Sharma operated a business manufacturing Ayurvedic pharmaceutical products under the name "Navaratna Kalpa Pharmacy" in Jalandhar, Punjab. Trademark Application: In October 1946, the appellant applied for registration of "Navaratna Kalpa" as a trademark for Ayurvedic preparations. The application was opposed by the respondent, who argued that "Navaratna" was descriptive, lacked distinctiveness, and could not be monopolized. The opposition succeeded, and the registration was refused in 1950.

• Initiation of Proceedings: Following the appellant's refusal of registration, both parties initiated legal actions:
• Respondent's Suit for Infringement and Passing Off: Filed a suit (O.S. No. 233 of 1951) in the District Court, Anjikaimal, seeking:
  • A permanent injunction to restrain the appellant from using "Navaratna" or any similar mark in connection with Ayurvedic products.
  • Protection of their statutory and common law rights.
• Appellant's Application for Rectification: Filed a petition (O.P. No. 19 of 1952) in the High Court of Travancore-Cochin to remove "Navaratna" from the respondent’s registered trademarks, alleging:
  • "Navaratna" was a generic term in Ayurvedic trade and lacked distinctiveness.
• District Court's Judgment: The District Court ruled in favor of the respondent, finding:
• Passing Off: The appellant was not guilty of passing off, as the packaging, get-up, and labels used by both parties were sufficiently distinct to avoid confusion.
• Infringement: The word "Navaratna" alone could not be exclusively claimed as it was generic and descriptive in Ayurvedic terminology. However, "Navaratna Pharmaceutical Laboratories" was deemed a valid trademark due to its long and exclusive use by the respondent since before 1937.
• Relief Granted: The court issued a perpetual injunction against the appellant, limiting it to the use of "Navaratna Pharmaceutical Laboratories."
• Appeal to the High Court: The appellant appealed the District Court's decision (A.S. No. 233 of 1959), arguing that:
• The respondent’s trademark should not have been registered.
• The findings on passing off and infringement were contradictory.
• The respondent should disclaim exclusive rights to "Navaratna."
• Appeal to the Supreme Court: Dissatisfied with the High Court's decision, the appellant sought special leave to appeal before the Supreme Court, raising the following concerns:
• The inconsistency in granting exclusive rights to a descriptive term like "Navaratna."
• The lack of deceptive similarity between "Navaratna Pharmaceutical Laboratories" and "Navaratna Kalpa."
• The failure to order a disclaimer under Section 13 of the Trade Marks Act, 1940.
• Appellant (Defendant) Submission:
• Generic Nature of "Navaratna": Argued that "Navaratna" referred to a class of Ayurvedic medicines and was commonly used in the trade.
• No Deceptive Similarity: Asserted that "Navaratna Kalpa" and its packaging were distinct and did not deceive or confuse consumers.
• Registration Objections: Contended that combining "Navaratna" with descriptive terms like "Pharmaceutical Laboratories" could not confer distinctiveness under Section 6 of the Trade Marks Act, 1940.
• Respondent (Plaintiff) Arguments:
• Prior Use and Acquired Distinctiveness: Highlighted the continuous use of "Navaratna Pharmaceutical Laboratories" since 1926, creating distinctiveness and goodwill.
• Trademark Validity: Argued that under Section 6(3) of the Trade Marks Act, 1940, trademarks in use prior to February 25, 1937, could gain registration despite lacking inherent distinctiveness.
• Deceptive Similarity: Claimed that "Navaratna Kalpa" was visually, phonetically, and conceptually similar, leading to consumer confusion.
• Judgments Referred:
• India Electric Works Ltd. v. Registrar of Trade Marks, (1949) 49 CWN 425: The Supreme Court distinguished this case, emphasizing that the respondent had uncontroverted evidence of market association.
• Attorney-General for the Dominion of Canada v. Attorney-General for Ontario, (1897) AC 199: The Supreme Court relied on Lord Watson’s observations on deceptive similarity.
• Kerly on Trade Marks (8th Edition, p. 407): Stated that marks must be assessed in their entirety.
• Yorkshire Copper Works Ltd. v. Registrar of Trade Marks, (1954) 71 RPC 150: Discussed the distinction between inherent and acquired distinctiveness.
• Distinction between Infringement and Passing Off Action:
• Basis of the Legal Remedy:
• Infringement (Statutory Right): Violation of a registered trademark under Section 21 of the Trade Marks Act, 1940.
• Passing Off (Common Law Right): Protects goodwill from misrepresentation.
• Key Elements to Prove:
• In Infringement: Plaintiff must establish similarity in marks without needing proof of confusion.
• In Passing Off: Plaintiff must prove goodwill, misrepresentation, and damage.
• Role of Packaging, Get-Up, and Other Features:
• In Infringement: Irrelevant; similarity of marks alone determines the case.
• In Passing Off: Critical; differences in get-up may negate liability.
• Deceptive Similarity:
• In Infringement: Based on visual, phonetic, and conceptual resemblance.
• In Passing Off: Evaluates overall presentation to determine deception.
• Independent Nature of Claims:
• Infringement: Statutory right; no need for actual proof of deception.
• Passing Off: Requires proof of actual or potential damage.
• Application in the Case:
• Infringement: The Court found "Navaratna Kalpa" deceptively similar to "Navaratna Pharmaceutical Laboratories," violating statutory rights.
• Passing Off: The claim was rejected due to clear differences in packaging and get-up.

Concluding Note:
The Supreme Court clarified that while passing off and infringement may overlap in certain cases, they remain distinct remedies with different requirements. Passing off focuses on protecting market goodwill and consumer trust, whereas infringement safeguards statutory rights associated with registered trademarks, irrespective of external factors like packaging or labeling.

Case Title: Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories
Date of Order: October 20, 1964
Case No.: Civil Appeals Nos. 522 and 523 of 1962
Neutral Citation: AIR 1965 SC 980
Court: Supreme Court of India
Judges: Justice N. Rajagopala Ayyangar, Chief Justice P.B. Gajendragadkar, and Justice J.C. Shah

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539