A) ABSTRACT / HEADNOTE
The Supreme Court of India in Corn Products Refining Co. v. Shangrila Food Products Ltd., 1960 (1) SCR 968, decisively laid down the test of deceptive similarity under Section 8(a) of the Trade Marks Act, 1940. The Court disallowed the registration of the trademark “Gluvita” sought by the respondent in respect of biscuits, due to its phonetic and structural similarity with the already registered mark “Glucovita” held by the appellant for glucose-based food products. The ruling emphasized the principle that trademark protection extends beyond identical goods to include goods having trade connection that might cause confusion. The judgment provided key clarifications regarding phonetic resemblance, reputation of a trademark, and the extent of consumer confusion, marking an important precedent in Indian trademark jurisprudence. It also reiterated the idea that Indian courts must assess marks from the standpoint of the average Indian consumer with imperfect recollection, rather than adopting Western pronunciation standards. The decision remains a foundational case in the intersection of deceptive similarity, trade connection, and consumer confusion in trademark law.
Keywords: Trademark similarity, deceptive similarity, consumer confusion, phonetic resemblance, trade connection, Trade Marks Act 1940, reputation of mark
B) CASE DETAILS
i) Title: Corn Products Refining Co. v. Shangrila Food Products Ltd.
ii) Case Number: Civil Appeal No. 319 of 1955
iii) Judgement Date: 8 October 1959
iv) Court: Supreme Court of India
v) Quorum: Hon’ble Justices S.K. Das, J.L. Kapur, and A.K. Sarkar
vi) Author: Justice A.K. Sarkar
vii) Citation: 1960 (1) SCR 968
viii) Legal Provisions Involved:
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Section 8(a) of the Trade Marks Act, 1940
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Section 10(1) of the Trade Marks Act, 1940
ix) Judgments overruled by the Case: None
x) Case is Related to which Law Subjects: Intellectual Property Law (Trade Mark Law)
C) INTRODUCTION AND BACKGROUND OF JUDGEMENT
The case emerges from a dispute over trademark registration under the Trade Marks Act, 1940. The appellant, Corn Products Refining Co., a New Jersey-based corporation, had registered the mark “Glucovita” for its glucose-based product, a food substance widely sold in India. The respondent, Shangrila Food Products Ltd., sought registration of the mark “Gluvita” for biscuits. The appellant opposed the registration under Sections 8(a) and 10(1) of the Act, claiming the mark was deceptively similar to its own and likely to confuse or deceive consumers.
This case traversed the corridors of the Trademark Registrar’s office, the Bombay High Court at both original and appellate levels, and finally the Supreme Court. The jurisprudential debate centered on whether phonetic and visual similarity could trigger confusion even when the goods were not of identical descriptions. The ruling crystallized the Indian judiciary’s approach toward deceptively similar trademarks, especially in cases involving consumer-facing consumables.
D) FACTS OF THE CASE
The appellant, Corn Products Refining Co., had registered the trademark “Glucovita” in Class 30 on August 31, 1942, for “Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient in food; glucose for food.” Additionally, it had registered the same mark in Class 5 for infant and invalid foods.
On November 5, 1949, the respondent applied to register “Gluvita” for biscuits under Class 30. This application was initially allowed to be advertised for registration, limited only to biscuits. The appellant opposed the registration, arguing that “Gluvita” was visually and phonetically similar to “Glucovita”, thereby likely to deceive or confuse the public.
The Deputy Registrar rejected the opposition, holding that the two goods biscuits and glucose were not of the same description, and the marks were not visually or phonetically similar. The Bombay High Court at first instance (Desai J.) reversed this, ruling in favor of the appellant. On appeal, however, the Appellate Bench (Chagla C.J. and Shah J.) restored the Registrar’s decision. The matter finally reached the Supreme Court through an appeal by the appellant.
E) LEGAL ISSUES RAISED
i) Whether the trademark “Gluvita” is deceptively similar to “Glucovita” within the meaning of Section 8(a) of the Trade Marks Act, 1940?
ii) Whether consumer confusion can arise from phonetic and structural similarity even when the goods are not of the same description?
iii) Whether the presence of a common prefix or suffix in other registered trademarks diminishes the claim of deceptive similarity?
F) PETITIONER/ APPELLANT’S ARGUMENTS
i) The counsels for the Appellant submitted that:
The mark “Glucovita” had acquired significant reputation among the general Indian public due to widespread sale, including in small consumer-friendly packaging, and aggressive marketing in popular journals. This indicated public recognition of the mark.
They contended that “Gluvita” and “Glucovita” were structurally and phonetically similar. The only distinction was the syllable “co” which was insufficient to eliminate the risk of deception. The marks, taken as a whole, conveyed similar ideas of “glucose” and “vitality,” indicating a shared commercial impression.
They emphasized that while the goods were not identical, a trade connection existed. Glucose is used in the preparation of biscuits. Thus, the average consumer could presume that the biscuits originated from the same source as the glucose powder, leading to consumer confusion.
They challenged the appellate bench’s reliance on the existence of other marks with “gluco” or “vita”, arguing that mere presence in the register did not establish usage or reputation, as held in Beck, Kollar and Co. (England) Ltd., 64 RPC 76, and Harrods Ltd., 52 RPC 65.
They argued that English decisions using British pronunciation standards had limited applicability in India. Indian consumers pronounce English words differently, making phonetic similarity more pronounced.
G) RESPONDENT’S ARGUMENTS
i) The counsels for Respondent submitted that:
The goods were not of the same description biscuits and glucose-based powder serve different purposes. Therefore, there was no question of confusion under Section 10(1) of the Act.
They claimed the term “Gluvita” was a coined word, unrelated to the appellant’s brand. Further, they stated there was no evidence proving that the general public associated “Glucovita” with a single source or producer.
They contended that several trademarks existed with the prefix or suffix “gluco” or “vita”, and hence, the appellant could not claim a monopoly over these common elements.
They denied any trade connection and suggested that even if glucose is used in biscuits, it is used in liquid form, whereas the appellant sold glucose in powdered form.
H) RELATED LEGAL PROVISIONS
i) Section 8(a), Trade Marks Act, 1940 – Refuses registration of marks likely to deceive or cause confusion.
ii) Section 10(1), Trade Marks Act, 1940 – Pertains to registration of similar marks in respect of same or similar goods.
H) JUDGEMENT
a. RATIO DECIDENDI
i) The Supreme Court held that “Gluvita” was deceptively similar to “Glucovita”, both phonetically and structurally. It ruled that minor differences like the syllable “co” did not neutralize the similarity.
The Court emphasized that the test of deceptive similarity must be judged from the perspective of an average Indian consumer with imperfect recollection. It concluded that the phonetic and idea-based similarity was likely to cause confusion.
The Court accepted that the “Glucovita” mark had acquired a reputation in the Indian market through extensive sales and advertisements, and that reputation among the public not just the trade is sufficient under law.
The Court recognized that glucose was used in the manufacture of biscuits, creating a trade connection between the two goods. Thus, even dissimilar goods could give rise to confusion if they were closely associated in trade practice.
b. OBITER DICTA
i) The Court noted that Indian pronunciation differs from English standards, and therefore, Indian courts must apply local phonetic considerations in assessing similarity.
ii) It also emphasized that the presence of similar marks in the register does not constitute evidence of public familiarity or usage unless such use is proven by evidence.
c. GUIDELINES
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Phonetic and structural similarities must be assessed from the view of an average consumer with imperfect recollection.
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Minor additions or syllables do not negate similarity when the overall impression remains confusingly similar.
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Trade connection, even among dissimilar goods, can be a basis to refuse registration if there exists a likelihood of confusion.
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Reputation of a mark need not be linked to knowledge of the manufacturer’s identity. It suffices if the public recognizes the mark and associates it with specific goods.
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Registration records alone are not evidence of usage or reputation.
I) CONCLUSION & COMMENTS
The decision in Corn Products v. Shangrila reshaped Indian trademark jurisprudence by setting robust standards for determining deceptive similarity. It extended the ambit of protection to cover situations where goods were not identical but had trade connections that could confuse buyers. The Court’s nuanced approach to phonetic similarity, reputation of marks, and disregard for registration without usage evidence remains a benchmark for Indian courts. It also steered Indian trademark law away from anglicized phonetic assumptions, aligning it with local consumer behavior. This decision is a crucial reference for litigants seeking injunctions or opposing trademark registrations based on confusing similarity.
J) REFERENCES
a. Important Cases Referred
- In re: Beck, Kollar and Company (England) Ltd., 64 R.P.C. 76
- In re: Harrods Ltd., 52 R.P.C. 65
- Willesden Varnish Co. Ltd. v. Young and Marten Ltd., 39 R.P.C. 285
- In re: Ladislas Jellinek, 63 R.P.C. 59
- Harry Reynolds v. Laffeaty’s Ltd., 1958 R.P.C. 387
- In re: Edward Hack, 59 R.P.C. 91
- Smith Hayden & Co. Ltd. case (1945) 63 R.P.C. 97
b. Important Statutes Referred
- Trade Marks Act, 1940 – Sections 8(a) and 10(1)
- Indian Evidence Act, 1872 (implications regarding usage and burden of proof)
