Question Of Trademark Confusion Is To Be Decided Through Court’s Eyes: Corn Products Refining Co. Vs. Shangrila Food Products Ltd. Judgment By Supreme Court
Introduction
In the world of trademarks, even a single syllable can make the difference between a mark being registered and being refused. The case of Corn Products Refining Co. vs Shangrila Food Products Ltd, decided by the Supreme Court of India on October 8, 1959, is one of the most enduring and frequently cited judgements in Indian trademark law.
At its heart, this case asked a deceptively simple question: are the words “Glucovita” and “Gluvita” similar enough to confuse the ordinary buyer in the Indian market? The Supreme Court’s answer to this question and the reasoning it employed to reach that answer have shaped how Indian courts approach trademark disputes to this day.
This case arose under the Trade Marks Act, 1940, at a time when India’s trademark law was still finding its feet as an independent nation. The principles laid down in this judgement, about the reputation of a trademark, about how marks must be assessed from the perspective of a person of average intelligence and imperfect recollection, about the trade connection between different categories of goods, and about the limited value of marks merely appearing on a register, remain alive and relevant in courtrooms across India even today.
Factual And Procedural Background
Parties To The Dispute
| Party | Description | Trademark Concerned |
|---|---|---|
| Corn Products Refining Co. (Appellant) | Corporation incorporated under the laws of the State of New Jersey, USA | “Glucovita” |
| Shangrila Food Products Ltd. (Respondent) | Manufacturer of biscuits | “Gluvita” |
Registration Of “Glucovita”
The appellant, Corn Products Refining Co., was a corporation incorporated under the laws of the State of New Jersey in the United States of America.
On August 31, 1942, it had registered the trademark “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.”
On the same date, the same mark was also registered in Class 5 in respect of “infants’ and invalids’ foods”.
The mark “Glucovita” had thus been on the Indian trademark register for a considerable number of years and had acquired, as events revealed, a significant reputation in the Indian market.
Application For Registration Of “Gluvita”
The respondent, Shangrila Food Products Ltd., was a manufacturer of biscuits.
On November 5, 1949, it applied for the registration of the trademark “Gluvita” in respect of goods in Class 30.
The Registrar of Trade Marks directed that the application be advertised before acceptance, subject to the respondent agreeing to limit the registration to biscuits only, which were one of the several categories of goods within Class 30.
Grounds Of Opposition
The appellant came forward to oppose this application on two grounds:
- Section 8(a) of the Trade Marks Act, 1940 – which allows refusal of a mark that is likely to deceive or cause confusion.
- Section 10(1) of the Act – which deals with marks that are identical or similar to already registered marks used on the same or similar goods.
Both parties filed affidavits in support of their respective positions.
Decision Of The Deputy Registrar Of Trade Marks
The Deputy Registrar of Trade Marks ruled in favour of the respondent.
Findings On The Nature Of Goods
He held that biscuits in Class 30 were not goods of the same description as glucose powder mixed with vitamins, even though both fell within Class 30.
Findings On Similarity Of Marks
On the question of phonetic and visual similarity, he held that the words “Glucovita” and “Gluvita” were not sufficiently similar to cause confusion, relying in particular on the presence of the syllable “co” in the appellant’s mark, which he felt was an emphatic characteristic that was unlikely to be overlooked.
Applying the test set out in what he called the “Ovax” case, referring to In re: an application by Smith Hayden & Coy. Ld., 63 R.P.C. 97, he concluded that the registration could not be refused under Section 8(a).
Appeal Before Bombay High Court – Single Judge
Aggrieved by this order, the appellant appealed to the High Court at Bombay.
The appeal was heard at first instance by Desai, J., exercising the original jurisdiction of that court.
Findings Of Desai, J.
- Did not press the issue of whether the goods were of the same description.
- Agreed that Section 10(1) did not apply.
- Disagreed with the deputy registrar’s assessment regarding the similarity of the marks.
- Held that “Glucovita” and “Gluvita” were sufficiently similar to cause deception and confusion.
Desai, J., held that the marks “Glucovita” and “Gluvita” were sufficiently similar as to be reasonably likely to cause deception and confusion.
He set aside the order of the deputy registrar and held that registration of the respondent’s mark “Gluvita” must be refused under Section 8(a) of the Act.
Appeal Before The Division Bench
The respondent then appealed from the judgement of Desai, J., to a Division Bench of the same High Court, which was heard by Chagla, C.J., and Shah, J.
Grounds For Reversal
The Division Bench reversed the decision of Desai, J., on two grounds.
- It held that the appellant’s trademark had not acquired a reputation among the general public, but only among tradespeople, who were discerning enough not to be confused.
- It found that there existed in the market a series of trademarks that used the prefixes or suffixes “Gluco” or “Vita”, and that this made it impossible to say that those elements were exclusively associated with the appellant’s products.
Division Bench Conclusion
On both these grounds, the Division Bench concluded that there was no likelihood of confusion or deception, set aside the order of Desai, J., and restored the order of the Deputy Registrar.
Matter Before The Supreme Court Of India
It was against this judgement of the Division Bench that the appellant came before the Supreme Court of India.
Key Issues Before The Supreme Court
- Whether the trademark “Gluvita” was deceptively similar to the registered trademark “Glucovita”.
- Whether the use of the respondent’s mark was likely to deceive or cause confusion among consumers.
- Whether the reputation acquired by “Glucovita” in the Indian market was sufficient to prevent registration of “Gluvita”.
- Whether the existence of other marks containing the words “Gluco” or “Vita” diminished the appellant’s claim.
- Whether registration should be refused under Section 8(a) of the Trade Marks Act, 1940.
The Dispute
The dispute, in its essence, revolved around three distinct but interconnected questions.
- Whether the trademark “Glucovita” had acquired a sufficient reputation among the general buying public in India, not merely among traders and businesspersons.
- Whether the marks “Glucovita” and “Gluvita” were so similar as to be likely to cause confusion or deception in the minds of ordinary buyers.
- Whether the presence of several other marks in the register containing the words “Gluco” or “Vita” as a prefix or suffix had any bearing on the case and whether that fact helped the respondent’s case for registration.
The stakes of this dispute went beyond the two competing companies. A decision in favour of the respondent would allow a mark closely resembling a well-known brand to enter the market, potentially causing ordinary buyers to believe that “Gluvita” biscuits were made with “Glucovita” glucose or that they originated from the same source. A decision in favour of the appellant would reinforce the protection that trademark law offers to marks that have built up goodwill and public recognition over years of use.
Reasoning And Analysis Of The Judge
On The Question Of Public Reputation
The Division Bench of the High Court had held that the affidavits filed by the appellant used the phrase “Glucovita is a well-known mark in the trade” and had interpreted the words “in the trade” as referring only to tradespeople, not to the general public. The Supreme Court rejected this narrow interpretation. It observed that the expression “in the trade” could equally refer to the public and that interpreting it to mean only traders was an unduly strict reading.
Beyond this, the Supreme Court pointed to other concrete evidence on the record. The appellant had categorically stated in its opposition that its mark had acquired a reputation among the Indian buying public, and this was not specifically denied in the respondent’s counter-statement.
The goods under the mark “Glucovita” were sold in small containers of one pound and four ounces’ capacity. The Supreme Court reasoned that the small size of these containers was itself indicative of retail sale to the general public, because if the sales had been to tradespeople for industrial purposes, they would have been made in bulk or in much larger containers.
Furthermore, the appellant had spent considerable amounts on advertising its mark in popular journals, which pointed to a large sale to the general public rather than a restricted trade sale.
Evidence Supporting Public Recognition
Most tellingly, the Court relied on the affidavits filed by the respondent itself.
| Evidence | Observation of the Supreme Court |
|---|---|
| Affidavit of K.M. Jamal, partner of Pawar and Co. | Customers came to the firm to buy both “Gluvita” and “Glucovita” products. |
| Eight additional affidavits filed by the respondent | Contained similar statements showing public recognition of the mark. |
The Supreme Court observed that this evidence coming from the respondent’s own witnesses made it perfectly clear that “Glucovita” had acquired a reputation among the general buying public.
The Court also noted that the respondent’s own grounds of appeal against the judgement of Desai, J., did not dispute the reputation of the appellant’s mark and in fact assumed its existence.
Meaning Of Reputation In Trademark Law
The division bench had also made what the Supreme Court called a “curious error” in its understanding of what reputation in a trademark means.
The Division Bench had said that the reputation of a commodity is established only when consumers want the commodity manufactured by a particular manufacturer specifically and not any commodity of that type.
The Supreme Court firmly disagreed with this view.
It held that the reputation relevant in trademark law attaches to the trademark itself, not to the manufacturer. What matters is that the public associates the trademark with certain goods.
A trademark can have a well-established reputation even if the buyers do not know who the manufacturer of the goods is.
This clarification was important because it correctly directed attention to the mark as the identifier of goods, not the maker’s identity.
Key Findings On Public Reputation
- The phrase “in the trade” was not limited to traders and could include the general public.
- The appellant’s claim of reputation among Indian consumers was not specifically denied.
- Small retail packaging indicated sales directed to ordinary consumers.
- Extensive advertising in popular journals supported widespread public recognition.
- The respondent’s own affidavits confirmed that customers recognised and purchased “Glucovita” products.
- Trademark reputation attaches to the mark itself rather than to the identity of the manufacturer.
On the Similarity of the Marks
The deputy registrar had found the two marks dissimilar primarily because the syllable “co” in “Glucovita” was, in his view, an emphatic characteristic that was unlikely to be slurred over or overlooked. The Division Bench of the High Court had not expressed any view on this question since it decided the case on other grounds. The court held that the question of trademark confusion is to be decided through the court’s eyes.
Supreme Court Approach to Trademark Confusion
The Supreme Court sided with the view taken by Desai, J., and departed from the approach of the Deputy Registrar. It emphasised that the question of whether two marks are likely to cause confusion is fundamentally a question of first impression, to be decided by the court itself, and not a question of technical grammatical analysis.
Apart from the syllable “co”, the two marks “Glucovita” and “Gluvita” were completely identical. The court observed that for the mass of the Indian population, these were foreign English words, and the average Indian buyer could not reasonably be expected to pick out and emphasise the syllable “co” so clearly as to always distinguish one mark from the other.
It is well established in trademark law that marks must be considered as a whole, and when so considered, the Court was of the view that the two marks were indeed similar.
Idea Conveyed by the Marks
The court also applied the test of the “idea” conveyed by the marks, relying on the “Aquamatic” case — Harry Reynolds v. Laffeaty’s Ld (1958) R.P.C. 387, a recent English decision at that time.
It observed that both “Glucovita” and “Gluvita” conveyed the same idea, namely, the idea of glucose and the life-giving properties of vitamins. When the same idea is conveyed by two marks, this is a strong pointer towards similarity and the likelihood of confusion.
The appropriate standard for testing confusion was stated to be that of a person of average intelligence and imperfect recollection. Such a person, confronted with both marks in the marketplace, would be likely to be confused by the following:
- The overall structural similarity;
- The phonetic resemblance; and
- The common underlying idea of the two marks.
Comparison of “Glucovita” and “Gluvita”
| Factor | Supreme Court’s Observation |
|---|---|
| Visual Similarity | Marks were substantially similar when viewed as a whole. |
| Phonetic Similarity | Pronunciation was likely to cause confusion among average consumers. |
| Conceptual Similarity | Both conveyed the idea of glucose and vitamins. |
| Consumer Standard | Average intelligence and imperfect recollection tests were applied. |
On the Question of Trade Connection Between Different Goods
The respondent argued that even if the marks were similar, there could be no risk of confusion because the goods were different — the appellant sold glucose powder, while the respondent sold biscuits. The Supreme Court rejected this argument as well.
Application of Section 8(a)
The Court acknowledged that for the purposes of Section 10(1) of the Act, it must be accepted that the goods were not of the same description, since all authorities below had so held and the appellant itself had conceded this position before the Supreme Court.
But Section 8(a), which was the operative provision in this case, does not confine itself to goods of the same description. Section 8(a) focuses on the likelihood of deception or confusion in a broader sense.
Evidence of Trade Connection
The Court found that there was evidence of a trade connection between glucose and biscuits. Glucose is used in the manufacture of biscuits.
The respondent’s own director had told the appellant’s manager that the name “Gluvita” was adopted to indicate that glucose was used in the manufacture of the respondent’s biscuits. This statement, which was made on behalf of the appellant, was not denied by the respondent.
The appellant had also stated that it received an inquiry from a tradesman who asked whether the appellant manufactured biscuits under its “Glucovita” mark, clearly indicating that the tradesman associated the maker of “Glucovita” glucose with potential biscuit manufacture.
An average buyer would therefore be quite likely to think that “Gluvita” biscuits were made with the appellant’s “Glucovita” glucose.
English Decisions Supporting Trade Connection
The Court reinforced this analysis by referring to two important English decisions.
| Case | Goods Involved | Principle Applied |
|---|---|---|
| In re: an application by Edward Hack (58 R.P.C. 91) – “Black Magic” Case | Chocolates and laxatives | Trade connections existed because laxatives were often made with chocolate coatings. |
| In re: an application by Ladislas Jellinek (63 R.P.C. 59) – “Panda” Case | Shoes and shoe polishes | Trade connection is considered because shoe polish is used for shoes. |
Powder Glucose Versus Liquid Glucose Argument
The respondent tried to argue that biscuits are made using liquid glucose while the appellant’s mark related to glucose powder and that this distinction eliminated any trade connection.
The Supreme Court dismissed this argument by pointing out that there was no evidence that the average buyer was aware of or cared about the distinction between powder glucose and liquid glucose. The ordinary buyer would not be expected to know the technical details of how biscuits are manufactured.
On the Question of the “Series” of Marks
The Division Bench had relied on the principle from Kerly’s Law of Trade Marks, 7th Edition, p. 624, to the effect that where there are several marks, registered or unregistered, that share a common feature or syllable, this tends to assist a new applicant whose mark also contains that common element.
The Division Bench found a large number of marks on the register containing “Gluco” or “Vita” as a prefix or suffix and concluded on this basis that those elements could not be exclusively associated with the appellant.
Supreme Court Analysis of the Series Principle
The Supreme Court carefully examined the source of this legal principle, tracing it to In re: an application by Beck, Kollar and Company (England) Limited, 64 R.P.C. 76.
Reading from the judgement in that case at pages 82 and 83, the Supreme Court extracted the critical distinction that the division bench had missed.
The principle from Beck, Kollar & Co. makes it clear that the “series” argument — i.e., the argument that a common feature in many marks weakens any one trader’s claim to exclusivity in that feature — only applies in opposition proceedings if the series of marks is shown by evidence to be in actual use in the market.
The existence of such marks on the register is not sufficient. Registration does not prove use. A mark can be registered without ever being used in the market, and it is impermissible to draw any inference of use merely from the presence of a mark on the register.
Harrods Principle and Market Use Requirement
The Supreme Court also relied on In re: Harrods’ application, 52 R.P.C. 65, which was mentioned in the Beck, Kollar case, to restate the well-recognised principle that where two marks contain a common element that also appears in many other marks in use in the same market, buyers tend to pay closer attention to the other features and distinguish marks by those other features.
But this principle, as the Harrods case itself stated, requires that the marks containing the common element be in fairly extensive use in the market in which the competing marks are being used.
Absence of Evidence of Market Use
In the present case, the respondent had led no evidence of the actual use in the market of marks containing “Gluco” or “Vita”.
The Deputy Registrar had merely looked at the register and noted the presence of a large number of such marks.
The Supreme Court held, relying also on Kerly at page 507 and Willesden Varnish Co. Ltd v. Young & Marten Ltd, 39 R.P.C. 285, that the presence of marks on the register does not prove their use and that no inference of use can be drawn from registration alone.
The appellant itself had mentioned in one of its affidavits that biscuits bearing marks like “Glucose Biscuits”, “Gluco Biscuits”, and “Glucoa Lactine Biscuits” were in the market, but the Supreme Court held that these were ordinary dictionary words in which no trader could claim proprietary rights, and they did not constitute a series of marks sharing a distinctive common element.
The “series” argument, therefore, failed entirely on the facts.
Key Takeaways from the Supreme Court Ruling
- Trademark similarity must be judged from the perspective of the court and the average consumer, not through technical grammatical analysis.
- Marks must be evaluated as a whole rather than by isolating individual syllables.
- Similarity in the idea conveyed by competing marks is a strong indicator of likely confusion.
- Section 8(a) extends beyond goods of the same description and focuses on the overall likelihood of deception or confusion.
- Trade connections between different goods can establish a likelihood of confusion even when the products are not identical.
- The existence of marks on the register does not prove market use.
- A “series of marks” defence requires evidence of substantial and actual market usage.
- No inference of use can be drawn merely from registration of a trademark.
The Final Decision of the Court
Having found against the respondent on all three grounds, the Supreme Court allowed the appeal. It set aside the order of the Division Bench of the Bombay High Court and restored the order of Desai, J. The registration of the trademark “Gluvita” in favour of the respondent, Shangrila Food Products Ltd., was refused under Section 8(a) of the Trade Marks Act, 1940. The appellant was also awarded costs before the appellate bench of the High Court as well as before the Supreme Court.
Points of Law Settled in the Case
This judgement settled and reinforced several important propositions of law that continue to be cited in trademark matters.
1. Reputation Attaches to the Trademark
The first and most fundamental point is about the correct approach to assessing the reputation of a trademark. The Court held that reputation in trademark law attaches to the mark, not to the manufacturer. What must be established is that the public associates the mark with certain goods. A buyer’s knowledge of who made the goods is irrelevant to this inquiry.
2. Test for Trademark Confusion
The second point is that the question of whether two marks are likely to cause confusion must be assessed from the standpoint of a person of average intelligence and imperfect recollection. The question of trademark confusion is to be decided through the court’s eyes. This standard prevents the law from setting an artificially high bar by assuming that all buyers will carefully scrutinise and compare marks side by side.
3. Phonetic Similarity in the Indian Context
The third point is that English precedents on phonetic similarity must be applied with caution in the Indian context. The Court acknowledged that the way words are pronounced in England may not reflect the way they are pronounced by the mass of Indian buyers, for whom these English words are essentially foreign. The test of phonetic similarity must be applied as it would work in the actual market where the goods are sold.
4. Marks Must Be Considered as a Whole
The fourth point is that marks must be considered as a whole, not broken down syllable by syllable. The presence of a distinguishing syllable like “co” in one mark does not automatically prevent confusion if, when both marks are looked at as a whole, they remain similar in overall sound, structure, and idea.
5. Trade Connection Between Goods of Different Descriptions
The fifth point is about the concept of trade connections between goods of different descriptions. Even when goods are not of the same description and Section 10(1) does not apply, trademark protection can still be invoked under Section 8(a) if there is a trade connection between the goods that would lead the average buyer to assume a connection between the sources of those goods.
6. Evidentiary Value of Marks on the Trademark Register
The sixth and perhaps most practically significant point is about the evidentiary value of marks on the trademark register. The presence of a mark on the register does not prove that it is being used in the market. In opposition proceedings, the benefit of the “series” argument—which allows an applicant to say that the common feature in its mark is shared by many marks in the market and is therefore not exclusively associated with the opponent—can only be invoked if actual use in the market of those other marks is proved by evidence. Registration alone is insufficient for this purpose.
Key Legal Principles at a Glance
| Legal Principle | Position Established by the Supreme Court |
|---|---|
| Trademark Reputation | Reputation attaches to the mark, not the manufacturer. |
| Likelihood of Confusion | Judged from the perspective of a person of average intelligence and imperfect recollection. |
| Phonetic Similarity | Must be assessed in the Indian market context. |
| Comparison of Marks | Marks should be viewed as a whole rather than dissected into syllables. |
| Trade Connection | Protection may extend to goods of different descriptions where a trade connection exists. |
| Trademark Register Evidence | Registration alone does not establish market use. |
Case Details
| Case Title | Corn Products Refining Co. vs. Shangrila Food Products Ltd. |
|---|---|
| Date of Order | October 8, 1959 |
| Citation | AIR 1960 SC 142; [1960] 1 SCR 968 |
| Name of Court | Supreme Court of India |
| Name of Honourable Judges | A.K. Sarkar, J.; J.L. Kapur, J.; S.K. Das, J. |
Important Takeaways
- Trademark reputation is linked to the mark itself and not the identity of the manufacturer.
- Confusion is assessed from the perspective of an average consumer with imperfect recollection.
- Phonetic similarity must be evaluated according to Indian market realities.
- Marks should be compared as a whole rather than through isolated syllables.
- Trade connections can extend trademark protection beyond goods of the same description.
- Proof of actual market use is necessary when relying on the “series of marks” argument.
