F. Hoffman-La Roche & Co Ltd. vs. Geoffrey Manners & Co Pvt.
(1969) 2 SCC 716
Coram: Division Bench comprising of Justice V Ramaswami and Justice J.C Shah.
Forum: Hon’ble Supreme Court of India
Case No.: Civil Appeal No. 1330 Of 1966
Date of Decision: September 8, 1969

Note: This case pertains to the Act of 1958, it is still widely regarded as a landmark case.

Facts:

  • F. Hoffmann-La Roche & Co. Ltd (Appellant) a Swiss limited liability company, engaged in manufacturing and selling pharmaceutical and chemical products.
  • On December 2, 1946, the Appellant applied to register the "PROTOVIT" trademark, which was granted and registered in Class V for "Pharmaceutical preparations for human and veterinary use, as well as infants’ and invalids’ foods." Since 1951, the Appellant had sold multi-vitamin products in liquid and tablet forms under this mark.
  • Geoffrey Manners & Co. Pvt. (Respondent) incorporated in India, was involved in the manufacture and sale of pharmaceutical products.
  • On January 28, 1957, the Respondent applied to register "DROPOVIT" for medicinal and pharmaceutical products, which was approved unnoticed by the Appellant, leading to no opposition to the registration.
  • On January 21, 1959, the Appellant requested to amend the Register to remove the Respondent's trademark and argued that it closely resembled their mark and could potentially deceive or confuse.
  • Registrar approved, but the Respondent opposed the Appellant's amended application the Joint Registrar rejected rectification, deeming "DROPOVIT" distinct from "PROTOVIT" on August 5, 1961.
  • This appeal arose from the judgment of the Division Bench of the Bombay High Court.

Background:

  • Appeals by the Appellant were dismissed first by Justice Tarkunde in the Bombay High Court on December 7, 1962, and then by a Division Bench under Letters Patent on August 17, 1964.
  • Both the Single Judge and the Division Bench had decided in favour of the Respondent. The Appellant had then appealed to the Hon'ble Supreme Court.

Main issue:

  1. Whether the word ’DROPOVIT’ was deceptively similar to the word ’PROTOVIT’ ?
  2. Whether the 'DROPOVIT' was an invented or descriptive word? (Page 1)