Hoffmann-La Roche v. Geoffrey Manners: Protovit and Dropovit

Citation & Court

F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., Supreme Court of India (V. Ramaswami and J.C. Shah JJ.), Civil Appeal No. 1330 of 1966, decided 8 September 1969; AIR 1970 SC 2062; (1970) 2 SCR 213; (1969) 2 SCC 716

The Dispute

Roche registered PROTOVIT in 1946 for pharmaceutical preparations and sold multivitamins under it. Geoffrey Manners applied in January 1957 to register DROPOVIT for medicinal and pharmaceutical preparations, and the mark was registered; Roche missed the advertisement and did not oppose. In 1959 Roche applied for rectification, claiming DROPOVIT was deceptively similar and, by amendment, that it was not an invented word but meant 'drop of vitamin'. The Joint Registrar and the Bombay High Court rejected the application; during the High Court appeal Geoffrey Manners restricted its goods to preparations containing principally vitamins. The Supreme Court decided both questions under the Trade and Merchandise Marks Act, 1958.

What the Court Held

• Intention is irrelevant; what counts is the probable effect on ordinary buyers, judged by both look and sound and by comparing the marks as wholes, not by isolating one part.
• The suffix VIT was descriptive and, on the affidavit evidence (including about 57 registered VIT marks), common to the pharmaceutical trade, so attention falls on the uncommon parts DROPO and PROTO, which looked and sounded clearly different.
• For vitamin preparations usually bought on a doctor's prescription and sold only by licensed dealers under the Drugs Rules, 1945, the chance of confusion was further reduced.
• DROPOVIT, though built from common English words, was an invented word because an ordinary English speaker would not read it as 'drop of vitamin' without being told; it could stay on the register.

How to Use This in Your Reply

Applicants facing an examination objection or opposition based on a shared descriptive prefix or suffix (VIT and similar pharmaceutical stems) can cite it to argue that the common, descriptive part should be discounted and the remaining parts compared. It is also used in rectification to defend a coined combination of ordinary words against a 'descriptive' attack, and in hearings to stress whole-mark comparison by sight and sound. The argument carries most weight when backed by evidence that the shared element is actually common in the trade, as the affidavits showed here.

Important Limit

Decided under sections 9, 12 and 56 of the 1958 Act (now sections 9, 11 and 57 of the 1999 Act, which has no Part A/Part B). Cadila Health Care v. Cadila Pharmaceuticals (2001) held that prescription sale alone does not prevent confusion and called for a stricter test for medicines. Commonness here also rested on Roche's own affidavits, not register entries alone.

Judgment Source

Read the judgment. For other cases on the same issue, see trademark case laws in India, by issue.