Madras High Court
G.T.C. Industries Ltd., Bombay vs I.T.C. Limited, Madras on 5 February, 1991
Equivalent citations: AIR1992MAD253
ORDER Abdul, Hadi, J.
1. These two appeals, O.S.A. Nos. 134 of 1990 and 135 of 1990 by the defendant, (who is common in both suits) arise out of the common order dated 24-7-1990 in two interlocutory applications in two different suits. The suits are respectively C. S. No. 478 of 1990 and C. S. No. 477 of 1990 and the respective applications are Application No. 2557 of 1990 and Application No. 2554 of 1990. For convenience sake parties are referred to by their ranks in the suit.
Both the defendant-appellant and the plaintiff respondent are well established cigarette manufacturers and both these suits are trade mark actions for infringement and passing off. While C. S. No. 477 of 1990 is with reference to plain cigarettes, C. S. No. 478 of 1990 is with reference to filter cigarettes. The infringement and passing off, alleged in both the suits are with reference to what the plaintiff calls as a "slightly" modified forms of the plaintiff's registered trade mark T. M. No. 110438 dated 21-5-1945 in relation to the plaintiff's Wills Fold Flake cigarettes as against the respective trade marks which the defendant recently introduced in respect of its Gold on Gold Flake cigarettes. No doubt, the above said plaintiffs registered trade mark itself is a modified version of its preceding registered trade mark bearing No. 7678 dated 11-11-1942. Though the prayer in the above said applications is in relation to both the said registered marks, the argument before us centered round only in relation to the above said modified trade mark, bearing No. 110438 dated 21-5-1945, and, therefore, our reference to plaintiff's registered trade mark hereinafter relates only to the said mark of 1945 and its two respective 'slightly' modified forms.
2. Both the above said applications seek for interim injunction restraining the defendant from using its relevant impugned trade marks. The registration of the above said plaintiffs trade mark was admittedly without imitation of colour and under S. 10(2) of the Trade and Merchandise Marks Act, 1948 (hereinafter referred to as 'the Act'), it shall be therefore deemed to be registered for all colours. Application No. 2554 of 1990 prays for interim injunction restraining the defendant from using the impugned trade mark shown in Annexure 'D' appended to the said applications, namely, the trade mark with rounded design, the interesting rectangle bearing the word 'Gold Flake', the three stars, the colour scheme of yellow back ground and rectangular border lines in red in tarnished gold or any other mark deceptively similar to the plaintiff's registered trade mark or to pass off its goods as and for the goods of the plaintiff, pending disposal of the said suit. Application No. 2557 of 1990 is for an interim injunction restraining the defendant from using the impugned trade mark shown in Annexure 'D' appended to the said application, namely the trade mark with the rounded design, the words 'Gold Flake' in rectangular shape intersecting the rounded three stars, the colour scheme of wide red band on top and yellow below or any other mark deceptively similar to the plaintiff's registered trade marie or to pass off its goods as and for the goods of the plaintiff, pending disposal of the said suit.
3. According to the affidavits in both the applications, the most distinctive features of the plaintiff's trade mark is the design thereof, the roundel design with the intersecting rectangle with the words 'Gold Flake' written across, the presence of three stars, the colour scheme and the rectangular border lines in strips of red and tarnished gold. In application No. 2554 of 1990, the specific allegations are that in February, 1990, plaintiff came to know that the defendant has been selling and offering for sale PLAIN cigarettes in packets bearing a trade mark which is colourable imitation of and deceptively similar to the plaintiffs registered trade mark, that the defendant has copied the roundel design, including the intersecting rectangle, which is a distinctive essential, inseparable and integral part of the plaintiff's trade mark, that the defendant has adopted the plaintiffs style of printing the words 'Gold Flake' inside the rectangular design, that the defendant has printed the words 'Gold Flake' boldly and prominently in the same manner as in the plaintiff's registered trade mark, that the defendant has also copied the other prominent features of the plaintiff's design such as three stars, the colour scheme and rectangular border lines in red and tarnished gold and that all these have been done with intent and object that the impugned trade mark be mistaken for and confused with the plaintiffs well known gold flake trade mark, so that the purchasers of cigarettes will buy the defendant's cigarettes under the impression and belief that they are the cigarettes brought about by the plaintiff.
4. In Application No. 2557 of 1990, the specific allegation is that on or about 8th day of June, 1990, the plaintiff came to know that the defendant has been selling in South India regular size Filter cigarettes in packets bearing the trade mark, which is colourable imitation of and deceptively similar to and in infringement of the plaintiff's registered Gold Flake trade mark and amounts to passing off of the defendant's regular size filter cigarettes for and as the plaintiff's regular size filter cigarettes. Further allegations similar to the allegations in the above referred to Application No. 2554 of 1990, were also made in Application No. 2557 of 1990.
5. Admittedly, the defendant is also marketing its other cigarettes under several brands like Panama, Flair and Chancellor. The defendant has also been admittedly using the name Gold Flake in respect of its cigarettes for a number of years, the name 'Gold Flake' being one admittedly common to the trade. In fact the defendant had registered a trade mark for its Gold Flake plain cigarettes and with slight modifications, the defendant had been selling its Gold Flake cigarettes under that mark, till about February 1990, when, as stated above, it switched on to the use of the offending mark in C. S. No. 477 of 1990.
6. It is not in dispute that the defendant introduced Gold Flake Filter cigarettes with a design copying some of the features of the plaintiffs trade mark originally in the year 1979; the rounded and intersecting rectangle were copied, but the colour scheme was not copied then. There was white back ground in the said defendant's mark. The stars and the border rectnagular strips were also not featured. According to the plaintiff, there was objection by it and so, the defendant withdrew the said offending mark, but introduced another mark. That mark had some changes in design in the lower half of the rounded and that was replaced by four leaves and some other modifications wete made. Inasmuch as that changed version was an infringement of the plaintiff's trade mark, according to the plaintiff, the suit C. S. No. 988 of 1979 was filed by the plaintiff against the defendant in the High Court of Calcutta, seeking perpetual injunction, restraining the defendant from using the said infringing mark relating to filter cigarettes. The defendant, on the other hand, filed Suit No. 979 of 1979 in the same High Court against the plaintiff to restrain it from using the words "Every genuine Gold Flake cigarette bears the name I. D. & H. O. Wills", and an ex parte injunction was obtained. But, later, on the appearance of the plaintiff and filing an application, the injunction was vacated within four days. Both the suits are pending in the Calcutta High Court. According to the plaintiff, from about, 1980, the defendant discontinued the use of the offending trade mark involved in the plaintiffs suit No. 988 of 1979 in the Calcutta High Court and afterwards, in the month of June, 1990, as stated above, the defendant began to sell regular size filter cigarettes in packets bearing a trade mark, which is colourable imitation and deceptively similar to and an infringement of the plaintiff's registered Gold Flake trade mark and amounting to passing off of the defendant's regular size filter cigarettes for and as the plaintiffs regular size filter size cigarettes.
7. The learned trial Judge has held in both the applications that the defendant has committed infringement of the trade mark of the plaintiff and is passing off the cigarettes manufactured by the defendant as that of the plaintiffs and that the plaintiff have established prima facie case for an order of injunction pending disposal of the suit. The learned Judge has also held that if the defendant is allowed to manufacture and sell the cigarettes with a direction to account, considerable damage would be suffered by the plaintiff and such damage could not be subsequently compensated. The learned Judge has also held that the suits pending in the Calcutta High Court cannot be said to be relating to the facts in the present two cases and that the rectification proceeding said to have been filed by the defendant in the plaintiff's suit therein, namley C. S. No. 988 of 1979 "on the ground that the plaintiff's registered trade mark is not valid, it being not in use for five years,", cannot be a bar to the present claim by the plaintiff in these applications. Aggrieved by the injunction granted by the learned Judge, these appeals have been filed by the defendant.
8. The learned counsel for the appellant in both these appeals put forth the following submission:--
(1) The learned trial Judge, in deciding the alleged question of deceptive similarity, has failed to eliminate certain features, in the plaintiffs alleged respective offended trade marks in both the suits, common to the trade and are known as publici juris. The said features common to the trade according to him arc the term 'Gold Flake', the colour yellow and red used, etc. On this submissions, the learned counsel relied on the following authorities;--
(1) Passage in paragraph 491 at page 224 of Narayanan's Trade Marks and Passing off, third edition (hereinafter referred to as 'the Narayanan's book').
(2) Payton & Co. Ltd. v. Spelling, Lam-pard & Co. Ltd. (1901) 17 R. P. C. 48, @ 52, 53, 55 and 57 which has been affirmed by the House of Lords in (1901) 17 RFC 628.
(3) Pentageon Trade Mark (Registration) (1964) RFC 138, @ 141.
(4) Brooke Bond India Ltd. v. V. K. Manibhai & Co. (1987) 1 PLR 143 (Cal).
(5) Halsbury's Laws of Fngland, Fourth Edition Volume 48 -- Paragraph 175.
(6) Kerly's Law of the Trade Marks and Trade names -- Twelfth Edition (hereinafter referred to as 'the Kerly's book') Pages 402, 403 and 404.
(ii-a) The allegation of the plaintiff that the plaintiff's present offended marks are only "slight deviations' of the original registered mark of 1945 is not correct. But, there is a substantial alteration, affecting the identity of the registered trade mark and hence the alleged present offended marks cannot be considered as registered trade marks, but to be taken as unregistered trade marks only and hence there can be no infringement of them. In this regard, the learned Counsel points out that the location of the two big stars in the registered trade marks and the location of the expression "Every genuine Gold Flake cigarette bears the name I. D. & H. O. Wills" have been shifted and the shapes of the said stars have also been slightly modified. He also points out that instead of striped lines, thick red colouring has been done in the roundel shape of the mark.
In this regard, the learned counsel also relied on the following decisions:
1. Cluet Peabddy & coy Inc. V. Me Intyre Hogg Marsh & Coy Ld (1958) 75 RPC 335, 356.
2. In the matter of British Hoist & Crane Coy. Ld.'s Trade Mark (1955) 72 RPC 66 @ 67 and 68.
3. Eli Lilly & Co. Ltd. v. Chelsea Drug Chemical Co. Ltd. (1966) RPC 14 @ 17 and 18.
4. Otrivin Trade Mark(1967) RPC 6I3 @ 616.
(iiB) Even assuming that the above said alteration was not substantial, but only a slight one, the plaintiff has not secured leave teration under S. 58(1) of the Act for making the said and, therefore, it cannot be used.
(iii-a) Even otherwise, on facts, there is neither infringement, nor passing off, since there is no deceptive similarity so far as the relevant trade marks. Relating to the plain cigarettes, while the defendant has used its name "Golden's" in its trade mark, the plaintiff has used its name. "W. D. & H. O. Wills"; likewise while the plaintiff's mark contains two big stars, one in each side of its wrapper, the defendant's mark has no such stars at all in its wrapper; further, while the plaintiffs mark contains the expression "Every Genuine Gold Flake Cigarette bears the name I. D. & H. O. Wills" on one side panel of its wrapper, the defendant's mark does not contain the same; further, while the length of the plaintiff's cigarette is 67 mm., the corresponding length of defendant's is only 59 mm., and thus, the sizes of the respective wrappers are also different as stated in the respective wrappers also. Further, the plaintiff's mark is in oval shape, in thick dark red and having the expression 'Honeydue' while the defendant's mark is in round shape without much of such red painting and without the above said expression 'Honey due'. Thus, according to the learned Counsel for the appellant, there was no over all similarity. On this submission, the learned counsel relied on the following authorities:
1. Parle Products v. J. P. & Co., Mysore, .
2. A. V. Rajadurai Nadar v. P. Ayya Nadar, .
3. Kerly's book Paragraph 17 @ 19, 449.
4. Selvaraj v. Edward Nadar (1977) 90 Mad LW 645 @ 652 Paragraph (sic).
(iii-b) Further, there is much variance in the price of the respective cigarettes. While the price of the plaintiff's plain cigarette is Rs. 3.50 that of the defendant's is Rs. 2.25.
(iii-c) while the plaintiff's plain cigarettes cater to higher class, the defendant's cater to lower class, who were earlier smoking bcedies.
(iii-d) Pursuant to the change in the policy of the Government relating to levy of excise duties on cigarettes, the defendant introduced the above said 59 mm. size plain cigarettes at a low price for the benefit of those persons who were smoking beedies, which are more harmful than cigarettes. According to the learned counsel for the appellant, the defendant's introduction of its abovesaid plain cigarettes in about February, 1990 was therefore, only a hona fide action.
(iii-e) Further, even according to the plaintiff the defendant has made extensive advertisement of its impugned mark when it was introduced in about February, 1990 and so also, there could be no deception.
(iii-f) The learned counsel, also submits that cigarettes have to be treated in a different way, because by smoking itself, a customer would come to know what brand of cigarette he smokes and hence he would not get deceived.
(iv) Interlocutory reliefs cannot be granted since the plaintiff's right is seriously questioned in the above said rectification proceedings and since the above referred to alterations were substantial alterations, affecting the identity of the registered trade mark. Further if interim injunction is granted, that would criple the defendant's business. In such a situation, the learned Judge should have ordered only accounting and not injunction. On this submission, the learned Counsel, relied on the following;--
1. Hawtin (E. V.) Ld. v. Hawtin (John F) & Coy. Ld. (1960) RPC 95 @ 107.
2. Gangadhar & Co. v. Rajeswar & Co., AIR 1962 Andh Pra 510 @ 514.
3. Passage at pages 426 and 429 of Paragraph 11 of Venkateswaran's law of Trade and Merchandise Marks 1963 Edition.
(v) There is delay in filing the suit C. S. No, 477 of 1998. The plaintiff sent a telegram on 5-2-1990 to the defendant making the complaint and two months thereafter on 19-4-1990 sent a letter to the same effect despite the fact that there was no reply to both the said communication the plaintiff filed the suit only on 29-5-1990, even though the complaint is that from February, 1990 itself the defendant was causing infringement and passing off of its goods as that of the plaintiff's goods. On this submission, the learned counsel relied on the following:- -
1. Halsbury's Laws of England -- Fourth Edition, page 180, Paragraph 274.
2. A passage in Kerly's book at page 320,
3. Passage in page 430 in Venkateswaran's law of Trade and Merchandise Marks-- 1963 Edition.
(vi) In the case of fitter cigarettes red band was newly introduced in the year 1970 by the plaintiff in the original registered trade mark 1945. This also according to the learned counsel for the appellant is a substantial alteration, changing the identity of the original trade mark. In the case of filter cigarettes also the other arguments relating to plain cigarettes would apply (excepting for the fact that with reference to the size of the cigarettes and price of the cigarettes, there is not much difference).
9. On the other hand, the learned counsel for the respondent-plaintiff, in relation to the above referred to paragraph 8 (iii-a) sub-mission of the learned counsel for the appellant, refers to the definilion of 'mark' in S. 2(f) of the Act and the definition of the term 'deceptively similar' in S. 2(d) of the Act and points out that (with reference to both the applications) the design, colour, printing, general lay out, get up and other features of the respective defendant's impugned trade marks are deceptively similar to the respective plaintiff's registered trade marks. According to him, the defendant has copied the roundel design including the intersecting rectangly, which is a distinctive, essential inseparable and integral part of the plaintiff's trade mark; the defendant has adopted the Plaintiffs style of printing the words 'Gold Flake' inside the rectangular design; the defendant has printed the words 'Gold Flake' boldly and prominently in the same manner as in the plaintiffs registered trade mark; the defendant has also copied the other prominent features of the plaintiff's design such as the three stars. Then, according to him, in the case of plain cigarettes, the colour scheme and the rectangular border lines in red and tarnished gold are copied and, in the case of filter cigarettes, the colour scheme of yellow and red and wide red band at the top of the packet have also been copied. In this connection, the learned counsel relied on Parle Products v. J. P. & Co., Mysore, ; A. Shanmugha Mudaliar v. A. Abdul Kareem, and Hiralal Parbhudas v. Ganesh Trading Co., parag to contend that in an infringement action, in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered and that it would be enough if the impugned mark bears such an over all similarity to the registered mark as would be likely to mislead a perosn usually dealing with one to accept the other if offered to him and that it is of no use to note on how many points there is similarity and in how many others there is absence of it.
10(a). Further, the learned counsel for the respondent in relation to the above referred to paragraph 8(ivJ submission of the learned counsel for the appellant, submits that the trial Judge should be trusted to pass discretionary interlocutory orders with due regard to the well settled principles of civil justice and such orders should not be normally interferred with unless there is ex facie legally erroneous or causes grave and substantial injustice. For making this submission, he relied on Shah Babulal Khiji v. Jayaben, .
10(b). The learned counsel for the respondent further submits that the rectification application though filed by the defendant in 1980 in the above referred to C. S. No. 988 of 1979 on the file of Calcutta High Court with reference to filter cigarettes, the defendant did not get it numbered at all till now for the past ten years and that therefore neither there was suppression in this regard by the plaintiff as alleged by the learned counsel for the appellant, not it can be said that the validity of the registered trade mark of the plaintiff was in any way really and seriously challenged by the defendant in the abovesaid rectification application. At any rate the learned counsel relies on Hindustan Embroidery v. K. Ravichandra & Co., (1974) 76 Bom LR 146.
10(c). Learned counsel for the respondent also points out that to obtain interim injunction, the plaint need not general show a strong prima facie case and it may be enough in such a trade mark case, unlike in other cases, if 20% chance of success at the trial is shown. In this connection, he cited the passage in paragraphs 15-66 at page 321 of Kerly's book, which has been relied on with approval in National Garments v. National Apparels, . But, in reply, the learned counsel for the appellant drew our attention to Newsweek v. B.B.C., (1979) RPC 421 at page 448, to contend that the latest trend of cases is that a strong prima facie case is necessary in a trade mark action also.
10(d). The learned counsel for respondent also drew our attention particularly to the allegations in paragraphs 28 and 29 of the affidavit in support of the application No. 2554 of 1990.
11. The learned counsel for the respondent also points out, in relation to the abbve-referred to paragraph 8(i) submission of the learned counsel for the appellant, that what features in a trade mark are common to a trade, is a matter of evidence and that hence the court at the interlocutory stage, should not take into consideration those factors in deciding the question of granting interim injunction. The above referred to paragraph 491 of Narayanan's book itself also mentions that whether a matter is or is not to the trade, is a question of fact and the decision the National Starch Co. v. Munn's Patent Maizana & Starch Co., (1894) 11 RPC 281, has also been relied on to that effect by the said author.
12. The learned counsel for the respondent also submits, in relation to the abovereferred to paragraph 8(iii.d) submission of the learned counsel for the appellant, that there was no bona fides at all in the defendant's introduction of its new mark in February 1990 with reference to plain cigarettes, since the defendant had a registered trade mark of its own, which was used even before February 1990 and that if only it wanted to introduce a cigarette of below 60mm size in order to avail of the concessional excise duty, it could have easily used the said its own registered trade mark itself in the above referred to small size of 59mm and it need not have copied the plaintiff's mark while introducing the said smaller size. According to him this fact itself shows the bad motive of the defendant. Further with reference to the allegation that the surface design of the defendant's plain cigarette of 59mm was approved by the Director of Audit, the counter-affidavit of the respondent-plaintiff points out that the said Director is not an authority under the Act, nor any notice was given to the plaintiff before the approval was given and that at any rate with effect from 20-3-1990 the requirement for obtaining such approval had been done away with. Further the learned counsel for the respondent points out that the defen-
dant's popular brand was 'Panama' in which it has more than 50% of its total sales of cigarettes in India and that it introduced the small size cigarette of 59mm in the 'Panama' in which it has more than 50% of its total sales of cigarettes in India and that it introduced the small size cigarette of 59mm in the 'Panama' brand cigarette of 59mm in the said 'Panama' brand cigarette recently and that likewise, it would have introduced the small cigarettes in its Golden Gold Flake Cigarettes also, using its own registered trade mark relating to Gold Flake Cigarettes. But he contends it did not do so, instead, while introducing the small size, copied the plaintiffs registered trade mark as stated above. According to him, this also shows the mala fide nature of the defendant.
13(a). The learned counsel for the respondent also submits in relation to the above referred to para 8(ii-a) submission of the learned counsel for the appellant, that the change or modification of the registered trade mark of 1945 was not substantially affecting the identity of the registered trade mark. He also points out S. 54(1) of the Act, which states that where under the provisions "of the Act, use of a registered trade mark is required to be proved for any purpose, the Tribunal may, if and so far as it shall think right, accept use of a registered associated trade mark or of the trade is required to be proved for any purpose, the tribunal may, if and so far as it shall think right, accept use of a registered associated trade mark or of the trade mark with additions or alterations not substantially affecting its identity as an equivalent for the use required to be proved. In this connection, the learned counsel for the respondent also drew our attention to the passage in Kerly's book in paragraphs 15-41 at page 310 to the effect that the use of the varied mark by the plaintiff does not in any way stop him from proceeding against infringers.
13(b). The learned counsel alternatively also argues that even assuming that substantial changes to the original registered trade mark have been made, the defendant cannot infringe the original registered trade mark till the registered trade mark is taken off from the register. But, to this the learned counsel for the appellant replied saying that such a plea having not been taken, it cannot be allowed to be advanced in this appeal.
14. The learned counsel for the respondent also submits, in relation to the above-referred to paragraph 8(v) submission of the learned counsel for the appellant on the aspect of delay, that this argument is not open to the learned counsel for the appellant, because neither it was referred to in the defendant's counter-affidavits before the learned trial Judge nor in the grounds of appeal in these appeals. Further, he submits that there was no delay at all; there was no reply to the above-referred to telegram dt. 5-2-90 and the above-referred to letter dt. 19-4-90 so the plaintiff was under the impression that the defendant would withdraw the offending marks from the market; but such a withdrawal was not done till May 1990 and hence in May 1990 the present suits have been filed. The learned counsel also relied on Abdul Kareem v. Abdul Kareem, AIR 1931 Madras 461, to contend that the delay could not disentitle the plaintiff from getting interim injunction.
15. We have carefully considered the above-referred to rival contentions of'both the counsel. We have also made a careful inspection of the plaintiff's above-referred to registered trade mark of 1945 and its modified form (with reference to plain cigarettes) which is the offended mark in C. S. No. 477 of 1990 and which is admittedly in use at least for some years and the corresponding defendant's offending mark in the said suit, which was introduced only in about February 1990. Likewise we also saw the plaintiffs offended mark in relation to the filter cigarettes in C. A. No. 478 of 1990 and the corresponding defendants offending mark in relation to filter cigarettes in same suit. So far as the deceptive similarity between the above-referred to two sets of marks, we also come to the same conclusion as arrived at by the learned trial Judge in both the applications, taking into account the principles laid down in this regard in Parle Products v. J, P. & Co., Mysore, ; A. Shanmugha Mudaliar v. A. Abdul Kareem, and Hiralal Piirbhdas v. Ganesh Trading Co., . The over all similarity emphasised in , referred to above is there between the two sets of offending and offended marks in the present case. In fact the said over all similarity is more apparent in the relevant marks in C. S. No. 478 of 1990. That is why probably the learned counsel for the appellant did not make any appreciable attempt to point out disimilarities between the relevant trade marks in C. S. No. 478 of 1990 as he did with reference to the relevant marks in C. S. No. 477 of 1990, despite some difference pointed out by the learned counsel for the appellant, the overall impression we get is, on looking at the relevant plaintiff's mark and the defendant's mark, that they are also deceptively similar at least prima facie for the purpose of deciding the question at this interlocutory stage.
16. In this connection we also think, as pointed out by the learned counsel for the respondent that the following observation of the Supreme Court in , referred to above would also supply to the present case:
"Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reason of their own."
So, there is force in the respondents counsel's submission that the cigarettes with the defendant's offending marks might well be supposed by plaintiff's customers as that of the plaintiff.
17. We also hold, in relation to the above-referred to paragraph 8(i) submission of the learned counsel for the appellant, that what features in a trade mark are common to a trade is a matter of evidence which can be gone into only at the trial of the suit. The authorities cited in paragraph 11 above are also to the point.
18. We also do not think that the passage cited in Selvaraj v. Edward Nadar, (1977) 90 Mad LW 645 at page 652, helps the appellant.
No doubt in the abovereferred to (1977) 90 Mad LW 645, on facts this court held that there was absolutely no question of any deceptive similarity between the two marks in question there. This decision again rested on its own facts. Further that was only an infringement action and it was also observed therein that the colour was not entirely ignored. The Kerry's quotation referred to in the abovesaid (1977) 90 Mad LW 645, only observed as follows:--
"Where marks are used in colour, it may undoubtedly affect the likelihood confusion that the colours are or are not the same. Whilst, however, this is often a circumstance of great importance in relation to passing off.....".
So, at any rate in a passing off act ion colour is certainly of great importance.
19. The aboverefcrred to , laid down the following established principles in deciding the question of similarity of two marks:--
(i) Marks are remembered by general impression or by some significant detail rather than by a photographic recollection of the whole.
(ii) Overall similarity is the touchstone.
(iii) Marks must be looked at from the first impression of a person of average intelligence and imperfect recollection.
(iv) Overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied.
(v) Marks must be compared as a whole miscroscopic examination being impermissible.
(vi) The broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design. In addition the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration.
No doubt, the learned counsel for the appellant referring particularly to his above referred to paragraph 8(iii-f) submission, relied on the last part of the above-referred to principles viz., the nature of the commodity, the class of purchasers and other surrounding circumstances must also be taken into consideration. However at this interlocutory stage, taking an over all view of the matter, we are unable to see any good reason to differ from the view taken by the learned trial Judge in deciding these applications, particularly in view of the following two important factors:--
20(a). As already pointed out in paragraph 12 above the defendant had a registered mark of its own with reference to Gold Flake Cigarettes and while introducing a smaller size of the same Gold Flake it would have used the same registered trade mark of its own, just as it did in the case of its other cigarette 'Panama'. In view of this factor we cannot at this stage accept the claim of the appellant that its action was bona fide.
20(b). The other factor is that the defendant, though filed a rectification application in C. P. No. 988 of 979 in 1980 itself, it did not make any attempt to get it numbered all these years. If such a situation it cannot be said that the validity of the plaintiff's registered trade mark is in question in C.S. No. 988 of 1979, which is pending in the Calcutta High Court. In this connection, we prefer to follow Hindustan Embroidery v. K. Ravindra & Co., (1974) 76 Bom LR 146, where it has been held that it is not the practice to consider the validity of registration of a trade mark on a motion for interlocutory injunction taken out by a person who has got the mark registered in his name and that while the mark remains on the register (even wrongly) it is not desirable that others should imitate it. Narayanan also, in his book, observes to the same effect in paragraph 1163 at page 518.
21. We also conclude that there is a strong prima facie case in favour of the plaintiff for granting the interim injunction in its favour. In fact, as already referred to in National Garments v. National Apparels, , it has even been held that the plaintiff need not in general show strong prima facie case and the priina facie case that is required to be shown must be some thing more than a case that will avoid the action, being struck out as frivolous or vexatious. The observation in the said decision further goes on to say as follows (at page 121 of AIR);--
"Generally stated 'even if the chance of success at the trial are only 20 per cent', the interim relief sought for is required to be granted. (See paras 15-66 of Kerly's Law of Trade Marks and Trade Names, Twelfth Edition). There is another reason for the grant of the interlocutory injunction under such circumstances. Such an order would stop the infringement without delay. Not only that from experience it is clear that a successful motion for interlocutory injunction normally puts an end to the litigation and the infringement, with a great saving in expenses compared with a full trial and that is the reason why the law insists upon to hearing of such a motion in every case".
22. In this connection we also take into account the following averments in the affidavits of the plaintiff in paragraphs 28 and 29 in support of application No. 2554 of 1990:
"The plaintiff's sales of cigarettes bearing the trade mark Gold Flake are currently in the range of 9300 million cigarettes per year, of which the Gold Flake Plain variety accounts for about 3600 million.....
if the defendant succeeds in confusion the market by use of a mark designed to resemble the plaintiffs Gold Flake, the plaintiff will be heavily jeopardised in the market share of approximately Rs. 451.20 crores per annum, which will be ruinous for the plaintiff's business. The plaintiff has over the years spent very large amounts of money by way of advertising, market promotion and sales promotion to build up the market for the Gold Flake cigarettes. During the period 1987-1990 the plaintiff has spent approximately Rs. 7.5 crores on advertising, promotion and publicity for its Gold Flake cigarettes ..... The defendant has commenced the marketing of its Plain Gold Flake cigarettes under the offending trade mark registered by the defendant for the Gold Flake cigarettes. Such sale was only of the magnitude of about 22 million cigarettes per month (that is 264 million cigarettes per year) and was confined to North India. Now, having adopted a trade mark, which closely resembles the plaintiff's the defendant is selling its Gold Flake cigarettes in South India, the popular market for the plaintiff's Gold Flake cigarettes".
23. In the present case, even if the injunction is confirmed the business of the defendant will not be affected in relation to the above-referred to Gold Flake Plain and filter cigarettes, since it can very well adopt its own above-referred to registered trade mack relating to Gold Flake cigarettes themselves, which is different from the plaintiffs offending marks, and for whose use, the plaintiff has no objection. Therefore in South India .....hitherto, the defendant was selling its Gold Flake cigarettes under a very different trade mark, which in fact, is the trade mark Hawlin (E.V.) Ltd. v. Hawtin (JohnF) & Coy Ltd., (1960) RPC 95 and Gangadhar & Co. v. Rajeshwar & Co., AIR 1962 Andh Pra 510, are not applicable to the present case.
24. Further we find that there is absolutely no delay in the filing of the suits in view of what is stated in paragraph 14 above. Further this question of delay, having not been raised by the defendant, either in its affidavit before the trial Judge or in the present grounds of appeal, cannot be raised now. We have also taken note of the following observation of the Supreme Court in Shah Babulal Khimji v. Jayaben, :
".....The Courts must give sufficient allowance to the trial Judge and raise a presumption that any discretionary order which he passes must be presumed to be correct unless it is ex facie legally erroneous or causes grave and substantial injustice".
25. With reference to the above referred to paragraph 8(ii-a) submissions of the learned counsel for the appellant, we do not think that the changes pointed out by the learned counsel (vide paragraph 8(iia) above) can be called substantial alterations, the other essential features of the registered mark like rounded design with the intersecting rectangle, rectangular border lines, the stars etc., having been retained. That apart, it should be noted that the present suits are not merely infringement action, but also passing off actions. The above said question would not arise in the latter case.
26. Then, with reference to the above referred to paragraph 8(iib) submissions of the learned counsel for the appellant, we state that even though S. 58(1) of the Act says that a registered proprietor for leave to alter the trade mark in any manner not substantially affecting the identity thereof, no provision of authority was shown to use to the effect that if the leave is not obtained, the altered trade mark cannot be made use of. No doubt, Kerly says in his book in paragraphs 15-41 at page 310 that the variation in one's registered mark, provided it is not an infringement of any other person's mark or a breach of any agreement binding upon him, is perfectly lawful, although, so far as the mark actually used differs substantially from his registered mark, it is an unregistered mark. But Kerly also adds therein that it is well settled that the use of a varied mark by the plaintiff does not in any way stop him from proceeding against infringers. In this connection, the decisions cited by the learned counsel for the appellant, viz., Cluet Peabbdy & Co. Inc. v. Mcintyre Hogg Marsh & Co. Ltd., (1958) 75 RPC 335. In the matter of British Hoist & Crane Coy. Ltd.'s Trade Mark, (1955) RPC 66; Eli Lilly & Co. Ltd. v. Chelsea Drug Chemical Co. Ltd., (1966) RPC 14 and Otrivin Trade Mark, (1967) RPC 613, which very much turned on the facts of the said respective cases, could not be taken as precedents at this interlocutory stage.
27. In the above circumstances, we see no good reason to differ from the order passed by the learned trial Judge and, therefore, confirm the said order and dismiss these two appeals with costs. To be taxed by the P.S. and woked in the margin thereof.
28. Appeals dismissed.