Andhra HC (Pre-Telangana)
Pandugula Vali Basha vs N. Mohammed Haris And Anr. on 27 June, 2005
Equivalent citations: 2005(4)ALT760
JUDGMENT P.S. Narayana, J.
1. Introduction: The defendant in O.S. No. 1/91 on the file of the District Judge, Kurnool, aggrieved by the Judgment and Decree, dated 30-1-1995, preferred the present appeal. The respondents herein are the plaintiffs in the said suit. The suit was instituted under Sections 105 and 106 of the Trade and Merchandise Marks Act, 1958 praying for the relief of permanent injunction restraining the appellant herein-the defendant, his men, agents from using the offending trade mark 'Photo Hussain Basha Beedilu or using similar trade mark of the plaintiffs or making use of such labels or passing off the goods-Beedies of the defendant with such mark and also further prayed for an order to deliver up all the infringing labels and marks available with the defendant to the plaintiff for destruction and also further prayed for awarding of damages of Rs. 1,000/- for passing off the goods and for such other suitable reliefs. The learned Judge on appreciation of the evidence of P.Ws.1 and 2 and D.Ws.1 to 3, Exs.A-1 to A-17 and Exs.B-1 to B-11, decreed the suit granting permanent injunction restraining the defendant and his men for using the offending Trade Mark or similar Trade Mark with the design, colour, deceptively similar to the trade mark of the plaintiffs or making use of such labels or passing off his goods with such marks and also further directing the defendant to deliver all the infringing labels and marks available with him to the plaintiff for the purpose of destruction, but however, negatived the claim relating to damages. Hence, the appeal.
2. Submissions made by Sri Jagapathi, the Counsel representing the appellant:-
Sri Jagapathi, the Counsel representing the appellant-defendant had taken this Court through the respective pleadings of the parties and the issues settled and the findings recorded by the Trial Court and would contend that there are distinct striking dissimilarities between the Photo Hussain Jadi Beedi and Photo Hussain Basha Beedi and the Counsel also would maintain that the photos displayed on the labels also were different by which the same can be easily identified and hence there is no confusion likely to be caused in the minds of the customers in between Photo Hussain Jadi Beedi and Photo Hussain Basha Beedi. The learned Counsel demonstrated the dissimilarities by pointing out the relevant exhibits in this regard. The learned Counsel in elaboration made submissions about the evidence of D.Ws.2 and 3 and would content that in the light of the same, it is clear that these two brands of beedies are distinguishable. The learned Counsel also would contend that the Trial Court erred in relying upon the evidence of P.W.2, a customer, in preference to the evidence of D.Ws.2 and 3. The learned Counsel also would comment that the non-reply to the notice cannot be made a serious ground. The Counsel pointed out that the reasoning adopted by the Trial Court that the masses of the relevant districts would be misled though the photos are different and marks are different, definitely cannot be sustained.
3. Submissions made by Sri Laxminarayana Reddy, the Counsel representing the respondents-plaintiffs:-
The learned Counsel had taken this Court through the findings recorded by the learned Judge and also demonstrated the colour and wrapper and would explain that the users are illiterate persons of Kurnool and Cuddapah Districts. The learned Counsel had taken this Court through the evidence available on record and also the findings recorded by the Trial Court and would submit that the similarity in colour and the similarity in names, though there is some slight difference between Hassan and Hussain would definitely mislead any ordinary customer in view of the deceptive resemblance. The learned Counsel also would comment that the defendant-appellant is claiming an un-registered trade mark. The learned Counsel placed strong reliance on several decisions in this regard.
4. Heard both the Counsel.
5. Pleadings of the parties:-
Plaint filed by the plaintiffs:-
"It was pleaded in the plaint that plaintiffs 1 and 2 are brothers. Their brother-in-law P.A. Gaffar of Chagalamarri was a beedi merchant, manufacturing and selling beedies in the name and style of 'Gaffar Beedi' from about the year 1967-68. He held L-2 licence. In 1975 the said L-2 licence was converted into L-4 licence (L4-60/75) for his Graffar Beedi, In 1978, he floated second trade of manufacturing beedies and sale in the name of 'Photo Hussain Jadi Beedi under the same L4-60/75 licence. Though the licence was in his name, the actual business manufacture and sale of 'Photo Hussain Jadi Beedi' was being carried out by the plaintiffs with his consent. On the labels and wrappers, the photo of first plaintiff was inscribed as distinctive mark. Since then, the plaintiffs are carrying on business with the said label and wrapper, and developed extensive trade in Allagadda Taluk and Chagalamarri Mandal and also in the neighbouring areas of Cuddapah District, which included Duvvur Mandal up to Mydukur. The name, sign, mark and the get up became distinctive marks for the goods of the plaintiffs by long user and earned distinctive reputation in the market by its superior quality. It is an unregistered trade mark. In 1987, the said Gaffar (brother-in-law of plaintiffs) transmitted the trade mark along with good-will of the business to plaintiffs. He gave written consent to the Central Excise Authorities. So, the licence for manufacture and sale of 'Photo Hussain Jadi Beedi' was taken in the name of the plaintiffs as Lr-7/87 and the business is being carried on by the plaintiffs under the same old label in its design and structure and colour, carrying the photo of the first plaintiff, with only change of name of A.P. Gaffar substituted by N. Rafiuddin and brothers. Thus, the second trade of Photo Hussain Jadi Beedi by P.A. Gaffar stood transferred and transmitted to plaintiffs. The first plaintiff was also carrying on beedi leaves business. The plaintiffs have been paying Central Excise duty every month for their beedies, apart from sales tax for tobacco leaves. Employees were engaged and benefits like Employees Provident Fund are conferred. The allotted Establishment Code No. is A.P. 20953. Plaintiffs applied for registration of trade mark with application No. 385796 in Class No. 34. The application was registered and allotment of trade mark was awaited.
Plaintiffs' beedies were wrapped in small bundles and in big bundles. Both contain wrapper with the design and emblem of distinctive colour. Small bundle contains 12 beedies and price at Rs.0.60 ps., while the big bundle contains 20 small bundles and priced at Rs. 10.50 ps. These designs on the wrappers were identified by general public as associated with the plaintiffs. Plaintiffs beedies earned high reputation in the market.
The defendant is a native of Chagalamarri. He was working on daily wages in plaintiffs' factory for some time. Recently, he issued a pamphlet claiming that 'Photo Hassain Basha Beedi' hitherto manufactured in Cuddapah will be manufactured in Chagalamarri by him. To the said pamphlet, a photo of Khajipet Proprietor K.M. Shariff Brothers was advertised. He released into market beedies of big and small bundles in the name and style of Photo Hassain Basha Beedi manufactured at Chagalamarri. The small bundle of 12 beedies was priced at Rs.0.50 ps., while big bundle of 24 small bundles was priced at Rs. 10.50. The wrapper on the beedies of the defendant showed Lr -No. 5/87. The defendant never manufactured beedies till the beginning of August, 1991. The alleged trade mark of the defendant was not registered. He has not even applied for registration of trade mark. The plaintiffs had been using the label and wrapper and the design long prior to and have been dealing in the said business regularly from 1978.
The trade mark adopted by the defendant is similar to that of the plaintiffs. There is deceptive similarity between the trade mark of the plaintiffs and that of the defendant. The over-all structure and phonetic similarity is adopted by the defendant with fraudulent intention the marks, the letters, the side labels and even the contents of advertisement on the wrapper are deceptively similar to that of the plaintiffs. The defendant released beedies under the impugned trade mark on commercial scale into the market. As the get up is the same and the emblem was not of much difference, he is passing off his beedies as that of the plaintiffs. In that process, he was imitating the plaintiffs' trade mark. Plaintiffs' enquiries revealed that the common man and the customer was confused. It is difficult for an ordinary man to differentiate between the beedies of defendant and that of the plaintiffs. An average intelligent man with imperfect recollection and an unwary purchaser will be misled in accepting the beedies of the defendant, if offered, to that of the plaintiffs. Even the combination of colours and important characteristics of plaintiffs' trade mark have been introduced in the defendant's pirated trade mark. There is a sudden fall in the trade of the plaintiff. It affected the proprietory rights of the plaintiffs in trade mark as also their business and good-will. The invasion of the right of the plaintiffs by defendant by passing off his goods (beedies) as that of the plaintiffs by misrepresentation and colourable imitation had been affecting plaintiffs business and good-will the offending mark used by the defendant would create in the minds of ordinary citizens that what he was buying was the article of plaintiffs and mistaking one for the other. Therefore, the defendant is to be restrained by an injunction to avert irreparable damage to plaintiffs' business and goods from using the offending trade mark. Plaintiffs also prayed apart from the relief of injunction, damage for passing off the goods in a sum of Rs.1,000/- and an order for delivery of the infringing labels and marks available with defendant to the plaintiffs for destruction by them."
Written statement filed by the appellant herein-defendant in the suit:-
"It was pleaded in the written statement by the appellant-defendant denying all the allegations. It was also further pleaded that the trade mark 'Photo Hassain Basha Beedi' was being used by K.M. Shariff and brothers, Kajipet, Cuddapah. In the mark of Khajipet brothers, the photo of Rahamthu Miah, brother of Shariff was there. The two brothers of Khajipet were manufacturing beedies and using the above said trade mark on their beedies under L-4 No. 51/77. Thus, K.M.Shariff and brothers were using the trade mark 'Photo Hassain Basha Beedi from 1977. The name, design, colour, get up etc., in the trade mark of K.M. Shariff and brothers, except the photo are the same in the trade mark used by the plaintiffs. By long user, K.M. Shariff brothers acquired proprietory rights and interest in the said mark. Some time back, K.M. Shariff and Brothers suspended their business of manufacturing of beedies and using of the said trade mark. The defendant was employee under them for about an year. When K.M. Shariff and brothers suspended using of the trade mark, on the request of the defendant, they permitted the defendant to use the trade mark on the beedies manufactured by him at Chagalamarri. Thus, K.M. Shariff and brothers are proprietors of 'Photo Hussain Basha Beedi.'Plaintiffs started their business under L.4.6.87 and began to use the trade mark 'Photo Hassain Jadi Beedi' with the same design, colour and get up as found in the trade mark of K.M. Shariff and Brothers. The plaintiffs started using the trade mark of K.M. Shariff and Brothers, Khajipet, which is the same in all material particulars, except the photo. The plaintiffs had not invented the trade mark as alleged by them, for the first time, by themselves. Hence, the plaintiffs are guilty of copying and using the trade mark of K.M. Shariff and Brothers and violating their proprietary rights. K.M. Shariff and Brothers had a flourishing business in beedies under the said trade mark. Defendant denies that the very name adopted by him is similar to that of plaintiffs. Ever since the defendant obtained licence (L4.NO. 5/87) dt. 6-10-1987 he has been manufacturing beedies and selling the same under the trade mark 'Photo Hassain Basha Beedi'. Plaintiffs obtained Lr.6/87 on 26-10-1987. Defendant started using his trade mark from a time prior to plaintiffs' user. The other allegations relating to similarity and colourful imitation pleaded by the plaintiffs are denied specifically. Plaintiffs cannot claim exclusive rights. Plaintiffs had not acquired any proprietary right. The trade mark of the defendant is neither identical nor deceptively similar to the trade mark of plaintiffs. Defendant's own photo in the mark is associated in the mind of the public with his business and trade mark. Buyers of beedies are guide by the photos in the mark. There was no likelihood or probability of any deception.there was no necessity for the defendant to pass on his goods as that of the plaintiffs. The defendant never passed off his goods as the goods of plaintiff.
Plaintiff started using the trade mark "Rahamthu Jadi Beedies" with a different photo in the same colour and get up. There are other trade marks such as 'Photo Khaja Hussain Jadi Beedi'. 'Photo Hussain Basha Jadi Beedi' and 'Photo Hassain Bash Beedi' of different owners with the same colour, get up etc. The distinctive feature in all the trade marks is the photo used in each mark and it alone guides the purchaser while buying beedies. Plaintiffs' title to their mark claimed under the assignment is not valid. Plaintiffs acquiesced use of trade mark by the defendant and so they are estopped from questioning the right of the defendant to use the trade mark of his goods. Plaintiffs have no cause of action to file this suit. Defendant's mark is not identical and deceptively similar to the trade mark of the plaintiffs. The sit is devoid of merits and bonafides."
6. Issues settled by the Trial Court:-
(1) Whether the plaintiffs are having exclusive right to use the trade mark under which they are manufacturing and selling the beedies?
(2) Whether the trade mark used by the defendant for manufacturing and selling his beedies is deceptively similar to the trade mark used by the plaintiffs, and whether the trade mark rights of the plaintiffs are infringed by the conduct of the defendant?
(3) Whether the plaintiffs are entitled for the reliefs of permanent and mandatory injunctions prayed for?
(4) Whether the plaintiffs are entitled to claim any damages from the defendant, and if so, to what amount?
(5) To what relief?
7. Evidence available on record:-
The evidence of P. W. 1 -Mohammed Haris, P.W.2-Narayana and the evidence of D.W.1 - Basha, D.W.2-Hussain Saheb and D.W.3-Jabbar had been recorded.
The following documents were marked on behalf of the respondent-plaintiffs:-
Ex.A-1/15-1-93 : Registered trade mark dt.29-1-82 (Original) Ex.A-2 : Small bundle of beedies containing 12 beedies of plaintiffs' Trade Mark Ex.A-3 : Big bundle containing 24 small bundles of beedies of plaintiffs' Trade Mark.
Ex.A-4 : Pamphlet issued by the defendant.
Ex.A-5 : Small bundle containing 12 beedies of defendant's Trade Mark.
Ex.A-6 : Big bundle containing 24 small bundles of defendant's Trade Mark.
Ex.A-7/13-9-91 : Office copy of Lawyer's notice dt. 13-9-91 issued to the defendant.
Ex.A-8 : Postal acknowledgment.
Ex.A-9/24-1 -78 : Approval order of Central Excise Department Ex.A-10 : Wrapper approved by the Central Excise Dept. Ex.A-11 : Side label approved by the Central Excise Department in Lr-6/87 Ex.A-12/2-3-72 : L2 licence issued in the name of P. Abdul Gaffar.
Ex.A-13/14-5-75 : L-4 licence issued in the name of P.A. Gaffar.
Ex.A-14 : Approved wrapper of L4-6/87 Ex.A-15 : Approved side label wrapper of L 6/87 Ex.A-16/20-8-92 : Original Registration Certificate issued by the Superintendent, Central Excise, Nandyal Range.
Ex.A-17/20-10-81 : Xerox copy of Form L-4 under Central Excise Rules to manufacture Excisable goods.
On behalf of the appellant-defendant the following documents were marked before the Trial Court-
Ex.B-1/6-10-87 : L-4 No. 5/87 issued by the Central Excise Department in favour of the defendant.
Ex.B-2/10-8-93 : Allotment of application Reg. No. 596881 in favour of the defendant, issued by the Asst. Registrar of Trade Marks, Madras.
Ex.B-3 : Big bundle of Photo Hussain Jadi Beedi manufactured by Md. ussain at Khajipet, Cuddapah (Dt) Ex.B-4 : Big bundle of Photo Hasan Basha Beedies manufactured by K.M. Shareef Brothers at Khajipet, Cuddapah (Dt).
Ex.B-5 : Big bundle of Photo Khaja Hussain Beedies manufactured by B/c Hasain Brothers, Chagalamarri, Kurnool.
Ex.B-6 : Big bundle of Photo Hussain Basha Beedies manufactured by C. Mahaboob Per, Frumadaka, Cuddapah (Dt) Ex.A-7 : Original wrapper of Photo Hasan Basha Beedies manufactured by K.M. Shareef Brother, Khajapet, Cuddapah.
Ex.B-8/8-9-92 : Registration Certificate issued by the Central Excise Superintendent, Nandyal.
Ex.B-9 : Positive photo.
Ex.B-10/21 -3-92 : Receipt issued by the Executive Officer, Grampanchayat, Chagalamarri.
Ex.B-11 : Receipt issued by the Executive Officer, Grampanchyat, Chagalamarri.
8. Findings recorded by the Trial Court:-
On appreciation of the evidence available on record, the learned Judge came to the conclusion that there is deceptive similarity and hence there is infringement of the Trade Mark of the plaintiffs and ultimately decreed the suit, but, however, the relief of damages had been negatived.
9. On the material available on record, the following points arise for consideration in this appeal:-
(1) Whether there is deceptive similarity or dissimilarity in between the Trade Marks which are being claimed by the respective parties?
(2) Whether the findings recorded by the Trial Court relating to the deceptive similarity are to be confirmed by this Court or the said findings are liable to be interfered with?
(3) If so, to what relief the parties would be entitled to?
10. Points 1 and 2:- For the purpose of convenience Points 1 and 2 can be answered together. The parties here-in-after would be referred to as plaintiffs and defendant for the purpose of convenience.
11. The case of the plaintiffs is that they had licence to manufacture and sell the Photo Hussain Jadi Beedi and prior to that their brother-in-law P.A. Gaffarwas manufacturing and selling beedies in the name and style of "Gaffar Beedi" from 1967-68 and in the year 1970, the said Gaffar floated manufacture of beedies in the name of Photo Hussain Jadi Beedi under the same licence LR-60/75 and thus the plaintiffs have been carrying on the said manufacture and sale of Photo Hussain Jadi Bedi. The old label, design, structure and the photo also had been explained in detail. It is also the case of the plaintiffs that P.A. Gaffar had transferred the same to the plaintiffs. Exs. A-10 and A-15 are the wrappers with photos of the 1st plaintiff. It is also the case of the plaintiffs that the defendant was working in their factory on daily wage and he had resorted to the manufacturing by using similar name and similar labels, causing serious loss to the business of the plaintiffs. The defendant had taken a stand that this Trade Mark was being used by K.M. Shariff of Khajipet from 1977 and they had acquired proprietary rights relating to the said Trade Mark. Ex.B-7 is the wrapper with photo of K.M. Shareef, but the said Shareef had suspended his business and he was an employee working with them and on his request, he was permitted to use the Trade Mark of the beedies manufactured by him at Chagalamarri. Hence, in substance, the stand taken by him is K.M. Shareef and his brothers were the proprietors of Photo Hussain Basha Beedi and in fact, the plaintiffs started the business and began using the said Trade Mark with the same design and colour and thus, in fact, they had infringed the rights of the defendant and the defendant had not infringed the rights of the plaintiffs. The evidence of P.Ws.1 and 2 is available on record. Ex.A-1 is the registered Trade Mark. dt.29-1 -1982. Exs.A-2 and A-3 are the small bundle and big bundles of the beedies. Ex.A-4 is the pamphlet issued by the defendant. Likewise, Exs.A-5 and A-6 are the small and big bundles of the beedies of the defendant Trade Mark. P. W. 1 deposed in detail about all these aspects and P.W.I also deposed about the issuance of Ex.A-7 notice and it is not in dispute that no reply was given. Ex.A-9-Approval Order of Central Excise Department, Ex.A-10- Wrapper approved by the Central Excise Department also had been marked. Apart from these documents, Ex.A-11-side label approved by the Central Excise Department, Ex.A-12-Licence issued in the name of P. Abdul Gaffar, Ex.A-13-Licence issued in the name of P.A. Gaffar, Ex.A-14-Approved wrapper, Ex.A-15- Approved side label wrapper, Ex.A-16-Original Registration Certificate, dated 20-8-92 and Ex.A-17-xerox copy of Form L-4 under Central Excise Rules to manufacture Excisable goods also had been marked. Through D.W.1, Exs.B-1 to B-1 were marked and Exs. B-3, B-4 are the big bundles of Photo Hussain Jadi Beedi and Photo Hasan Basha Beedies; Ex.B-5 is the big bundle of Photo Khaja Hussain Beedies; Ex.B-6 is the big bundle of Photo Hussain Basha Beedies; Ex. B-7 is the original wrapper of Photo Hasan Basha Beedies; Ex.B-8 is the Registration Certificate; Ex.B-9 is the Positive Photo; Ex. B-10 is the receipt issued by the Executive Officer, Gram Panchayat, Chagalamarri and Ex.B-11 is the receipt issued by the Executive Officer, Gram Panchayat, Chagalamarri.
12. It is not in serious controversy that the Trade Mark of the defendant is an unregistered one. No doubt, some comment had been made in this regard also by both the Counsel. Now the question which may have to be decide is that whether the goods of the defendant are deceptively similar to that of the plaintiffs and whetherthis deceptivity is of such a nature which may mislead the ordinary customers who will be using these beedies.
13. In Parle Products v. J.P. and Co., Mysore, . it was held that "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. They should not be placed side by side to find out if there are any differences in the design, and if so, whether they are of such character as to prevent one design from being mistaken for the other. 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 person usually dealing with one to accept another, if offered to him. It is of no use to note on how many points there is similarity and in how many others there is absence of it." Reliance was also placed on Essco Sanitations v. Mascot Industries, . wherein the following aspects had been enumerated:-
(1) the nature of the marks;
(2) the degree of resemblance between the marks-phonetic, visual as well as similarity in ideal;
(3) the nature of goods in respect of which they are used or are likely to be used as trade marks;
(4) the similarity in the nature, character and purpose of the goods of the rival traders;
(5) the class of purchasers who are likely to buy the goods bearing the marks, their level of education, and intelligence and the degree of care they are likely to exercise in purchasing the goods;
(6) the mode of purchase of the goods or of placing orders for the goods; and (7) any other surrounding circumstances.
It may be appropriate to have a look at Sections 105 and 106 of the Trade and Merchandise Marks Act, 1958, which read as hereunder:-
105. Suit for infringement, etc. to be instituted before District Court:-
No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark whether registered or unregistered; shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
106. Reliefs in suits for infringement or for passing-off:-
(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 105, includes an injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.
(2) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or an account of profits in any case-
(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certificate trade mark; or
(b) where in a suit for infringement the defendant satisfies the court-
(i) that the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was registered user using by way of permitted use; and
(ii) that when he became aware of the existence and nature of the plaintiff's right in the trade mark, he forthwith ceased to use the trade mark in relation to goods in respect of which it was registered; or
(c) where in a suit for passing off the defendant satisfies the court-
(i) that the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and
(ii) that when he became aware of the existence and nature of the plaintiffs trade mark, he forthwith ceased to use the trade mark complained of.
In Durga Dutt Sharma v. N.P. Laboratories, . Three Judge bench of the Apex Court while dealing with the actin for passing off and action for infringement of trade mark, held as under:-
"The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out the suit by the respondent complained both of an invasion of a statutory right under Section 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The findings in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable limitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods" (vide Section 21 of the Act). The use by the defendant of that of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has some times been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."
In Ruston and Hornby Ltd., v. Zamindara Engineering Co., . the Apex Court held as under:-
Section 21 of the Trade Marks Act, 1940 states:
"Subject to the provisions of Sections, 22, 25 and 26 the registration of a person in the register as proprietor of a trade mark in respect of any goods shall, give to that person the exclusive right to the use of the Trade mark in relation to those goods and, without prejudice to the generality of the foreign provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either-
(a) as being used as a trade mark; or
(b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade."
The distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows:
"Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods?"
But in an infringement action, the issue is as follows:
"Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark?"
It is very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get-up of the defendant's goods may be so different from the get-up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark.
The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly with any intent to deceive. It is enough that the get-up of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable unless there had been fraud on A's part. In equity, however, Lord Cottenham L.C. in Millington v. Fox (1838) 3 My & Cr 338 held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiff's trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity, gave the equitable rule the victory over the common law rule."
In Abdullah Khan v. B. Miskin Saheb and Anr., . the learned single Judge of this Court held as under-
"In this case the facts are that the plaintiff had registered his trade mark with the Chamber of Commerce, Madras in 1936. Subsequently, after the Trade Marks Act (Trade Marks Act V of 1940) came into operation, he got his trade mark registered under the said Act. The respondents do not appear to have registered their trade mark at all either with the Chamber of Commerce, Madras, or under the Trade Marks Act. There is also no indication that the respondents are regular manufacturers and traders in beedies, as no specific averments are made to the effect that they maintain accounts or that they pay income-tax or sales-tax or excise duty as is being done by the plaintiff. It is true that these circumstances by themselves are not material.
But what is important to be considered whether the defendants have been using a design on the beedies put forward by them for sale in the market, similar to that of the plaintiff and whether that design is likely to deceive the public into thinking that the beedies produced by the defendants are the beedies produced by the plaintiff. a series of these marks have been produced for my inspection, and on a careful comparison of the two, which course is not a correct method of determining the issue in the case, find there are many points of resemblance e.g., the size of the design, and the shape of the design. It is contended by the learned counsel for the respondents that there are marked variations between the two designs. The elephant is differently shaped and faces a different direction. In the plaintiff's design the elephant faces the right side whereas in the design of the defendants it faces the left side.
Also it is pointed out that the letters used in the plaintiff's emblem are in English having the letters "E. C.J. B." whereas the defendants' emblem contains the writing in Telugu words " (Fighting beedi"). Also the elephant is facing to the leftwards in the design. As correctly pointed out in Kerly's Law of Trade Marks at page 616, the issue is not to be determined by a comparison of he emblems in dispute. The relevant passage at page 616 to 618 in the Text Book "Law of Trade Marks and Trade Names" by Kerly, may be usefully extracted hereunder:
"Two important questions are suggested by the sections concerned with deceptive resemblance: A. Who are the persons whom the resemblance must be likely to deceive or confuse? and B. What rules of comparison are to be adopted in judging whether such resemblance exists?
A. What persons are to be considered.
In accordance with the case decided in suits and actions for the infringement of trade marks before the Registration Act, it is held that the persons to be considered in estimating whether the resemblance between the marks in question is likely to deceive are all of those who are likely to become purchasers of the goods upon which the marks are used, provided that such persons use ordinary care and intelligence.
It is clearly not enough to show the retail dealers buying goods for resale would not be deceived, since they might themselves fraudulently or carelessly make use of the ambiguous character of the trade mark to deceive their customers, the ultimate purchasers. In fact, dealers who buy from the manufacturers in order to sell by retail are often aware of attempted infringements, and are parties to the fraud. Nor is the enquiry to be confined to England, or to persons acquainted with the English language in cases where the goods in question have a foreign market. It must not be assumed that a very careful or intelligent examination of the mark will be made, and if it were shown that the class of persons who bought the goods were illiterate, that would be a material fact in cases where printing entered into the marks; but on the other hand, it can hardly be a bar to the admission of a mark that unusually stupid people, "fools or idiots", may be deceived. Where the trade relates to goods largely sold to illiterate or badly educated persons, plaintiff has often established his case although it has been proved that well educated persons have not been deceived." A person who purchases a certain type of beedi does not wait to see if there is any other emblem and then take the two types of beedies in his hand, compare and then decide for himself which to buy. Normally when an article is purchased it is only that article which is offered for sale that will be seen by the purchaser and this is more so in the case of the purchase of beedies when the article is small and of such trivial value. Therefore, the correct method of resolving the issue is to independently study the design, bear in mind the registered trade mark, try and ascertain whether that design would create in the mind of an ordinary citizen the impression, that what he was buying, is a beedi bearing the registered trade mark.
It approaching the issue, it is also to be borne in mind what type of people handle these goods. Knowing as we do that beedies are smoked mostly by the poorer classes, many of whom in this country are unfortunately illiterate, the question whether the letters are in English or in Telugu, would not ordinarily matter, as it certainly would in the case of purchasers who are literate. If it was not the object of the defendants to make a design similar to that of the registered trade mark of the plaintiff, there are many ways open to the defendants to have prevented possible mistakes by either increasing the size of their own emblem appreciably or altering the shape of the emblem so as to be dissimilar to that of the plaintiff.
As I can only decide the matters prima facie and not on the merits, I am satisfied that prima facie, the emblem putforward by the defendants is capable of and is likely to be mistaken or taken for the emblem of the plaintiff. Hence, the plaintiff's emblem not having been so registered, the only proper order to make is to restrain the defendants from putting forward the beedies bearing the emblem or a ring label which they are now making use of."
In Satyam Infoway Ltd., v. Sifynet Solutions Pvt. Ltd., . it was held by the Apex Court that:
"Apart from the close visual similarity between 'Sify' and 'Siffy', there is phonetic similarity between the two names. The addition of 'net' to 'Siffy' does not detract from this similarity.
According to the respondent the word "Siffynet" which features both as its corporate name and in its domain names was derived from a combination of the first letter of the five promoters of the respondent, namely Saleem, Ibrahim, Fazal, Fareed and Yusuf, and the word "net" implies the business of the respondent. The stand taken by the respondent is that it was not aware of the appellant's trade name and trading style 'Sify'. This not credible for several reasons. In answer to the legal notice issued by the appellant no such case was made. The refusal of the respondent to comply with the demand notice issued by the appellant was based only on an alleged difference between the trade name, 'Sify' and 'Siffynet' and a claimed difference in the field of operation. The High Court has not also found that the respondent-company was unaware or ignorant of the use of the trade name 'sify' by the appellant. The reason put forward by the respondent for the choice of the word 'Siffy' as part of its corporate and domain names appears from the second written statement filed by the respondent before the trial Court where it has been said that the respondent-company was the brain child of its founder Director, Mr. Bawa Salim and that the word 'Siffy' was invented from the first letters of the five persons involved in the setting up of the respondent-company. But only four names were given. The fifth name was given in the counter-affidavit filed in this Court. In the first written statement and the first answer to the interlocutory application of the appellant verified by Bawa Salim as Managing Director of the respondent, no such case as has been put forward now regarding the choice of the name "Siffy" was made out. In fact in the original written statement, the respondent had stated that though its domain name "was got registered in the name of one Mr. C.V.Kumar, now the said person does not have any connection with this defendant since the second defendant is no longer in existence as a partner (sic)." Thus, it appears that the respondent may originally have been a firm because C.V. Kumar, in whose name "Siffynet" was registered, has been described as a partner. Even if this inference is incorrect and the respondent was always a company, we are still not convinced as to the reason why the name "Siffy" was chosen by the respondent. If the originators of the company were the five persons viz., Salim, Ibrahim, Fazal, Fareed and Yousuf why was the domain name of the respondent already registered as "Siffynet" in the name of Mr. C.V. Kumar? Furthermore, the list of names provided by the respondent to support its case that 'Siffy' as an original acronym was based on the initial letters of the respondent-company's promoters seems unsupported by any evidence whatsoever. No document apart from a bare assertion that the five named individuals had any special collective role in the origination or promotion of the business has been filed. The appellant's internet based business was, from 1999, high profile. The evident media prominence to 'SIFY' and large subscriber base could have left the respondent in no doubt as to its successful existence prior to the adoption of Siffy as part of its corporate name and registration of siffynet and Siffy. com as its domain names. It would therefore appear that the justification followed the choice and that the respondent's choice of the word "Siffy" was not original but inspired by the appellant's business name and that the respondent's explanation for its choice of the word "Siffy" as a corporate and domain name is an invented post-rationalisation.
The High Court's finding that no prejudice would be caused to the appellant because it had another domain name was a consideration which might have been relevant if there was a case of bona fide concurrent use and where the right to use was co-equal. The doubtful explanation given by the respondent for the choice of the word 'Siffy' coupled with the reputation of the appellant can rationally lead us to the conclusion that the respondent was seeking to cash in on the appellant's reputation as a provider of service on the internet. In view of our findings albeit prima facie on the dishonest adoption of the appellant's trade name by the respondent, the investments made by the appellant in connection with the trade name, and the public association of the trade name sify with the appellant, the appellant is entitled to the relief it claims. A different conclusion may be arrived at if evidence to the contrary is adduced at the trial. But at this stage and on the material before the Court, we are of the view that the conclusion of the High Court to the contrary was unwarranted."
The Division Bench of Kerala High Court in A.C. Krishna v. Nambisan's Dairy Pvt, Ltd., 1997 (1)KLT 163., held that:-
"In the decision reported in East and Hosiery Mills Pvt. Ltd. v. Agarwal Textiles Mills , the Calcutta High Court considered the resemblance in respect of the get up of the two marks phonetically 'Moti' and 'Sacha Moti'. It was found by the Court that 'Sacha Moti' was used by the defendants to imitate the name 'Moti' of the plaintiffs. There is phonetically similarity between the words. The explanation that the name 'Moti' has been taken from Moti Ram Gupta, father of one of the partners of the defendant firm was not accepted by the Calcutta High Court in the above case. Therefore, even though the defendant used his father's name, it was held that the defendant's use of the name and mark was likely to deceive or cause confusion or injury to the goodwill of the plaintiff's business. The Bombay High Court in the decision reported in Bajaj Electrical Ltd. v. Metals and Allied Products held that when family name of the defendant is identical to trade name of the plaintiff, can it be used? Plaintiff company incorporated under the Companies Act was in the business of electrical accessories etc. from 1938. They changed their name to Bajaj Electrical Ltd. in 1960 and they were selling the goods and the company was known as 'Bajaj Group'. The defendant also used the mark 'Bajaj' when they started sales of steel utensils. It is the contention of the defendant that they are entitled to use their own name as the surname of the partners of defendant No. 1 being 'Bajaj'. Even the goods that were sold by the company were different, court allowed the injunction against the defendants.
In Parker v. Parker (1965) RPC 323) the Court considered a similar question. There, one John Thomas Parker formerly connected with a company carrying on business as estate agents under the name "Parkers" set up in business on his own in the same area also as 'Parkers' an interlocutory injunction was granted to restrain him from doing so, the judge remarking:
"The question is not simply whether the defendant can be prevented from using his own name but whether the defendant can be prevented from garnishing that name ...in such a way that it looks as if the name were being used not by him by the plaintiffs."
In Baume and Co. Ltd. v. A.H. More Ltd. (1958) (2) All E.R., 113) the defendant contended that he is only using his own name bonafide. Plaintiffs, Baume & Co. Ltd. and their predecessors had traded in England as distributors and sellers of watches. The word 'Baume' had been the registered trade mark for the watches. The defendants A.H.More Ltd. began to import and sell watches made by a Swiss Company known as Baume & Mercier, S.A. The watches and the boxes containing them bore the mark 'Baume & Mercier, Geneva". The plaintiffs claimed that this use of the word 'Baume' constituted an infringement of their trade mark and was calculated to pass off the goods sold by the defendants as the plaintiffs' goods. The defendants established that use of the name 'Baume' was an honest use by them of the makers own name. After considering the evidence, it was held that even though no action can be laid for infringement of the plaintiffs' registered trade mark, the use constituted a passing off which should be restrained by injunction because there was real probability that the watches marked 'Baume & Mercier, Geneva' would be regarded as being the same or in some way associated with the plaintiffs' goods and no man is entitled even by the honest use of his own name so to describe or mark his goods as in fact to represent that they were the goods of another person. In John Brinsmead and Sons Ltd. v. Waddington and Sons. Ltd. (1913) 30 RPC 493) Buckley Lord Justice held as follows:
"If a trader takes a name which is not his own name, but is that of a rival trader, and uses it in his trade, no doubt that is every strong evidence that he intends to deceive, and the Court will fasten upon that in any case in which it occurs, but if that is no so, if he is simply using his own name and it proved that its use results in deception, he will be restrained even from using his own name, without taking such steps as will preclude the deception which by hypothesis, is engendered by his using his own name.There are many authorities for this proposition."
Therefore, the crucial question to be considered in this case is whether the use of the name 'Nambeesan' by the defendant is deceptively similar to 'Nambisan's', the plaintiffs' trade mark and whether unwary purchasers will be mislead by the defendants selling in a name similar to 'Nambisan's'.
As a general rule, a person can freely use his own name, or one he has acquired by reputation, although the use of it inflicts damage on someone else who has the same name. This is however, qualified to some extent by the law of passing off. The Parker-knoll Ltd., v. Knoll International Ltd. (1962 RPC 243) both parties were manufacturers of furniture, the plaintiff being a company well known in the United Kingdom and the defendant an American company which had only recently begun to trade in England. Notwithstanding that the defendant company did not more than use its own name on its furniture, the House of Lords, by a majority, granted an injunction to restrain it from continuing to do so without distinguishing its goods from those of the plaintiff. The plaintiff had established that its name had come to denote goods made by it alone and not goods made by it alone and not goods made by anyone else possessing or adopting that name, and the use by the defendant of a similar name did, in the opinion of the majority, amount to the false representation that its goods were the plaintiff's goods. The central question in each case is, therefore, whether the name or description given by the defendant to his goods is such as to create a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the plaintiff. That the defendant used his own name with no intention to deceive anybody does not mean that such a likelihood has not been ruled out, but proof that the defendant did intend to deceive, where it can be made, will materially assist the plaintiffs case. In this case, we have already found that the word 'Nambeesan' is not the defendants name. Therefore, such a defence cannot be taken by the defendants/appellants. Further, even if it is the community's name or second defendant's father's name, it cannot be used by the defendants as the plaintiff has already acquired a reputation and distinctiveness in the market with regard to the sale of milk products by the name 'Nambisan's. From the evidence, it is clear that the plaintiff was using the word 'Nambisan's' for selling their milk products for more than half a century and they have got a reputation in the market. The word 'Nambisan's' had attained a distinctiveness in the milk products market. The name 'Nambeesan' induces customers to buy the goods believing that they are manufactured by the plaintiff. Plaintiff had acquired sufficient reputation in the market in selling goods in the name 'Nambisan's butter', 'Nambisan's ghee', 'Nambisan's butter milk' etc. Now, the question to be considered is whether the defendants' use of the word 'Nambeesan' as 'Nambeesan's Dairy' in the wrappers, labels etc. made use by them is deceptively similar to that of the plaintiffs' usage 'Nambisan's'. The word 'Nambisan' in the trade mark of the plaintiff 'Nambisan's' and the word 'Nambeesan' in the G.K. Nambeesan Dairy' are phonetically similar. In both the goods, the word 'Nambisan' is written similarly in Malayalam. It is pronounced similarly in English. Therefore, from the evidence available, it is clear that the purchaser who does not know that there is another firm called Nambeesans Dairy is likely to be deceived by the defendants using the same name 'Nambeesan'.
As decided by the Supreme Court in the decision reported in Parle Products (P) Ltd. v. J.P. and Co. Mysore (1 supra) 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. They should not be placed side by side to find out if there are any differences in the design etc. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. There, the Court was considering the difference between Parle's Gluco Biscuits manufactured by the plaintiffs and Glucose biscuits manufactured by the defendant. It was held that an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes and the use of the mark are deceptively similar. Now, we may examine to find out whether the defendants' use of the word 'Nambseesan' in their product is deceptively similar. In K.R. Chinna Krishna Chettiarv.
Sri Ambal& Co. and Anr. , the Supreme Court held that the plaintiff's word 'Anbal' is distinctive and essential feature of that trade mark and that word fixes itself in the recollection of an average buyer with imperfect recollections the snuff belonging to the plaintiff. Therefore, the word 'Andal' used by the defendant is deceptively similar. It was held that even if there is no visual resemblance between the two marks that does not matter when there is a close affinity of sound between the words which are distinctive features of the two marks. The contention of the defendant that the word 'Ambal' and 'Andal' have distinctive meaning was also not accepted by the Supreme Court. It was held that phonetical resemblance lead to confusion when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words. According to us, the word 'Nambisan's' used by the plaintiffs and 'Nambeesan' used by the defendants had striking phonetic resemblance.
While considering the word 'Lakshmandhara' and 'Amritdhara' in Amritdhara Pharmacy v. Satya Deo Gupta , it was held that overall similarity between the two names was likely to deceive or cause confusion. It was held by the Supreme Court as follows:-
As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd., the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We mustconsiderthe overall similarity of the two composite words 'Amritdhara' and Lakshmandhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or ever consider the meaning of the composite words as 'current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindu language would go by the etymological meaning and se the difference between 'current of nectar' and 'current of Lakshman'. 'Current of Lakhsman' in a literal sense has no meaning; to give it meaning one must further make the inference that the 'current or stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or town man will perhaps known lakshman, the story of the Ramayana being familiar to him; but, we doubt if he would etymologise to the extent of seeing the so called ideological difference between 'amritdhara' and 'Lakshmandhara'. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments."
In Weber-Stephen Products Co. v. Alrite Engineering (Pty) Ltd. and Ors. (1992) RPC 549) the Supreme Court of South Africa was considering action for passing off. There, the contention that the plaintiffs 'kettle type' barbecue grill soley to its shape and external configuration the plaintiff's products acquired distinctiveness in the market and reputation. The Court held that shape and configuration of products although pertaining to necessary parts of product, capricious in sense that product would operate as efficiently and could be manufactured as economically with different arrangement or shape of its parts. Therefore, since the plaintiff has acquired reputation by the size that the defendant should be injuncted to use 'kettle type' barbecue grill and defendant can manufacture barebecue grill in any other size. The House of Lords in Reckitt and Colman Products Ltd. v. Borden Inct. and Ors. (1990) RPC 341) has considered a case where the plaintiff was selling lemon juice since 1956 in plastic squeeze container which in size, shape and colour resembled a lemon. The word 'Jif was embossed on the side of the container. The defendant started selling lemon juice under the mark 'Realemon'. But, used similar plastic bottles. It was held, after considering the evidence, that passing of had been established in both actions and that the purchasing public had come to associate the natural size lemon container with the plaintiff's lemon juice sold under their brand name Jif. The fact that instead of Jif, Realemon is used was not material as those purchasing plastic lemons in super markets did not read the labels but assumed that whatever they brought must be JIF lemon juice. Lord Oliver of Aylmerton, .after considering the various case laws, summarized the decision for passing off as follows:
"The law of passing off can be summerised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a good will or reputation attached to the goods or services which he supplies in the mind of purchasing pubic by association with identifying get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labeling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognized by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (Whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to reply upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
We are also of the opinion that the word 'Nambisan's' has created a good reputation of the milk products in the mind of the purchasing public by association of its name and by defendants' use of the same name, there is likelihood of deception.
In Law Society of England and Wales v. Griffiths and Anr. ((1995) RPC 16), plaintiffs launched a scheme called Accident Line whereby members of the public could telephone number 0050 192939 for general advice in respect of accidents and personal injuries. The defendants obtained a telephone number 0800 192939 for their own accidental advice service. The Court did not accept the plea of the defendant that there is no dishonest intention and any real chance of confusion and they merely selected a telephone number which did not amount to misrepresentation. It was found that plaintiff had substantial reputation in the variety of activities and the defendant had selected the telephone number intending to divert the business from the plaintiff's scheme and therefore, and injunction can be granted as the telephone number is likely to deceive the public and plaintiff may suffer damages. In British Diabetic Association v. Diabetic Society Ltd. and Ors. (1995) (4) All E.R. 812) it was held that scope of passing off action was wide enough to include deception of the public by one fund raising charity in a way that tended to appropriate and so damage another fund raising charity's goodwill. In the decision reported in Hiralal Parbhudas v. Ganesh Trading Co. and Ors. , it was held by the Bombay High Court that labels 'Hiralal Chhap Bidi and 'Himatal Special Bidi' have overall structural phonetic similarity and therefore, injunction was issued for passing off and further held that the marks must be compared as a whole, microscopic examination being impermissible. Here also, applying the test that marks must be looked at from the first impression of a person of average intelligence and imperfect recollection, the names are deceptively similar.
In Pidilite Industries Pvt. Ltd. v. Mittes Corporation and Anr. it was held that plaintiff was using the name 'Fevicol' for long time and defendant started marketing its goods in the name Trevicol' and the name 'Trevicol' is deceptively similar to the name of 'Fevicol'. It was found in Accutron T.M. reported in 1966 RPC, 152, that the name Accutron is similar to Accurist. It was held in Bular T.M. reported in 1966 RPC 141, that the name buler is likely to deceive for the word 'Bulova' for watches. In Hamsa v. Syed Agencies (1990 (1) KLT, 785) it was held that the name Bismilla used for ball points pens, fountain pens and allied articles is deceptively similar to the articles of the plaintiff marketed in the trade name 'Bismi'. In National Garments v. National Apparels (1989 (1) KLT 855) the plaintiff was using the trade mark Tunofom'. The defendant after retirement from the plaintiff-firm has started an identical business with a trade name Tunoform'. It was held that both are deceptively similar and therefore, injunction was issued. In East End Hosiery Mills case mentioned earlier it was held that the word 'Sacha Moti' is similar to 'Hira Moti'. In Corn Products Refining Company's case mentioned earlier, it was held tha tthe word 'Gluvita' used with reference to biscuits and 'Glucovita' used with reference to Glucose are likely to cause confusion. In Bata India Ltd. v. Pyare Lal and Co. it was held that the defendant's use of the name 'Bata foam' was indicative of their intention as it is deceptively similar to 'Bata' and injunction was granted against the defendant. In Anglo-French Drug Co. (Eastern) Ltd. v. Belco Pharma it was held that BEPLEX AND BELPLEX are phonetically and visually similar and the goods of the defendants are likely to be sold as the goods manufactured by the plaintiff. Therefore, injunction was granted restraining the defendant from using similar trade mark.
Other examples where injunctions were granted for deceptive phonetic resemblance of name are:
(1) Pipe and Pine Tie for liquid soap (1993(50) RPC 405);
(2) Kleen up and Kleen offfor gas cooker cleaner (1934 (51) RPC 129);
(3) Erectico and Erector for toys (1935 (52) RPC 136);
(4) Vaseline and Vanildene for oil (Ana Laboratories Ltd.'s Application -1958 RPC 146);
(5) Unimax and Univac for electrical goods (Unimax T.M. 1979 RPC 469);
(6) Aquamatic and Watermatic for water pistols (Reynold's v. Laffeaty's -1958 RPC 387);
(7) Runs and Sanrus (Ravenhead Brick v.Ruabon-1937 RPC 341);
(8) Leibling and Rheinliebiling for Rhine Wines (Rheinliebling's case - 1966 RPC 68);
(9) Rose Cardin and Rose Garden for consmetics (Rose Cardian T.M. -1955 RPC 246);
(10) Hy-line and Hi-bred for poultry (Pioneer Hi-Bred Corn. Co. v. Hy-line Chicks Pvt. Ltd. - 1979 RPC 410);
(11) Midland Counties Dairy Ltd. and Midland Dairies Ltd. for business in ice creams (Midland Countries Dairy Ltd. Midland Dairies Ltd. -1948 RPC 429);
(12) B.I. Phlogiston and Antiphlogistine for a medical preparation (Bengal Immunity Co. Ltd. v. Denver Chemical Manufacturing Co. - );
(13) Formis and Charmis for cosmetics (Banwaridas Pugalia v. Colgate Palmolive - );
(14) Thangavapavan and Thanga Baspem for chewing tobacco (Arumugam Pillai v. Syed Abbas -);
(15) BK and BK-21 for cycle bells (B.K. Engineering Co. Delhi v. UNHI Enterprises - ); and (16) Virendra Dresses and Varindera Garments for clothes (Virendra Dresses v. Varindera Garments -).
Considering the decided cases and evidence in this case including material objects produced and oral evidence, we are of the opinion that the trade mark 'Nambisan's' used by the plaintiff and 'Nambeesan' used by the defendants are deceptively similar and public are likely to be deceived as phonetically the names are deceptively similar and it is likely that the plaintiff is to suffer damages."
14. In Rothmans v. New Tobacco, (1998) I PLR 103. 'Cambridage' and 'Rothman' s Cambridge' were held to be similar in case of Cigarettes. In Cadilal Laboratories v. Kamath Atul and Co.,1991 PTC 259. the trade marks HERBILv. HURBINOL had been considered. In Exite Laboratories v. A.A. Products (India) and Ors., (1989)1 DL3 67. the deceptive similarity between EXITE and EXIDE had been considered and it was held that "after comparing the two trade marks, they appear to be similar phonetically and also by look, the boxes filed in the case make it clear that the customers, who are to purchase the said goods, are likely to be misled and deceived while making the purchases. As it is not possible for any customer even dealing specially in such goods to make any distinction between the trade mark 'EXITE' and trade mark 'EXIDE', defendant, prima facie, appear to have used this particular trade mark 'EXIDE' with a view to cause confusion amongst the customers nd to take benefit of the reputation built up by the plaintiff with respect to its own goods being sold under the trade mark 'EXITE'. The balance of convenience is in favour of the plaintiff who has been using this trade mark much prior in time than the defendants and the plaintiff is liable to suffer irreparable loss if the defendants are allowed to use the infringed trade mark 'EXIDE.'
15. Reliance was also placed on Surya Agro-Oils Ltd., v. Surya Coconut Oil Industrie, ; Surya Roshni Ltds., v. Electronic Sound Components Co., ; R.S.K.V. Raghavan, trading as R.S. Krishna and Co., Mayuram v. G.R. Gopal and Co. and Ors., AIR 1981 Mase A 161; National Bell Co. v. Metal Goods Mfg. Co. AIR 1971 SC 898; Brij Mohan Dutta v. Jallo Subsidiary Industries Co. (India) Pvt. Ltd., ; Pavunny v. Mathew, 1982 KLT 399; Hindustan Radiators Co. v. Hindustan Radiators Ltd., ; Hardie Trading Limitd, Melbourne, Australia and Anr. v. Addisons Paints and Chemicals Ltd., Madras and Anr., (1991) 1 MLJ 218; Khemrai Shrikrishnadas v. Garg and Co. and Anr., ; Century Traders v. Roshan Lal Duggar and Co. and Ors., ; Durga Dutta Sarma v. Navaratna Pharmaceutical Laboratories, ; and Pazhancottai Match Factory a firm carrying on business in Partnership at Pazhancottai Kalugumalai under No. 1847 of 1963 under Indian Partnership Act v. Siva Match Industries, a firm manufacturing safety matches at Puliangudi P.O., Tirunelveli District and Ors., (1975) II MLJ 21.
16. The decisions are too numerous and in view of the settled principles, the question which may have to be decided is whether there is deceptive similarity between the two trade marks of the competing parties and whether the deception is of such a nature which would mislead an ordinary customer may have to be decided. Much had been commented on the findings recorded by the Trial Court. The Trial Court appreciated the evidence of P.W.1 and D.W.1 in detail and also the documentary evidence available on record and further had taken into consideration the aspect that the defendant is claiming under an unregistered trade mark and yet another finding had been recorded relating to the non-replying of the notice issued by the plaintiffs. It is no doubt true that by the mere non-reply itself, it cannot be said that the defendant had admitted the claim of the plaintiff, but however, the said aspect also can be taken into consideration. It is no doubt true that the word "Hassan" and "Hussain are slightly different, but in pronunciation, there appears to be some similarity. On comparison of the colour, the design and the wrapper, there are several similarities. It is true that photo had been displayed on the wrappers and unless there is close observance, a beedi purchaser who is an ordinary rural person or a worker in a factory, it cannot be said that such persons would not be misled by the similarities, and hence, the test of deceptive similarity had been established despite certain dissimilarities which had been highlighted by the Counsel forthe appellant. On comparison of the documents available on record and also on appreciation of the oral and documentary evidence, this Court is of the considered opinion that the findings of the Trial Courtare well-considered findings. Apart from this aspect of the matter, the distinctive features or the striking features which had been pointed out by the Counsel for the appellant-defendant are not of such a nature by which both these are clearly distinguishable and definitely they are not of such a nature by virtue of which the possibility of an ordinary customer being misled cannot be totally ruled out. It is pertinent to note that in a case of deceptive similarity, the same may have to be decided taking into consideration the customers who would be using such commodities, the beedies, and as they would be used by the rural folk, the rural labour or the factory labour, as the case may be, this aspect also\was taken into consideration and the evidence of P.Ws.1 and 2 had been appreciated in proper perspective. This Court also had carefully compared the competing trade marks and unless it is closely observed, the dissimilarities pointed out by the Counsel for the appellant cannot be identified in ordinary course. It is not as though the Trial Court had not appreciated the evidence of D.Ws.2 and 3. The evidence of D.W.1 and the documentary evidence available on record produced by the defendant and the evidence of D.Ws.2 and 3 also had been taken into consideration and in the light of the legal position and also taking into consideration the overall facts and circumstances, a finding had been recorded that there is a deceptive similarity and the dissimilarities are not such striking and distinctive features so as to distinguish one trade mark from the other. In the light of the findings recorded in detail, this Court is of the considered opinion that the said findings need not be disturbed in any way and the same are hereby confirmed.
17. Point No. 3:- In the light of the findings recorded above, the appeal is devoid of merit and accordingly, the same shall stand dismissed. However, this Court makes no order as to costs.