Madras High Court
Godavari Match Industries, ... vs The Comorin Match Industries Pvt. Ltd., ... on 8 October, 1999
Equivalent citations: (2000)1MLJ556
ORDER
1. The defendants in O.S.No.1 of 1998 on the file of the Principal District Judge, Srivilliputhur and the plaintiff therein are the appellant and the respondent respectively in this appeal before this Court. In this judgment the parties to the appeal would hereinafter be referred to as the plaintiff and the defendants. The said suit was filed for an injunction restraining the defendants from manufacturing and selling match boxes containing the infringing trade marks of the plaintiff; for accounts; damages estimated in the plaint at Rs.500 or such other sum as may be found due by the court and for a mandatory injunction directing the defendants to produce into court the offending marks and labels including blocks and dyes. On contest the suit was decreed restraining the defendants from infringing the plaintiffs trade mark for accounts and surrender of the offending marks, labels, blocks and dyes. It is the correctness of the said judgment that is being questioned in this appeal before this court by the defendants.
2. The case of the plaintiff is summarised as hereunder:
"The plaintiff is a Private Limited Company incorporated under the Indian Companies Act. The plaintiff is engaged in manufacturing and selling safety match boxes from 1951. The match boxes of the plaintiff has got reputation almost all over India. In this trade it is the custom and practice to affix a label with a picture or symbol or letter on the top comer of the outer match box in order to identify it's makers. Similarly the plaintiff also invented a label and affixed the same on top of each and every match box manufactured by them. The said label was also approved by the Assistant Collector of Central Excise at Madurai by order dated 3.12.51. The label contains the picture of a man with a whip on his right hand ploughing with the help of two bulls. On the left side top corner of the label, the words "KISAN" is written and on the right side the same words in Hindi are written. The plaintiffs label is produced along with the plaint. The said label is also registered in the name of the plaintiff by the Registrar of Trade Marks, Bombay in Clause 34 of the Trade and Merchandise Marks Act, 1958 on 8.2.60, the registration number being 194390 in respect of the matches except for sales in West Bengal, Bihar and Assam. The plaintiff is using the said trade mark since then exclusively. The registration of the plaintiff's label is renewed upto date and it is in force. The plaintiff's label has become very popular in the market and it has been associated with the public. The product of the plaintiff is of a high quality and it is used by literate and illiterate. The sates turn over of the plaintiff is increasing year after year. On 30.7.96 it was brought to the knowledge of the plaintiff by their lawyer's letter dated 27.7.96 that one Venus Match Works, Mamasapuram had applied for registration of it's match box label, which is identical and deceptively similar to that of the plaintiff's label. That label also contains the picture of a man with a whip and two bulls. That application was allotted with No.466983 and was advertised on 2.2.97. The plaintiff filed their objections to the registration of the said mark under section 21 of the Trade and Merchandise Marks Act. After hearing both the parties, by order dated 15.9.97, that application was treated as abandoned. That order had become final. All the defendants are proprietary concerns and they are also manufacturing and selling safety match boxes. All the proprietors of the defendants were originally working in Venue Match Works, Mamasapuram referred to earlier. After the said Company surrendered it's licence on 23.7.96, the defendants are running separate match factories under the name and style shown in the cause title. The defendants are fully aware of the plaintiff's trade mark; it's popularity as well as it's registration. The defendants are also aware about the application made by Venus Match Works for registration and it's abandonment. However with a fraudulent intention to pass off their match boxes as that of the plaintiff's, the defendants have started manufacturing and selling recently match boxes containing a label which is deceptively similar to that of the plaintiff's. The defendants have imitated the plaintiff's trade mark label. They have also used the colour combination and the picture of a man with a whip on his right hand and two bulls in their label. The purchasers of safety match boxes are mostly illiterates, who do not know English and Hindi at all. They purchase the plaintiff's match boxes mainly on the basis of the design and get-up of the picture. The totality of the impression, which an ordinary and an unwary person will be carrying in his mind as regards the plaintiff's label is the same when he looks at the defendants label. The match boxes of the plaintiff is well reputed, especially in the States of Uttar Pradesh, Andhra Pradesh and Tamil Nadu apart from other States also. The plaintiff has a well established lucrative market. The plaintiff spent huge amount for advertising his trade mark's label. The plaintiff had put hard work, labour and skill to popularise his label. The defendants' label are yet to be registered. The defendants had infringed the plaintiff's right under their registered trade mark. The defendants' match boxes are of inferior quality. Therefore the plaintiff's sale of match boxes in the market is likely to be affected, as their product is of a superior quality when compared to that of the defendants.
3. The first defendant filed a written statement, which was adopted by defendants 2 to 5 by filing a memo to that effect. The defence as disclosed in the written statement is as follows:
"The plaintiff is called upon to prove that it's trade mark is incorporated under the Indian Companies Act. The person, who had verified the plaint has no authority to do so and therefore the suit must fail. The trade activities of the plaintiff is denied and the plaintiff is put to strict proof of the same. The trade mark of the plaintiff is "KISAN" with a picture of a man ploughing with the help of two bulls with a whip on his right hand whereas the trade mark of this defendant is "KRISE RACE" with the picture of a man sitting with a whip on his right hand in a bullock cart with two bulls. Therefore both the labels are polls apart and totally dissimilar. On the back side of the safety match box of the defendants, the picture of a mickey mouse is found. The defendants purchased the trade mark "KRISE RACE" from Venus Match Works in the year 1994 and also obtained Central Excise approval for the same on 27.1.94. The defendants predecessor in Interest used the same from 11.6.85 and it was continued to be used by the defendants from 27.1.94. Defendants 2 to 5 are using the said trade mark with the permission of the first defendant. The plaintiff's claim that their trade mark, is registered, is denied. The trade mark label of the plaintiff and that of the defendants are different from each other. The plaintiff's claim regarding the popularity of it's product and the trade mark, is denied. The plaintiff has to prove that it's trade name and mark were approved by the Assistant Collector of Central Excise on 3.12.51, The claim of the plaintiff that they had knowledge about the application of Venus Match Works for registration on 27.7.96 is denied. Venus Match Works by it's Proprietor was openly manufacturing and selling the safety matches under the trade mark label "KRISE RACE" since 11.6.85 and the plaintiff is well aware about the same, being a businessman in the same field. Since Venus Match Works parted with their rights in the said label in favour of the defendants, their application for registration came to be abandoned. When the plaintiff filed objections to that registration application. Venus Match Works was not using the trade label "KRISE RACE" and they have no interest to defend that application. It is denied that this defendant was working with Venus Match Works at Mamsapuram. Since he obtained the rights from Venus Match Works in the year 1994, this defendant had been openly manufacturing and selling safety matches bearing the trade mark "KRISE RACE" in a large scale. The defendant had already applied for registration of the label "KRISE RACE" and it is pending with the trade marks Registry. There is a lot of difference between the two labels and therefore there is no question of any mistaken identity. The picture of the micky mouse is in the defendants label and the same is not in the plaintiff's label. A comparison of the two trade mark labels keeping them side by side is unknown to trade marks law. The case of the plaintiff therefore must fail."
4. On the side of the plaintiff one witness was examined as P.W.1 and as many as 14 exhibits were marked as Exs.A.1 to A14. On the side of the defendants two witnesses were examined as D.Ws.1 & 2 and as many as 18 exhibits were marked as Exs.B.1 to B.18. The Proprietor of the 5th defendant Company is D.W.1. D.W.1's wife is the Proprietrix of the second defendant Company. The Proprietor of the 3rd defendant Company appears to be the father of the Proprietor of the 5th defendant Company. The Proprietors of the 1st and the 4th defendant Company appear to be brothers of the Proprietor of the 5th defendant Company. Therefore it is clear that they appear to be the members of the same family. The learned trial Judge on the above pleadings framed the following issues:
(1) Whether the suit filed by the person verifying the pleadings on behalf of the plaintiff is authorised to do so?
(2) Whether the plaintiff's label and the defendants label are deceptively similar?
(3) Whether the plaintiff's label is registered before the Registar of Trade Marks?
(4) Whether the order passed by the Assistant Registrar of Trade Marks dated 15.9.97 is binding on the defendants?
(5) Whether the defendants had committed infringement of the plaintiff's right under the Trade and Merchandise Marks Act?
(6) Whether the plaintiff is the long user of the Trade Mark Label?
(7) Whether the defendant is liable to render true and proper accounts?
(8) Whether the plaintiff is entitled to the relief of permanent injunction?
(9) Whether the plaintiff is entitled to the relief of damages?
(10) To what relief is the plaintiff entitled?
The learned trial Judge answered Issue No.1 in the affirmative in favour of the plaintiff. The answers to all the other issues namely, 2 to 9 went in favour of the plaintiff. As already stated the suit was decreed on the lines indicated in the earlier portion of this judgment, the correctness of which is being questioned in this appeal.
5. Heard Mr. R. Thiagarajan, learned senior counsel appearing for the appellants as well as Mr.T.R. Rajagopalan, learned Additional Advocate General appearing for the respondent. The learned senior counsel for the appellants contended the following points The trade mark of the defendants is not identical to the trade mark of the plaintiff. Therefore the plaintiff cannot succeed on that short ground. When the trade mark of the defendants and the trade mark of the plaintiff are not identical, then the plaintiff to succeed, must establish that there is either visual similarity or phonetic similarity, which has not been done in this case. Inasmuch as the plaintiff, to succeed, must establish that the defendants trade mark has a close resemblance to that of the plaintiff's trade mark, which is likely to cause confusion in the mind of an unwary purchaser, the plaintiff cannot succeed since he has not even established this. Therefore the suit must fail. It is well established that no two trade marks should be compared side by side or feature by feature to decide whether one trade mark is deceptively similar to that of the other. But only the overall similarities should be taken into account. If the trade mark concerned in the suit is considered by overall similarities, then it is clear that the trade mark of the defendants is totally dissimilar to that of the trade mark of the plaintiff. The trade mark of the plaintiff consists of two ploughing bulls attached to a plough and controlled by a man in a standing posture with a whip on his right hand. The man is shown to have a head gear made of cloth. On the other hand the trade mark label of the defendants consist of a chariot pulled by two bulls and controlled by a man in a sitting posture with a whip on his right hand and with a totally different type of head gear. Therefore these two features are totally dissimilar to each other and both convey two different meanings and concepts to the on looker. The difference is so very drastic and appealing that there is no possibility at all for any one to get confused by deception. Even the name "KISAN" in the plaintiff's trade label and the name "KRISE RACE" in the trade label of the defendants, do not have any phonetic similarity. Therefore in the absence of either visual or phonetic similarity, it cannot be said by any stretch of imagination that the trade label of the defendants closely resembles with that of the trade label of the plaintiff. Contending contra Mr.T.R.Rajagopalan, learned Additional Advocate General made the following submissions:
Though it is true that two labels should not be compared side by side to decide about the deceptive similarity of one with the other, yet the long line of decisions do establish the practice of noting the essential and dominant features of the label alone to decide whether there is any deceptive similarity between the two labels. According to the learned Additional Advocate General, the dominant feature in the label of the plaintiff is two bulls attached to a plough and controlled by a man in a standing posture with a whip on his right hand. The man is shown to have a head gear made of cloth. The dominant feature in the label of the defendants also is two bulls attached to a chariot and controlled by a man in the sitting posture with a whip on his right hand. He is also shown to have a head gear made of cloth. On these two dominant features, the learned Additional Advocate General would contend that the first and the immediate impression in the mind of an unwary and illiterate purchaser with an imperfect recollection would be only the bulls under the control of a man holding a whip on his right hand having a head gear. If such a buyer closes his eyes to the label of the plaintiff and then looks at the label of the defendants, then he will be carried away by only the dominant feature referred to above and not by any minor and subtle differences that are shown to be in the two labels. Testing the two labels in the manner referred to above, the learned Additional Advocate General would contend that there cannot be any difficulty in holding that the defendants label bears a deceptive similarity to that of the plaintiff. When the dominant and essential features in the two labels are strikingly similar or at least close to each other, then the insignificant difference in the label namely, the name of "K1SAN" in the plaintiffs label and the name of "KRISE RACE" in the label of the defendants, really does not matter much as the same will never enter into the mind of an unwary and illiterate purchaser. In support of his contention Mr. R.Thiagarajan, learned senior counsel brought to my notice a judgment of the Hon'ble Supreme Court of India in a case reported in Parle Products v. J.P. & Co. Mysore, . In support of his contention, Mr.T.R.Rajagopalan, learned Additional Advocate General brought to my notice the following citations:
(1) T.B. & Sons v. Prayag Narain, AIR 1940 PC 86 (2) Abdul Rahim v. G.S.Muthiah & Brothers, AIR 1958 Mys. 134 (3) James C. & Brothers v. M.S.T. Company, (4) Ciba Ltd. v. M. Ramalingam, (5) Chinnakrishnan Chettiar v. Sri Arnbal & Company, 1964 (2) MLJ 206 (6) M/s. Hiralal Parphudas v. M/s. Ganesh Trading Company, (7) Durga Dutt Sharma v. N.P. Laboratories, (8) Ruston & Hornby Limited v. Z. Engineering Company, (9) Roche & Company v. G. Manners & Company, (10) Parle Products v. J.P. & Company Mysore, (11) M/s. Wockhardt Limited, Mumbai v. M/s. Aristo Pharmaceutical 8 Limited, Chennai, 1999 (2) MLJ 467 (12) National Chemicals & Colour Co. v. Reckitt & Colman of India Ltd., Cases & Materials on Trade Marks 715 (13) Daimler Benz AktiegeeelIschatt v. Hybo Hindustan, (14) Girnar Tea & Another v. Brooke Bond (India) Ltd., Cases & Material on Trade Marks 1125 (15) Kewal Krishan Kumar Trading as Kumar Dal Hills v Akash Spices & Food Industry, Cases & Material on Trade Marks 266 (16) Vishnudas Trading as Vishnudas Kishendas v. The Vazir Sultan Tobacco Co. Ltd. Hyderabad & Another, Cases & Material on Trade Mark 888 (17) Madan Lal Arora v. Soni Udyog & another, Cases & Materials on Trade Marks 226 (18) Blue Star Ltd. v. Sidwal Refrigeration Industries (P) Ltd. & another, Cases & Material on Trade Marks 1066 (19) Karle on Trade Marks 12th Edition, Pages 439, 440, 447 & 448
6. In the light of the arguments advanced by the learned counsel on either side mainly on the issue of one label being deceptively similar to that of the other and inasmuch as there being not much of an attack on the finding rendered by the learned trial Judge on the competency of the person, who had verified the plaint; about the truth or otherwise of the registration of the plaintiff's trade mark and whether the plaintiff is the long user of their trade mark label, I am of the opinion that the following issues only arise for consideration in this appeal:
(1) Whether the plaintiff's label and the defendants' label are deceptively similar?
(2) Whether the defendants had committed infringement of the plaintiff's right under the Trade and Merchandise Marks Act?
(3) Whether the order passed by the Assistant Registrar of Trade Marks dated 15.9.97 is binding on the defendants?
(4) Whether the defendant is liable to render true and proper accounts?
(5) Whether the plaintiff is entitled to the relief of permanent injunction?
(6) Whether the plaintiff is entitled to the relief of damages?
(7) To what relief is the plaintiff entitled?
7. There does not appear to be much of a difference in the argument of the learned senior counsel for the appellant and in the argument of the learned Additional Advocate General that in deciding the deceptive similarity of one label with that of the other, the broad and essential features found in the two labels alone should play a decisive part in the ultimate decision making process. The learned senior counsel for the appellants as well as the learned Additional Advocate General are also not at variance in contending side by side comparison of the two labels involved in the suit is impermissible in law and they are also unanimous in their submissions that it is the case of an unwary purchaser of average intelligence with imperfect recollection of mind alone should be the basic criteria in deciding whether there is a deceptive similarity between the two marks and in so doing, what an expert or a man of above average intelligence would do in such a situation, would be totally extraneous. In the judgment of the Hon'ble Supreme Court of India relied upon by Mr. R.Thiagarajan, learned senior counsel for the appellant. It has been held as follows:
Parle Products v. J.P. & Company Mysore, "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 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. It is of no use to note on how many points there is similarity and in how many others there is absence of it."
The learned Additional Advocate General took me through the relevant paragraphs in Karly'e Law of Trade marks and Trade names, 12th Edition wherein at page 439 it has been stated as follows:
"When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on the mind might be very different. On the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the Idea which would remain with any person seeing them apart at different times might be the same."
At Page 447 of the same book it has been stated as follows:
"A customer can only contrast the mark upon the goods offered to him with his recollection of the mark used upon those he is seeking to buy, and allowance must he made for this in estimating the probability of deception. Any other rule would be of no practical use. It has to be borne in mind that the ordinary purchaser has only "an ordinary memory".
"The question is not whether if a person is looking at two trade marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed trade mark in the absence of the other trade mark, and in view only of his general recollection of what the nature of the other trade mark was, would be liable to be deceived and to think that the trade mark before him is the same as the other, of which he has general recollection."
In the following judgments relied upon by the learned Additional Advocate General, the principle of law relating to infringement of a trade mark is elated and they are as follows:
T.B. & Sons v. Prayag Narain, AIR 1940 PC 86:
"The test of comparison of the marks side by side is not a sound one, since a purchaser will seldom have the two marks actually before him when he makes his purchaser the marks with many differences may yet have an element of similarity which will cause deception, more especially if the goods are in practice asked for by a name which denotes the mark or the device on it."
Abdul Rahim v. G.S. Muthiah & Brothers, A.I.R.1956 Mys. 134:
"It is well established that it is not superficial differences or differences in detail that matter but that the question has to be determined bearing in mind the essential features of the two marks. In doing so, it is not the visual impression created when the two marks are seen side by that should constitute the criterion but whether the essential features of the mark in question lease such an impression that they are likely to cause confusion of deception in relation to the customer's recollection of the essential features of the other mark."
Ciba Ltd. v. M. Ramalingam, AIR 1951 Bom. 56 :
"What is important is to find out what is the distinguishing of essential feature of the trade mark already registered and what is the main feature of the main idea underlying that trade mark, and if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea then ordinarily the registrar is right if he comes to the conclusion that the trade mark should not be registered. The real 'question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence would react to a particular trade mark what association he would form by looking at the trade mark and in what respect he would connect the trade mark with the goods which he would be purchasing."
AIR 1951 Bom. 153:
"It is impossible to accept that a man looking at a trade mark would take in every single feature of the trade mark. The question would be, what would be normally, retain in his mind after looking at the trade mark? What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark."
"When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should know whose goods they are buying and with when particular goods are associated. It is therefore essential that the register should not. contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry, whereas he is buying the goods of another person or firm or industry."
This judgment refers to an earlier judgment in the case reported in In re Planet 1st Co.'s Application, 1906 (23) RFC 774 at Page 777) wherein it has been held as follows:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is. likely to happen if each of those trade mark is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all these circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit but that there will be a confusion in the mind of the public which will lead to confusion in the goods, then you may refuse the registration, or, rather, you must refuse the registration in that case."
In M/s. Hiralal Parphudas v. M/s. Ganesh Trading Company, A.I.R 1984 Bom. 218 it has been held that while considering the question of any deceptive similarity between the two labels, the approach of the court must by as follows;
"the approach of the court must be from the point of view of a man of average intelligence and of imperfect recollection and to such a person the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause confusion between them."
"What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic collection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, (h) 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 and (i) overall similarity is sufficient. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances."
In Durga Dutt Sharma v. N.P. Laboratories, it has been held as follows:
"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 an imitation, no further evidence is required to establish that the plaintiff's lights 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."
"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 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 Roche & Company v. G. Manners & Company, it has been held as follows:
"The marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark."
In M/s. Wockhardt Limited, Mumbai v. M/s. Aristo Pharmaceutical 8 Limited, Chennai, 1999 (2) MLJ 467 the learned Judges after referring to all the case laws under the Trade Marks and Merchandise Act summarised their conclusions (totally 13 in number). It is better that in this judgment I extract conclusions 4 to 11 alone, which appear to be of great use in deciding the dispute between the parties in this appeal.
(4) When a number of marks all have a common element, may it be prefix, suffix or root i.e., essential part or the core of the mark, they come to be associated in the public mind as an indication of the same source, which misleads of causes deception of confusion. (5) It is the common element that has to be identified in the impugned mark and the registered trade mark and if such common element is highly distinctive and is not just a description or a commonly used word, the likelihood of deception or confusion would be very much there despite the fact that it may differ in similarity in certain letters. (6) The question has to be approached from the point of view of an unwary purchased and not from the point of doctor's prescription or the advice of chemists, druggists or pharmacists as they may do it in a craze to clear the commodity because it treats the same ailment. In such a situation, there may be likelihood of deception or confusion coupled with anxiety of the dealer to cause confusion on the consumer.(7) The nature of the commodity the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration. (8) Marks must be looked at from the first impression of a person of average intelligence and imperfect recollection. (9) Marks must be compared as a whole, microscopic examination being impermissible. (10) The broad and salient features must be considered, for which the marks must not be placed side by side to find out the differences in design. (11) Overall similarity is the touchstones."
In cases and Materials on Trade Marks Page 715, it has been held that "one cannot compare two trade marks by putting them side by side by trying to find out similarities and differences in the two marks. What one has to see in the overall impression which the trade mark gives. Because this is what members of the public carry in their minds."
8. Having the position in law as deductible from the above referred to Judgments brought to my notice by Mr.R.Thigarajan, learned senior counsel for the appellants as well as Mr.T.R. Rajagopalan, learned Additional Advocate General for the respondent, let me analyse the case on hand. Ex.A.5 is the certificate of registration of the trade mark of the plaintiff bearing Regn No.194390 Ex.A.3 is the label of the plaintiff. Ex.A8 is the label of the defendants. Ex.B. 1 is corresponding to Ex.A.8 with an additional picture of a mickey mouse to be pasted on the one side of the match box. Ex.B.8 is the application of the first defendant before the Registrar of Trade Marks to register his trade label. The label affixed to that application is the replica of Ex.B.1. Ex.B.3 is the proceedings dated 27.1.94 issued by the Excise Authorities approving matches manufacturer label in favour of the first defendant. The label approved is the replica of Ex.B.1 in all aspects. Exs.B.4, B.5, B.6 and B.7 each dated 27.1.94 are on the same lines as Ex.B.3 and it relates to defendants 2 to 5 respectively. The labels affixed are similar. Ex.A.7 is the order dated 15.8.97 issued by the Assistant Registrar of Trade Marks trading Application No.4666983 in the name of Muthukrishnan Naidu Subbu Raman, Venus Match Works, No.45, Karuppanchetty St, Mamsapuram-626110 as abandoned. It is seen from Ex.A.7 that the applicant in that proceedings is Venus Match Factory, Mamsapuram and the second defendant is described to be Venus Match Works Mamsapuram. I have already noticed that the proprietor of the first defendant, the fourth defendant and the fifth defendant appear to be brothers namely, son of Ramiah. The proprietor of the third defendant is Ramiah himself. The proprietrix of the second defendant is none else than the wife of the fifth defendant. Therefore it is clear that the defendants appear to be the members of the same family. Exs.B.10 to B.14 are shown to be labels of match boxes of different manufacturers. Those labels also appear to show two bulls controlled by a man with a whip on his right hand with a head gear made of cloth. The man is shown to be either sitting in a cart or a chariot or shown to be a man ploughing the field in a standing posture. These are all the overall documentary evidence available in this case.
9. The fact that several other manufacturers are shown to be using the label as referred to earlier would not by itself, in my opinion, deny the plaintiff his right, if he makes out a case against the defendant in the present suit. The learned Additional Advocate General stated in the bar that the plaintiff had taken action against all the manufacturers, who are infringing the trade label of the plaintiff and the suits filed against them are pending. In our case, the suit is stated to have been decreed. Whatever it is, I am not taking that aspect into account, since I am of the opinion that the fact that several others are using the trade label in the same business, which may amount to infringement of the trade mark of the plaintiff, may not really matter much in deciding the dispute between the parties in the present suit. It is not the case of the plaintiff in the suit that there is a phonetic similarity in the label of the plaintiff and the label of the defendants. The word used in the label of the plaintiff is "KISAN" and the words used in the label of the defendant are "KRISE RACE". Even the learned Additional Advocate General fairly stated that he is not advancing arguments on the ground of phonetic similarity between the two labels. To a question put by this court, the learned Additional Advocate General stated that the case of the plaintiff is that there is visual similarity between the two labels. Even Mr.R. Thiayagarajan, learned senior counsel for the appellants advanced arguments before this court only on the point of there being no visual similarity. The stress of the argument of the learned senior counsel for the appellants is that, if the overall similarities available in the two labels are taken into account, then it cannot be said that there is any visual similarity. It is his contention that in the label of the plaintiff, the picture of a man is shown to be ploughing the field in a standing posture with two bulls attached to a plough under his control with a whip on his right hand and a head gear made of cloth. Whereas the trade label of the defendants contain the picture of a man seated on a chariot (different from a cart) pulled by two bulls under his control and the man is shown to be having a whip on his right hand with a head gear made of cloth. The man in the plaintiff's label is the tiller of the soil and the man in the defendants label is a man in the chariot. Though the common feature may be the bulls, yet in view of one man being on the field (plaintiff's label) and the other man sitting on the chariot (defendants label), there would be no cause for any confusion at all even in the mind of a man, who has an imperfect recollection of memory. According to the learned Additional Advocate General the essential and dominant feature in the label of the plaintiff and in the label of the defendants is two bulls under the control of a man with a whip on his right hand. It is this common feature that will enter firmly in the mind of an unwary purchaser with an imperfect recollection and it is this feature which such a purchaser would be able to retain in his mind. Therefore this common feature alone should be taken into account to decide whether there is any deceptive similarity between the two labels are not and the other small differences, even if they are shown to exist, shall be out of consideration. As said, it is the view point of the buyer and his interest alone should be in the mind of the court, which is called upon to decide whether there is any infringement of trade mark. In addition to that, whether the registered trade mark and the deceptively similar trade mark are used in the same product, is another criteria, which also should go into the mind of the court. Last but not the least, the class of buyers also has a bearing. In these modern days where electronic items rule the market, gas lighters and electric lighters are house-hold articles in the houses of even low income group people, not to speak about the people in the higher income group. Therefore the market for match boxes is only at the last level of the society where illiteracy is of a high percentage.
10. Often it is held by courts that whenever the question of infringement of a trade mark comes, the court must have in its mind a man of intelligence below par and an unwary purchaser with an imperfect recollection of memory. The label of the plaintiff as well as the label of the defendants contain more or less the same picture of two bulls postioned in the same place; facing the same direction and controlled by a man with a whip on his right hand. The man in both the labels is shown to be having a head gear with a cloth, though in the label of the defendants, the design of the head gear appears to be slightly different and the difference is so minute that it will easily escape the attention of even literate and cautious people. Therefore the first and effective impression in the mind of the buyer belonging to the class, who go in for match boxes, would be only the dominant feature referred to above. The message that the plaintiff's label would convey to such a buyer would be the two bulls under the control of a man with a whip on his right hand. When an infringed trade mark label is seen by an unwary buyer, he does not have the opportunity of seeing the registered trade mark side by side. In such a situation one has to test the buyer's memory and the impression in his mind of the bulls under the control of a man with a whip on his right hand on the registered trade label and this impressive impression in his mind will definitely deceive him when he looks at the infringed trade label to treat that as the label of the plaintiff. The insignificant differences that are shown to exist when the two labels are compared, are too small and trivial, which will never get impressed in the mind of any buyer much less an unwary buyer of an ordinary intelligence with imperfect recollection of memory. It is also not possible to hold that in view of the words "KRISE RACE" found in the label of the defendants and the same not being found in the label of the plaintiff, the two labels are totally dissimilar and therefore there would be no confusion in the mind of the buyer. Equally so the presence of a chariot in the label of the defendants and the absence of the same in the label of the plaintiff. In fact such an analysis is stated to be impermissible as found by the Hon'ble Supreme Court of India in one of the Judgments referred to earlier namely, Roche & Company v. G. Manners & Company, . Except probably for the difference in the words found in the two labels as referred to above namely, "KISAN" (label of the plaintiff), "KRISE RACE" (label of the defendants) and the chariot (label of the defendants) all other overall features in the label of the defendants appear to be resembling so closely to the label of the plaintiff. Inasmuch as the plaintiff's trade mark is a registered trade mark, his statutory right under section 28 of the Trade and Merchandise Marks Act of 1958 should be protected. The label of the defendants is found to be so nearly resembling with the mark of the plaintiff and there is no doubt at all that it is likely to deceive or cause confusion in the mind of an unwary purchaser.
11. The fact that even in the year 1994 the Excise Authorities had approved the label of the defendants for the match boxes, would not in any way alter the situation. The approval given by the Excise Authority is not going to be binding either on the Authority exercising power under the Trade and Merchandise Marks Act, 1958 or on the Court, which is called upon to decide whether there is any infringement or not. The fact remains that Venus Match Works at Mamsapuram had applied for registration of label for their match boxes. That label is the label which the defendants are using now. On 15.8.97 under Ex.A.7 the Assistant Registrar of Trade Marks dismissed that application as abandoned. The first defendant claims that has got the right under that label even in the year 1994 from Venus Match Works. Except his interested oral testimony and pleadings, there is no other documentary evidence to substantiate such a transfer. Defendants 2 to 5 are claiming to be users of the label with the permission of the first defendant. In any event they claim to be using the same from the year 1994 whereas the plaintiff got their trade mark registered in the year 1960 and using it since then. Therefore I am inclined to hold that the first defendant had not established beyond doubt the transfer of the rights under the label used by Venus Match Works. Assuming there is a transfer by Venus Match Works, even then it would not alter the situation, inasmuch as the label used by the defendants is found to be infringing the registered trade mark of the plaintiff.
12. The oral evidence of P.W. 1 shows that the label of the plaintiff was registered on 8.2.60; it is renewed periodically and it is in force. His evidence further shows that match boxes with Ex.A.3 label of the plaintiff has good market and the buyer on seeing the label would immediately come to the conclusion that it is the product of the plaintiff. The buyers of match boxes normally only look at the label of the match box before they buy it. The label of the plaintiff and the label of the defendants (Exs.A.3 and A.8) are deceptively similar to each other and an ordinary buyer will not be in a position to decide which is the product of the plaintiff and which is the product of the defendants. It is no doubt true that the attention of this witness was drawn to the differences that are shown to exist between the two labels (Exs.A.3 and A.8) and there is a difference between the ploughing bulls and the bulls that pull a cart. As already noticed, in this judgment it is not possible to pick up any particular feature in one label and then point out that the same is not available in other the label and therefore both the labels must be held to be dissimilar. D.W.1 in his evidence would also state about the two differences that could be seen in the two labels namely, Exs.A.3 and A.8. He would admit in his evidence in cross about the some common features available in both the labels i.e.Exs.A.3 and A.8. D.W.2 in his evidence would state that the buyers of the match box would first go for the quality and then go for the label and the company which manufactures the same. If any one sells inferior quality of matches with the label of another match box of a superior quality, then the buyers or the dealers would send a complaint to the owner of the registered trade mark label. In his evidence in cross he would state that by a mere look at the label found on the match box, it will be easy to find out as to who is the manufacturer of the same. The evidence of D.W.2 therefore clinchingly establishes that in Match Box Industry, labels play a leading role in the decision making process of the buyer. The evidence of the witnesses referred to above in the context of my discussion in the earlier portions of this judgment on the deceptive similarity between the two labels, leaves no room to doubt that the plaintiff had established a case for a decree in his favour.
13. Under these circumstances, in find that the learned trial Judge had not committed any error either in law or on facts in decreeing the suit. The finding of the learned trial Judge that the defendants label is a clear infringement of a plaintiff's trade mark label, is supported by clear appreciation and sound reasons. Accordingly I find no merits in this appeal and consequently the same is dismissed with costs.