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1. This appeal is against a) decree of a division bench of the High Court of Judicature at Allahabad dated March 13, 1935. That Court affirmed the decree of the Additional District Judge of Cawnpore in an action brought by the appellants to restrain infringement of trade mark rights and passing-off. At the hearing before their Lordships the respondents were not represented; but the case of the appellants was placed before the Board with equal ability and fairness by their counsel.

2. The appellants are manufacturers and sellers of cigarettes and of tobacco described as " Virginia Bird's Eye" smoked in pipes. These goods are marketed in a European style. Both the said cigarettes and the tobacco have from a date long before 1922 been sold in India (by the appellants and their predecessors) in packets and in tins bearing a mark the distinguishing feature of which is the representation of an elephant and the packets and tins of cigarettes have also borne the designation " Elephant Cigarettes ". Upon the tobacco the representation of the elephant has appeared in red and upon the cigarettes the representation of the elephant has appeared on a red background. These goods were well known and asked for throughout India as " Elephant Mark ", " Hathi Markha ", " Lal Hathi " and the like.

3. The defendant has been manufacturing and selling chewing tobacco since 1926, that is, some three years before the action was brought. He sells in packets and in tins. The commodity in the packets is intended for use with chunam (lime), that in the tins for use as an addition to pan (betel). Certain ingredients are added to give fragrance to the article. The tobacco is grown in India. Both the packets and the tins have the picture of an elephant on them, not unlike the elephant used by the plaintiffs though there are differences, particularly in colour, which is black or red as used by the appellants and white as used by the respondent. In other respects the packets and the tins are quite unlike the containers in which the appellants' goods are put upon the market, and the respondent's labels bear the firm name " Rama & Company ", while the appellants' goods bear their own name.

4. The appellants, of course, did not contend that any persons would purchase the respondent's chewing tobacco in the belief that it was smoking tobacco manufactured by the appellants. Their contention was a very different one; they said that having regard to the reputation they had acquired in India in connexion with smoking tobacco and cigarettes sold under the elephant trade mark and frequently asked for as "elephant" tobacco or "elephant" cigarettes, the use of the elephant on the respondent's chewing tobacco was calciliated to lead persons buying that article to believe that it was manufactured or put upon the market by the appellants.

7. It seems desirable to state the views of their Lordships on some of the topics of criticism of the views of the learned Judges which were urged on behalf of the appellants. Their Lordships think that 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 purchase; and 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. This has been settled in England since the case of Seixo v. Provezende (1865) L.R. 1 Ch. App. 192, where there will be found some remarks by Lord Cranworth L.C. very relevant to this matter. He also pointed out (at p. 197) that the adoption by a rival trader of a mark which would cause his goods to bear the same name in the market, may be as much a violation of the rights of the first owner as the actual copy of his device. This same view was taken in the case of Johnstone v. Orr Ewing (1882) L.R. 7 App. Cas. 219, a case relating to the use of two elephants on tickets placed upon goods for sale in India. (See as to the effect of the differences between the tickets the remarks of Selborne L.C. at pp. 224 et seq.) Further, it is not an answer to the claim of a trader who has established, as the appellants have done in the present case, the right to a trade mark (e.g., a device or a fancy word) to say that, apart from the device or the word, the labels or containers of the rival trade are very different from those of the trade mark owner. It may be observed that, if it were so, such a trade mark would be of little value, for its use by several traders would soon result in its becoming common to the trade. (See Wother spoon v. Currie (1872) L.R. 5 H. L. 508, and Johnstone v. On Ewing(1882) 7 App. Cas. 219, 225,226). In the present case there may well have been persons who knew of the reputation of the appellants' " elephant mark" goods, but were illiterate or did not know or did not remember the particular get-up of their goods; and again the differences of labels and get-up might have been supposed to have been made by the appellants themselves in putting a different or cheaper article upon the market. Their Lordships, however, are not to be understood as saying that the differences in get-up are immaterial; for they must inevitably form an element in considering the question of probability of deception by the use of the mark.