Pandugala Vali Basha vs N. Mohammed Haris And Another on 27 June, 2005

    THE HONOURABLE SRI JUSTICE P.S.NARAYANA

Appeal Suit No.684 of 1995

27-06-2005

PANDUGALA VALI BASHA

N. MOHAMMED HARIS AND ANOTHER

Counsel for the Appellants: Sri V.JAGAPATHI

Counsel for the Respondent: Sri LAXMINARAYANA Reddy

:JUDGMENT:-

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 & 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 plaintiff
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 L2 licence. In 1975, the said L2 licence was
converted into L4 licence (L4-60/75) for his 'Gaffar 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 include! d 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-6/87 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 P.A.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 mon! th
for t

heir 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 sai!

 d 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 purch! aser 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 p! rayed 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 L4 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 Chagalamrri. 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 proprietory 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!
plainti

ffs. 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 proprietory 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 th! e goods of
plaintiff.

        Plaintiffs 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
DW.1-Basha, D.W.2-Hussain Saheb and D.W.3-Jabbar had been recorded. The
following documents were marked on behalf of the respondents-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: L4 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 L4 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 : L4 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
Khajapet,

                               Cuddapah (Dt)

Ex.B.4 : Big bundle of Photo Hasan Basha Beedies manufactured by K.M.Shareef
Brothers at

                   Khajapet, Cuddapah (Dt).

Ex.B.5 : Big bundle of Photo Khaja Hussain Beedies manufactured by B/c Husain
Brothers,

    Chagalamarri, Kurnool.

Ex.B.6 : Big bundle of Photo Hussain Basha Beedies manufactured by C.Mahaboob
Per, Erumadaka,

   Cuddapah (Dt)

Ex.B.7 : Original wrapper of Photo Hasan Basha Beedies manufactured by
K.M.Shareef Brother,

    Khajapet, Cuddapah.

Ex.B.8/8-9-92 : Registrtion 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, Grampanchat, 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.Gaffar
was 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. T! he 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, this 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 i! s 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.1 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
L4 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
whether this 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.& C0., Mysore1 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 vs.
Mascot Industries2 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 &
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 certification trade mark; or (b) where in a
suit for infringement the defendant satisfies the court - (i) that t 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 vs. N.P.Laboratories3, Three Judge Bench of the Apex Court while
dealing with the action 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 S.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" (vid! e S.21 o

f 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 ri!

 ghts 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
S.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! evidenc

e 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.,4 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
another5 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, i 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 the
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 admision of a mark that unusually
stupid people, "fools or idiots", may be deceived. Where the trade rela! tes 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. In 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 put forward 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 M/s.Satyam Infoway
Ltd., v. M/s.Sifynet Solutions Pvt. Ltd.,6 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 is 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 ape

ars 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
promioters 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 199! 9, 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 befo! re 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.,7 held that :-

                 "In the decision reported in East and Hosiery Mills Pvt. Ltd.
v. Agarwal Textiles Mills (AIR 1971 Calcutta 3), 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 (AIR 1988 Bombay 167) held that when family name of the defen!

 dant 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 Electricals 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 & 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 & Sons
Ltd. v. Waddington & 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
is 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 no
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 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 plaintiff's 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
nam! e 'Nambi

san'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. & Co. Mysore (AIR 1972 SC 1359) 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 'Nambeesan' in the! ir product is
deceptively similar. In K.R.Chinna Krishna Chettiar v. Sri Ambal & Co. and
another (AIR 1970 SC 146), 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. Ac! cording to us, the word 'Nambisan's' used by the
plaintiffs an! d 'Nambe

esan' used by the defendants had striking phonetic resemblance. While
considering the word 'Lakshmandhara' and 'Amritdhara' in Amritdhara Pharmacy v.
Satya DeoGupta (AIR 1963 SC, 449), 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., (1960) 1 SCR 962 : (AIR 1960 SC, 142) 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 must consider the 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 sim!

 ilarity 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 Lakshman' 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 prepara!

 tion which he wants for his ailments."

                In Weber-Stephen Products Co. v. Alrite Engineering (Pty) Ltd.
and other ((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 & Colman Products Ltd. V. Borden Inct. & Ors. ((1990) RPC 341) has
considered a case where the plaintiff was selling lem!

 on 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 public 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 rely 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 another
((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. & Ors. (1995 (4) All E.R. 8! 12) 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. (AIR 1984 Bombay 218), 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.
(AIR 1989 Delhi, 157) it was held that plaitniff 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 nam! e '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 that the 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 & Co. (AIR 1985 All 242) 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 (AIR 1984 P &
H 430) 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 (1933 (50) RPC 405); 2) Kleen up and Kleen
off for 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. v. 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. - AIR 1959 Cal. 636); 13)
Formis and Charmis for cosmetics (Banwaridas Pugalia v. Colgate Palmolive - AIR
1979 Cal. 133);

14) Thangavapavan and Thanga Baspem for chewing tobacco (Arumugam Pillai v. Syed
Abbas - AIR 1964 Mad. 204);

15) BK and BK-21 for cycle bells (B.K. ENGINEERING Co. Delhi v. UNHI Enterprises
- AIR 1985 Delhi 210); and

16) Virendra Dresses and Varindera Garments for clothes (M/s. Virendra Dresses
v. M/s. Varindera Garments - AIR 1982 Delhi, 482).

                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 Tobacco8 'Cambridage' and 'Rothman's Cambridge' were held
to be similar in case of Cigarettes. In Cadilal Laboratories v. Kamath Atul &
Co.9 the trade marks HERBIL V. HURBINOL had been considered. In M/s. Exite
Laboratories v. M/s. A.A. Products (India) and others10 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 and to take benefit
of the reputation built up by t! he 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 M/s.Surya Agro-Oils Ltd., v. M/s.Surya Coconut
Oil Industries11; M/s. Surya Roshni Ltds., v. M/s.Electronic Sound Components
Co.12; R.S.K.V.Raghavan, trading as R.S.Krishna and Co., Mayuram v. G.R.Gopal &
Co. and others13; National Bell Co. v. Metal Goods Mfg. Co.14; Brij Mohan Dutta
v. M/s. Jallo Subsidiary Industries Co. (India) Pvt. Ltd.15; Pavunny v.
Mathew16; M/s. Hindustan Radiators Co. v. M/s. Hindustan Radiators Ltd.17;
Hardie Trading Limited, Melbourne , Australia and another v. Addisons Paints and
Chemicals Ltd., Madras and another18; Khemrai Shrikrishnadas v. Ms/Garg & Co.
and another19; Century Traders v. Roshan Lal Duggar & Co. and others20; Durga
Dutt Sarma v. Navaratna Pharmaceutical Laboratories21; 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 mat! ches at Puliangudi P.O., Tirunelveli District and
others22.

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 un-registered
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 for the 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 Court are 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 su! ch a nature by which both these are
clearly distinguishable an! d defini

tely 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.

?1 AIR 1972 S.C., 1359

2 AIR 1982 Delhi, 308

3 AIR 1965 S.C., 980

4 AIR 1970 SC., 1649

5 AIR 1960 A.P., 149

6 AIR 2004 S.C., 3540

7 1997 (1) KLT 163

8 (1998) IPLR 103

9 1991 PTC 259

10 (1989) 1 DL 367

11 AIR 1995 Delhi 72

12 AIR 1995 Delhi 92

13 AIR 1981 MaseA, 161

14 AIR 1971 S.C., 898

15 AIR 1990 Punjab & Haryana, 229

16 1982 KLT 399

17 AIR 1987 Delhi, 353

18 (1991) 1 MLJ, 218

19 AIR 1975 Delhi, 130

20 AIR 1978 Delhi, 250

21 AIR 1962 Kerala, 156

22 (1975) II M.L.J., 21