1. This appeal is by the second defendant in C.S.No. 636 of 1995 on the file of the Original Side of this Court against the order dated 30-6-1995 made in O.A.No. 509 of 1995 restraining him from infringing in any manner the plaintiffs registered trade mark "THE MAIL" by use of the trade mark "Trinity Mail" or any trade mark incorporating the word "MAIL". The parties in this appeal will be Deferred to by their rank in the suit for the sake of convenience.
2. The plaintiff has averred in the plaint as follows:- The plaintiff is the proprietor of the trade marks "THE MAIL" and "THE WEEKLY MAIL" registered under Nos. 115521 and 115522 respectively dated 27th November, 1945 in Class 16 in respect of News Papers and printed publications. The Registration has been duly renewed from time to time and is still valid and subsisting. The title "THE MAIL" has also been registered with The Registrar of Newspapers for India. A declaration has been filed before the Chief Metropolitan Magistrate, Egmore, Madras for publication of the newspaper bearing the title "THE MAIL". The plaintiff was publishing an evening English Daily bearing the said name since the year 1868. The Sunday Edition of the newspaper was called the "WEEKLY MAIL". The paper had enjoyed extensive reputation all over India and particularly in Southern India. In about the year 1992 the plaintiff resumed the publication of a monthly bearing the title "THE MAIL". The same has been registered with the Registrar of Newspapers on 27-7-1992 and a Declaration has been given before the Chief Metropolitan Magistrate, Egmore, Madras on 30-7-1992. The circulation figures of the monthly "THE MAIL" are constant on 3000 for the years 1992-93, 1993-94 and 1994-95. The defendant to issued a circular dated 27-2-1995 stating that they are publishing shortly an English Daily bearing the title "Trinity Mail". The word "Trinity" is printed in small insignificant words whereas the word "MAIL" is printed in bold capital letters in a prominent manner. The proposed publication of the said daily is in gross violation of the Trade Mark rights vested in the plainatiff and the exclusive monopoly of the plaintiff in the title "THE MAIL" which is registered. The plaintiff issued a notice dated. 21-3-1995 through its Attorney to the defendants calling upon them to cease and desisit from publication. Though the plaintiff's Attorney received acknowledgment cards, the defendants failed to comply with the requests contained in the notice.
3. The use of 'Trinity MAIL' as a Mark and as their title by the defendants is with the deliberate intention to trade upon and benefit from the reputation and good will enjoyed by the plaintiffs registered trade mark and registered title "THE MAIL". An ordinary purchaser with imperfect memory would assume that the defendants' publication is associated with that of the plaintiff. The defendant have adopted the Trade Mark and Title 'Trinity MAIL' with a view to pass off and enable others to pass off their daily as and for the plaintiffs newspapers and publication. The defendants have committed acts of passing off. The defendant's Trade Mark 'Trinity MAIL' isphonetically and visually similar to the plaintiff's registered trade mark 'THE MAIL'. The defendants have lifted in to the word 'MAIL' which is the essential feature of the plaintiff's registered trade mark. The use of the trade mark 'Trinity MAIL' by the defendants amounts to infringement of the plaintiff's registerd trade mark 'THE MAIL'. The plaintiff has suffered and is likely to suffer heavy loss to its goodwill and reputation on account of the wrongful activities of the defendants. The plaintiff has estimated the damage caused by the activities of the defendants at Rs. 1,10,000/-. The plaintiff is entitled to claim from the defendants the illegal profits made by the defendants by acts of infringement of trade mark, passing off and infringement of registered title "THE MAIL'. On accounts being taken, the plaintiff will be entitled to damages to the tune of several lakhs of rupees.
4. On the aforesaid allegations, the plaintiff has prayed for adecree granting perpectual injunction restraining the defendants from infringing in any manner the plaintiff's registered trade mark 'THE MAIL' by use of the Trade Mark 'Trinity MAIL' or any trade mark incorporating the word 'MAIL', an injunction restraining the defendants from passing off in any manner the defendants' daily as and for the plaintiff's newspapers and printed publications by use of the trade mark 'Trinity MAIL' or any trade mark incorporating the word 'MAIL'. The plaintiff has also prayed for passing of a preliminary decree directing the defendants to render account of profits made by use of the trade mark 'Trinity MAIL' as a trade mark and as the title and for final decree for the amount of profits which may be found to have been made by the defendants, besides an order directing the defendants to surrender to the plaintiff for destruction of all newspapers, dailies, labels, blocks, dies, screen prints etc. bearing the trade mark and title 'Trinity MAIL' or any mark and/or title incorporating the word 'MAIL' and to pay to the plaintiff a sum of Rs. 1,10,000/- as damages for their wrongful and illegal activities in addition to the costs of the suit.
5. Along with the plaint, the plaintiff filed O.A.No. 509 of 199S for an order of interim and temporary injunction restraining the defendants from infringing in any manner the plaintiff's registered trade mark 'THE MAIL' by use of the trade mark 'Trinity MAIL' or any trade mark incorporating the word 'MAIL'. The averments made in the affidavit filed in support of the application are the same as those found in the plaint. The learned Judge sitting on the Original Side passed an order on 28-4-1995 granting interim injunction and directing notice to the defendants. After service of notice, the defendants entered appearance. The second defendant filed a counter affidavit and an application for vacating the order of interim injunction. The second defendant filed the same in Court on 21-6-1995 as party-in-person after serving copies thereof duly on the counsel for the plaintiff. Obviously the second defendant appeared as party in person as the advocates in the State were boycotting the Courts. The application was taken on file as Application No. 2992 of 1995 and posted before the Judge on the Original Side on 22-6-1995. The learned Judge passed an order in the following terms :-
"Interim injunction granted in application filed by one K.A. Arjunan in O.A.No. 509/95. The applicant herein party in person expresses some difficulties in continuing the injunction and wants to argue the matter. Since the advocates are boycotting the Courts, notice is ordered to applicant in A.No. 509/95 for hearing on 23-6-1995. Call on 23-6-1995."
Accordingly, the second defendant attempted to serve a notice on the plaintiff through their advocate's clerk on the same day. The plaintiff refused to accept the said notice. The same was reported to the Court on 23- 6-1995. An affidavit was filed by the said advocate's clerk viz., M. Vaidyanathan stating that when he attempted to serve the notice in the office of the plaintiff at No. 858, Anna Salai, Madras-2 at about 3-00 P.M. on 22-6-1995, he was made to wait till about 4-10 P.M. and he was informed by the Court Clerk of the plaintiff viz., C. Chitti Babu, Assistant, that he was instructed by superior officer to decline to accept the petition and the counter affidavit, and that the same could be served only on the counsel appearing for the plaintiff. As the counsel had already been served on 21-6-1995, the second defendant filed in Court the affidavit of the said Advocate's clerk as well as the copy of the counter affidavit and Judge's sommons which were tendered to the plaintiff and on it and endorsement has been made by the said Advocate's Clerk. that service was refused. The learned Single Judge after taking on record the said affidavit etc. and hearing the second defendant as party-in-person passed the following order :-
"Heard Mr. Shanmughavel-party in person. Also perused the affidavit filed today. Even on 22-6-1995, notice has been ordered to the applicant in A.No. 509/1995, since the advocates are boycotting. The applicant had taken notice and has filed affidavit of service. In the affidavit filed in support of the proof of service, it is stated that the applicant had declined to accept the notice issued to him. If the applicant had taken notice and had represented atleast that he requires the services of his Advocate, the matter could be adjourned to the next working day. Since the applicant is said to have declined to accept the notice issued to him, the order dated 28-1-1995 in O.A.No. 509/1995 is suspended for the present till 7-7-1995. Counter of respondents in this application and enquiry by 7-7- 1995."
6. What followed thereafter is something unheard of in the long history of this Chartered High Court with a heary tradition, often spoken of in eulogistic terms with pride by the people of this State and at any rate by the people connected with the judicially in the State. It is with an aching heart we are placing on record the facts relating to the said event so that people concerned will realise their folly and refrain from making any attempt to indulge in such tactice hereafter. We wish and hope earnesly that there will be no repetition of such an event at any time under any circumstances.
7. After the above order was passed and the second defendant left the Court, the plaintiffs counsel on record approached the president of the Madras High Court Advocates' Association and requested him to make an appropriate representation to the Judge. That is the version given by Mr. A. Mohan, counsel on record. But, a different version is given by Mr. P. Jayaraman, the President of the Advocates' Association, whom we summoned to our Court and enquired with regard to this matter. According to him, about fifty or sixty lawyers made a representatives to him that some of the Judges of this Court were passing orders on merits in certain cases and they would protest against the same by marching to those Courts. According to Mr. Jayaraman, in order to avert a commotion he assured the lawyers that he would make a representation to the concerned Judges and not the Judge sitting on the Original Side and informed him about the lawyers' agitation. The Judge, according to him, told him that he had passed an order only in this case and in no other case and that he would suitably modify the same. But it is admitted by Mr. Jayaraman that he did not meet any other Judge on that day and make any representation to any of them. According to Mr. A. Mohan, counsel on record, he made a personal request to Mr. Jayaraman specifically with reference to this case. Even if the version of Mr. Jayaraman is correct, he ought not to have made any representation to the learned Judge in this matter, as a judicial order had already been passed. We do not think it necessary to decide as to which of the two versions is correct. But, what appears on record is something different from the two.
8. The learned Judge, after hearing the representation of Mr. Jayaraman passed the following order :-
"Subsequent to the passing of the above order, Mr. P. Jayaraman, President of the Advocates' Association requests on behalf of the Advocate for the applicant in O.A.No. 509/1995 that the order passed by this Court need not be communicated to avoid any precipitation in view of the boycotting. At the request of the President of the Advocates' Association, the earlier order passed by me is kept in abeyance till 26-6-1995. The learned advocate is requested to give notice to the applicant, party in person that the matter will be taken up for hearing on 26-6-1995."
9. While on the one hand twe condemn the acts of Mr. A. Mohan, counsel on record and Mr. P. Jayaraman, the President of the Madras Advocates' Association, which would, in our prima facie opinion, amount to contempt of Court, we are unable to appreciate or approve of the order passed by the learned single Judge based on the said representation of the President of the Advocates' Association or the manner in which it has been passed. After taking note of the fact that the plaintiff had refused to receive notice in the application and hearing the second defendant as party-in-person, and passing an order, it passes one's comprehension as to how the learned Judge chose to pass another order directing the earlier order to be kept in abeyance on a representation made by a total stranger to the case and that too without giving any notice to the second defendant. In the last sentence of the second order, the learned Judge has directed the Advocate for the plaintiff to give notice to the second defendant that the matter will be taken up for hearing on 26-6-1995. No such notice was given to the second defendant and when the matter came up before the learned Judge on the 26th, he passed the following order :-
"Applicant absent. Director of first respondent appears in person and files counter affidavit For enquiry adjourned to 28-6-1995. The order dated 23-6-1995 keeping the earlier order in abeyance is extended till then. Respondent is directed to inform the applicant."
The learned Judge did not appear to have enquired the Director of the plaintiff whether notice had been given to the second defendant as directed by him in the order dated 23-6-1995, but merely recorded the absence of the second defendant and proceeded further. Learned counsel for the plaintiff Mr. A. Mohan has admitted before us that no notice was given to the second defendant of the second order passed on 23-6-1995 or the posting of the application to 26-6-1995 as directed by the learned Judge. According to him, he was not aware of such a direction. We are unable to accept this version of learned counsel. When at his instance the President of the Advocates' Association made a representation to the learned Judge and got an order keeping the earlier order in abeyance, it was the duty of the counsel for the plaintiff to have posted himself with the contents of the order and obeyed the directions contained therein. If really the counsel was unaware of the direction contained in the order dated 23-6-1995, it was a gross dereliction of duty on his part.
10. It is very unfortunate that the above incident has taken place and caused a blot on the history of this Court. We are really sorry that instead of taking proceedings in contempt against Mr. P. Jayaraman and Mr. A. Mohan, the learned Single Judge had passed an order in favour of the plaintiff in the absence of the second defendant. But for the said order, we would have taken appropriate action against both the advocates. We must also place on record that both the advocates tendered unconditional apology in open Court when we enquired them about mis. The matter was finally heard on 28-6-1995 and orders were passed on 30-6-1995 by which the interim injunction granted on 28-4-1995 in O.A.No. 509 of 1995 was made absolute, and Application No. 2992 of 1995 was dismissed and it is the said order which is challenged in this appeal by the second defendant.
11. In this appeal, lengthy arguments have been advanced on both sides. It is contended on behalf of the second defendant that the Mark and title "Trinity MAIL", proposed to be used by him, is in no way identical with or deceptively similar to the trade mark of the plaintiff. It is pointed out mat the registered trade mark of the plaintiff is not a 'word .mark'. What has been registered and renewed from time to time is a representation containing the words "THE MAIL" and a map of India between the words "THE" and "MAIL". Inside the India map, towards the top, the words and figures "incorporated 1868" are found. Towards the bottom, the word "Madras" is found roughly at the place where Madras is situated in the country. Below the above words and the map, the following words and figures are found :- "Incorporating The Spectator 1836. The Madras Times 1860". Thus, the entire representation is the registered trade mark bearing No. 115521. The other mark under No. 115522 is a similar representation with an addition of the word "Weekly" above the India map between the words "THE" and "MAIL". It is further argued that the word "MAIL" is a common expression and has not acquired any distinctiveness to be associated with the plaintiff whenever and wherever that word is found. Our attention is also drawn to the copies of Newspapers bearing the name "National Mail (Daily)", "Sunday Mail (Weekly)" as well as a Hindi Weekly with the name "Sunday Mail". It is further argued that admittedly the plaintiff had stopped puplishing the daily "THE MAIL" in 1982 and started publishing the monthly from 1992, which is not intended for sale in the market. Every month a fixed number of copies i.e., 3000 copies are printed and all of them are handed over to M/s. Higginbothams to be distributed freely among their customers. Further, the said monthly described itself as "the News Letter from Higginbothams". It is intended only for "in-house" circulation. It is nothing but a catalogue of different publications besides giving certain other information about persons connected with newspapers. The plaintiff cannot, therefore, claim to be using its trade mark in the course of a trade with the result, it cannot contend that there is an infringement of the registered trade mark. It is furhercontended by learned counsel for the second defendant that the plaintiff has failed to prove that it has a prima facie case and that it would suffer irreparable loss if an order of injunction is not granted. It is argued that the learned single Judge has completely ignored the principles on which an order or interlocutory injunction could be granted. Besides, the learned single Judge has prooceeded on an erroneous impression that the plaintiff had registered the 'word-mark' "THE MAIL'. Learned counsel for the second defendant has also stated before us that when the learned single Judge ordered notice in Aplication No. 2992 of 1995 on 22.6.1995, he observed that the word "Trinity" is of a smaller size man the word "MAIL' and advised that the second defenant could print both the words in the same size and with equal prominence. Taking the clue, the second defedent, who was previously printing the word "Trinity" in smaller letters, enlarged the size thereof and printed both the words "Trinity" and "Mail" in the same size and with same prominence. However, in the order under appeal passed finally by the learned Judge, he has made a comment on the said change that the second defendant of conscious of the fact that the readers were likely to be deceived by the use of the word "Trinity MAIL" in bold letters and he has, therefore printed its logo with uniform size for both the words "Trinity" and "Mail" totally forgetting his own advice given to the party on the date of the first appearance. Learned counsel contends that the learned Judge is in error in making a point out of the aforesaid change which was introduced by the second defendant only in accordance with the suggestion made by the Judge himself. It is finally argued that balance of convenience is only in favour of the second defendant and the learned Judge is in error in holding otherwise.
12. Learned counsel for the plaintiff contends that the application for injunction is based only on infringement of a registered trade mark and once it is proved mat the plaintiff's mark is registered and the defendant is adopting an essential feature of that mark for his mark, no other consideration will arise and the Court is bound to grant injunction. Learned counsel points out the difference between an action for infringement and an action for passing off. According to him, the word "MAIL" has acquired distinctiveness and it being an essential part of the plaintiff's registered trade mark, cannot be used by the defendants as part of their mark. It is also contended that just because the plaintiff has not used the registered trade mark between 1982 and 1992, it does not lose the proprietorship and no one else has any right to infringe upon the same. According to learned counsel, the newspapers "SUNDAY MAIL" and "NATIONAL MAIL" have not registered their marks and the fact that such dailies are being published will not enable the defendants to infringe upon the plaintiffs mark. Learned counsel contends that the free distribution of the monthly 'THE MAIL" is also in the course of trade and the plaintiff is using its mark in the course of such trade.
13. The plaintiff has filed C.M.P.No. 10310 of 1995 under Order XLI, Rule 27 of the Code of Civil Procedure for filing certain documents as additional evidence. One such document is a copy of a Tamil evening daily "Makkal Rural" dated 20-6-1995 in which a letter written by one K. R. Sundararajan, Principal, I.I.E.T., Kodambakkam to the second defendant has been published. In that letter, the defendants' daily has been referred as "Mail". According to learned counsel, that shows that even highly educated people are confused and equate 'Trinity Mail' to 'THE MAIL' of the plaintiff. The second document is a copy of 'Makkal Kural' dated 11.7.1995 in which the news of publication of 'Trinity Mirror' by the second defendnt is published. According to learned counsel, the second defendant has, after the filing of the appeal, changed the name of the daily to 'Trinity Mirror' from 'Trinity Mail' and cannot insist upon having Trinity Mail' as the name of his daily. Documents 3 and 4 are certified -copies of the renewal of trade marks bearing Nos. 115521 and 115522 for a period of seven years from 27.11.1988. They are produced in order to show that the registration of the plaintiff's mark is still in force. There is no objection to the acceptance of the additional documents in evidence and, therefore, C.M.P.No.10310 of 1995 is ordered.
14. Before discussing the respective merites of the contentions urged before us, it is necessary to bear in mind the general principles which are well settled by now on which applications for interlocutory injunctions are decided by Courts. It is not in dispute that in order to obtain an order of interim injunction pending the suit, the plaintiff has to prove the following:-
1) that he has a prima facie case;
2) that the Court's interference is necessary to protect him from irreparable or at least serious injuries;
3) that the balance of convenience is in his favour;
4) that there is no other sufficient remedy to protect his interest.
It is not necessary for us to refer to authorities in this regard. Suffice it to point out that the law on the subject has been succinetly stated by a Division Bench of this Court in the follwing words in R.M. Subbiah v. N. Sankaran Nair , which was a case
relating to infringement of copy rights :-
"6. This is a case where literary piracy is pleaded. Injunction being an equitable remedy, which is granted by a court in exercise of its judicial disecretion, has to be considered from various facts which arise from a particular set of circumstances in each ease. There may be cases in which the grant of an injunction temporary or permanent will only meet the ends of justice and an alternative safeguard for the preservation of the rights of the challenging party cannot at all be thought of. There may be also cases where the remedy of injuction has to be made flexible and adjustable to the situation rising in each case. A rigid invocation without contemplating elasticity in the application of the rule as to the grant of injunction might sometimes result in hardship, which cannot be later cured.
The first plaintiff's claim is that his literary work has been pirated. This relief could be compensated for sufficiently in money. In cases where an equitiable relief would be sufficiently compensated for monetarily, then courts refrain from being wooden an ingranting injunctions alone, instead of contemplating the nearest approximation which it can make. The mere fact that a prima facie case exists for the grant, of an injunction or even the additional intelligence that a partys seeking for it would suffer irreparable harm or inconvenionce by this, may not be sufficiant criteria for the granting of an interim injunction. Before the Court exercises its jurisdiction, to grant such an interim relief, which is essentially an equitable and a descretionary remedy "the court will have to be further satisfied that the comparative mischief or inconvenience which is likely to arise from withholding an injunction will be greater than that which is likely to arise from granting it."
15. In United Commercial Bank v. Bank of India , the Supreme Court held that on injunction could be granted under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, unless the plaintiff's established that they had a prima facie case, meaning thereby that there was a bona fide contention between the parties or a serious question to be tried and that they would be put to an irreparable loss unless an interim injunction was granted.
16. The Supreme Court has also dealt with the scope of the appellate jurisdiction in appeals arising out of interlocutory orders passed by a single Judge in the exercise of his discretion in Wander Limited and Anr. v. Antox India (P) Limited (1990 II M.L.J. 1(S.C.))and said,
"10. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the Appellate Court will not interfere with the exercise of discretion of the Court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciouslyor perversely or where the Court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the Court below of the one reached by that Court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise or discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to those principles Gajendragadkar, J., in Printers (Mysore) Private Limited v. Pothan Joseph, , said :
"......These principles are well established, but as has beend observe by Viscount Simen in Charles Osenion and Company v. Johnson," the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his disoretion is well established and any difficulty that arises is due only to the appliction of well settled principels in an individual case."
The appellant Judgment does not seem to defer to this principle.
17. Thus, we have to see whether the learned single Judge has, in this case, exercised his discretion arbitrarily or capriciously or perversely or has ignored the settled principles of law regulating the grant or refusal of interlocutory injunctions. On a perusal of the order of the learned single Judge, we have no hesitation to say that he has ignore the settled principles of law regulating grant or refusal of interlocutory injunction. After setting out the pleadings and the cententions of both the parties, the learned Judge has posed the question for consideration as follows :- "Therefore, whether there is an infringement of the trade mark is a matter for consideration on certain basic elements viz., whether the defendants' mark is within the prohibited degree of similarity to the plaintiff's mark, whether the defendants' mark is used in the course of trade as trade mark an whether the defendants' use in relation to the goods of the kind for which, the plaintiff is registered not being goods of the plaintiff." The learned Judge proceeded to say that the goods of the plaintiff and the defendants are Newspapers and the third test was not in dispute. Addressing himself to the question of similarity, the learned Judge said :-
"As far as the similarity in the case of the words used as the trade mark is concerned, the applicant's name is "Mail". Defendants have added the word "Trinity" to the word "MAIL" and would contend that there is no similarity to the plaintiff's mark and there is no deception."
This passage shows that the learned Judge has proceeded on a misconception that the plaintiff had registered the word-mark "Mail". The entire order of the learned Judge proceeds only on that footing. The learned Judge goes on to state that the addition of the word "Trinity" to the word "Mail", which is the mark of the plaintiff will not escape the rigour of Section 29 of the Trade Marks Act. The next part of the reasoning is that unless the defendant shows that the registration of the plaintiff's mark was obtained by fraud, in contravention of the provisions of the Trade Marks Act, the plaintiff has got a right over the same, which cannot be disputed in view of Section 28.
18. The next reason given by the learned Judge in support of his order is that the fact that the second defendant initially printed the word "Trinity" in small letter and later enlarged the size thereof to be equal to that of the word "MAIL" would only show that he was conscious of the fact that the readers were likely to be deceived by the user of the word "MAIL" in "Trinity MAIL" in bold letters. We have already referred to the statement of learned counsel for the second defendant that it was the learned Judge who himself had suggested the printing of both the words in the same size and at the time of final order, he had forgotten the same. Even assuming that the learned Judge did not make any such suggestion, the fact that the second defendant had initially printed the word 'Trinity' in smaller letters and later printed the word in bolder letters so as to be of the same size as the word 'MAIL', would not lead to any inference that the second defendant was conscious of the fact that the people are likely to be deceived. That part of the reasoning of the learned Judge, if we may say so with respect, is perverse.
19. The question before the Court is whether the words mark "Trinity MAIL" proposed to be used by the second defendant is in any way deceptively similar to the registered trade mark of the plaintiff. As pointed out already, the registered trade mark of the plaintiff is the entire representation comprising not only the words "THE MAIL" but also the other words and figures set out already and a map of this country. The learned Judge has nowhere in his order referred to this aspect of the matter. He has failed to consider whether the representation which is the registered trade mark of the plaintiff is sought to be infringed by the proposed mark of the second defendant viz., 'Trinity MAIL' Further, the learned Judge while referring to the stoppage of the publication of the daily "THE MAIL" in 1982 has failed to note that as on the date of suit, the plaintiff is publishing only a monthly magazine intended for free distribution to a fixed number of people through one particular agency, viz., The Higginbothams. The said monthly magazine cannot be equated in any sense of the term with a daily newspaper. Admittedly, the same will not be available in any shop in the open market. It is distributed freely at the will and pleasure of M/s. Higginbothams to such persons as they may choose. There is, therefore, no question of anybody being led to believe that "Trinity MAIL" is connected with the plaintiff in any manner. The failure of the learned Judge to advert to this aspect of the matter vitiates the entire discussion on the merits in the order. The learned Judge has also not considered the question whether the plaintiff is using its mark in die course of a trade. Thus, the learned Judge has failed to decide whether the plaintiff has made out aprimafacie case and in any event the learned Judge has failed to take into account the facts relevant for deciding the question of prima facie case.
20. For the purpose of coming to the conclusion that the name "Trinity MAIL" is deceptively similar to the trade mark of the plaintiff, the learned Judge has relied on the greetings of an educationalist by name K. R. Sundararajan to the second defendant in which letter he has referred to the newspaper as 'Evening Dairy "Mail"' and wished grand success thereto. The learned Judge has held that even educated persons of the status of Mr. K.R. Sundararajan could not distinguish between "Trinity MAIL" and "THE MAIL". With respect, we are unable to agree with the learned Judge. A reading of the letter of K. R. Sundararajan, the full text of which is available in the Typed set of documents filed along with C.M.P.No. 10310 of 1995 shows that the signatory had not at all thought of the plaintiff's daily "THE MAIL" which was stopped in 1982 or the monthly "THE MAIL" which was commenced in 1992. There is no indication whatever in the said letter of any confusion in the mind of the Principal of I.I.E.T., Kodambakkam. Instead of referring to the name of the newspaper in full as "Trinity MAIL-", the educationalist has shortened it to "MAIL" That cannot lead to the inference that a confusion would be caused in the minds of the public and people will start associating the newspaper of the defendants with that of the plaintiff.
21. Apart from the fact that the learned Judge has failed to advert to the relevent facts for deciding the question of prima facie case, the learned Judge has also failed to note that the plaintiff has to prove that he would suffer irreparable loss or serious injury unless an order of injunction is passed. When admittedly in this case the plaintiff is not publishing any daily or any newspaper for the purpose of sale in the market, the plaintiff has failed to place any material before the Court as to what exactly will be the injury that would be caused to him and how he will suffer irreparable damage or loss.
22. On the question of balance of convenience also, the learned Judge has rejected the contention of the second defendant's counsel by merely observing that it was not a tenable one and that it was only the defendants who had invited the contingency by committing an infringement of the registered trade mark of the plaintiff. Thus, the order of the learned single Judge is wholly unsustainable and has to be set aside.
23. Now, we shall proceed to consider whether the plaintiff has satisfied in this case the four tests referred to by us earlier. As regards prima facie case, no doubt the plaintiff has registered two trade marks bearing Nos. 115521 and 115522 containing the words "THE MAIL" besides other words, figures and a map of the country. According to the plaintiff, the word "Mail" is the essential feature of his trade marks and if anybody else uses the said word for the purpose of his trade, it will be infringement of the trade mark of the plaintiff within the meaning of Section 29 of the Trade Marks Act. Under that Section, a registered trade mark is infringed by a person who uses in the course of trade a mark which is identical with or deceptively similar to the registered trade mark. For the purpose of the present discussion, we are omitting the other parts of the Section, as there is no dispute in this case that the second defendant is neither the registered proprietor of the registered trade mark of the plaintiff nor a registered user thereof using by way of permitted use. The question to be decided is whether the mark of the defendants viz., "Trinity MAIL" is identical with or deceptively similar to the registered trade mark of the plaintiff. The first part of the question has to be answered in the negative as the two marks are not identical. With reference to the second part of the Section, the contention of the plaintiff is that the mark of the second defendant is deceptively similar to the registered trade mark as the essential feature thereof is used by the second defendant. The expression "deceptively similar" has been defined is Section 2(1)(d) of the Act as follows :- "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion." Hence, the plaintiff has to prove that the mark of the second defendant is likely to deceive or cause confusion. That the burden of proof of infringement of trade mark is on the plaintiff has been well settled. In S. Venkateswaran's "The Law of Trade and Merchandise Marks", 1963 Edition, at page 521, the law is stated thus :-
"In cases of infringement the onus is on the registered proprietor of the mark to show that the defendant's mark is deceptively similar to his registered trade mark.
.... .... ....
In the absence of identical user a prima facie case of likelihood of deception or confusion must first be made out by the plaintiff before the Court could intervene. Thereafter the onus is on the defendant to show that the use complained is not likely to deceive or cause confusion."
The learned author has referred to the case Tayener Rutledge Ld. v. Specters Ld. (1959) R.P.C. 355).
24. It is well settled that deceptive similarity is not to be decided by keeping the two marks side by side and comparing them but to find out whether ordinary purchasers with a normally imperfect recollection as average memory would mistake the goods of the defendant for those of the plaintiff. But newspapers are not like articles such as tea, soap etc. or any other article bought by the public who take one particular word of a distinctive name and are caught by the similarity in the type, size or colour of the packages. As pointed out in Borth Wick v. The Evening Post (XXXVII Ch.D. 449) by Cotton, L.J., the newspapers will be bought only by those who will read the same and not merely take a hasty look at it. They will be in a position to form an opinion upon the politics contained in the newspapers. They are persons of more intelligence and are not likely to be misled by the colour or limitation of name as purchasers of house-hold articles etc.
25. In D.C. Thomson A Co Ltd. v. Kent Messenger Ltd. and Anr. (1975 R.P.C.191), the question was whether the proprietor of a newspaper "The Sunday Post" could get a quia timet interlocutory injunction restraining the publication of a newspaper called "The South East Sunday Post". Hegarry, J., held that the word 'Post' was only descriptive and popular and not fancy or distinctive. The same can be said of the word 'Mail' in the trade mark of the plaintiff.
26. In Newsweek Inc. V. British Broadcasting Corporation (1979 R.P.C. 441), the plaintiffs were publishers of the weekly news magazine "Newsweek". The defendants proposed tranamitting four times a week a programme entitled 'Newsweek'. The Court held that the word 'newsweek' was an ordinary descriptive word and the average television viewer in the United Kingdom would be unlikely to associate the television programme with anything but the BBC. Walton, J. said :-
"It is not the sort of case where you have well known invented words or words which have become household names such as Kodak, for example, Dunlop, Hoover, or something of that nature. It is perfectly true that it is an invented word, but it comes from two ordinary English words signifying precisely and exactly news of the week. Therefore, it seems to me that if we have to take the ordinary viewer as our guide, and I think we must take the ordinary man as our guide, looking at the programme "he will not be under any misapprehension at all as to where it comes from."
On appeal, Lord Denning, M.R., said:-
"This word 'Newsweek' is very largely a descriptive word. It is 'News of the Week', shortened for commercial and publicity purposes to 'Newsweek'. I do not think we should give one publication virtually a monopoly in that largely descriptive word. It would stretch all over the English-speaking countries. We certainly should not do it when the great majority of the ordinary folk of England who watch television would not have the slightest idea or slightest knowledge of the American periodical 'Newsweek'."
27. No doubt those cases were actions for passing-off. But in so far as deceptive similarity is concerned, the test in both passing-off action and infringement action is the same, if the two marks are not identical. The Supreme Court has stated the law thus in Ruston and Hornby Ltd. v. Z. Engineering Co. :-
"In an action for infringement where the defendant's trade mark is identical with the plaintiffs mark, the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it the test of infringement is the same as in an action for passing-off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions."
28. A case similar to the present one was considered by the -Judicial Committee of the Privy Council in The Coca-Cola Co. of Canada, Ltd. v. Pepsi-Cola Co. of Canada, Ltd., (59 H.P.C 127). The contention that the mark 'Pepsi-cola' was an infringement of the registered trade mark Coca-Cola was negatived. Lord Russell of Killowen said:-
"If it be viewed simply as a word mark consisting of 'Coca' and 'Cola' joined by a hyphen, and the fact be borne in mind that Cola is a word in common use in Canada in naming beverages, it is plain that the distinctive feature in this hyphenat word is the first word 'Coca' and not 'Cola'. 'Coca' rather than 'Cola' is what would remain in the average memory. It is difficult, indeed impossible, to imagine that the mark "'epsi-Cola' as used by the Defendant, in which the distinctive feature is, for the same reason, the first word 'Pepsi' and not 'Cola', would lead anyone to confuse it with the registered mark of the Plaintiff.
If it is viewed as a design mark, the same result follows. The only resumblance lies in the fact that both contain the word 'Cola' and neither is written in block letters, but in script with flourishes; but the letters and flourishes in fact differ very considerably, notwithstanding the tendency of words written in script with flourishes to bear a general resemblance to each other. There is no need to specify the differences in detail; it is sufficient to say that, in their Lordships' opinion, the mark used by the Defendant, viewed as a pattern or picture, would not lead a person with an average recollection of the Plaintiffs registered mark to confuse it with the pattern or picture represented by that mark."
29. The dictum in Saville Perfumary Ld. v. June Perfect Ld. and F.W. Woolworth and Co Ld. (LVIII R.P.C. 147) relied on by learned counsel for the plaintiff has no relevance here as it was based on the evidence on record. Nor does the ruling in Syeda Zebera Jabeen v. S. Padmanabhan (1988 II M.L.J. 423) help the plaintiff in this case
30. In this case, we have already seen that the registered trade- mark of the plaintiff is not a word mark but a design mark. The defendant's mark 'Trinity MAIL' is in no way similar to the plaintiffs mark. Hence, it follows that it is not deceptively similar to the plaintiff's mark as defined by Section 2(1)(d) of the Trade Marks Act. It is needless to add that our view is a prima facie one based on the materials now on record or rather lack of materials to prove that the defendant's mark will cause confusion. It is certainly open to the plaintiff to adduce evidence in the trial and prove its case.
31. In the view expressed above, there is no necessity for us to consider whether the plaintiff is using its registered mark in the course of trade. The evidence now on record is practically nil to support the plaintiff. That is a question to be decided at the final disposal. We are, therefore, not considering in detail the judgment in Golden Pages Trade Mark case (1985 F.S.R. 27) referred to by the plaintiff's counsel or In Xe. an Application by George Angus and Coy, Ld, for Rectification of the Register of Trade Marks (60 R.P.C. 29), Aristoo, Ld. v. Rysta Ld. (62 H.P.C. 65) and In the matter of an application by Perodo. Ld. (62 R.P.C.111) cited by the second defendant's counsel.
32. There is also no necessity for us to dwell upon the question of non-user of the registered mark by the plaintiff from 1982 to 1992. The decisions in Philip Morris Belgium S.A. v. Golden Tobacco Co. Ltd. (AIR 1986 Delhi 145). Jadayappa Mudaliar v. Venkatachalam (1990 II M.R.J. 423) and Avis International Ltd. v. Avi Footwear Industries (AIR 1991 Delhi 22) relied on by the plaintiff's learned counsel are not therefore considered by us here. The ruling in M.K. Agarwal v. Union of India is of no relevance in this case.
33. The next question to be considered is whether the plaintiff has proved irreparable loss or serious injury in the event of refusal to grant injunction. A perusal of the averments in the plaint and the affidavit filed in support of the application C.A.No. 509 of 1995 is sufficient to answer the question in the negative. There is absolutely no material before us to support the claim that the plaintiff would suffer loss if the Court does not step the defendants from using their mark 'Trinity MAIL' When it is admitted that the plaintiff is printing only 3000 copies of the monthly magazine every month and handing them over to M/s. Higginbothams for free distribution how can the plaintiff suffer any loss? There is no question of the plaintiff losing any goodwill by the defendant's trade. Even this fact is sufficient to negative the prayer of the plaintiff in the application.
34. It follows automatically that the balance of convenience is not in favour of the plaintiff. The fact that the second defendant started publishing 'Trinity MIRROR' after the filing of the appeal in deference to the order of injunction passed by the learned single Judge in order to fulfil his commitments at least partially will not alter the situation.
35. In the circumstances, there is no necessity for us to consider the fourth principle whether an effective alternative remedy could be granted to the plaintiff.
36. In fine, the appeal is allowed with costs and the order made in O.A.No. 509 of 1995 on 30-6-1995 is not aside. O.A.No. 509 of 1995 is dismissed with costs.