JUDGMENT
S.P. Bharucha, J.
1. The 2nd plaintiffs manufacture and deal in tea which was marketed under the trade mark “GIRNAR”. They marketed the tea in card-board cartons. In 1983 the 2nd plaintiffs gave to the 1st plaintiffs a licence to use the mark “GIRNAR” and on May 12, 1986, assigned it to the 1st plaintiffs. During the years 1982 to 1986 the 1st plaintiffs sold the tea in pouches which bore the mark “GIRNAR” and in June, 1986 reverted to cartons which also bore the mark.
2. There is no duspute that the mark “GIRNAR” had acquired a considerable reputation by 1986 and that the reputation still endures; also that the value of the tea sold under the mark was and is substantial.
3. In May, 1986 the defendant started using the trade mark “GULNAR” upon cardboard cartons in which they sold their tea. The plaintiff gave them notices to cease and desist from so doing and they filed this suit before they received the defendant’s reply dated July 16, 1986.
4. The suit is a passing off action and seeks to restrain the defendant from using “GULNAR” as a word mark or as part of any label or lables or device mark or any other1 trade mark which is deceptively similar to the plaintiffs’ mark “GIRNAR” in relation to tea. It also seeks to restrain the defendant from using the mark “GULNAR” as a word mark or as part of a label or a device mark together with or without the get-up and colour scheme as shown in an annexure so as to pass off or be likely to pass off the defendant’s tea as and for that of the plaintiffs. The reliefs are, in reality, the same. In the Notice of Motion taken out after the filing of the suit, interim relief in the same terms was aksed for.
5. Before we refer to the judgment and order on the Notice of Motion, which is under appeal, it is convenient to describe the cartons upon which the marks “GIRNAR” and “GULNAR” are used. Both are cardboard cartons of roughly the same size, being about 6″ in height and 4″ in breadth. The plaintiffs’ carton is of a pale brickish colour and the mark “GIRNAR” appears prominently upon it in English and Hindi in gold-coloured print. There above is the depiction of a snow-covered mountain. The defendant’s carton is orange in colour and the mark “GULNAR” is prominently printed on it in English and Hindi in the same colour. Above the word “GULNAR” are the words “BROOKE BOND” and below the word is the depiction of a flower, presumably the “Gulnar”, upon a green background.
6. The learned Single Judge noted the facts and set out the three questions that he thought arose for his consideration, namely, whether the plaintiffs had a reputation in respect of their mark; whether there was deceptive similarity between the two marks, linked with which was the question whether there was a likelihood of the defendant’s lea being passed off as the tea of the plaintiffs; and the balance of convenience. As before us, the reputation of the plaintiff was not questioned. In regard to the question of deceptive similarity, the learned Judge said that it could not be seriously contested that, phonetically, the two marks were similar. But, he said “the first impression created on looking at the two products whether side-by-side or singly is that there can be no confusion. Even if a person originally did not associate the word “GIRNAR” with a mountain, the moment the package is looked at, the association immediately becomes clear. On the other hand a look at the defendants’ package and the first thing which strikes a person is the prominent flower which is there on the pack. Therefore, at this stage it cannot be held that the two are deceptively similar or that there is any likelihood of the one being passed off by the other also because for the last at least three years the plaintiffs had been selling their lea only through their own retail outlets. The plaintiffs’ customers, therefore, knew whose products they were purchasing and when the words “BROOKE BOND” appeared prominently before the mark “GULNAR” on the defendant’s pack, the possibility of these persons or purchasers being deceived is reduced to zero”. Upon the aspect of the balance of convenience the learned judge held in favour of the defendant, particularly in view of the fact that he had already held that there was no deceptive similarity. He relied on the judgment of another learned Single Judge (which, we understand, is now reversed) in which it had been held that to grant an injunction in such a suit would be to conclude it and, therefore, an injunction should not be granted unless it could be held that the defendents had no right to go to trial. The learned Judge affirmed the ad-interim order passed on the Notice of Motion by which the defendant was required to maintain accounts and directed that statements thereof should be filed every quarter with the Prothonotary and Senior Master. He also ordered that
in future the Defendants shall use the name “BROOKE BOND” in the same size and colour and with the same prominence as the word “GULNAR” and the Defendants shall not use the word “GULNAR” without the words “BROOKE BOND” immediately preceding it. The Defendants are also directed to change the background colour of their carton from orange to some other colour not having any shade of red or orange on it.
7. Against this judgment and order the plaintiffs are in appeal, and they contend that they were entitled to injunctions as prayed in the Notice of Motion because the two marks are deceptively similar. The defendant has filed cross-objections and contends that, having regard to the finding tha the two marks are not deceptively similar, the learned Judge ought not to have required them to change the colour of their carton and to use the words “BROOKE BOND” in the same size and colour and with the same prominence as the mark “GULNAR” thereon.
8. The question that we must answer, using the test set out by Lord Parker in A.G. Spalding & Bros. v. A.W. Gamage Ltd. (1915) 32 R.P.C. 273 is this : whether the defendant, by putting its tea on the market in cartons bearing the mark “GULNAR” represented or enabled others to represent the defendant’s lea to be that of the plaintiffs?
9. That the two marks “GIRNAR” and “GULNAR” are phonetically similar is patent. It has been so found by the learned Judge and is not disputed before us by counsel for the defendant.
10. The aspect of the visual similarity of the marks “GIRNAR” and “GULNAR” has, unfortunately, not been considered by the learned Judge. Their visual similarity is also patent. Both marks have the identical number of letters and the first letter and the last three letters are common. The only difference is to use the English text, in the letters “IR” in the plaintiffs’ mark and “UL” in the defendant’s mark.
11. Reliance has been placed before us by Mr. Chagla, learned Counsel for the defendant, upon the judgments of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories and Ruston and Hornby Ltd. v. Zamindara Engineering Co. . In the former case the action related to trading style and was for infringement and passing off. Great emphasis was laid by learned Counsel upon paragraphs 28 and 29 of the judgment, which we reproduce:
28. 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 that the suit by the respondent complained both of an invasion of a statutory right under Section 21 in respect of a registered trade mark and also of a passing off by the use of The same mark. The finding in favour of the appellant to which the learned Counsel draw 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 gel-up together with the circumstances that the name and address of 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 mailers 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 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 imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of “the exclusive right to the use of the trade mark in relation to those goods” (vide Section 21 of the Act). The use by the defendant of 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 cither visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trade murk of the plaintiff have been adopted by the defendant, the fact that the gel-up, packing and oilier 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.
29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff’s mark is shown to be “in the course of trade”, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff’s registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words “or cause confusion” introduce any element which is not already covered by the words “likely to deceive” and it has some times been answered by saying that it is merely an extension of the earlier test and docs not add very materially to the concept indicated by the earlier words “likely to deceive”. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff’s mark. The purpose of the comparison is for determining whether the essential features of the plaintiff’s trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
(Emphasis supplied). [herein indicated in italics-Ed].
12. In the case of Ruston and Hornby Ltd. (supra) the Supreme Court quoted the judgment of the Master of the Rolls in Saville Perfumery Lid. v. June Perfect Ltd. (1941) 58 R.P.C. 147. The passage quoted relates to the difference between a passing off action and an infringement action and notes that in an action for infringement where the defendant’s trade mark is identical the Court will not inquire whether the infringement is such as would be likely to deceive or cause confusion; but where the alleged infringement consists of using not the exact mark but something similar to it the test of infringement is the same as in an action for passing-off. In other words, the test-is there a likelihood of confusion or deception arising from a similarity of the marks is the same both in infringement and passing off actions.
13. Mr. Chagla submitted that it was upon this basis that the learned Judge had come to the conclusion that the two marks in question were not deceptively similar. He drew our attention to the fact that the mark “GULNAR” upon the defendant’s carton had above it the words “BROOKE BOND” and below it the depiction of a flower, whereas the mark “GIRNAR” upon the plaintiffs’ carton had below it the depiction of a mountain. The added matter upon the defendant’s carton, therefore, prevented the possibility of any confusion or deception. The learned Judge was right in the view that he took and that, therefore, we, sitting in appeal, should be slow to interfere with the exercise of his discretion, unless we found something wrong in principle.
14. We find, firstly, that the learned Judge has not taken any account of the indubitable visual similarity of the marks “G1RNAR” and “GULNAR”. He has compared the two cartons as a whole. He could have taken the other features upon the cartons into account only after concluding that the marks were visually similar and he could then, if he thought they were, gone on to consider whether the added matter upon the defendant’s carton out-weighed the impression created by the visual similarity of the marks themselves. Secondly, if he was sure, that there was no deceptive similarity between the two marks by reason of the added matter, the learned Judge would not have directed the defendant to change the colour of its cartons and invariably to print the words “BROOKE BOND” in conjunction with the mark “GULNAR” in the same size and colour. In the premises, there is, we think, reason to go into the matter in appeal.
15. The marks “GIRNAR” and “GULNAR” are visually and phonetically very similar. It is our impression that the mark “GULNAR” is the predominant impression conveyed by the defendant’s carton and that that impression is not out-weighed by the added matter, viz., the use of the words “BROOKE BOND” in smaller print and a different colour above the mark “GULNAR” or the depiction of the flower beneath it. We are, therefore, of the view that the two marks are deceptively similar.
16. It was contended on behalf of the defendant that for at Least three years the plaintiffs had been selling their tea only through their own retail out-lets and that, therefore, the possibility of confusion or deception did not exist. We are unable to accept the argument. In the first place, the plaintiffs cannot be confined to their present mode of merchandising. Secondly, their reputation and sales cannot be confined to existing customers. We can envisage a situation where a potential customer of ordinary intelligence and imperfect recollection, having heard of the reputation of the plaintiffs’ lea but not that it was sold only through the plaintiffs’ retail outlets, goes to a provision store and asks for “GIRNAR” tea. If he is handed a canon of “GULNAR” tea it is conceivable that he would be deceived by the phonetic and visual similarity of the two marks. The get-up upon the carton of “GULNAR” tea would make no difference to him for he would not have seen it or the plaintiffs’ canon before.
17. In such circumstances the balance of convenience must tilt in favour of the plaintiffs. The reputation of their mark cannot be allowed to be substantially destroyed by the time the suit reaches hearing. It must also be remembered here that the plaintiffs are small dealers in tea as compared to the giant that is the defendant.
18. Mr. Chagla drew our attention to the fact that the mark “GULNAR” had been adopted by the defendant after a search of the Register and he submitted that the adoption was, therefore, honest. We must note in this regard that we have no explanation upon the record as to the reason why, with the names of every fragrant flower available to it, the defendants hit upon “GULNAR”, especially when, as Mr. Chagla fairly stated to the learned Judge, the defendant could not “really deny the fact that they were aware of the plaintiffs’ trade mark being used in respect of sale of their tea”.
19. As we have already stated, the reputation of the plaintiffs’ mark and the sales figures of their tea have not been disputed.
20. Accordingly, the appeal is allowed. The judgment and order under appeal are set aside. The plaintiff’s Notice of Motion is made absolute in terms of prayer (a).
21. The cross-objections filed by the defendant are dismissed. The costs of the appeal shall be costs in the suit.
22. Mr. Chagla applies for stay of the order of injunction that we have passed for a period of 6 weeks. Mr. Mehta, learned Counsel for the plaintiffs, opposes the applications pointing out that, rather than sell tea in cartons modified as ordered by the learned Judge, the defendant has preferred not to sell any lea under the mark “GULNAR”. We think that, nonetheless, the order of injunction that we have passed should be stayed for 6 weeks, during which time the order under appear shall remain in operation. Order accordingly.