JUDGMENT
Raveendran, J.
1. The unsuccessful plaintiff in a suit for permanent injunction in a passing off action, is the appellant in this Appeal. The suit filed by the appellant in O.S.No.2 of 1991 on the file of the District and Sessions Judge, Mangalore was dismissed by the Judgment and decree dated 17.9.1991. For convenience, the parties will be referred to by their respective ranks in the suit.
2. The plaint averments in brief are: The plaintiff is a partnership firm engaged in the business of manufacturing hand made branded beedies under the trade-name and style ‘MANGALORE R,K. BEEDIES’ and selling them in several States including Karnataka, Goa and Maharashtra. The Licencing Authority under the Central Excise and Salt Act, has approved the label and wrappers with the aforesaid trade mark and granted a licence in the year 1986. The beedies manufactured by the plaintiff have earned a good reputation and market on account of their good and exquisite quality. The plaintiff is the Proprietor of the distinctive trade mark ‘MANGALORE R.K. BEEDIES’. The plaintiff has been continuously and extensively using the said trade mark since 1974 and had incurred large amounts for popularising the said brand. Their application for registration of the trademark was pending. The defendant being aware of the popularity of the plaintiff’s trade name and mark, commenced manufacturing beedies of inferior quality under the trade-mark ‘NEW MANGALORE R.K. BEEDIES’ and the said name and mark was deceptively similar to the popular trade name and mark of the plaintiff and the defendant was misleading the public by passing off inferior quality beedies as beedies manufactured by the plaintiff and thereby the business of the plaintiff was adversely affected. If the defendant continued to pass off his beedies under the said name and trade mark, the plaintiff will be put to irreparable loss and hardship. Inspite of issue of notice dated 6.12.1990 calling upon the defendant to desist from using similar trade mark and name, the defendant failed to do so. On these averments, the plaintiff sought a permanent injunction to restrain the defendant from manufacturing and selling beedies under the name and style ‘NEW MANGALORE R.K. BEEDIES’ which was deceptively similar to their trade-mark, ‘MANGALORE R.K. BEEDIES’.
3. The defendant resisted the said suit interalia on the contentions that the plaintiff started manufacturing beedies under the name ‘MANGALORE R.K. BEEDIES’ only from the year 1986 and not from 1974; that the name ‘MANGALORE R.K. BEEDIES’ was not a trade mark as there was nothing distinctive or special about it; nor did the said name indicate any connection to the plaintiff; that plaintiff’s beedies under the name ‘MANGALORE R.K. BEEDIES’ had not gained any popularity nor was the said beedies in any way superior to the beedies manufactured by the defendant; that the defendant used the name ‘R.K.’ as it referred to the religious name ‘RASOON KAREEM’ and his trade mark ‘NEW MANGALORE R.K. BEEDIES’ was distinct and popular on its own; that the design on the wrapper of the beedies manufactuted by him was distinct from the wrappers of the plaintiff and there is no room for any confusion or passing off. He also asserted that when he started manufacturing Beedies under the name and style ‘NEW MANGALORE R.K. BEEDIES’. he was not even aware that plaintiff was manufacturing beedies under the name ‘MANGALORE R.K. BEEDIES’, As there was no registered trade-mark, there was no question of infringment thereof and there was no basis for passing off action. Therefore the suit was not maintainable and was liable to be dismissed.
4. On the said pleadings, the Court framed the following issues:
“1. Whether the plaintiff proves that the plaintiff’s firm is a registered partnership firm under the Indian Partnership Act, dealing in the manufacture and sale of handmade beedies since 1974 under the name and style M/s. Mangalore R.K. Beedies as contended?
2. Whether the plaintiff further proves that the plaintiff has the distinctive trade mark ‘Mangalore R.K, Beedies’ and the letters ‘R.K.’ under a distinctive get up, lay out and colour schemes in respect of the beedies as contended?
3. Whether the plaintiff further proves that the same has acquired common rights, goodwill, popularity and reputation in their R.K. Beedies trade mark by virtue of continuous and extensive use of their trade mark as contended?
4. Whether the plaintiff further proves that the defendant has started just in October 1990 manufacturing and selling inferior quality beedies under the trade mark label consisting of the phrase ‘New Mangalore R.K. Beedies’ and the letters ‘R.K’ which are identical and deceptively similar and blatant copy of the plaintiff’s trade mark as contended?
5. Whether the plaintiff further proves that the defendant has fraudulently adopted the above offending trade mark with deliberate and dishonest intention of passing off the inferior beedies as the plaintiff’s products as contended?
6. Whether the plaintiff further proves that defendant’s act of manufacture and passing off its beedies as of plaintiff’s beedies has caused and has been causing irreparable loss and injury, damage to the plaintiff as contended?
7. Whether the plaintiff is entitled to the decree for permanent injunction sought for against the defendant?
8. What decree or order?
5. One of the partners of the plaintiff was examined as P.W.1 and the plaintiff exhibited documents P.1 to P.15 in support of their claim, The defendant examined himself as D.W.1 and exhibited D1 to D3. On the evidence placed before it, the Court dismissed the suit. In regard to the first issue, the Court held that the plaintiff was a” registered partnership Firm, but held that plaintiff was not manufacturing Beedies from 1974. The Court held all other issues (Issues 2, 3, 4, 5, 6 and 7) against the plaintiff and consequently dismissed the suit. Feeling aggrieved by the said dismissal, the plaintiff has filed this Appeal.
6. On the rival submissions, the following Points arise for Consideration:
(1) Whether the trade name and mark and the design of the wrappers covers used by the defendant for manufacturing and selling Beedies, namely, ‘New Mangalore R.K. Beedies’ are deceptively similar to the trade name and mark and the design used by the plaintiff for its Beedies namely ‘Mangalore R.K. Beedies’?
(2) Whether the defendant was selling his goods in a packing so designed or marked, as to deceive or likely to deceive the purchasers to believe that they are plaintiff’s goods?
(3) Whether the plaintiff is entitled to the permanent injunction sought?
POINT-1
7. Trade and Merchandise Marks Act, 1958 (hereinafter referred to as ‘the Act’) does not define the term ‘Passing Off’. Section 105 however indicates that a ‘Passing Off’ action contemplated under the Act, is an action 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. Section 27 Sub-section (1) provides that no person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trade mark. Sub-section (2) of Section 27 makes it clear that nothing in the Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. Section 106 provides that in an action for passing off, the Court may grant an injunction and 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. An action for passing off which is an action in tort, is based on the principle that no man is entitled to represent his goods or business as being the goods or business of another person, whether such representation is made by the use of any mark, name, sign, symbol, device or other means.
8. The term ‘deceptively similar’ has been defined in Section 2(d) as: “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”. Section 2(j) defines a “Mark” as including a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. The word ‘trademark’ means in relation to any provision other than Chapter X of the Act, vide Section 2(v):
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(ii) in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provision of Chapter VIII”.
9. To determine what constitutes ‘passing off’ it is useful to refer two Decisions of the Supreme Court reported in DURGA DUTT SARMA v. NAVRATNA PHARMACEUTICAL LABORATORIES, and RUSTON AND HORNBY LTD v. ZAMINDARA ENGINEERING CO., In DURGA DUTT SARMA’s case it has been held as follows:
“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 .. .,”
“In an action for infringement, 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 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”.
In RUSTON’s case, , the Supreme Court held as follows:
“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 or 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”.
10. The words ‘deceptively similar1 had been explained by the Supreme Court in Parle Products (P) Ltd. v. J.P. & CO., Mysore, as follows;
“It is therefore clear that in order to come to a conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The words “Gluco Biscuits” in one and “Glucose Biscuits” on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Any-one in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs’ goods, he might easily mistake the defendants’ wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs’. After all, an ordinary purchaser is not gifted with the powers of observation of a Sheriock Holmes. We have, therefore no doubt that the defendants’ wrapper is deceptively similar to the plaintiffs’ which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.”
11. This Court in the case of The Niligiri Dairy Farm v. S.A. Rathnasabhapathy, 1975 (2) KLJ 505 referred to the essence of passing-off action as follows:
“The gist of a passing off action is that a person has no right to pass off his goods as the goods of somebody else. An action for passing off is thus a generalised action and is enforceable in respect of registered as well as unregistered trade marks. One of the main questions would be whether the defendant’s mark is identical with or shows deceptive resemblance to the plaintiff’s mark. It is to be decided whether the mark used by the defendants on their goods is likely to deceive the customers into buying the defendants’ goods as if they were the plaintiff’s goods, because, the principle is that nobody is entitled to represent his goods as the goods of somebody else. This principle is solely based on deception and in order to succeed, deception, or likelihood of deception, must be established. The issue in matters of passing off can be expressed as follows: Would the user of the defendants either the actual user proved in evidence or the proposed user conceded for the purposes of action, be likely to lead persons, either members of the trade or of the public, to suppose that the goods so sold were the product of the plaintiffs or that the business concerned in their production was the plaintiff’s or was associated with the plaintiff’s business?”
12. KERLY’s “Law of Trade Marks and Trade Names”, Twelfth Edition, the test for determining the rules of comparison to determine deceptive similarity are stated thus at para 17.08 (Page 439):-
“Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of foot-ball. It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.
When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on the mind might be very different. On the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus it is clear that a mark is infringed if the essential features, or essential particulars of it are taken. In cases of device marks, especially, it is helpful before comparing the marks to consider what are the essentials of the plaintiff’s device;
A similar question may arise where the defendant had added a prefix or suffix to a word mark of the plaintiff. Such cases have sometimes been disposed of merely by saying that the defendant is necessarily using the plaintiff’s mark; but the sounder approach is to treat the defendant’s mark as a combination having “one individual thing which is a monopoly of the plaintiff”. It is then necessary to consider how important that thing is to the whole. .. It may be convenient to put the question whether the defendant has taken those features which give the plaintiff’s mark that distinctiveness…..
Sri Udaya Holla, learned Counsel for plaintiff, relied on several other Decisions relating to deceptive similarity. As the principles are well settled and as we have referred to some of the Decisions on the matter, we do not propose to refer to the rest of them.
13. Applying the above principles, let us examine the trade mark and name of the plaintiff and the trademark and name of the defendant as printed in the wrappers/covers used by them. The beedies produced by the plaintiff and defendant are all packed in batches of 25 in yellow plastic covers. Twenty of these small packets are apparently in turn packed in larger yellow plastic covers. The cover used by plaintiff for packing 25 Beedies (Ex.P.3) consists of the words “MANGALORE R,K. BEEDIES” in English at the top. Thereafter ‘RK’ in large letters is printed on a dark background with the words “BEEDIES” printed beiow the letters ‘RK’. The central letters ‘RK’ are bracketed and is surrounded by small circles containing the letters ‘RK’. The words “R.K. BEEDI WORKS, ULLAL” in English is printed in prominent letters at the bottom with the Registration Number in small letters. The 25 Beedi covers used by the defendant (Ex.D2) is similar to plaintiff’s covers. It is almost of similar size. The plastic cover is also of yellow colour, but of slightly different shade. The words “Mangalore R.K. Beedies” with the addition of the word “New” is printed in English at the top. Thereafter ‘RK’ in farge letters is printed on a dark background with the words “BEEDIES” printed below the letters ‘RK’. The central letters ‘RK’ are bracketed by a circle and is surrounded by small circles containing the letters ‘RK’. The words ‘NEW RK BEEDI WORKS, B.C. ROAD” in English and in Kannada in prominent letters is printed at the bottom with registration Number in small letters.
The overall impression one will get, when seeing the covers containing beedies separately without the advantage of side by side comparison is that they are the same. It is no doubt true that if the covers (Exhibits P3 and D2) are kept side by side and compared carefully, several distinguishing features can be identified. One is the addition of the word ‘New’ before the words ‘Mangalore R.K. Beedies’. Another is the difference in address and Registration Number. The design of the bracketing of the letters ‘RK’ is slightly different. There are also several other small differences in detail. But as stated above, such difference will be evident only on a side by side comparison, which no consumer or buyer in a shop will be able to do.
14. The 500 Beedi covers used by the parties are basically larger versions of their 25 Beedi covers. The leading characteristics of the covers used by defendant are the same as those of the covers used by the plaintiff. When seen separately the covers used by the defendant (Ex.D.3) looks deceptively similar to that of the covers used by plaintiff (Ex.P.1). The size, colour, design, background, name and mark are similar and the product marketed is same. But when compared by side by side, there are several differences which are listed by the trial Court in its judgment in great detail. For convenience, they are extracted below.
the background figure of lotus in blue colour. Further, the letters ‘R.K.’ are shown in dark blue colour in double circled figure. At the extreme bottom of the abovesaid lable, the words ‘R.K. BEEDI WORKS ULLAL are written. Thus the marked features of the abovesaid label of the plaintiff are that the letters ‘R.K.’ are
shown in yellow colour in an eggshaped circle on the lotus figure at the base.
The perusal of Ex.D.3 will go to show that the words ‘NEW MANGALORE R.K. BEEDI WORKS’ are shown at the top with light blue colour as background. The letters ‘NEW R.K.’ are shown in big size with the letters ‘BEEDIES’ at the bottom of the letters ‘R.K.’ in an arch supported by one cube inch at the end of the arch. The letters ‘R.K.’ are shown in light blue colour in single circle. The words ‘NEW R.K. BEEDI WORKS’ on the left side in English, ‘New R.K. Beedi Works’ in Hindi on the right side and ‘New Mangalore R.K. Beedi Works’ in Kannada are shown at the bottom, for the 500 beedies bundle. Further, the letters ‘NEW R.K.’ with the letters ‘BEEDIES’ on the arck below the letters with one cube as support to the arck at each end is shown on the reverse of the said label marked at Ex.D.3. Further, the same is the position with the reverse description of the defendant’s label for 25 beedies. The front portion of the label contains the words “NEW MANGALORE R.K. BEEDIES, B.C. ROAD, D.K.” on the top with yellow background below which the letters ‘NEW R.K.’ are shown with the letters ‘BEEDIES’ on the arch at the bottom of the said letters ‘R.K.’ supported by two cubes. Further the letters ‘R.K.’ in blue colour are shown at both sides of the said circle along with the words ‘NEW R.K. BEEDI WORKS’ in English, New R.K. Beedi Works in Hindi, ‘NEW R.K. BEEDI WORKS, B.C. ROAD’ in English and ‘New R.K. Beedi Works’ in Kannada.
The distinguishing features of the plaintiff’s trade mark is that the plaintiff’s trade mark is having the background of dark blue and to a little extent darkish yellow colour scheme as the background for the label with the letters ‘R.K.’ in yellow colour on the base of the 7 petals of the lotus flower. But no such lotus flower figure is used by the defendant in Exs. D2 and D3. The defendant’s colour scheme is light blue and light yellow”.
15. By such detailed side-by-side comparison, the trial Court come to the conclusion that the get-up style, colour scheme are all different and therefore there is no likelihood of any confusion or deception. But this is exactly what a Court is not supposed to do. In fact, to use an idiom, the Court in trying to see the trees, missed the existence of the forest. What the Court should determine is whether there is any similarity between the leading and essential characteristics and what is the general impression a layman is likely to have on seeing or receiving the defendant’s product. One should not be prevented by a multitude of details, from forming a clear general conception. Let us say that a person intends to purchase plaintiff’s beedies. What does he ask for? He asks for ‘Mangalore R.K. Beedi’. Let us say he is given defendant’s product. What does he see? He sees the yellow plastic cover. He sees the prominent letters R.K. and the smaller letters’ ‘Mangalore’ & ‘Beedies’. He sees that the said prominent ‘R.K.’ is surrounded by small circles with R.K. He will get impression that he has been given what he asked for. That is proof of deceptive similarity and colourable imitation. The defendant cannot contend that there are variations; that he has added the word ‘new’; that he has used a different shade of yellow for the cover; that he has given his address which is different from petitioner’s address; and that there are several other small distinguishable features. The defendant’s trade mark and name may contain dissimilarities. Nevertheless they are deceptively similar calculated to mislead a layman with an ordinary and imperfect memory.
16. A trade mark, may consist of a name or a pictorial device or a combination of name and pictorial device. What is important may be the name in some cases, the pictorial device in some cases, or a combination of the name and the pictorial device in other cases. The Court will have to examine the plaintiff’s trade-mark which may consist of a mere name or a pictorial device or a combination of both as the case may be, and identify its essential and important features and characteristics. Thereafter, without having the original, that is, the plaintiff’s mark for comparison, the Court will have to examine the trade mark of defendant to identify its essential features and characteristics. It should then visualise, putting itself in the place of an average common man with an ordinary and imperfect memory whether the essential features and characteristics of plaintiff’s mark are reproduced and high-lighted in the defendant’s mark, if it is so done and is likely to cause confusion in the minds of public, then that will be sufficient to grant relief to the plaintiff. A detailed examination to find out minute distinguishing features between the two marks ignoring the essential features, will defeat the very purpose and object of finding out whether there is deceptive similarity. The question is not whether the trade-mark used by the defendant is distinguishable, but whether it is deceptively similar. This aspect has been completely ignored by the trial Court. We are therefore of the view that in this case, the defendant’s trade mark is deceptively similar to that of plaintiff’s trade mark and the defendant was passing off his goods as that of plaintiff and has to be restrained by an order of injunction.
17. POINTS (2) & (3): The following facts are not in dispute; that the plaintiff has been manufacturing and marketing the aforesaid beedies with the said trademark and name from 1986; that an application submitted for the registration of the said trade mark is pending; that the plaintiff is marketing the beedies in Karnataka and Goa; that the defendant started manufacturing the beedies by using a similar trade mark and name in the year 1990 and he also markets them in Karnataka and Goa. However the defendant contends that the plaintiff is not entitled to the relief of injunction on the following grounds:
(a) The use of the trade mark and name by the plaintiff is not of such length of time, so as to lead to an inference that it is an established trade mark and name identified with the goods of plaintiff, in the minds of the public;
(b) The plaintiff has not examined any independent witnesses to prove that the trademark and name used by the defendant is deceptively similar to that of the plaintiff and that deceived by such similarity, they bought the goods of the defendant, mistaking it for plaintiff’s product;
(c) The plaintiff has not proved that the defendant has been using the said mark with an intention to deceive nor has produced proof that plaintiff’s rights have been infringed by the use of the said mark;
We will deal with the said contentions briefly.
18. Re. Ground (a): The defendant in his evidence, clearly admitted that the plaintiff has been selling ‘R.K. Beedies’ from the year 1986 onwards and that defendant obtained the licence to manufacture beedies in 1990 and has been manufacturing beedies only from 1990. The plaintiff’s partner (P.W.1) in his evidence has stated that the plaintiff firm has spent large amount to popularise their name and brand in Karnataka and Goa; that in view of the wide publication and advertisement made by the plaintiff the marketing for a long period, people have identified the product of the plaintiff by its trade name and mark; that on account of the defendant marketing the beedies under a deceptively similar trade mark and name, plaintiff’s business was adversely affected at Mangalore and Goa.
It has been held in Dr. Ganga Prasad Gupta & Sons v. S.C. Gudimani, AIR 1988 Delhi 329 that a trader acquires a right in a distinctive mark merely by using it upon or in connection with goods irrespective of length of such user and the extent of his trade. It was further held:
“There is little doubt that the trade mark ‘Goodmans’ has been used by the plaintiffs from long, for their medicines. They being the prior user, have the right to seek its protection. The defendant manufactured disinfectants under the same mark i.e., ‘Good-mans’. Considering the nature of the goods manufactured by the parties, the trade channels through which they are marketed and the field of activity that they have, they can be termed as cognate goods. The likelihood of dereption or confusion that the goods of the defendant are as well being manufactured by the plaintiffs, cannot be ruled out.”
There is admittedly a clear gap of four years between the time of plaintiff commencing the marketing of goods with their respective I trade mark and name. No particular period of user can be mentioned as a minimum period for giving a cause of action in a passing off action except to say that the period should be sufficient to create an awareness in the minds of the public that the goods marketed with the trade name and mark of the plaintiff were that of the plaintiff. Having regard to the nature of product, areas where they are marketed and the section of society using the goods, we can safely conclude that a period of four years is sufficient to establish the link between the plaintiff and their trade mark and name, in the minds of the public.
19. Ground (b): The plaintiff has not produced any independent evidence other than the testimony of its partner. The plaintiff has not examined any witness to prove that the public was deceived by the similarity of defendant’s product to the plaintiff’s product. The question is whether evidence of the plaintiff’s partner and the defendant and the documents exhibited are sufficient to prove deceptive similarity. Whether there is deceptive similarity is a matter for the Court to examine and decide. Having regard to the essential features of plaintiff’s and defendant’s trade marks and names. If on a comparison, the Court comes to the conclusion that the trade name and mark used by the defendant is deceptively similar and is likely to deceive the consumer, it does not require any independent evidence. Reference may be made to the observation of this Court in Brooke Bond India Ltd. v. Royal Products, 1981 (2) KLJ 92:
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(4) The question of possibility of confusion is not to be decided on the basis of a person looking at the two trade marks side by side; but on the basis that normally a customer would see one trade mark in the absence of the other without making up his mind about the trade mark before him being one he is looking for or not, in the light only of his general recollection of what the nature of the trade mark sought for by him was. This particularly so, as the eye is not always an accurate recorder of visual detail and marks are more usually remembered by the general impressions or by some significant detail than by a photographic recollection of the whole;
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(6) The resemblance between the two marks may be phonetic, may be visual, may be auditory. The resemblance may also be in the basic idea represented by the plaintiff’s mark which idea may depict in a different representation and the identification of the essential features of a mark is in essence a question of fact and depends on the judgment of the Court based on the evidence placed before it as regards the usage of the trade mark. The object of the enquiry in the ultimate analysis is whether the mark used by the defendants as a whole is deceptively similar to that of the registered mark of the plaintiff or not.
Xx xx xx”
Having regard to the evidence on record, we hold that it was unnecessary for the plaintiff to examine any other witness, particularly when defendant has not been able to make out that the added matter is sufficient to distinguish his goods from those of plaintiff.
20. Re: Ground (c): It is also well settled where the trade mark or name or device is so similar as to infer imitation, no further evidence is required to prove that the plaintiff’s right has been violated. In Ellora Industries v. Banarasi Dass Goela, , it was held that it was not necessary for the plaintiff to establish nor prove that he suffered damages by the action of the defendant. It was further held:
“It is the tendency to mislead or confuse that thus forms the gist of action; and the plaintiff need not establish fraud, nor that any one was actually deceived, or that he actually suffered damage. The tort is thus (like label) actionable per se. Indeed the forms of passing off, like the forms of nuisance, are infinite. Loss of sales is not the only form of probable injury that will suffice, loss of reputation has been accepted as sufficient. Law protects all intangible elements of value and it is not always necessary that there must be in existence goods of that other man with which the defendant seeks to confuse his own”.
In THE GENERAL ELECTRIC CO. OF INDIA (P) LTD. v. PYARA SINGH AND ORS. , it was held as follows:
“The action for passing off is an action for deceit, for colourable imitation of plaintiff’s mark in relation to his goods which have acquired distinctive reputation. The use of the similar mark either visually, phonetically or otherwise such as get-up packing and other writings so as to conclude that there is imitation is sufficient to complete the cause of action for passing off. The evidence of actual deceit is not necessary”.
Hence the third ground raised by defendant is also without any merit.
21. The Court below and the defendant have strongly relied on the Decision of the Kerala High Court in the Decision reported in 1972 Kerala Law Journal, page 19 to contend that the defendant’s trade mark was not deceptively similar to that of plaintiff. The portion relied on by the defendant in Kerala case reads as follows:
“The comparison of the plaintiff’s mark, get-up or make-up or whatever it be with the mark, get-up or make-up etc. of the defendant should not be side by side comparison. Such a side by side comparison may bring out some contrasts between the two; but that is not what should be done. The purpose of the comparison is to find out the probable reaction of an unwary purchaser with average intelligence, who had occasion to purchase the plaintiff’s goods. Will he, relying on his imperfect recollection and not having the plaintiff’s mark, get-up make-up etc., before him get confused and mistake the defendant’s goods he is purchasing to be those of the plaintiff? That is the test: that is the purpose of comparison: that is how the comparison should be made”.
The above observations do not help the defendant, but support the view we have expressed above.
22. He next relied on the Decision of the Andhra Pradesh High Court in TEJU SINGH v. SHANTA DEVI, wherein the scope of an action for passing off goods is explained as follows:
“lt is a remedy against a false representation tending to deceive customers into believing that the goods which the defendant is selling are really the plaintiffs. The false representation may be by statements or by conduct, i.e., by adopting the distinctive mark, name, number, design, get-up or appearance of another goods. The plaintiff may prove either an intent to deceive or an actual damage and it is enough if he shows that the conduct of the defendant was calculated or likely to deceive or mislead public. On proof of these facts the plaintiff would be entitled to an injunction or damages. The onus is on the plaintiff to show that his goods acquired a reputation among the public by some distinctive mark, name, etc. The same principles which are applied in the case of an action of “passing off” the goods are applied where the name of a person’s business is imitated and passed off by another person on his own. It has now been uniformly laid down as settled rule that either in the case of goods or business the plaintiff has to show that his mark has become so distinctive that the public regard the same as belonging to a particular source. The plaintiff has to further prove that the offending mark or name is likely or calculated to deceive and cause confusion among the public thereby injuring the plaintiff’s business. It has also been held that where a trader adopts a trading name including mere descriptive words of common use the Court will not readily assume that the use of the said word or name by another is likely to cause confusion. In such cases, it is incumbent upon the plaintiff to show that the name has acquired a secondary meaning in connection with the goods or business so that the use of this name by another is likely to deceive the public”.
There can be no dispute in regard to the said principles. But the question is how far they are useful to advance defendant’s case. In this case, we have held that, on account of use of the mark for a considerable time by the plaintiff and the nature of product, the product with the particular mark is identified as plaintiff’s product. We have also field the mark used by the defendant is deceptively similar to that of plaintiff, intended to cause confusion in the minds of consumers. Further, the case is not one of mere use of a common name, but a distinctive mark comprising a name and a device. Hence this Decision also does not help the defendant.
23. The defendant’s Counsel next relied on the Decision of the Madras High Court in ASIATIC GOVERNMENT SECURITY LIFE ASSURANCE CO. LTD. v. NEW ASIATIC INSURANCE CO. LTD., AIR 1939 Madras 555. The question involved in that case was whether the trade name of defendant (New Asiatic Insurance Co. Ltd.) was similar to the name of plaintiff (Asiatic Government Security Life Assurance Co., Ltd) so as to deceive public or cause confusion. The case did not consider any trade mark comprising a name and a device as in this case. It related only to a name and on considering the evidence, it was held that defendants’ name was not calculated to deceive and so to divert business from plaintiff and there was no confusion in the two names. The Decision is of no assistance to defendant as the question that was considered therein was completely different.
24. We therefore allow this Appeal and set aside the Judgment and decree of the trial Court. The plaintiff shall be entitled to an injunction restraining the defendant, his agents and servants from manufacturing and selling beedies under the name ‘New Mangalore R.K. Beedies’ which is deceptively similar to ‘Mangaiore R.K. Beedies’. The plaintiff is also entitled to costs throughout.