JUDGMENT
R.C. Lahoti, J.
1. This order proposes to dispose of I.A. 2272/88 under Order 39 Rules 1 and 2 C.P.C. filed by the Plaintiff and I.A. 4937/92 under Order 39 Rule 4 C.P.C. filed by the defendants.
2. This is a suit for permanent injunction complaining of infringement of trade mark as well as copyright and passing off by the defendants.
3. For the purpose of disposal of these applications, it is not disputed that the plaintiff has ownership in trade mark and copyright in HANS CHHAP chewing tobacco and tobacco for hookka. The packing used by the plaintiff has the device of HANS placed in a floral circle. The photo of plaintiff Harish Chander Jaiswal is also depicted on the packing. The defendants have come to the market under the trade mark DUCK CHAAP. They have imitated the device of HANS and adopted similar paper colour scheme, get-up lettering size and orientation on the packing so as to completely confuse their products with that of the plaintiff.
4. The plaintiff had sought for ad-interim injunction in the following terms (to quote from the application) :
“It is humbly prayed that the defendants themselves, their servants, agents, stockists and all other persons on their behalf be restrained during the pendency of the suit from using the labek/trade mark DUCK CHHAP Brand in relation to chewing tobacco which is an infringement of the plaintiffs registered copyright No. A-9547/73, A-9646/73 and A-41629/83 and the trade mark No. 249250.”
5. By order dated 28.4.1982 this court passed the following order :
“I am satisfied that there is a prima facie case as the plaintiffs are owners of the copyright and the registered trade mark and the impugned lable appears to be similar to the one of the plaintiffs. I accordingly issue ad-interim ex parte injunction as prayed for in paragraph 18 of the application.”
6. At one stage of the proceedings there was expressed a possibility on amicable settlement outside the court. On 28.2.1995, the defendant No. 2 made the following statement in the court :
“On account of injunction passed in this case my business has completely stopped. I propose to continue my business simply using the trade name trade mark “DUCK” on my goods. I will not use photo of any bird which may be similar or deceptively similar with that of the plaintiff’s HANS.”
At the time of hearing, it was submitted by the learned Counsel for the defendants that the defendants do not propose to use photo of any bird whatsoever and they proposed to continue their ancestral business merely by using the word DUCK as their trade mark.
7. The learned counsel for the plaintiff argued that even what is proposed by the statement the defendants dated 28.2.1995 and by their counsel cannot be permitted.
8. Learned Counsel for the plaintiff has relied on the following decisions :
(1) Parle Products (P) Ltd. v. J.P. & Co. (.
(2) National Sewing Thread Co. Ltd. Chidambaram v. James Chadwick & Bros. Ltd. .
(3) M/s. Wattan Singh & Sons v. The Registrar of Trade Marks and others .
(4) James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd. .
(5) Britain Publishing Co. (London) Ltd. & London and Local Newspaper Ltd. v. Trade & Commercial Press Ltd. (1957 RPC 135).
(6) In the matter of application of Pomil Ltd. for registration of a trade mark (18 RPC 181).
Learned Counsel for the defendants has cited Schweppes Ltd. v. Gibbens (1905 RPC 601).
9. Having heard the learned counsel for the parties, I am satisfied that the prayer for modification made by the defendants cannot be denied. In all actions for infringement and passing off, the well settled test is that the defendants shall not be permitted to do any such thing as would cause confusion or deception to the unwary customer, who might by relying on its memory to treat the goods of the defendants as that of the plaintiff.
10. In the opinion of this court, if the defendants were to sell their goods merely by using the word DUCK as their trade mark without any photo, without the photo of a bird similar to that of the plaintiff’s HANS and without a photo similar to that of the plaintiff on their packings then they would not have committed the breach of injunction granted by this court. No action against them would have been maintainable. However, the difficulty is being caused because of the words in which the plaintiffs have styled their prayer for the grant of ad-interim injunction and that prayer having been accepted in terms by the court.
11. The word DUCK does not have any phonetic structural or visual similarity with the word HANS. The two words do not mean the same thing. The plaintiff has a particular packing which bears the word HANS, the photo of a bird, and the photo of the plaintiff. If the defendants are permitted to continue their business merely by using the word DUCK on their packings, in the opinion of this court they are not practicing any deception nor are likely to cause any confusion or deception to the unwary customers.
12. Both the applications are disposed of by substituting the following injunction order in place of the order dated 28.4.1988 :
“(1) That defendants shall during the pendency of the suit remain restrained from doing any mark or lable which may be deceptively similar with or may or may be likely to cause confusion with the plaintiff’s lable of “HANS CHHAP”. The photo of bird and the photo of plaintiff, Harish Chander Jaiswal or any other similar photo as may infringe the copyright of the plaintiff shall not be used by the defendants. The defendants shall be at liberty by using the word DUCK (without any photo) as trade mark on their goods.”