JUDGMENT
A.K. Rajan, J.
1. Application Nos. 1030, 1031 and 1032 of 2000 have been filed for (1) interim injunction restraining the respondent from infringing the applicants’ registered Trade Mark, “SABENA” by use of Trade Mark “SUBEENA”; (2) for’interim injunction restraining the respondent from infringing the applicants’ artistic work, “SABENA” on the polythene pouches by use of “SUBEENA” on the polythene pouches; (3) and for interim injunction restraining the respondent from “passing off the good goods of the respondent respectively.
2. The case of the applicants is that the second plaintiff is a wholly owned subsidiary of the first plaintiff. The first plaintiff has authorised the second plaintiff to manufacture and sell cleaning powder under the trade mark, “SABENA”. The first plaintiff is the registered proprietor of the trade mark, “SABENA” and it has been registered duly on 1st August 1990 under Registration No. 534459 in Clause-3 in respect of cleaning preparation. The Trade Mark was registered on the same day under Registration No. 534458 and it has been renewed periodically. The Trade Mark with the artistic work is printed on the polythene pouches with specific colours.
3. While so, the respondent started manufacturing, and selling the cleaning powder with the Trade Mark, “SUBEENA” by using the identical polythene pouches with the colours used by the applicants herein. The getup as well as the colours are identical and deceptively similar to the applicants’ design and colours. Therefore, they have filed the suit – C.S. 833 of 2000 restraining the respondent from infringing the plaintiffs’ trade mark, artistic work and also for passing off and also claimed damages. This Court in the applications passed ad-interim injunction restraining the defendants frpm using the same by order dated 9.11.2000.
4. An Advocate-Commissioner was also appointed to visit the premises of the respondent’s partners, proprietors, godowns, warehouses etc., and take inventories of all goods, products, polythene pouches, blocks, dyes, screen prints, brochures, labels, pamphlets, advertising material and other materials. Accordingly, the Advocate-Commissioner has visited the premises and filed his report.
5. The respondent has filed the counter-affidavit stating that he is carrying on the cottage industries and manufacturing cleaning powder in the name, “SUBEENA” for the past three years. He was not aware whether the plaintiffs are the owners of the Trade Mark, “SABENA”. In fact, the trade mark, “SUBEENA” used by the respondent is very much different from that of the plaintiffs in many aspects. There is neither visual nor phonetic similarity between the two. It has not used the wording “to clean anything”. The pouches produced before this Court is different from the registered trade mark. The wording, “SUBEENA” is entirely different; the emblem of a man with a lightning streak in the form of an arrow; logo of a tree over the word, “SABENA”; the words within the right box underneath G2 medium scouring powder; the four boxes on the left side of the pouch explaining the method of use which is common to all cleaning powder; a small explanatory note in red boxes 4 in Nos.; and the words in Tamil, Telugu, Malayalam, Kannadam, Hindi and Marathi are admittedly not registered as Trade Mark. The above said dissimilarities proved that the respondent is not using the same design used by the applicants. The pouch produced before this Court is entirely different from what is found in the registered Trade Mark. Further, the words in Tamil, Telugu, Malayalam and Hindi are found in the pouches produced before this Court. The backside of the pouches containing the word, “SABENA”, are not only in English, but also in Tamil, Telugu, Malayalam, Hindi and Marathi which are not the registered trade mark. Thus, there is ocean of differences between the two. It is false to say that the applicant’s trade mark has earned a reputation among the traders and public all over India. The pouch is only a packing material; therefore, there is no right of trade mark or copyright over the pouch as such. It is not correct to state that it is wrong to state that the trade marks are deceptively similar. The respondent is operating in a very small premises and the turnover of the year is very meagre and therefore, he is not a competitor to the applicants. The balance of convenience is on the shoulder of the respondent. Hence, the respondent prayed to vacate the interim injunction already granted.
6. The counsel for the petitioners argued that applicants are the owners of the trade mark, “SABENA”, cleaning powder and it has been registered as trade mark. It is valid till 2004. Copy Right also has been obtained by the petitioner. Even assuming that there was no Copy Right for the words used in the pouches, there is no answer in the counter for passing off the goods in the name of the plaintiffs goods. Assuming that some aspects for which trade mark and copy right were not used and abandoned, trade mark for that can be revocable only by approaching under Section 46(1)(b) of the Trade and Merchandise Act.
7. Section 54(1) of the Act, is as follows:
“54.(1) Where under the provisions of this Act use of a registered trade mark is required to be proved for any purpose, the tribunal may, if and so far as it shall think right, accept use of a registered associated trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved. (2) The use of the whole of a registered trade mark shall for the purposes of this Act be deemed to be also a use of any trade mark being a part thereof and registered in accordance with Sub-section (1) of Section 15 in the name of the same proprietor.”
The Act also prohibits any other person using a mark deceptively similar to that registered by the registered owner. In support of that, he relies upon a decision in Ruston & Hornby Limited v. Z. Engineering Company, wherein it is observed as follows:
“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.”
He also relied upon a decision reported in Parle Products v. J.P. & Company, Mysore, , wherein relying on an earlier decision in Durga Dutt v. Navratna Pharmaceutical Laboratories, , it was observed as follows:
“While an action for passing off is a Common Law remedy being in sub
stance 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 the above case, the Court further pointed out:
“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 plaintiffs and the defendant’s mark is so close either “visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated.”
8. Learned counsel for the respondent argued that between the two pouches produced before this Court, there is a lot of difference. The four boxes found on the left side in the pouch is not the registered trade mark and the bow and arrow found on the top of the emblem is not the same. What is found in the plaintiffs pouch is the a man with the lightning streak and that is not a registered trade mark.
9. Further, on the back side of the pouch, the letters are printed in different styles; the name is also printed in Tamil, Kannadam, Hindi and Malayalam whereas in the pouch used by the respondent, the words are printed as ‘New Subeena’ in Tamil and other languages; further, the words printed in Tamil, Hindi, Malayalam and Kannadam are different in all aspects. Therefore, that cannot be said to be passing off.
10. By seeing the two pouches even normal prudent person is bound to mistake that both of them are one and the same product. The colours used in both the pouches are “purple,” “majantha” and “white” which are almost identical. The designs are also identical except some small variations in the number of triangles in the design. The addition of the word, “New” does not in any way make any difference as held by the Supreme Court in the above decisions. Further, the designs are also identical though the four boxes on the left side are not registered trade marks. Any person of ordinary intelligence is bound to mistake the product of the respondent as that of the applicant. Further, the words, “SABENA” and “SUBEENA” is phonetically similar. The petitioner uses the words, “to clean anything” the words used in the respondent’s pouches are “to clean everything”. Of course, there is a small difference on the reverse of the packet in the size of the letters in Tamil, Hindi, Malayalam and Marathi; all the languages are not used by the respondent. Yet any person is bound to mistake the respondent’s goods as that of the petitioner’s goods. Unless a person looks it with the intention to find the minute difference between the two, one cannot find the differences between the two.
11. What is necessary for this Court is to apply the test laid down by the Supreme Court in the cases cited above wherein it was held that the Courts should see whether an ordinary man is likely to mistake the one for the other; if that test is applied, the answer would be in the affirmative. A normal prudent man is bound to mistake the goods of the respondents as that of the petitioner. The petitioner is the owner of the trade mark as well as they have the copy right. Therefore, the respondent is bound to be injuncted from using the name as well as the design with respect to the same goods, viz., “cleaning powder”. Merely because the word, “New” is added, it does not make it a different name. Therefore, the interim injunction already granted is liable to be made absolute.
12. In the result, the injunction already granted is made absolute, pending disposal of the suit.