JUDGMENT
Patanjali Sastri, J.
1. The first respondent (hereinafter referred to as the respondent) is a prominent Beedi manufacturer and trader carrying on business under the name and style of K.A. Shanmughavel & Co., in Shandy Bazaar, at Ambasamudram for about fifteen years prior to the suit. He claims that his Beedies have acquired such a wide reputation in the market, particularly the two brands known as “Shanmughavel Beedi” and “Asal Shanmugham” or “Shanmughani Beedi”, that the term “Shanmugham” and its adaptations have, as applied to Beedies manufactured or sold at Ambasamudram, become so much identified with his business and goods as to denote them exclusively among the purchasing public. Having learned that the appellant who bears the name of Shanmugha Nadar, taking advantage of his name, started business in beedies just a few months prior to the suit under the name and style of “P.S. Shanmugham and Brother” near the respondent’s premises at the same place and was selling beedies describing them as “Seal Shanmugham beedies” and marking them with a colourable imitation of his own seal, he brought the suit out of which, this second appeal arises against the appellant and his father (the second respondent) for an injunction restraining the defendants:
(a) from using the trade mark described in the plaint schedule or any colourable imitation thereof or the words ‘Seal Shanmugham Beedi’ ‘Shanmugham seal beedi’ or ‘Seal Beedi’ to designate or denote any beedies of their manufacture;
(b) from carrying on business under the firm name of ‘P.S. Shanmugham and Brother’ at all, or in any event without clearly and sufficiently distinguishing their goods from those of the respondent and without taking all precaution necessary in the trade and in the matter of wrappers and get up so as not to deceive and mislead purchasers; and
(c) from using the term “Shanmugham” in connection or association with beedies as a descriptive term thereof or as a trade name for their goods as distinguished and apart from any trader’s name, under which they may be, if permitted, entitled to carry on business.
2. Though the real question for determination by the Court in all such passing off actions, however complex the scheme of deception may be, is always whether or not the goods of the defendant have been represented as and sold as if they were the goods of the plaintiff See Reddaway v. Banham L.R. 1896 A.C. 199 as many as seven issues were framed in the suit, dealing with what are but different aspects of the same question, and it is to be observed that the separate consideration of these issues and the recording of separate findings thereon, some of them apparently contradictory, have given rise to some contentions which might not have been otherwise possible. These findings which are concurrent may be summarised as follows; firstly, as regards the trade mark or seal, though the respondent had been using it from about 1920, he has not been very particular about using it since 1925 and its use was “more or less discontinued in or about that time”; secondly, the term “Shanmughatn” has become so associated in the beedi trade at Ambasamudram and its vicinity with beedies manufactured by the respondent as to denote exclusively respondent’s beedies; and the use of that term by the appellant either by itself or in conjunction with other words, as a description or designation of his goods would be calculated to deceive purchasers; thirdly the trade name of “P.S. Shanmugham and Brother” was a false name as no such partnership between the appellant and his brother was proved; fourthly so far as the get up of the goods is concerned, there was no such similarity in the labels or wrappers used by the parties as would lead to any mistake or confusion among purchasers; but by marking his goods with a colourable imitation of the respondent’s seal and the words “Shanmugham seal beedi” the appellant intended to deceive purchasers. On these findings a decree was passed for the issue of an injunction restraining the appellant and his father (the second respondent herein):
from using the term ‘Shanmugham’ in connection or association with beedies as a descriptive term thereof or from using any trade name or trade mark in which the term ‘Shanmugham’ occurs or from carrying on business in the Ambasamudram Taluk in the firm name in which the word, ‘Shanmugham’ occurs.
3. It is against this decree that this appeal has been preferred.
4. The appellant’s learned Counsel Mr. Rangaswamy Iyengar in an interesting argument, contended before me that inasmuch as the appellant was merely using his own name for carrying on his business and describing his goods and it has been found by the courts below that the get up of the appellant’s goods as they were placed in the market was so dissimilar that there was no likelihood of purchasers being deceived, no case for the issue of an injunction has been made out. Relying upon Turton v. Turton (1889) 42 Ch. D. 128, he urged that so long as a man takes care to distinguish his goods sufficiently from those of another person when placing them in the market, so as to avoid, any likelihood of mistake or deception on the part of the purchasing public, he could not be restrained by any injunction either from carrying on business in his own name or from using his name as a trade mark or as a descriptive term applied to his goods, even though such name has come to be so closely associated with that other person’s goods as to denote them exclusively in the locality.
5. A number of cases have been cited on the one side or the other, but I do not propose to discuss all of them, as, in my view, the findings of the Courts below are plainly decisive of this appeal. There was also some debate at the Bar as to whether Turton v. Turton (1889) 42 Ch. D. 128, on which Mr. Rangaswamy Iyengar so strongly relied in support of his arguments could still be regarded as good law, in view of the later decision of the House of Lords in Reddaway v. Banham L.R. 1896 A.C. 199, at any rate, in cases where a particular name or descriptive word as applied to certain goods has acquired what has been called a “secondary signification”. I was referred to John Brinsmeed and Sons Ltd. v. Edward George Stanley Brinsmeed 30 Patent and Trade Mark Cases 493 at p. 510, where Buckley, L.J., observed that Turton v. Turton (1889) 42 Ch. D. 128, was qualified by Reddaway v. Banham L.R. 1896 A.C. 199. On the other hand, it was pointed out that there has been no decision of the House of Lords definitely throwing doubt upon the soundness of that decision and that in one of the latest cases dealing with this subject, Joseph Rodgers and Sons, Ltd. v. W.N. Rodgers & Co. 41 R.P.C. 277, a case apparently of a name with a secondary signification, Turton v. Turton (1889) 42 Ch. D. 128, was recognised and applied by Romer, J., as an authority still in force. I do not, however, think it necessary in this case, to decide whether and how far the principle enunciated in Turton v. Turton (1889) 42 Ch. D. 128, requires qualification in the light of the later decisions in England, as I am of opinion that even giving the fullest possible effect to that principle, it does not assist the appellant in this case. What happened there may be briefly stated. The plaintiffs had carried on business under the name of Thomas Turton and sons and the name of the firm acquired reputation and prestige in the Iron and Steel Trade in the locality. The defendant, John Turton, also setup a business in the same place and of the same kind in partnership with his sons under the trade name of ‘John Turton and Sons’ and the action was-brought for an injunction restraining the defendants from carrying on their business under this name, John Turton and Sons. It will be noticed that there was no question of the defendants having used any trade mark of the plaintiff in connection with the goods but it was simply a question of the name under which the defendants were carrying on their business. The learned Judges held that so long as a man carried on business in his own name simply or in a name which, as a description of that business, represents nothing but the accurate and exact truth, he did no wrong and could not be restrained by an injunction from doing so merely because the business of some other person better known in the trade under the same name was prejudicially affected. Lord Esher observed at page 134:
He had not done anything with the intent or for the purpose of making the use of his simple name look as if his name were the name of the plaintiffs. In some cases, besides using the name, parties have, to use what I think is a happy phrase of my brother Cotton’s, garnished that use – that is, they have done things besides using the name in order that the use of that name might look as if it were being used by the old firm. There is nothing of that kind here. The defendants have carried on a business a great part of which is the same as the plaintiffs, but they have carried it on in the name of John Turton and sons, the name of the principal being John Turton, and it being true that he has taken his sons as partners – he has done nothing but that.
6. After discussing the judgment of Lord Justice Turner in Burgess v. Burgess (1853) 3 De G.M. and G. 896 at 904 : 43 E.R. 351, the learned Judge points out that the fundamental principle in such cases is that no man can have the right to represent his goods as the goods of another person, and where a man merely uses his own name, there is no prima facie case that he is selling his goods as the goods of another person.
But if besides using his own name, he does other things which show that he is intending to represent, and is, in point of fact, making his goods represent, the goods of another person, then he is to be prohibited but; not otherwise. (at. p. 137.)
7. It will be apparent from these quotations that the principle of the decision in Turton v. Turton (1889) 42 Ch. D. 128, is this : No man has any right to represent that his business is the business of another person, but when a man carries on business in his own name which happens to be also the name of another, he does not make any such representation, but represents only what is the ‘accurate and exact truth’, namely, that it is his own business.
8. Even the decision of Romer, J., in Joseph Rodgers and Sons Ltd. v. W.N. Rodgers & Co. 41 R.P.C. 277, on which Mr. Rangaswami Iyengar relied as showing that Turton v. Turton (1889) 42 Ch. D. 128, must still be regarded as an authority in full force, shows that the principle of that decision cannot be invoked by a person who uses his name in combination with other words as a trade name which, taken as a whole does not represent the bare truth, and whose conduct otherwise also shows that he deliberately intends to pass off his goods as those of another. Romer, J., stated the law thus:
It is the law of this land that no man is entitled to carry on his business in such a way as to represent that it is the business of another; or is in any way connected with the business of another; that is the first proposition. The second proposition is, that no man is entitled so to describe or mark his goods as to represent that the goods are the goods of another. To the first proposition, there is, I myself think, an exception; a man, in my opinion, is entitled to carry on his business in his own name so long as he does not do anything more than that to cause confusion with the business of another, and so long as he does it honestly. It is an exception to the rule which has of necessity been established…. The exception to the first rule is, however an exception made in the interests of honest trading; again it is an exception which only authorises the use by a man of his own name; it is not an exception which, even in an honest case, entitles a man to use something that is not his own name; that is to say, it does not entitle him to use his name in combination with something else, such as the words ‘and company’…. To the second rule, to which I have referred, I think there is no exception at all, that is, a man is not entitled so to describe his goods as to lead to the belief that they are the goods of somebody else. It is not necessary that there should be an exception to that.
9. Now what are the facts found in the present case?, From the summary given above, it will be seen that the appellant has been trading under a name which does not represent the truth; for, no such partnership as ‘P.S. Shanmugam and Brother’ was proved and further, that the appellant has, by marking his goods with a seal which is a colourable imitation of the seal which the respondent was using, and by using the name ‘Shanmugham’ which has acquired a secondary signification as exclusively denoting the respondent’s beedies in the designation of the appellant’s goods as ‘Shanmugham seal beedies’, he wants to deceive the public. These findings, to my mind, completely exclude the application of Turton v. Turton (1889) 42 Ch. D. 128, and Joseph Rodgers & Sons Ltd. v. W.N. Rodgers, & Co. 41 R.P.C. 277, to the facts of the present case.
10. Mr. Rangaswami Iyengar laid great stress on the findings that the respondent had discontinued the use of his seal from about 1925 and the get up of the appellant’s goods was so dissimilar that they would not be mistaken for the goods of the respondent, and urged that the appellant could not therefore be said to have intended to deceive the public. As I have already indicated, this argument has been made possible by the manner in which the Courts below have dealt with the different aspects of the case separately recording distinct findings thereon as if they were different subjects for decision. The lower Courts have however, taken care to make it clear that their findings as to the get up of the appellant’s goods not being calculated to deceive the public should be understood only as a finding on that issue alone viewed apart from the other issues arising in the case. The learned District Munsif observes in paragraph 10:
Taking however my findings on the other issues and the facts on which such findings are based, I would hold that though there is a strong dissimilarity, there is a likelihood of purchasers being deceived.
11. The learned Subordinate Judge’s finding on this point is also similarly qualified while his conclusion that the appellant’s conduct, taken as a whole, betrayed an intention to deceive the public is clear and emphatic. I do not therefore see any force in this contention. Moreover, it has been held by the Court of Appeal in England that where a name has acquired a secondary signification as exclusively denoting the goods of a particular trader, mere dissimilarity in get up is immaterial and affords no protection. In Valentine Meat Juice Co. v. Valentine Extract Co. Ltd. (1900) 83 L.T. 259, dealing with an argument based on the dissimilarity of the get up of the defendants’ goods, Lord Alverstone M.R. observed at page 269:
It is said that the boxes containing the preparation are entirely different when you come to look at them. I do not at all deny it. I am not dealing with this case upon any consideration of makeup of the goods put side by side. I do not suggest that any body would think of necessity that the stuff in the bottle was the, same as the stuff in the boxes. But knowing as we do that it is a common method of giving medicines now to put them into globules a person would be extremely likely to think that a Valentine’s Meat Globule or that a Globule made by the Valentine Extract Company contained the same meat extract as Valentine’s Meat Juice…. I do not think that a person in the present day could properly use the words “Valentine s Extract” in connection with meat juice without passing off his goods as the goods of the plaintiff.
12. Similarly Lord Justice Collins said at page 271:
The get up has nothing whatever to do with this case. It may be dismissed altogether from the discussion, because the representation is not as to the form in which the article is sold. It is not suggested that the defendants pass off bottles which are not distinguishable from the plaintiffs’. The representation is as to the thing contained in the integument. In the plaintiffs’ case the integument is a bottle, and in the defendants’ it is a globule in a (sic). But the representation is that which is contained in the globule – namely, the extract of meat – is made, by the plaintiffs. That is what the representation is, and therefore the form and get up have, I repeat, nothing whatever to do with the case, and may be dismissed.
13. That was, of course, a case where the name “Valentine”, which happened also to be the name of one of the defendants, was found to have acquired a secondary signification, so as to denote the plaintiffs’ meat extract exclusively and the defendant was enjoined from using that name though it was also his own name in connection with his goods however different or dissimilar the get up of the latter might be. Similarly here, it having been found that the word ‘Shanmugham’ has become so much associated with the beedies of the respondent’s manufacture as to denote exclusively such beedies in Ambasamudram and its vicinity, the appellant cannot sell his goods under a description containing the word ‘Shanmugham’ without passing off his goods as those of the respondent, however different or dissimilar the wrappers and the get up of his goods may be. The case being therefore clearly one for the issue of an injunction the question next arises as to the form in which the injunction is to issue. It seems to me that the injunction ordered by the Courts below restraining the appellant, as it does, absolutely from using his own name in describing his business or designating his goods goes too far. It has been recognised in several cases that it is a strong thing to restrain a defendant from using his name in whatever manner in connection with the business carried on by him or the goods manufactured by him, and even in cases where such name was found to have acquired a technical or a secondary signification in the market so as to denote the plaintiff’s goods exclusively, Courts have so framed the injunction as to allow the defendant to use his name so as not to mislead the public into believing that his goods are the goods of the plaintiff. In J. and J. Cash Ltd. v. Cash 18 R.P.C. 213, the Court restrained the defendant from carrying on his business either in the name of ‘Cash’ or under any other name in which the name ‘Cash’ occurred, without taking reasonable precautions to clearly distinguish the business carried on by them from the business of the plaintiffs and from selling frillings or woven names or initials not manufactured by the plaintiffs as ‘Cash’s Frillings’ or ‘Cash’s woven names’ or initials. In the Valentine Meat Juice Co.’s case (1900) 83 L.T. 259, already referred to, the injunction so far as it related to the defendant, Richard Valentine, restrained him from carrying on business as manufacturer or vendor of any preparation or extract of meat or meat juice under any name or title of which the name ‘Valentine’ or ‘Valentine’s’ formed part without clearly distinguishing such business from the business of the plaintiffs and from selling any such preparation under any such name or description without clearly distinguishing such preparation from the goods of the plaintiffs. Similarly in Teofani & Co., Ltd. v. Teofani (1913) 2 Ch. D. 545, also a case where the word ‘Teofani’ was found to have acquired a scondary signification, Warrington, J., granted an injunction restraining the defendant from selling or offering for sale cigarettes as ‘A. Teofani’s cigarettes’ or otherwise marking his goods with the name ‘Teofani’ either with or without other names, without clearly distinguishing such cigarettes from the cigarettes of Teofani & Co., Ltd., (Plaintiffs) and this injunction was confirmed by the Court of Appeal.
14. In view of these decisions, I am of opinion that the injunction ordered by the Courts below should be qualified in the manner indicated in these decisions, that is to say, by the addition, at the end, of the words : “Without taking reasonable precaution to clearly distinguish the business carried on or beedies manufactured or sold by the defendants from the business carried on and the beedies manufactured by the plaintiff.
15. Subject to this modification, the decree of the Court below is confirmed and the appeal is dismissed. In the circumstances each party will bear his own costs of this appeal. Leave refused.
16. Leave refused.
