1969 (9) TMI 110 - SC - Companies Law

Whether the infringement is such as is likely to deceive or cause confusion? Held that - In the present case the High Court has found that there is a deceptive resemblance between the word RUSTON and the word RUSTAM and therefore the use of the bare word RUSTAM constituted infringement of the plaintiff s trade mark RUSTON . The respondent has not brought an appeal against the judgment of the High Court on this point and it is therefore not open to him to challenge that finding. If the respondent s trade mark is deceptively similar o that of the appellant the fact that the word INDIA is added to the respondent s trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark. Appeal should be allowed and the appellant should be granted a decree restraining the respondents by a permanent injunction from infringing the plaintiff s trade mark RUSTON and from using it in connection with the engines machinery and accessories manufactured and sold by it under the trade mark of RUSTAM INDIA . The appellant is also entitled to an injunction restraining the respondent and its agents from selling or advertising for sale of engines machinery or accessories under the name of RUSTAM or RUSTAM INDIA . The appellant is also granted a decree for nominal damages to the extent of Rs. 100/-

Summary

Issues:
1. Interpretation of Section 21 of the Trade Marks Act, 1940.
2. Comparison between infringement action and passing off action.
3. Determination of deceptive resemblance between trade marks "RUSTON" and "RUSTAM".
4. Granting of permanent injunction and damages in an infringement action.

Analysis:

1. The judgment involves the interpretation of Section 21 of the Trade Marks Act, 1940, which provides the exclusive right to the registered proprietor of a trade mark to use it in relation to goods and defines infringement as the use of a mark likely to deceive or cause confusion. This section forms the basis for determining the infringement of a registered trade mark.

2. A crucial distinction highlighted in the judgment is the difference between an infringement action and a passing off action. In an infringement action, the focus is on whether the defendant is using a mark identical or resembling the plaintiff's registered trade mark, while in a passing off action, the concern is whether the defendant's goods are designed to lead purchasers to believe they are the plaintiff's goods. This distinction is essential in determining the nature of the legal action to be pursued.

3. The judgment addresses the issue of deceptive resemblance between the trade marks "RUSTON" and "RUSTAM." The High Court found that the word "RUSTAM" bore a deceptive resemblance to "RUSTON," constituting infringement of the appellant's trade mark. The addition of the word "INDIA" to the respondent's trade mark was deemed inconsequential in light of the deceptive similarity, leading to the appellant's success in the action for infringement.

4. In the context of an infringement action, the judgment grants a permanent injunction restraining the respondent from infringing the appellant's trade mark "RUSTON" and from using it in connection with the engines and machinery sold under the trade mark "RUSTAM INDIA." Additionally, nominal damages are awarded, and the respondent is directed to deliver relevant material bearing the infringing marks. The judgment underscores the statutory right to seek relief in cases of trade mark infringement and the remedies available to the aggrieved party.

This comprehensive analysis of the judgment delves into the key legal issues addressed, providing a detailed understanding of the court's decision and the legal principles applied in the case.