TMI Blog1979 (11) TMI 270X X X X Extracts X X X X X X X X Extracts X X X X ..... f the plaintiff are of high quality and were very popular with the beedi smoking people and that he has also spent a large amount in advertising his beedies in journals and news Papers and wall posters including exhibition of slides in Cinemas. It was further averred that he is using this trade mark from 1959 onwards uninterruptedly, that he has also registered the trade mark, under the Indian Copyright Act, as early as in 1965, that he has also applied to the Registrar of Trade Marks for registration of the trade mark under the Trade and Merchandise Marks Act and that the said application is pending registration. The plaint further stated that the defendant who was also a manufacturer of beedies has used the trade mark of the plaintiff and thought of passing off his inferior goods as those of the plaintiff in the year 1972. It is also stated that by such passing off the goods, he has caused confusion in the mind of the public and has also caused loss to the plaintiff. The plaint also stated that the mark used by the defendant is identical with the trademark used by the plaintiff, and that any unwary beedi smoking Person is likely to be -confused. The plaintiff therefore prayed for ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... laintiff. on the question of jurisdiction, he held that he can entertain the suit as the plaintiffs trade mark has been subsequently registered. He further found that there is no infringement of the trademark used by the plaintiff, and that the defendant has not been passing off his goods as those of the Plaintiff. Finally, he found that the plaintiff has acquired 'proprietary right for the use of the mark'. He dismissed the suit and the claim for damages. 5. Before I advert to discuss the contentions raised in this appeal, I must point out that the plaintiff before the registration of the mark filed the suit, though he had applied for registration earlier. Under Ex. A. 6, the trademark of the plaintiff has been registered in part A of the register. After this registration, the plaintiff amended the plaint on. 29-4-1975 to include a prayer for injunction on the ground that he has since become the owner of a registered trade mark. That amendment was allowed. Obviously aware of the fact that no person shall be entitled to institute any proceeding to prevent or to recover damages, for the infringement of an unregistered trade mark, the plaintiff originally filed the action ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... off action the Plaintiffs case is less specialised, for he complains that the defendant is using means which are calculated to pass off, or cause to pass off, the goods of the defendant as and for those of the plaintiff and the means may or may not comprise or consist of the trade mark, either registered or not. (See Kerley's Law of Trade Marks and Trade Names l0th Edn. Ch. 15 para 592, page 307). Bearing this in mind, we may now turn to Section 29 of the Trade and Merchandise Marks Act which runs thus 29 (1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof, using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff it the defendant establishes to the satisfaction of the court that the use ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ty of mistaking the figure of the fish occurring in Exs. A. I to A. 3 to the figure of the fish occurring in Ex. A. 8. As such it is not possible to uphold the plaintiffs claim that there has been similarity between the two figures. Further, the fish in Exs. A. 1 to A. 3 is found in a ring; whereas the fish in Ex. A. 8 is in a round ring with something like a flag around. There is no similarity between the symbols in Exs. A. 1 to A. 3, and the symbol in that the plaintiff's claim that the two marks are deceptively similar and that the marks used by the defendant are similar to the marks to which he is entitled is not correct. In the writings in the wrapper and label also, there is no similarity either in the matter of position of the writings or in the wording. In Exa. A. 1 to A. 3 symbols, there is writing in Telugu above the ring and in Urdu below the ring with the Tamil words 'Meen beedi' by the side of the Urdu writing. In Ex. A. 8 it is written as 'Meen beedies' in English at the top followed by the words 'Meen mark beedi in Tamil and the words 'flying fish' on either side of the ring and as 'Meen beedi' in one side of the oval ring and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ragraph 8, pages 456 and 457 can be extracted with much use 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 football. It would he 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 a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... illiterate person or a person of average intelligence asks for Meen mark beedi manufactured by the plaintiff and if he is supplied with the beedi of the label in Ex. A. 8, he would be under the impression that he has been supplied only with the beedi of the plaintiff's make. But it is pointed out for the respondent that that may be a point, which may be germane in an action for passing off. But on a consideration of the circumstances, I have to come to the conclusion that the overall similarity between the labels of the plaintiff Exs. A. 1 and A. 2, with the label Ex. A. 8 of the defendant and the. identical name 'meen mark beedi used by both the plaintiff and the defendant are likely to cause deception or confusion within the meaning of Sec. 2(d) of the Trade and Merchandise Marks Act 1958. 1 am therefore of the view that the mark used by the defendant is deceptively similar to the trade mark of the plaintiff. 13. It was pointed out by the counsel for the respondent that there is no evidence of actual deception. But that is not necessary. Kerly in 'Trade Marks and Trade Names', 10th Edn. CIL 17, paragraph 38, page 478 says Proof of actual deception, if the mar ..... X X X X Extracts X X X X X X X X Extracts X X X X
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