9911796707
TMI Blog1972 (4) TMI 104X X X X Extracts X X X X X X X X Extracts X X X X ..... in 1938, the firm of Messrs Janki Dass & Co., a partnership concern carrying on business at that time at Lahore, began to import bicycles into India under the Trade Mark "EASTERN STAR", that in course of time the said bicycles acquired a reputation in the trade and with the public, and that the trade mark "EASTERN STAR" became associated in the minds of the public with the goods of the said firm Messrs Janki Dass & Co. It was stated in the plaint that the said Messrs Janki Dass & Co. applied for and obtained, in or about 1943, registration of the design of the monogram used by them as No. 12052 as of the date 15th February, 1943, in respect of cycles and their accessories in Class 12 (vide Exhibit P.1), that the said Messrs Janki Dass & Co. also applied and obtained registration of their trade mark comprised of the words "EASTERN STAR" as No. 11426 as of the date 5th February, 1943 (vide Exhibit P.2), and that from the said respective dates, the said trade marks were renewed for a period of 15 years in favor of the firm Messrs Janki Dass & Co. (4) Upon the incorporation of the appellant-company, the said firm Messrs Janki Dass & Co. assigned all thei ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (defendant 1) had used for a number of years the device of "HIND" or "STAG" as a trade mark and has only recently adopted the trade mark "ROYAL STAR" for the purpose of trading on the reputation of the appellant's trade mark "EASTERN STAR" and for the purpose of passing off its goods as the goods of the appellant (plaintiff). The appellant further alleged that the trade mark "ROYAL STAR" so nearly resembled the appellant's trade mark "EASTERN STAR" as to be likely to cause confusion or deception, and was an infringement of the appellant's registered trade mark "EASTERN STAR", and that it had already suffered damage and was likely to suffer damage unless respondent 1 (defendant 1) was restrained by an injunction as pecuniary compensation would not be an adequate relief. With those allegations, the appellant (plaintiff) filed the suit out of which this appeal has arisen praying as follows:- "(A)That the 1st defendant, their agents and servants be restrained by a perpetual injunction from using the mark "ROYAL STAR" in relation to Cycles or their accessories or any other Mark which is in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed that it had applied for registration of the trade mark "ROYAL STAR" by application No. 177777 and the same had been advertised, before acceptance, in the Trade Mark Journal of 16th July, 1956, and that the appellant (plaintiff) had filed a notice of opposition on 17th April, 1959, along with an application for extension of time, and the same have been pending in the office of respondent 2 (defendant 2). Respondent 1 further stated that it had for a number of years used the device of "HIND" and "STAR" as a trade mark on its cycles, though it has adopted the trade mark "ROYAL STAR" on its cycles since the year 1957 and has been advertising extensively the said trade mark for its cycles and selling the cycles under the said mark. It denied that it ever had any intention of trading on the reputation of the appellant's trade mark "EASTERN STAR" in any manner, and submitted that the trade mark "ROYAL STAR" was entirely different in name and getup from the trade mark "EASTERN STAR". It also pleaded that the use of the trade mark was in no way fraudulent, that the word "STAR" in the monogram fixed to the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... egistered trade marks 12052 and 11426, as alleged in the plaint? 2. Whether defendant 1 has infringed the plaintiff's trade marks? 3. Whether defendant 1 has sold goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods. 4. To what relief, if any, is the plaintiff entitled? (9) By his judgment, dated 27th November, 1961, the learned District Judge held on issue No. 1 that the appellant (plaintiff) was the proprietor of the registered trade marks 12052 and 11426. On issues Nos. 2 and 3, the learned District Judge held that the trade marks used by respondent 1 (defendant 1) were not identical with the marks of the appellant (plaintiff); that it could not be said that the two monograms of the appellant (plaintiff) and respondent 1 (defendant 1) were so similar as to likely to deceive or cause a confusion; that the use of the words "ROYAL STAR" for the cycles of respondent 1 (defendant 1) did not constitute an infringement of the trade mark "EASTERN STAR" of the appellant (plaintiff), as the names "EASTERN STAR" and "ROYAL STAR" were substantially different even though the word &qu ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Radhey Mohin Lal, learned counsel for respondent 1 (defendant 1). (11) Issues Nos. 2 and 3 are the material issues. The allegations in the plaint show that the suit filed by the appellant (plaintiff) was for infringement of the registered trade marks as well as for passing off, and issues Nos.2 and 3 relate to the alleged infringement and passing off by the use of similar marks. As pointed out by the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, Air 1965 Supreme Court 9801, there are basic differences between the causes of action and right to relief in suits for infringement and for passing off of a registered trade mark. In the case of a registered trade mark, the registered proprietor thereof has a statutory and exclusive right to the use of that mark in relation to his goods and has a statutory remedy conferred upon him by way of an action for infringement in the event of use of an identical mark or a mark which is deceptively similar to the registered mark by another (vide section 29 of Trade Marks Act, 1958). In such an action, the plaintiff has to show (a) that his mark has been registered and he is the registered proprietor the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gs, the matter is incapable of definition. Shri Annop Singh, learned counsel for the appellant (plaintiff), cited a large number of decisions. It is, however, sufficient to refer only to some of them. (15) In The Coca-Cola Company of Canada Ltd. v. Pepsi-Cola Company of Canada Ltd., Air 1942 Privy Council 402, the action was for alleged infringement of a registered trade mark viz. Coca-Cola, by using a mark, Pepsi-Cola. The respective rights of the parties were governed by the (Canada) Unfair Competition Act, 1932. Section 3(c) of the said Act provided that- "NOperson shall knowingly adopt for use in Canada in connection with any wares any trade mark which is similar to any trade mark which is in use in Canada by any other person and which is registered pursuant to the provisions of that Act as a trade mark for the same or similar wares." (16) The word "similar" was defined in section 2(k) of the said Act as under:- "SIMILAR,in relation to trade marks. . .describes marks. . so resembling each other or so clearly suggesting the idea conveyed by each other that the contemporaneous use of both in the same area in association with wares of the same kind ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... intiff. Then, dealing with it as a design word. Lord Russell observed that "The mark used by the defendant, viewed as a pattern or picture, would not lead a person with an average recollection of the plaintiff's registered mark to confuse it with the pattern or picture represented by that mark", and in the result held that there was no infringement of the plaintiff's registered trade mark. (18) In Messrs Modi Sugar Mills Limited v. Tata Oil Mills Ltd; Co. A.I.R. 1943 Lahore 196, Tek Chand and Sale Jj pointed out at page 202 that "what has to be seen is not that there is a possibility of confusion, but that the resemblance is such that there is a reasonable probability of deception". The learned Judges, relying on the observation of the Privy Council in Thomas Bear and Sons (India) Ltd. v. Pravag Narain, Air 1940 Privy Council 86, approving the test laid down by Niamat Ullah J. in Thomas Bear and Sons (India) Ltd. v. Pravag Narain, Air 1935 Allahabad 7, observed that "in the judging of the probability of deception, the test is not whether the ignorant, the thoughtless, or the incautious purchaser is likely to be misled, but we have to consider the a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ;Amritdhara" and "Lakshmandhara" was likely to deceive or cause confusion. (21) The principles which emerge from the above decisions may be stated as follows: "INan action for an alleged infringement of a registered trade mark, it has first to be seen whether the impugned mark of the defendant is identical with the registered mark of the plaintiff. If the mark is found to be identical, no further question arises, and it has to be held that there was infringement. If the mark of the defendant is not identical, it has to be seen whether the mark of the deferdant is deceptively similar in the sense that it is likely to deceive or cayse confusion in relation to goods in respect of which the plaintiff got his mark registered. For that purpose, the two marks have to be compared, "not by placing them side by side, but by asking itself whether having due regard to relevant surrounding circumstances, the defendant's mark as used is similar to the plaintiff's mark as it would be remembered by persons possessed of an average memory with its usual imperfections", and it has then to be determined whether the defendant's mark is likely to deceive or ca ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... determination is whether the use of the words "ROYAL STAR" for the cycles of respondent 1 (defendant 1) constitutes an infringement of the appellant's (plaintiff's) trade mark "EASTERN STAR". The learned District Judge took the view that though the word "STAR" is common to both the names, the names, taken as a whole i.e. "EASTERN STAR" and "ROYAL STAR" are substantially different and there is no likelihood of deception or confusion. The learned District Judge referred to certain observations in the decisions in Pinto v. Badman, 8 R.P.C.181,(13) and The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. , to the effect that a label "does not consist of each particular part of it, but consists of the combination of them all," and "where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole." He next referred to the observations on page 657 of Kerlay on Trade Marks, 7th Edition, which go to show that it was held in a cas ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... llection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as 'current of nectar' or "current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase ........We are aware that the admission of a mark is not to be refused, becuause usually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name." (25) Thus, the proper approach to the question is to consider the overall and phonetic similarity of the two names "EASTERN STAR&q ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e declined to accept the statements of the aforesaid witnesses by merely observing that their evidence was not very convincing. He has not, however, given any reason for his view. As already stated, all the aforesaid witnesses are business-men belonging to various places. Nothing has been elicited either in their cross-examination or in their answers to crossinterrogatories served upon them by respondent 1 (defendant 1) to show that they were interested in supporting the appellant (plaintiff). There is nothing on the record which throws any doubt as regards their credibility, and we see no reason for not accepting their statements that their customers refer to the "EASTERN STAR" cycles as "STAR" cycles. (28) As against that evidence, respondent 1 (defendant 1) examined Virender Kumar, Ambala, as D.W. 1; and got recorded the statements of InderChandGarg, Lucknow; Prem Sagar, Lucknow; Jai Shanker Tandon, Kanpur; Partap Chand, Lucknow; Atar Gopal Nigam, Jabbalpur; Harnam Dass, Lucknow and Umesh Chand Rastogi, Kanpur; byinterrogatories on commission. Virender Kumar stated in examination-in-chief that no customer of his had ever described "EASTERN STAR" cy ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Messrs Janki Dass & Co. assigned all their rights to the former with effect from 12th July, 1955. Respondent 1 (defendant 1) gave certain particulars in paragraph 13 of its written statement regarding trade marks containing the word "STAR" in respect of cycles. Even according to those particulars, barring one instance of a trade mark "RED STAR" registered on 26th June, 1942, all the other marks containing the word "STAR" were registered, according to the written statement, in and after 1955. Thus for a period of about seventeen years there had been no cycles in the market other than those of Messrs Janki Das & Co. and the appellant (plaintiff) which were being sold with the trade mark containing the word "STAR", and only the "EASTERN STAR" cycles were in the field. It is the case of the appellant (plaintiff) that it. over since its incorporation, sold "EASTERN STAR" cycles on a large scale throughout India, and by about 1956 its turn-over was about a Lakh of bicycles per year. Vishnu Narain Tandon, Law Officer of the appellant (plaintiff) Co: deposed that the appellant (plaintiff) has been manufacturing and selling by the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ;s (plaintiff's) trade mark "EASTERN STAR". In support of the aforesaid allegations, the appellant (plaintiff) filed Exs. P-3 to P-7 in the trial Court. It appears from the evidence of Vishnu Narain Tandon (P.W.5) that M/s. Jawahar Kanta of Lucknow wanted to get the trade mark "ROYAL STAR" registered in respect of cycles, and that on the appellant (plaintiff) filing objections to the same, the party withdrew its application for registration, Ex.P-3 being the order of the Deputy Registrar of Trade Marks, dated 28-7-1959, recording the withdrawal. Ex.P-4 is a copy of an order of the District Judge, Rohtak, dated 28-8-1959, which shows that by compromise a decree for a permanent injunction was passed restraining M/s. Sun Flower Cycles, Ludhiana, from using a badge on bicycles corresponding to the badge "EASTERN STAR" of the appellant (plaintiff). But, it is not clear from Ex.P-4 what trade mark was sought to be used by M/s. Sun Flower Cycles. Ex.P-5 is a copy of an order of the Deputy Registrar of Trade Marks, dated 23-11-1959. It shows that one Ram Chand Batra applied for registration of a trade mark, that when the appellant (plaintiff) took proceedi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... inivasan J.) of the High Court of Madras, pronounced on 7th October, 1966. In that case, the Deccan Cycle and Allied Industries and Company, Hyderabad, got a trade-mark "GOLDEN STAR" registered in 1956. The appellant (plaintiff) filed an application before the Assistant Registrar of Trade Marks, Madras, for rectification of the Register of Trade Marks by cancellation of the entry relating to the trade mark "GOLDEN STAR" on the ground that the said trade mark infringed the registered trade mark "EASTERN STAR" of the appellant (plaintiff). The application was dismissed by the Assistant Registrar. On appeal by the appellant (plaintiff) Shrinivasan J. held that the cycles of the appellant (plaintiff) had acquired reputation as "STAR CYCLES", that the word "STAR" used by itself or in association with any word had acquired reputation in the field of cycle manufacture as that of the appellant (plaintiff), that the pictorial representation of the star was the distinguishing feature of the trade-mark "EASTERN STAR" of the applellant (plaintiff) and that there was every likelihood of the mark "GOLDEN STAR" causing confusio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat it is likely to deceive or cause confusion in relation to cycles. That is to say, it has to be seen whether, having due regard to relevant circumstances, the mark used by respondent 1 (defendant 1) is similar to the appellant's (plaintiff's) mark as remembered by presons of average intelligence and imperfect memory or recollection. For that purpose, the distinguishing or essentail features (and not every detail of the two marks) which a purchaser of average intelligence and imperfect memory would retail in his mind after seeing the marks, have to be noticed. (35) As stated by the learned District Judge, the mark of appellant (plaintiff). "CONSISTSof a circular device with a star in the centre and a crown at the top. Within the circle, there is an inner circle and the circumference of the inner circle is connected to the star by a large number of lines. In between the circumference of the inner circle and that of the outer circle, there are written the words "THE Eastern STAR". At the bottom of the circle, there is an are like projection containing the words "ATLAS PRODUCT." (36) The device used by respondent 1 (defendant 1), in the words of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nd respondent 1 (defendant 1) shows that the essential feature in each of them is the representation of a star therein. It is true that as observed by the learned District Judge, the mark of the appellant (plaintiff) is circular with a crown at the top and a projection at the bottom, while the device of respondent 1 (defendant 1) is oblong. But, the said features depict only the general outline or shape of each of the marks. In our opinion, the general outlines or shapes of the marks would be noticeable by a purchaser only when the two marks are compared by him placing them side by side. But, the correct approach is to consider which feature of each of the marks would remain in the mind of purchaser of a average intelligence and imperfect memory. After having a look at the two marks, we are of the view that it is not the general outlines or shapes of the marks, but it is the representation of a star in the two marks which would remain in the mind of such a purchaser. In this connection, we have also to keep in mind the fact that the appellant's (plaintiff's) cycle had acquired a reputation and came to be referred to as "STAR CYCLES". Consequently, the presence of ..... X X X X Extracts X X X X X X X X Extracts X X X X
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