TMI Blog1962 (4) TMI 130X X X X Extracts X X X X X X X X Extracts X X X X ..... en in script form. Both the marks were by virtue of the original registration to enure for a period of 7 years the former being in respect of sugar and all kinds of confectionery , while the latter was confined to all kinds of confectionery. The said trade marks have been subsequently renewed for a further period of fifteen years from 5-2-1951 and 30-2-1953 respectively. The respondents, Messrs Perry and Co. is a firm consisting of two partners by name K.K. Palanikumar Nadar and K.K.P.T. Periasami Nadar who are engaged in the manufacture and sale of biscuits at Usilampatti in Madurai District. Evidence shows that they have been trading under the name of Perry and Company since at least the year 1934. In respect of biscuits manufactured by them, they have been using labels containing the words Perry and Co. In the year 1950, the respondent applied to the Registrar of Trade Marks, Bombay for registration of their trade marks in regard to biscuits manufactured by them. Their applications were registered as Nos. 106242, 106244 and 121221 the trade mark being the name Perry's written in script form and also written in block letters. The appellant protested against the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s for their confectionery products and for other allied reliefs. The suit claim was put on an alternative basis. The first ground was that they had acquired a proprietary right by virtue of their having become entitled to the user of the word Parry's in relation to their products and secondly on the ground that the user of the labels with the name Perry's by the respondents on the products manufactured by them amounted to a passing off of their goods as those of the appellants. The respondents contested the suit denying the infringement and contending that by virtue of the agreement referred to above, they had acquired an exclusive right to the use of the trade mark Perry's in connection with all the goods manufactured by them whether it be merely biscuits or confectionery as well. The suit was also resisted on the ground that the word Perry was the contraction of the proper name of Periaswami one of the partners of the firm and that as such, they would be entitled to protection offered Section 26 of the Indian Trade Marks Act. 3. The Learned District Judge while he did not accept the case of the respondents that the word 'Perry' ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng the labels with the words Perry and Co in respect of biscuits only and that they were even prepared to give an undertaking not to use that word in respect of peppermints and other confectionery even if they were to manufacture them in future. The preamble to Ex. A.9 in a way confirms this when it says: Whereas 'Parry' and 'Perry' have had discussions and in view of the fact that the former are confectionery manufacturers and the latter biscuit manufacturers, both have decided to settle the matter amicably . 5. There can thus be no doubt, that there was no intention on the part of the respondents at the time of the agreement, Ex. A.9, to use their trade mark 'Perry' on goods other than biscuits which alone they were then manufacturing. This trade mark itself was registered only with respect to biscuits. 6. Mr. R. Gopalaswami Iyengar learned counsel, appearing for the respondents contends that the objection of the appellants throughout was confined only to the use by the respondents of the words Perry and Co ., in script form on their products and not with reference to any particular class of goods and that t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... pectively using the words Parry's and Perry's in relation to the same goods manufactured by them namely, confectionery. We feel no doubt that the marks so closely resemble each other that there is a real danger of deception or of causing confusion if they are used in respect of the same goods. The words used are strikingly similar when pronounced and they are also deceptive to the eye particularly if looked at from a distance. In re Magdalena Securities Ltd., (1931) 48 RPC 477 a question arose with regard to the registrability of the word Ucolite for partially coked coal as trade mark by a particular firm. The registration of this expression was opposed on the ground that this mark would conflict with the opponent's registered trade mark 'Coalite'. Maugham, J. rejected the application for registration holding that the applicant failed to show affirmatively that the word in question was not calculated to deceive the purchaser. The Learned Judge observes: If you pronounce 'ucolite' with the accent substantially on the second syllable you get a resemblance to 'coalite' which it is perfectly plain might conceivably ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... likely to cause confusion between them. 10. In that case the respondent applied for registration of the mark glunita used with reference to biscuits manufactured by him. The appellant who opposed the application for registration of that mark was using the mark (registered) Gluco vita with reference to Glucose, with vitamins. The Supreme Court held that the commodities concerned were so connected with each other as to lead to confusion or render deception likely in view of the similarity of the two trade marks. It is clear from the principle underlying all the cases referred to above, that there will be infringement if there is a probability of deception or confusion in the mind of a customer by reason of either visual or phonetic similarity between the two words one of which has been registered as a trade mark. In the present case the words Parry's and Perry's are so similar to each other when seen while displayed on the labels or wrappers or heard when pronounced, that it must be held that the use of the word Perry's will be an infringement of the trade mark Parrys. 11. It is contended for the respondents that the mark having been re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y but the operation of the protection given by the Act is confined to the goods in respect of which registration is made. Section 21 of the Act gives protection for the use of marks with respect to the goods for which it is registered. In Kerly's Law of Trade Marks (8th Edn. by R. C. Lloyd at page 63) it is stated : Classification is primarily a matter of convenience in administration (e.g.) in facilitating the search which is necessary to ascertain whether application is objectionable under Section 12. What is of real importance in determining the rights of parties, as has been pointed out, in the specification of the goods entered on the register and the validity of the registration. The fact that certain goods may fall within the same class is no evidence that they are goods of the same description which is the important criterion in considering restrictions on registration imposed by Section 12 and the provisions relating to rectification on the ground of non-use contained in Section 26. In the Upper Assam Tea Company v. Herbert and Co., (1889) 7 R. P. C. 183 a certain person registered the trade mark of an elephant as applicable to tea sold ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on the ground that the respondents were protected under Section 26 of the Trade Marks Act, when they use the word Perry's on their products it was done as a result of a bona fide use of their name. The argument is this : One of the partners of the respondent's firm is Periaswami Nadar, the abbreviated form of whose name is 'Peri or Pery' and when that word Perry is used, it tantamounts to use of the partner's own name. The Learned District Judge has rejected this contention. Section 26 of the Act gives protection only in respect of the full name of an individual. An abbreviated name or expanded name of the individual cannot obviously come within the terms of the Section. In Shorts Limited v. Short, 1914 31 P. P. C. 294 a company called Shorts Ltd. obtained an injunction against the defendant Greer Louise Short starting a new firm under the name of Shorts. There is therefore no substance in the contention advanced on behalf of the respondents. The result is that the appellants will be entitled to a decree restraining the respondents from selling their Confectionery under labels containing the words Perry's or Perry and Co. An injunction will i ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
