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J.C. Eno Limited Vs. Vishnu Chemical Co. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai
Decided On
Case NumberO.C.J. Suit No. 1491 of 1939
Judge
Reported inAIR1941Bom3; (1940)42BOMLR924
AppellantJ.C. Eno Limited
RespondentVishnu Chemical Co.
Excerpt:
trade mark-passing off action-exclusive right to use of words ' fruit salt' on saline product-words distinctive, of plaintiff's goods-use of word ' falaxar' on similar class of goods-whether such user constitutes infringement of plaint-iff's mark-successful plaintiff's electing to claim account of profits-claim for damages given up-plaintiffs whether entitled to account of profits.;traders in india acquiring in any language the exclusive right to the use of certain particular marks, not. merely as descriptive of but as distinctive of their goods, have the right to restrain another trader from copying those words for use in connection with a similar class of goods, in any other language in india.;the plaintiffs had over a long period of time manufactured and sold in indian markets and.....blackwell, j.1. this is a passing off action. the plaintiffs have over a long period of time manufactured and sold in the indian markets and elsewhere in large quantities a saline under the names ' eno ' and ' fruit salt.' that saline is sold in octagonal shaped bottles packed in cardboard cartons enclosed in wrappers. exhibit (c) is a specimen of the plaintiffs' goods, and i will discuss the get-up thereon later. the plaintiffs' case is that their saline so manufactured and sold, and bearing the marks ' eno' and ' fruit salt,' has acquired a very wide reputation throughout india, and that the marks ' eno ' and ' fruit salt' are well known to the trade and the public as denoting saline of the plaintiffs' manufacture, and that such saline is commonly asked for by purchasers by the name '.....
Judgment:

Blackwell, J.

1. This is a passing off action. The plaintiffs have over a long period of time manufactured and sold in the Indian markets and elsewhere in large quantities a saline under the names ' Eno ' and ' Fruit Salt.' That saline is sold in octagonal shaped bottles packed in cardboard cartons enclosed in wrappers. Exhibit (C) is a specimen of the plaintiffs' goods, and I will discuss the get-up thereon later. The plaintiffs' case is that their saline so manufactured and sold, and bearing the marks ' Eno' and ' Fruit Salt,' has acquired a very wide reputation throughout India, and that the marks ' Eno ' and ' Fruit Salt' are well known to the trade and the public as denoting saline of the plaintiffs' manufacture, and that such saline is commonly asked for by purchasers by the name ' Fruit Salt' or ' Eno's Fruit Salt.' The plaintiffs complain that the defendants have been selling and offering for sale in Bombay and other places in India saline not of the plaintiffs' manufacture under the name 'Falaxar,' and that that word is the Marathi equivalent of the plaintiffs' mark ' Fruit Salt,' and that the defendants are and have been selling and offering for sale ' Falaxar' packed in bottles of the same size and shape as those of the plaintiffs and packed in cartons wrapped in wrappers so contrived as to be a colourable imitation of the plaintiffs' wrappers, Exhibit (E) is a specimen of the defendants' goods, and I will discuss the get-up thereon later. The plaintiffs allege that they have acquired a right to the exclusive user of the marks ' Eno ' and ' Fruit Salt:' as applied to their saline, and that the defendants' mark ' Falaxar' is a colourable imitation of the plaintiffs' mark ' Fruit Salt,' and is calculated to deceive purchasers into the belief that the defendants' saline bearing the mark 'Falaxar' is saline of the plaintiffs' manufacture. The plaintiffs further allege that the get-up of the defendants' saline is a colourable imitation of the get-up of the plaintiffs' saline and is calculated to mislead purchasers into the belief that the defendants' saline so got-up is saline of the plaintiffs' manufacture.

2. By their written statement the defendants admit that the saline manufactured and sold by the plaintiffs in bottles bearing both the marks ' Eno ' and ' Fruit Salt' has acquired a wide reputation and commands a large sale in the market in the principal cities of India. They admit that the mark ' Eno' is well known to the trade and the public as denoting the saline of the plaintiffs, but deny that the words ' Fruit Salt' by themselves are known to the trade or the public as denoting the saline of the plaintiffs' manufacture. They allege that the saline manufactured by the plaintiffs is commonly called and asked for by purchasers by the name of ' Eno ' or ' Eno's Fruit Salt' and not by the name ' Fruit Salt.' They admit that they have been selling and offering for sale in Bombay and other places in India since the year 1931 a saline manufactured by them under the name ' Falaxar.' They deny that ' Falaxar' is the Marathi equivalent of the mark ' Fruit Salt.' They deny the alleged colourable imitation and say that the floral design and pictorial representation of fruits on their wrappers is common, to the trade. They deny that the plaintiffs have acquired a right to the exclusive use in India of the mark ' Fruit Salt,' and say that these words have acquired merely a descriptive meaning in the Indian market. They say further that the plaintiffs' claim is barred by the law of limitation.

3. [After setting out the issues His Lordship proceeded:] The plaintiffs had used the words ' Eno ' and ' Fruit Salt' in England in connection with their saline for many years. They registered ' Fruit Salt' as their trade mark in England on April 2, 1906, exhibit (G). They have to prove in this case that they have used those words in India and have acquired an exclusive right to use them in connection with their, saline, and that those words have become distinctive marks in connection with their saline.

4. The reputation of the plaintiffs' saline in India and the wide extent of their sales is admitted in paragraph 3 of the written statement, and is established by the evidence. Mr. E, L. C. Gwilt, who is now the Managing Director of F. J. Foster & Co., Ltd., came out to India in November, 1922, as an employee of Messrs. Joseph Nathan & Co., Ltd., and as the representative both of the Company and of Mr. Foster, he attended to the interests of the plaintiffs in regard to the sale of their Fruit Salt in India until June, 1924, and during that period visited the principal cities in India, where the plaintiffs' fruit salt was being sold. He said that the sales increased in volume from 30,000 in value in 1922, to 50,000 in value by June, 1924. The get-up of the wrapper upon exhibit (C) had, he said, the same appearance to the best of his recollection as it had in 1924. His recollection was not challenged in cross-examination. He said further that no product in India was called ' Fruit Salt' except the plaintiffs', and no product was asked for, or accepted, by anybody in the trade, or connected with the trade, as ' fruit salt' except the plaintiffs' fruit salt during the period in which he represented the plaintiffs in India.

5. Mr. R.N. Katrak is now and has been for the last nine years the sole sale representative of the plaintiffs in the Bombay Presidency. From 1912 to 1917 he attended in Bombay to the sales of the plaintiffs' fruit salt. He said that the get-up, as it now appears on exhibit (C), was the same between 1912 and 1917, and since 1931 as it is now as far as he could recollect. His recollection also was not challenged in cross-examination. Mr. W.V. Pendhar kar, one of the defendants' witnesses, stated that he used to sell the plaintiffs1 fruit salt some eighteen years ago at Bhandara in the Central Provinces, where his father carried on business, and where the witness assisted him. He said further that he had known the plaintiffs' bottles for many years with the same carton and wrapper upon them which are upon them; now. One G. v. Tole, another of the defendants' witnesses, stated that he had read about Eno's Fruit Salt before he began to sell exhibit (E), and that he had never heard or read of any Fruit Salt except Eno's Fruit Salt. The admission of the defendants in their written statement and this evidence clearly establish the reputation in India and the extent of the plaintiffs' sales.

6. Next arises the question whether the plaintiffs' saline was well-known and commonly asked for as ' Fruit Salt.' The oral evidence and the written orders which have been produced establish that the plaintiffs' saline was asked for both as ' Eno's ' and as ' Eno's Fruit Salt,' and very frequently simply as ' Fruit Salt.' In addition to the evidence of Messrs. Gwilt and Katrak upon this point, there is the evidence of Mr. Marshall, a qualified chemist and representative in India of Messrs. Burroughs Welcome & Co. He has sold thousands of bottles, and said that it is perfectly understood in the trade that by ' Fruit Salt' is meant the plaintiffs' ' Fruit Salt,' and that those words are well known in the trade to belong exclusively to the plaintiffs' products. Evidence was also given on the point by three persons in the trade who had sold the plaintiffs' saline over a long period of years, and by two members of the public who had purchased it. I find on the evidence that the plaintiffs' saline was well-known in India and was very commonly asked for as ' Fruit Salt,' that the words ' Fruit Salt' are well-known in the trade to belong exclusively to the plaintiffs' saline, and that those words are not merely descriptive of, but are a distinctive mark of, the plaintiffs' saline.

7. [His Lordship then discussed the evidence as to the meaning of the word ' Falaxar ' and proceeded:] I find that the words Fala and Kshar are of common use in Marathi, and would be well understood as meaning ' Fruit' and 'Salt' and in combination 'Fruit Salt.'

8. [His Lordship next discussed the oral evidence called for the defendants and proceeded:]

9. I turn now to the question whether the defendants had the right to use the word Falaxar. It was argued for the defendants that the plaintiffs have offered no evidence that they themselves have ever used that word, or that they have acquired by user a right to the exclusive use of that word, and that the plaintiffs could only seek to restrain the use of words in a foreign language which they had themselves used and by the user thereof had acquired an exclusive right to that user.

10. The question whether it was permissible to seek registration of words in a foreign language which might be deceptive having regard to the fact that there was already registered a symbolic trade-mark conveying a similar meaning to that which would be conveyed by the words in the foreign language sought to be registered, was discussed in In re Trade-mark of John Deichursl & Sons, Limited [1896] 2 Ch. 137. In that case the applicants sought to register as part of the trade-mark on one of three panels on a label certain Burmese characters the meaning of which was ' The Golden Fan Brand.' There were already on the register several trade-marks containing fans and one of them, which was applied to the same class of goods as the trade-mark sought to be registered, had a golden fan. The owners of those trade-marks all consented to the application. The Court of Appeal, however, held, reversing the decision of the Vice-Chancellor of the County Palatine, that the Comptroller of Patents, Designs and Trade Marks, was justified in refusing to register a trade-mark containing as an essential part of it words amounting to a verbal description of a mark already on the register, on the ground that their use would be calculated to deceive, though the words were in the Burmese language and character, which are little known out of Burma. In the course of the argument Lindley L.J. said (p. 144):-

The difficulty in your way is this-you could not register ' Golden Fan Brand' in English, nor, I suppose, in any ordinary European language. Can you, then, do it because the language in which you propose to register it is an out of the way language which few people here know

11. Pausing here for a moment, counsel for the defendants actually went to the length of contending that it would be open to the defendants to procure registration in England of the Marathi word Falaxar, although the plaintiffs there have got on the register the words Fruit Salt as their registered trademark. In my opinion the suggestion that the defendants would be entitled to register in England the word Falaxar is completely met by the observations of their Lordships in the case to which I am referring. I am clearly of opinion that they would not be entitled or permitted to register the word Falaxar in England. They would be asked what it meant, and if they were honest they would have to concede that in fact it was intended to convey the words Fruit Salt. In the course of his judgment Lindley L.J. said (p. 146):-

Now the way in which it strikes me has been already pointed out in the course of the argument. Could Messrs. Dewhurst require the comptroller to register their mark if these hieroglyphics were expressed in language intelligible to Englishmen In other words;; if instead of the hieroglyphics you had their equivalent, ' The Golden Fan Brand,' ought the. Court to compel the comptroller to put such a mark on the register I say that unquestionably the Court ought not to do so. The objection to it would be that the words must be calculated to deceive because they only express in words what the golden fan of Mr. Boyd expresses to the eye. That is the principle upon which the Star Case, In re Trade-mark of La Societe Anonyme des Veireries de 1'Etvile [1894] 2 Ch. 26, proceeded, and I do not think that any evidence which could be adduced would get over that objection, because we know perfectly well that if you once put upon the register a golden fan in the shape of a picture like Mr. Boyd's, and you also put upon the register a, mark called ' The Golden Fan,' although without a golden fan, the two must mislead the public, and Mr. Boyd's consent is no answer to that.

Counsel for the defendants pointed out, as was the fact, that in that case there was a symbol upon the register and what was sought to be registered were certain words. He sought to distinguish that case from a case in which words might be upon the register and an application might then be put forward to put on the register words having an equivalent meaning. In my opinion, no such distinction as is sought to be drawn can in fact be drawn. Indeed the case would have been, in my opinion, still stronger if instead of a golden fan being already upon the register the words ' Golden Fan Brand ' had been registered. I am clearly of opinion, as was indicated by their Lordships in that case, that no one would have been allowed to register in England words conveying a meaning similar to ' Golden Fan Brand.' Lopes L.J. in the course of his judgment said (p. 151):-

But it is said here that these words, being in Burmese, would not be calculated to mislead or to deceive. Now, if we were to hold that the mere fact that the words in question were in the Burmese language was sufficient to rebut the probability of deception, I ask, where are we to stop What would be said with regard to French What would be said with regard to German What would be said with regard to Welsh In point of fact, if we pushed that matter to its logical conclusion we should have to go the length of holding that the fact of the words being in any foreign language would be sufficient to rebut the probability of deception. In my opinion that cannot be done.

12. It is true that their Lordships in that case were dealing with a registered trade mark. In my opinion, however, the principle there laid down is equally applicable in a country where there is in fact no register of trade marks, and where traders have to rely on long user of certain marks and on having acquired by long user the exclusive right to the use of particular marks. In my judgment if traders in India have acquired in any language the exclusive right to the use of certain particular marks not merely as descriptive of but as distinctive of their goods, they have the right to restrain another trader from copying those words for use in connection with a similar class of goods in any other language in India, and the reason for my opinion is that there are in India, as is well-known, a very large number of languages, and that a very large number of persons in India know several languages. Many persons who know Marathi know English, many persons who know Urdu know English, many persons who know Gujarati know English, and so on. Accordingly, a person knowing a number of languages would very likely be deceived if a trader translated into one of the languages which that person knew the trade-mark acquired by long user by a trader in another language with which that person was familiar, and affixed that trade-mark so translated to a similar class of goods;

13. In Eastman Photographic Materials Company v. Ccmptroller General of Patents, Designs, and Trade-marks [1898] A.C. 571, Lord Halsbury in the course of his judgment quoted with approval the report of the Commission appointed to enquire into trade marks and designs. In the course of their report as appears at p. 575 of the judgment the Commissioners say:-

We would add upon this point that we think that where any English word would be rejected as not entitled to registration, no person ought to be permitted to register its translation into any other language. The question has been raised whether a word having the same sound as one entered on the register, though differently spelt and with a different meaning, should be registered. The question in such a case would seem to be whether the resemblance between the old mark and that applied /. for was such as to be calculated to deceive; if it were it ought, of course, to be rejected.

14. Lord Halsbury said in reference to that report (p. 575):-

My Lords, I think no more accurate source of information as to what was the evil or defect which the Act of Parliament now under construction was intended to remedy could foe imagined than the report of that Commission.

There is one other passage in Lord Halsbury's judgment to which I will refer, and that is the passage at the bottom of p. 577, where his Lordship said:-

Of course also words which are merely misspelt, but which are nevertheless, in sound, ordinary English words, and the use of which may tend to deceive, ought not to be permitted.

16. Although those observations were made in a trade-mark case, they appear to me to be equally pertinent in a country where there is no registration of trade marks and where a trader's only remedy may be a passing off action. If traders attempt to deceive by mis-spelling or distorting any word in any shape or form, it being obvious what word they are in fact intending to indicate, they appear to me to fall within the principle to which Lord Halsbury was drawing attention, and they are in fact attempting to deceive. This is, in my judgment, the real test which has got to be applied not only to the use of words in the same language, but to the use of words in any other language which may be a colourable imitation of words in the language from which the evidence may establish that they were in fact taken. If the Court comes to the conclusion that the use of the words in a foreign language was an intention to deceive and in fact was likely to deceive, then in my opinion the Court ought to restrain the use of such words.

17. Both the plaintiffs and the defendants relied upon Eno v. Dunn (1890) 15 A. C. 252. The respondent had applied to register the words ' Dunn's Fruit Salt Baking Powder ' as a trade mark for baking powder. The appellant, who had for many years used the words ' Fruit Salt' as his trade-mark for a powder used in producing an effervescing drink, opposed the application. It was held by Lords Watson, Herschell, Macnaghten (Lord Halsbury L. C. and Lord Morris, dissenting) that upon the evidence the proposed words as a matter of fact were calculated to deceive the public, that the case therefore fell within Section 73 of the Patents, Designs and Trade Marks Act, 1883, and that the trade-mark ought not to be registered. It may here be pointed out that although the appellant had in fact the words (Fruit Salt) registered as his trade-mark, being unable upon the hearing of the summons to prove that Fruit Salt had been used as a trade-mark before the passing of the Act, 1875, he submitted to an order to remove his trade mark from the register, and confined his opposition to his second ground, viz., that the use of the term Fruit Salt as proposed by the respondent was calculated to deceive. That easel therefore proceeded upon the footing that the words Fruit Salt had not been registered as a trade-mark, just as the case before me proceeds on the basis that there is no registration in India. Some of the judgments contain useful observations as to the right to use particular words, such as, Fruit Salt. At p. 257 Lord Watson said:-

I do not think it necessary to refer to the evidence in detail. It appears to me to establish conclusively that although the words ' fruit' and ' salt ' are in common use wherever the English tongue is spoken, they have in combination no technical or scientific meaning, and, before the respondent entered the field, were never applied, in popular language, to any known substance other than the article manufactured and sold by the appellant under the name of Eno's Fruit Salt. That circumstance does not give the appellant a right of property in the words ' Fruit Salt,' or entitle him to use them, by themselves, in a registered trade-mark; but it is nevertheless a material circumstance in considering whether the use which the respondent proposes to make of them in his trade-mark would be calculated to mislead.

I have come to the conclusion that the proposed use of the term ' Fruit Salt' by the respondent might, and in many instances probably would, have the effect of deceiving the public.

18. Lord Macnaghten at p. 263 said as follows:-

In the present case the evidence shews that the expression ' Fruit Salt' has come to mean Mr. Eno's preparation, that at present it means nothing else, and that Mr. Eno's preparation is well known and very popular. Mr. Dunn adopts the expression ' Fruit Salt', and gives it a prominent position among the words he seeks to register. I have no doubt that those words are calculated to deceive. They are calculated, and I think designed, to create a confusion in the minds of those persons to whom Mr. Dunn's advertisements are addressed, and to lead the ordinary run of such persons to suppose that his baking powder is in some way or other connected with Mr. Eno's preparation. The object I think was-and if Mr. Dunn's application were successful the result, I am convinced, would be, in some cases at any rate -to induce people to buy under an impression ' not founded in truth,' and not perhaps the less misleading because it is vague and indefinite, and incapable, it may be, of bearing the very slightest examination. Mr. Eno has not and cannot have any exclusive property in the expression 'Fruit Salt.' The words of which it is composed are common English words; anybody may use them in any manner and in any connection he pleases, provided the use to which they are applied is not calculated to deceive.

Applying the principle laid down by their Lordships in this case to the case before me any one may use the word ' Fruit' and the word ' Salt' in any language in India as he pleases. But what, in my opinion, he is not permitted to do is to use those words as indicative of a class of goods similar to the plaintiffs' goods, the reason being that those words in the English language have become distinctive of their goods, and if those words are used in any other language in India in connection with a similar class of goods, the use of the words may be liable to cause deception. After the observations of their Lordships in the case of In re Trade-mark of John Dewkurst & Sons, Limited 1896 2 Ch. 137, to which I have referred, it cannot, in my opinion, be suggested that any one could possibly have sought to register in England in connection with goods similar to the plaintiffs' goods the words ' Fruit Salt' in any foreign language. As was said by Lord Justice James in Singer Manufacturing Company v. Loog (1880) 18 Ch. D. 395, 412, the observations being quoted at p. 1 of the 6th edn. of Kerly on Trade Mark:-. no man is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer.

19. I have already pointed out that very many people in India know English as well as different vernacular languages. But even if an Indian does not know English, but knows only some vernacular language, if a trader is permitted to use in that language words which have become associated with the goods of another trader in another language and are distinctive of the goods of that other trader, he is thereby putting it into the power of unscrupulous dealers to mislead and practise a deception upon the individual knowing only the; one language, in that he may thereby be enabled to pass off upon that unsuspecting person goods as and for the goods of the other trader to which those particular words in another language have by long user become attributed.

20. It was argued for the defendants that an educated person knowing both Marathi and English would read the whole label on exhibit (E) and could never be deceived. He would, it was said, see the words at the bottom ' Manufactured by ' Vicco'-Vishnu Chemical Company, Bombay.' But unfortunately the world is full not of careful but of careless persons, and of people who frequently are not careful to read the whole of everything that they ought to read, and in my opinion looking at the general get-up of exhibit (E), and seeing the word (Falaxar) thereon, even an educated person might be misled into thinking that he was getting the plaintiffs' Fruit Salt. It is in evidence before me that illiterate persons frequently bring chits to Chemists' shops and to the shops of persons who sell such preparations as exhibits (C) and (E), and that on such chits the word ' Fruit Salt' is written. Such chits may be given to them either by their doctor, or by their master. Suppose an illiterate person knowing no English were to bring such a chit to an unscrupulous dealer who was desirous of selling exhibit (E), the dealer might give a bottle of exhibit (E) to the illiterate person, who might very easily say, ' Is this fruit salt ' having been told by his master or doctor that what he was to get was fruit salt. He might easily use those words even if he knew no English and did not understand them. It would then be open to the dealer if his would be purchaser knew Marathi to point to exhibit (E) and say, ' Cannot you read the word Falaxar That means fruit salt.' That is the sort of thing which, in my opinion, might happen over and over again if traders were permitted to do what the defendants have done in this case, viz., use a coined Marathi word which does not in fact exist in Marathi, but which would convey the meaning ' Fruit Salt.'

21. I hold on the evidence before me that the plaintiffs have acquired a right to the exclusive use of the words ' Fruit Salt' in connection with their saline, that those words are a distinctive mark, and that no one has a right to use those words in any language in connection with similar goods as being likely to deceive.

22. I turn now briefly to discuss the get-up of the defendants' goods as contrasted with the get-up of the plaintiffs' goods. One Dayalji Girdhar was called by the defendants, and he produced a number of preparations of salines put up in wrappers by various manufacturers with a view to showing that the use of fruit and leaves on such wrappers were common to the trade. None of the wrappers on the bottles produced in my opinion bore any resemblance to exhibit (C), except a fruit laxative manufactured by the Alembic Chemical Works, Ltd., exhibit (N). The witness said that the Alembic Fruit Laxative which he had been selling was exhibit No. (13), which does not resemble exhibit (C). He admitted that he might have been selling exhibit (N) before 1934, but he did not know whether the plaintiffs objected to the get-up of exhibit (N), and whether it was changed in 1935 to exhibit No. (13). As regards a product, Cipla Sanasalt, exhibit No. (14), he knew that it had formerly been sold as Cipla Frutsal and that it was no longer sold as such. The use of fruit and leaves is no doubt common to the trade upon wrappers for various laxative productions, but none of those produced by the witness which are in actual use at the material times bear any resemblance to exhibit (C). There are no doubt minor differences between exhibits (E) and (C), but there is a striking resemblance between them, and the defendants' witness, Tolaji, was himself deceived in the witness box as I have already mentioned. I have already pointed out in the course of the judgment the fact that the words on exhibit (E) ' Health giving, pleasant, cooling and invigorating' are also to be found on exhibit (C). The back-ground of the same is black and is very similar. The red lines at the top and bottom of both are also very similar. The leaves and fruits proceeding from the top on the right hand side and going right round the left hand side, although different in colour, are extremely similar in general characteristics. Diamonds are to be found on both exhibits (E) and (C), and words written within those diamonds. I have already expressed the opinion that Pendharkar in preparing the design exhibit (E) had in fact before him the design on exhibit (C). I hold that the get-up of exhibit (E) is a colourable imitation of exhibit (C), and is calculated to deceive.

23. It was argued by defendants' counsel that there was no evidence of actual deception. But the evidence establishes that the plaintiffs only came to know in March or April, 1939, that the defendants were putting exhibit (E) upon the market. The evidence establishes that the defendants sold their goods not openly in shops but in a hole and corner manner by canvassers and by a lorry upcountry. In my opinion, therefore, it would have been very difficult for the plaintiffs to prove actual deception, and no inference ought to be drawn from the fact that they have not been able to prove deception that exhibit (E) is not in fact calculated to deceive.

24. Then it was argued that the plaintiffs were disentitled to relief because of their delay in taking proceedings, the evidence being that the defendants' goods had been sold since'1931 without a carton and a wrapper and under a different label, but in its present form since 1933. The plaintiffs came to know that the defendants were selling exhibit (E) for the first time in 1939, March or April, and they at once put the matter in the hands of their solicitors, Messrs. Payne & Co. As a result of enquiries by Messrs, Payne & Co., the plaintiffs came to know two months later through Messrs. Payne & Co., that the defendants were the manufacturers. Then there was an interview, and certain letters were written by Messrs. Payne & Co., exhibit (F), the last of which was written in September, 1939, and the suit was filed on October 18, 1939. On this evidence I hold that there has been no unreasonable delay.

25. The defendants raised an issue as to whether the plaintiffs' claim for accounts and/or damages is barred by the law of limitation. Mr. Engineer expressed on behalf of the plaintiffs their willingness to confine their claim for an account of profits to three years before the institution of the suit. On that Mr. K.T. Desai for the defendants gave up the issue of limitation.

26. The next question is whether the plaintiffs have a right to ask for an account of profits. On the authority of Gujarat Ginning and (1928) I.L.R. 51 All. 182: P.C.. In the latter case the plaintiffs gave up their claim to an account of pofits and claimed only damages. The case of Gujarat Ginning and Manufacturing Company, Limited v. Swadeshi Mills Company, Limited, appears to have proceeded upon the same footing. Indeed in his judgment at p. 190 Broomfield J. said:-

It has been conceded in this case, however, that in view of the decision of the Privy Council in Juggi Lal, Kamalapat v. Swadeshi Mills Company, Ltd., the criterion is whether there has been any falling off in the plaintiffs' own sales of these dhoties by reason of the defendants having pirated their number.

Neither the case in the Privy Council nor the case in Gujarat Ginning and Manufacturing Company, Limited v. Swadeshi Mills Company, Limited, lay down that a plaintiff is not entitled to an account of profits if he gives; up his claim for damages. In the 6th edn. of Kerly on Trade Mark, at p. 517, it is said that the plaintiff may, in general, make his choice of either an account and payment to him of the profits which the defendant has gained by his wrongful conduct, or an enquiry as to, and payment of, the damages occasioned to the plaintiff by reason of it, and Weingarten Bros. v. Charles Bayer & Co. (1905) 22 R.P.C. 341 is relied upon in support of that proposition. Towards the end of his judgment at p. 351, Lord Macnaghten said:-

Ever since the case of Edelsten v. Eddsten (1863) 1 De G. J. & Sec 185 it has been the established rule that a plaintiff succeeding in a case of this sort may at his option take an inquiry as to damages or an inquiry as to profits. I do not see any ground for departing from that practice in the present case.

In the case before me the plaintiffs have elected, as they have a right to do, to claim an account of profits and not to ask for damages. On the assumption that they were entitled to do so the parties have agreed the amount of profits made by the defendants at the sum of Rs. 2,000.

27. [After recording findings on issues, His Lordship concluded:] I pass a decree for an injunction in terms of prayer (a) of the plaint. The defendants to be at liberty to use bottles of the size and shape which they are now using without the labels now appearing thereon. Decree for Rs. 2,000 the sum agreed upon between the parties as the profits derived by the defendants, and order for delivery up in terms of prayer (e) of the plaint except as to the bottles. The defendants to deliver up all labels of the type now appearing on their bottle exhibit No. (8). The plaintiffs will have the costs of the suit and interest on judgment at six per cent, per annum. Though the plaintiffs do not concede that the subject-matter of this suit is below Rs. 10,001, in order to avoid any dispute upon the question, by virtue of the power conferred upon the Court by High Court Rule 548 (ii) (h), I sanction the employment of two counsel in this case having regard to the importance of the case.


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