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Anglo-Indian Drug and Chemical Co. Vs. Swastik Oil Mills Co. Ltd. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai
Decided On
Case NumberO.C.J. Suit No. 786 of 1933
Judge
Reported inAIR1935Bom101; (1934)36BOMLR1165; 155Ind.Cas.641
AppellantAnglo-Indian Drug and Chemical Co.
RespondentSwastik Oil Mills Co. Ltd.
DispositionSuit dismissed
Excerpt:
trade-mark - assignability of-combination of numerals, whether amounts to trade-mark-right to trade-mark acquired in respect of certain toilet preparations-use of such mark by defendants on their bar soap-plaintiffs subsequently putting on market soap with their trade-mark-whether user of such mark by defendants amounts to infringement.; a trade-mark is generally transmitted in connection with the good-will of a business, and can only be assigned in writing.; a combination of numerals can form a trade-mark, if distinctive.; in actions for infringement of a trade-mark, the plaintiff must prove that his goods were known to the public by some distinct name, mark, badge, get-up or appearance, and that the defendant's use or imitation of the same is likely to mislead the public into a belief.....b.j. wadia, j.1. the plaintiffs have been carrying on for a number of years past the business of manufacturing and selling drugs, patent medicines, hair oils, perfumery and toilet requisites in bombay, and have filed this suit for an injunction to restrain the defendant company from selling its bar soap under the mark 'no. 777' which the plaintiffs claim as their trade-mark for their ' toilet preparations'. prior to august 24, 1922, one mulji premji rathod was the sole proprietor of the kathiawar trading company and the bombay perfumery manufacturing company which was also carrying on business in bombay. the kathiawar trading company had been manufacturing for a number of years certain toilet preparations bearing the number '777' which mulji premji had declared to be his own trade-mark......
Judgment:

B.J. Wadia, J.

1. The plaintiffs have been carrying on for a number of years past the business of manufacturing and selling drugs, patent medicines, hair oils, perfumery and toilet requisites in Bombay, and have filed this suit for an injunction to restrain the defendant company from selling its bar soap under the mark 'No. 777' which the plaintiffs claim as their trade-mark for their ' toilet preparations'. Prior to August 24, 1922, one Mulji Premji Rathod was the sole proprietor of the Kathiawar Trading Company and the Bombay Perfumery Manufacturing Company which was also carrying on business in Bombay. The Kathiawar Trading Company had been manufacturing for a number of years certain toilet preparations bearing the number '777' which Mulji Premji had declared to be his own trade-mark. On August 24, 1922, he sold both these concerns by a deed of conveyance for the consideration mentioned in the deed along with the goodwill, the stock-in-trade, and the right to the,; exclusive user of the names of the two businesses and of the trade-marks, trade names and designs, including the number '777 ' contained in the schedule annexed to it, to one Keshavlal Vallabhji Shah, a partner in the' plaintiffs' firm. In the deed of conveyance Keshavlal is described as the purchaser. The other three partners at the time were his brothers. Plaintiffs say that they carry on business in different names, including, since 1922, the Kathiawar Trading Company, and have been making and selling various toilet preparations in the name of the Kathiawar Trading Company, under the trade-mark ' No. 777'. They further say that these preparations have acquired a wide reputation in the market and are also extensively sold under that number, and the number denotes only and exclusively their toilet preparations in the name of the Kathiawar Trading Company.

2. Since about February 1933, plaintiffs have been manufacturing soap called the 'Keti Turkish Bath Soap'. They put this soap on the market also in the name of the Kathiawar Trading Company in cartons containing twelve tablets each, each carton costing a rupee; the carton as well as each of the tablets bears the mark 'No. 777'. Since about August 1932, the defendant company which had been manufacturing various kinds of oil and by-products of oil began selling in the market bar soap with the name of the company and the Swastik mark at each end on one side of the bar, and the number '777' underneath the words 'Vegetable Soap Washes Well', on the other. It is a washing soap which the defendants manufacture in bars, cubes and twins; only the bars bear the number '111'. Plaintiffs complain that the use of the said number on this bar soap is calculated to deceive purchasers into the belief that the soap was the plaintiffs' product. They say that they first came to know that the defendant company was manufacturing bar soap bearing that number in November or December, 1932. They made enquiries, and correspondence ensued between the solicitors of the parties, after which this suit was filed on May 18, 1933. Defendants deny any infringement of the trade-mark and also deny liability. They say that they were the first to put their bar soap in the market, and plaintiffs had at the time neither manufactured nor sold any soap, much less bar soap, in the name of the Kathiawar Trading Company under the mark in dispute, viz., ' No. 777'.

3. There is a preliminary point taken by the defendants which is covered by the first two issues. Defendants contend that the plaintiffs, viz., the Anglo-Indian Drug & Chemical Co., have no interest in the trade-mark 'No. 777', which, according to them, is the mark of the Kathiawar Trading Company, a separate firm altogether, and that in the absence of any averment of an assignment or transfer of the said mark in favour of the plaintiffs the suit as framed is not maintainable. There was an assignment in 1922 of the two businesses of the Kathiawar Trading Company and the Bombay Perfumery Manufacturing Company together with their goodwill, stock-in-trade, and trade-marks, by Mulji Premji in favour of, Keshavlal Vallabhji, as I have stated before, but the plaintiffs have not plead-Led it. They have, however, pleaded that they carry on business also in the name of the Kathiawar Trading Company, and they have produced the deed of conveyance which gives to Keshavlal, one of their partners, the right inter alia to the user of the names of the two businesses and the trade-marks referred to in the schedule which mentions 'No. 777'. That mark was originally used in connection with a scent or perfume. manufactured by the Kathiawar Trading Company, known as the 'Ma-dhukar Attar', but since then it has been used in connection with other preparations also, and the plaintiffs say that after August 1922 they became entitled by virtue of the assignment to this trade-mark and the benefit of its denotation. Defendants, however, contend that the Anglo-Indian Drug and Chemical Co., and the Kathiawar Trading Company were and are still two separate firms. It is, however, in evidence that since the date of the assignment the owners of the two firms are the same, viz., the partners in the plaintiff firm. There are partnership deeds showing who the partners in the plaintiff firm were from time to time; there is no separate deed of partnership of the Kathiawar Trading Company. The partners at the date of the assignment in 1922 were Keshavlal Vallabhji and his three brothers. One brother retired in 1923. There is a deed of dissolution in that year, but it is not stated therein that the brothers have been doing business both in the name of the plaintiff company and the Kathiawar Trading Company. Another brother went out of the firm in 1928, and the names of both the firms are mentioned in the deed of dissolution of that year. The remaining two brothers, Keshavlal and Parmanand, took their respective wives as partners in the business in 1931, and these four are the present partners of the plaintiff firm, though the plaintiffs' attorneys stated in one of their letters in June 1933 to the defendants' solicitors in connection with some other matter that only the two brothers were partners in the plaintiff firm. In the plaintiffs' cash book the amount of the consideration mentioned in the deed of assignment has been debited to the account of the Kathiawar Trading Company, and in one or two advertisements the Kathiawar Trading Company have been described as the sole agents of the plaintiffs. The defendants therefore contend that the two firms are separate. It may be mentioned that only the plaintiff firm has been registered with the Registrar of Companies and Firms to meet the requirements of the new Partnership Act, and not the Kathiawar Trading Company. There are no doubt separate stock-books of the two firms, but there is only one book containing entries of purchase of raw products bought for manufacture in respect of both. There are also separate books for registering orders of purchases, but the amounts of the price of the goods sold are entered in the books kept in the name of the plaintiffs. There is also no separate shop of the Kathiawar Trading Company. The bills for advertisement charges of the goods put in the market in the name of both are made out only in the name of the plaintiffs. There is, therefore, evidence either way, but, considering it as a whole, I am of opinion that the two firms are now one and the same. Defendants, however, further contend that the deed of conveyance stands in the name of Keshavlal Vallabhji alone, and plaintiffs cannot sue for infringement of a trade-mark which has not been assigned to them by Keshavlal. A trade-mark is generally transmitted in connection with the good-will of a business, and can only be assigned in writing. Keshavlal stated that he took the assignment for the benefit of the partnership, and since 1922 the plaintiffs have acted upon it. It was argued that Keshavlal's statement in the box could not supply I the need of a written assignment. At the same time the plaintiffs have actually used the trade-mark as their own for a number of years, that is, since 1922, and they are not estopped from putting it forward as such. It is not alleged that any particular representation was made to the defendants on which they have acted to their prejudice. The point is not quite free from doubt, but, taking all the facts and circumstances into consideration, I am inclined to hold that the plaintiffs have an interest in the trade-mark ' No. 777', and the suit is, therefore, maintainable.

4. The plaintiffs claim relief in this suit on the ground that the defendants have infringed their trade-mark. What constitutes an infringement of a trade-mark is a question of fact in each case. Plaintiffs allege in the plaint that they have been manufacturing and selling various kinds of perfumery and toilet preparations and requisites in the name of their concern, the Kathiawar Trading Company, under the trade-mark 'No. 777', that 'No. 777' means and denotes in the markets only and exclusively their well-known toilet preparations and toilet requisites, and that soap including bar soap is an article usually manufactured and sold in India by persons manufacturing and selling other toilet preparations, such as hair oils, perfumes, otto scents, which the plaintiffs manufacture and sell. The cause of action is contained in paragraph 9 of the plaint where plaintiffs say that the defendants' user of the mark '777' as a prominent and characteristic feature in connection with their bar soap is calculated to deceive and to enable other persons to deceive purchasers and others into the belief that the defendants' bar soap is soap of the plaintiffs' manufacture.

5. In England the law relating to trade-marks has been codified since 1875. The English statutes provide for the registration of trade-marks by owners. There is no such legislation in India which gives a statutory title to owners of trade-marks. The rules of the English common law in what are called 'passing-off actions' are generally followed, and rights and liabilities in connection with trade-marks are determined by reference1 to the common law. In such actions the plaintiff has to prove that his goods were known to the public by some distinct name, mark, badge, get-up, or appearance, and that the defendant's use or imitation of the same is likely to mislead the public into a belief that the defendant's goods are those of the plaintiff. These cases are only instances of the application of the much wider principle of equity that the Court will always interfere by injunction to restrain an irreparable injury to a person's property. The actual length of time during which a trade-mark is used or employed is not an important element for consideration. It must, however, have been used or employed long enough to render it probable that a reputation in the market has been acquired : Badische Aniline & c. v. Tejpall (1903) 5 Bom. L.R. 1025. In order, therefore, to establish their claim to an injunction against the defendants, the plaintiffs must show that the trade-mark ' No. 777' used on their toilet preparations and requisites, which are sold in the name of the Kathiawar Trading Company, is symbolical only of the plaintiffs' manufacture, and that they have acquired a wide reputation in the market. In England a trade-mark is registered not only for a particular article but for a class of goods under which that article falls, and if anyone else attempted to put on the market goods which could be included in that class under another trade-mark, the Registrar might refuse to register it. In India the right to use a particular trade-mark is confined to the article to which it is affixed, but it is open to the plaintiffs to establish by proper and sufficient evidence that the particular trade-mark has been so identified and associated with the plaintiffs' products that their name would suggest itself to a purchaser on seeing it on any other product like bar soap which the plaintiffs allege is a product 'allied' to, or of the same description as, ' toilet preparations'. There is, however, this limitation which was pointed out by the Privy Council mSomerville v. Schenibri (1887) 12 A C 453, that the acquisition of an exclusive right to a trade-mark in connection with a particular article of commerce cannot entitle the owner of that right to prohibit the use by others of such mark in connection with goods of a totally different character.

6. Plaintiffs have also to show in order to be entitled to the injunction they claim that the defendants' user of number '777' on their bar soap is calculated to deceive the public, that is the unwary purchaser, into the belief that the purchaser is buying bar soap of the plaintiffs' manufacture. There must be a reasonable probability and not a mere possibility of deception. It is not now necessary to prove that the defendants had the intention to deceive. Originally the common law Courts insisted on proof of fraud, but the Courts of Equity intervened by granting injunctions even in cases where the use or imitation of another's trade-mark was made in ignorance, provided it was likely to mislead the public. The decisions of the Courts of Equity were accepted as part of the common law after the fusion of law and equity brought about by the Judicature Act in England. It is also not necessary to give proof of actual instances of deception, the reason being, as was pointed out by James L.J. in Orr Ewing & Co. v. Johnston & Co. (1880) 13 Ch. D. 434 and repeated by the House of Lords in Johnston v. Orr Ewing (1882) 7 A C 219, that 'the very life of a trade-mark depends upon the promptitude with which it is vindicated.' Such evidence, namely, evidence of actual instances, may often be useful to the Court, though the Court has to exercise its own judgment as to the probability of the deception.

7. The trade-mark 'No. 777' is a triple combination of the numeral 7. For the purposes of the Trade-Mark Acts in England, 'mark' includes 'device, brand, heading, label, ticket, name, signature, letter or numeral or any combination thereof'; and 'trade-mark ' means a mark 'used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trade-mark by virtue of manufacture, selection, certification, dealing with or offering for sale'. A combination of numerals can form a trademark, if distinctive. 'No. 777' was used as a trade-mark to distinguish one or two of the preparations of the Kathiawar Trading Company in the beginning. Thereafter it was used for different hair oils and toilet preparations put by the plaintiffs on the market in the name of the Kathiawar Trading Company. According to the evidence, there was a good sale of these hair oils and toilet preparations about the date of the assignment in 1922. It has since increased, and is said to be of two to two and a half lakh bottles a year. A collection of the different labels of the Kathiawar Trading Company numbering over sixty and bearing the 'No. 777' has been put in. These preparations are widely advertised, and Keshavlal on behalf of the plaintiffs stated that they spent Rs. 10,000 to Rs. 15,000 a year on advertisements, not only in newspapers, but in various forms such as posters, calendars, fans, etc. The plaintiffs had, however, put numerous toilet soaps previously in the market, but none of them bore the 'No. 777'. Their toilet soap, viz., the 'Keti Turkish Bath Soap', was first put on the market under 'No. 777' in or about February 1933, but not much of it was sold before the date of the suit. Plaintiffs also began manufacturing bar soap after the suit. It is called the 'Cherry Bar Soap', but no number was put upon it, as this litigation was pending.

8. Plaintiffs called some Bombay merchants and dealers, both wholesale and retail, and one wholesale and retail dealer who is the sole agent of the Kathiawar Trading Company in the Nizam's Dominions and has shops in Hyderabad (Deccan) and Secunderabad. Most of them said that they stocked together and sold hair oils, perfumery, toilet soaps and bar soaps, and that many other merchants did the same. One or two of them, however, sold only toilet soaps along with hair oils and perfumes, but not bar soap. These witnesses stated that they had been stocking the products of the Kathiawar Trading Company bearing 'No. 777' for some years past, namely, hair oils and scents and perfumes, that these products were well-known to their customers and were in demand, and they did not know of any other company which manufactured similar products under that mark. Whenever a customer wanted to buy a hair oil or perfume, and asked, for instance, for White Rose Hair Oil 'No. 777', or Otto 'No. 777,' they always understood that he wanted a hair oil or perfume of the Kathiawar Trading Company. The witness, Purandas Ranchoddas, who is the sole agent of the Kathiawar Trading Company in the Nizam's Dominions, said that he bought goods of that company bearing 'No. 777' and also other Kaminia products of the plaintiffs to the extent of Rs. 15,000 to Rs. 18,000 a year in ordinary times, and goods worth about Rs. 8,000 a year in times of epidemic, and that goods bearing that mark sold well in the Nizam's Dominions, the sales amounting to about Rs. 7,000 to Rs. 8,000 a year in ordinary times, and to about Rs. 4,000 to Rs. 4,500 a year in times of epidemic. The witness Maganlal Mulji, who is the salesman of Mohanlal Mahasukhlal & Co., said that his firm sold goods of the Kathiawar Trading Company bearing 'No. 777' to the extent of about Rs. 2,000 a year. None of these witnesses supported his evidence by producing any books. The amount of the sales is not of such importance as the reputation of the goods, though the extent of the sale may be an index to their reputation. On the other hand one of the defendants' witnesses, Bhawanishankar Atmaram, carrying on business in the name of B.A. & Brothers as wholesale and retail chemists in Princess Street, Bombay, stated that it was only the cocoanut oil of the Kathiawar Trading Company bearing No. 777 that was in demand. The evidence of the plaintiffs' witnesses has been further supported by the numerous post cards addressed to the Kathiawar Trading Company, giving orders for goods by their description together with the 'No. 777' from different parts of India. These products are also well advertised both in and outside Bombay. The witness Motilal Desai, who carries on business in the name of the and Advertising Agency, stated that plaintiffs' scents, hair oils and toilet soaps were widely advertised, but he did not mention any goods of the Kathiawar Trading Company under the 'No. 777'. The witness Govind Limaye, however, who is in the service of B. Dattaram & Co., Advertising Agents, did state that the scents and hair oils of the Kathiawar Trading Company were largely advertised outside Bombay. The defendants produced some specimens of washing soap of the same quality as bar soap, but in the form of cubes, with the number 777 on them, but only one of them was put in through Mr. Chhotubhai, a partner of the defendants' attorneys' firm, who purchased the same at an exhibition in the Lathi State near Junagadh for 3/4 anna about the end of last year. There is no evidence when and by whom that soap was manufactured, and Keshavlal Vallabhji said that he never heard nor knew anything about it. A consideration of this evidence shows that the plaintiffs' toilet preparations, namely, their various hair oils, scents, and perfumes, which are sold in the name of the Kathiawar Trading Company along with 'No. 777' have acquired a great reputation in the market. In paragraph 6 of the plaint it is alleged that the trade-mark No. 777 is 'a guarantee of high quality', i.e., the high quality of the goods. It has, however, been held that protection cannot be granted unless a plaintiff establishes that the particular mark indicates not merely a certain quality of goods but also that they are the goods of the plaintiff's manufacture : Badische Aniline v. Farben-fabriken (1904) 6 Bom. L.R. 407. The plaintiffs have alleged that the toilet preparations of the Kathiawar Trading Company under 'No. 777', mentioned in the plaint, are the sole and exclusive products of their manufacture. They have also-led some evidence to support that allegation.

9. The infringement which the plaintiffs complain of in this suit is the user by the defendants of the mark 'No. 777' on their bar soap. The defendant company was started in or about January 1931, and the objects for which it was established are stated in Sub-clause 5 of Clause 3 of the Memorandum of Association, viz., to carry on all or any of the businesses of soap and/or candle makers etc., and also as ' dealers in pharmaceutical, chemical, medicinal and other preparations or compounds, perfumery and other such articles of every such description'. They first began manufacturing oil out of oil seeds, and then took to soap. They have recently also taken to manufacture hair oil and it is open to them to & make perfumes also. It seems that the company made a loss of over a lakh of rupees by the end of 1932 in the business of crushing oil seeds c into oil. It is not clear when they began to manufacture their bar' soap with the number '777' on it, but the first sale of that soap was on August 12, 1932. The soap is of the quality of a washing soap, i.e., soap used generally for washing clothes. It is made in the forms of bars, cubes and twins, but it is only the bar that bears the number '111'. On one side of the bar there are the words 'Swastik Oil Mills Ltd. Bombay' with the Swastik mark on each side. On exactly the opposite side are the words 'Vegetable Soap Washes Well', with the number '777' put underneath those words. The defendants next manufactured a soap which is known as their Superfine Soap; it is sold in cartons. They call it a washing soap, but on the wrapper round the soap they recommend it for washing clothes as well as for washing the human body. Then they began manufacturing their commercial soaps or soaps used in mills. These are also in bars, but the tints are somewhat different. They were manufactured six months after the bar soap bearing the number '777' was manufactured. About the same time the defendants produced their Marseilles Soap and their Monopole Soap or Indiapole Soap also. The number '777' has not been placed on any of their soaps except the bar soap. Keshavlal stated that they made enquiries about this soap in November or December, 1932, and correspondence started about the end of the year, after which this suit was filed in May 1933.

10. The principal witness on behalf of the defendants was one of their directors, Chhotabhai Shankarbhai Patel, who said that the defendant company were not keen about the number '777' as they attached more importance to the Swastik mark, and that their soaps were known in the market as soaps of the Swastik brand. He also stated that he did not know that the plaintiffs' hair oils and scents and perfumes bore that number, and he explained how he came to use the same number on the defendants' bar soap. That explanation has not been consistent, for in his affidavit on the notice of motion for injunction he said that the number was used to distinguish the defendants' bar soap from their other soaps. There was, however, no other soap manufactured at the time they produced their bar soap, except that the same quality of soap was produced in the shape not only of bars but also cubes and twins, but these could be easily distinguished from one another without any number. In his evidence he stated that the defendants wanted an auspicious number, that amongst the Hindus the numbers 1, 5, 7 and 9, were considered auspicious, that the Tata Oil Mills Company, Ltd., were ahead of the defendants with their washing soap bearing No. 501, that he wanted to avoid any combination of the numerals which would include 1 and 5 so as not to come in conflict with the products of the Tata Oil Mills, that soaps usually bore numbers consisting of three numerals, and he thought of '777' without consulting his co-directors as he fancied the number and used it after making enquiries that it was not used on any other bar soap in the market. Later on he gave another explanation, viz., that the number '777' was put on the soap, in order to help the unintelligent, packers at the defendants' mill premises to distinguish it from their other soap whilst packing soap in wooden cases. The other varieties of their soap were, however, not manufactured in August 1932, so that there was-no chance of mixing up the bar soap, but he said that they intended manufacturing other soaps, and as he anticipated difficulties in distinguishing them, he used the number '777' On the bar soap. As I have said before, his explanation has varied; at the same time the defendants have not put the same number on their Superfine Soap which was manufactured three months after the bar soap was manufactured, that is, even before the correspondence between them and the plaintiffs regarding the user of the number '777' began. It is true that the number '777' is shown on the picture or drawing of the soap in the defendants' price-list and also in their advertisements. The witness said that he did not attend to advertisements, but left the matter to his assistant, and the artist or engraver had brought out the number '777' in the picture, though on a correct representation of the bar soap it should not have been shewn, as it actually appeared on the soap on the side exactly opposite to the side of the bar on which the Swastik mark was shown. The cube form of the soap is also represented in the picture, and that too is not correct according to the model. One other fact must also be mentioned. Defendants had sold 1701 cases, i.e., 158,000 lbs. of their bar soap number '777' in. the open market before the suit was filed. Keshavlal stated that the plaintiffs raised their objection as soon as they learnt about it, and the defendants offered in correspondence to withdraw the number if they were satisfied that it had been used by the plaintiffs on their soap before. But the fact is that the plaintiffs' Keti Turkish Bath Soap under 'No. 777' was first put on the market long after that objection was raised, and the plaintiffs' bar soap was not manufactured until after the suit. There is nothing in the evidence to show that the defendants' bar soap is sold by the number '777' in the market, and Mr. Patel said that out of numerous enquiries for their Swastik soap only about two referred to the defendants' bar soap under that number. There is also nothing to show that the defendants knew or had information that ' No. 777' was used by the plaintiffs for their hair oils and scents and perfumes, and although the explanation given by Mr. Patel as to how he adopted the number '777' for the defendants' bar soap has been inconsistent, I cannot infer that he must have had the knowledge or information because of such explanation. There is no substance in the allegation that the number was deliberately used by the defendants on their bar soap to trade on the plaintiffs' reputation which was associated only with their toilet requisites and preparations. It is not, however, necessary for the plaintiffs to prove that the defendants had the intention to deceive, and their ignorance of the existence of the plaintiffs' trade-mark cannot save them from the injunction, if the plaintiffs can show (1) that the user of the number '777' on bar soap is an infringement of a trade-mark which had been used only in connection with the particular toilet preparations mentioned above, and (2) that by such user there is a reasonable probability of deception.

11. It is in evidence that the plaintiffs first put their ' Keti Turkish Bath Soap' under 'No. 777' on the market in or about February, 1933. The defendants allege in their written statement that this was done with the; object of creating evidence in support of a contemplated action by the plaintiffs against them. There is nothing to substantiate the allegation, except that this soap was put on the market long after the plaintiffs commenced correspondence with the defendants regarding the defendants' bar soap. The plaintiffs' bar soap known as the 'Cherry Bar Soap' was produced and put on the market after the suit. The plaintiffs thus seek to claim a right in a trade-mark in respect of a commodity which was neither manufactured nor sold by them at the date of the suit. The price list of the Kathiawar Trading Company printed in 1933, which was put in by the plaintiffs, does not mention any kind of soap at all. A trade-mark must be applied to goods offered for sale, and in Maxwell v. Hogg : Hogg v. Maxwell (1867) L.R.2 Ch. App. 307 Cri L.J. has observed (p. 314):.all the definitions which have been given in this Court (meaning a Court of Equity) of the nature of the right to protection in the case of trade marks, seem to me to be opposed to the idea that protection can be given where there has been no sale, or offering for sale, of the articles to which the name is to be attached.

12. The same learned Judge cites with approval a passage from Lord West-bury's judgment in M'Andrew v. Bassett (1864) 4 De. G.J. & S. 380, and goes on to state that the property in a word or name or any other trade-mark cannot be acquired until the vendible article is put upon the market, for 'no property could be acquired, except through the process of sale, or offering for sale, in the market'. No case was cited by plaintiffs' counsel to support their claim to a right in a trade-mark in respect of an article which had not been produced, much less sold, by them in the market. In cases of infringement of trade-marks in India it is the user of the trade-mark on the same kind of goods already put on the market which is complained of, e.g., the user by the defendants of No. 2051 on their black twill which had always been associated with the black twill produced by the plaintiffs, in the case of Madhavji Dharamsey Manufacturing Co. v. The Central India Spinning, Weaving and Manufacturing Co. I.L.R(1916) 41 Bom. 49 : 18 Bom. L.R. 206 Several English cases were cited by plaintiffs' counsel. They deal, however, with the construction of sections of the English statutes under which a trade-mark is registered in connection with a class of goods, and the prohibition is confined not to the same goods but to 'the same goods or description of goods', though these decisions are useful on the principles of the law relating to infringement of trade-marks and the probability of deception. In India the action is generally limited to a particular kind of goods only, and it is for the plaintiffs to establish by their evidence that bar soap comes under the description of 'toilet preparations' or is 'allied' to the same in order to attract to it the benefit of a trade-mark which had been used only in. connection with such preparations. In the first place, there is not even, a clear averment in the plaint that bar soap comes under the description of 'toilet preparations.' All that is alleged is that it is an article usually manufactured and sold in India by persons manufacturing and selling 'such toilet preparations as the plaintiffs have been doing. Plaintiffs cannot in law claim property in 'No. 777' in gross, for it has been held that there can be no property in a trade-mark apart from the goods of which it has become the symbol. There is no authority, at least none to which the Court has been referred, in support of a claim to a trade-mark in India in respect of an article neither manufactured nor sold by the plaintiffs, but which, they allege, is 'allied' to their 'toilet preparations'. The evidence on the record does not support the claim either. The only evidence is the solitary statement of Keshavlal that whenever a soap bears the 'No. 777', it must mean to the purchaser that it is the product of the Kathiawar Trading Company, and that if a man bought the bar soap of the defendants bearing that number, the purchaser would take it that that soap was the produce or manufacture of the Kathiawar Trading Company, i.e., of the plaintiffs, even though the number had not been associated by the plaintiffs with any bar soap before. That statement has not been supported by any other witness, and I do not accept it as correct. He said he had not received any complaint that a purchaser had been deceived by that number appearing on the defendants' bar soap. It was not necessary for the plaintiffs to adduce evidence of actual instances of deception, but such evidence, if adduced, would have been useful, especially as 1701 cases, viz., about 158,000 lbs. of the defendants' bar soap, bearing number '777', worth about Rs. 26,000, had been sold from about August 12,1932, up to the date of the filing of the suit. Keshavlal added that enquiries were made by merchants whether the plaintiffs produced any bar soap bearing 'No. 777'. The inquiries were made from their salesman, Jamnadas Panachand; but neither Jamnadas nor any party alleged to have made such enquiries has been called. The evidence, therefore, is both meagre and insufficient, and in my opinion the plaintiffs have not proved that 'No. 777' is associated with the 'toilet preparations' of the Kathiawar Trading Company generally. The only toilet preparations which have acquired a reputation in the market under 'No. 777' are the various hair oils, scents, and perfumes, which have been referred to before, and no other.

13. Some evidence was led on behalf of the plaintiffs to show that shopkeepers stock hair oils, perfumes, toilet soaps, and bar soap, together for purposes of sale, but two of the plaintiffs' witnesses stated that they did not stock any bar soap at all, though they did stock and sell toilet soap. It was argued that the matter should be looked at from a business and commercial point of view, and reliance was placed on a passage in Kerly on Trade Marks, 6th Edn., at p. 260, where it is stated that the true test is, 'Are the two sets of goods so commonly dealt in by the same trader that his customers, knowing his mark in connection with one set and seeing it upon the other, would be likely to suppose that it was used upon them also to indicate that they were his goods?' That test is applicable in England in order to determine whether a particular article & falls within the words of the section of the English Act, viz., 'same goods or description of goods'. For instance, in the case of The Eastman Photographic Materials Company, Ltd. v. The John Griffiths Cycle Corporation, Ltd., and the Kodak Cycle Company, Ld., and In the Matter of the Trade Mark No. 207,006 (Kodak) (1898) 15 R.P.C. 105, it was found on the evidence that there was an intimate connection between the bicycle and camera trades; there was also an intimate connection between wines and spirits, as in the case of In re The Australian Wine Importers, Limited (1889) 41 Ch. D. 278. In another case, Eno v. Dunn (1890) 15 A C. 252, the registration of 'Dunn's Fruit Salt Trade Mark Baking Powder' was refused for baking powder by reason of a prior use of the words 'Fruit Salt' for an aperient or medicinal drink. Such a test in India, where there are no similar statutory provisions, is hardly of any use. Moreover, the evidence led by the plaintiffs is not sufficient to support the contention that there is a close connection in the trade between 'toilet preparations' and bar soap. As against the plaintiffs' evidence the defendants called witnesses to show that many dealers who stock hair oils, perfumery, and toilet soaps, do not stock bar soap at all, just as petty merchants like grain dealers who stock bar soap do not stock any toilet soaps. The defendants' witnesses, Robert Jackson, Manager of Kemp & Co., Ltd., Alfred Wilkinson, Manager of Thompson and Taylor, Ltd., Chhaganlal Kothari of G. Chhaganlal & Co., Bhawani-shankar Atmaram of B.A. & Brothers, and Maneklal Chaturbhuj of Maneklal & Co., all carrying on business as chemists and druggists in Bombay, said that there was a distinction in the trade between what is called 'toilet soap' used for washing the body and 'washing soap' used for washing clothes. A reference was also made to a statement in the Annual Statement of the Trade and Navigation of the Bombay Presidency (excluding Sind) for 1930-31, issued in March 1932 by the Government of India Central Publication Branch, Calcutta, showing that soaps were classified, for the purposes of collecting duty on goods imported into the Presidency, into 'Household and Laundry soaps in bars or tablets'. 'Toilet soap', and 'other sorts'. These witnesses stated that bar soap was a washing soap used for washing clothes; some of them also stated that amongst large masses of poor people washing soap, which is cheaper than toilet soap, was also used for washing the body. It may be said that bar soap is the poor man's toilet soap, but such user cannot by itself determine the character of the article. I have considered all the evidence, and taking it as a whole, it does not justify the conclusion that bar soap is usually manufactured and/or sold by the same merchants in India who manufacture and/or sell other toilet preparations.

14. Even if it be held that bar soap comes under the description of 'toilet preparations,' the next question is whether the user by the defendants of the number '777' on their bar soap is calculated to deceive the unwary purchaser and induce him to buy under a false impression. As the defendants have used an identical number, the burden is upon them to disprove the probability of the deception, and not upon the plaintiffs to prove it: Sebastian's Law of Trade Marks, 5th Edn., p. 140. That number had been long associated with the toilet preparations of the Kathiawar Trading Company, namely, their hair oils and their scents and perfumes which purchasers were accustomed to buy. No purchaser had ever seen plaintiffs' bar soap bearing that number, as none had been produced before the suit, so that the number could riot have been associated with any other article in the market except those toilet preparations. Now the gist of a passing off action is deceit, for 'passing off' is one of the ways whereby the goods of one trader are sold by another in a manner calculated to deceive the purchaser into thinking that they are the goods of the former. Can it be really said that there is a reasonable probability of deception if goods manufactured by the defendants have neither been manufactured nor sold by the plaintiffs before? The defendants' witness Mr. Patel stated that their bar soap was sold in the market as Swastik soap, though the number appeared on one side of the bar soap, and the name of the defendant company and the two Swastik marks appeared exactly on the opposite side. It was also argued that the use of the identical number indicated an intention to deceive; but I do not agree with that contention. There are circumstances which, in my opinion, do not point to any such intention. The wooden cases in which the soap is packed on the mill premises do not bear any number, but only show the Swastik mark prominently. The number was also in use from August 1932, and 1701 cases had already been sold openly in the market before the date of the suit. Further, those who are the likely purchasers and consumers of bar soap, especially bar soap sold in small pieces, do not generally belong to the same class of people who purchase hair oils and perfumes. It must also be remembered that the name of the 'Kathiawar Trading Company' appears along with 'No. 777' on the plaintiffs' toilet preparations. Taking all these circumstances into consideration, I am of opinion that there was no reasonable probability of deception as alleged by the plaintiffs. It was argued that the use of the number on the bar soap by the defendants was only the thin end of the wedge, and that, unless restrained, they would be tempted to put the same number on their toilet soaps and their hair oils, and perfumeries which they would produce in future. But the Court is not concerned with what the defendants might or might not do hereafter; the plaintiffs can always pursue their remedy as and when the occasion arises.

15. In my opinion it is established by the evidence that the toilet preparations of the plaintiffs' manufacture, sold in the name of the Kathiawar Trading Company, namely, their various hair oils, perfumes and scents, are known under the trade-mark 'No. 777', and as such have acquired a wide reputation and command an extensive sale in the market. According to the evidence, they are the products only and exclusively of the plaintiffs'' manufacture, and the defendants have not claimed to use that number on any similar toilet preparation of their manufacture. It is, however, not established by the evidence that the plaintiffs have acquired an exclusive right to use the trade-mark in connection with each and every toilet] preparation of their manufacture, nor does the evidence justify the^ conclusion that bar soap falls within the description of ' toilet preparations', and that it is usually manufactured and/or sold in India by persons manufacturing afid selling such 'toilet preparations' as the plaintiffs do. There is also no reasonable probability of deception as alleged by the plaintiffs. The defendants' user of the number '777' on their bar soap is, therefore, not an infringement of the plaintiffs' trade-mark 'No. 777', and the plaintiffs are not entitled to the injunction which they claim.

16. In conclusion, I would like to state that defendants' counsel intimated to the Court at the outset that the directors of the defendant company were not keen on using the number '777' on their products, but as the plaintiffs alleged in their plaint that the object of the defendants was ' to trade on the reputation enjoyed by the plaintiffs' goods bearing the same number '777', and charged the defendants with fraud, they wished to stand on their strict rights and contest the claim. Plaintiffs also insisted on their rights, and the case was accordingly heard at some length.

17. In the result the suit must be dismissed.

18. I have heard counsel on the question of the costs of the suit. This was a suit for infringement of a trade-mark, and according to my finding the plaintiffs have failed to establish the infringement. The defendants have substantially succeeded in their defence. Plaintiffs must, therefore, pay the defendants' costs of the suit.

19. Suit dismissed with costs.


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