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The Bundi Portland Cement Ltd. Vs. Abdul HusseIn Essaji - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai
Decided On
Case Number O.C.J. Suit No. 649 of 1931
Judge
Reported inAIR1936Bom418; (1936)38BOMLR894; 166Ind.Cas.138
AppellantThe Bundi Portland Cement Ltd.
RespondentAbdul HusseIn Essaji
Excerpt:
.....known in the market as the 'b b b 'brand, or the 'tin b' or 'tun b' brand, and with this trade mark their cement has attained a high reputation and commands a large sale all over india, and their dispatches from the works during the five years have averaged over eighteen lacs of bags per annum. the defendant, by his written statement, points out various differences in the bags which, he contends, clearly distinguish his goods from those of the plaintiffs. the principle is well put by lord justict parker in a. it is sufficient to prove that the practice complained of is of such a nature that it is likely in the ordinary course of business to deceive the public. these principles, i think, are well established. 9. the rule in order xxix is, in my opinion, clearly permissive and not..........on business in bombay. the plaintiffs manufactured cement, and it is sold in bombay and other indian markets in bags bearing three letters ' b b b ' on them with the word ' portland ' above such letters and the word ' cement' below them. the plaintiffs' cement is well known in the market as the ' b b b ' brand, or the ' tin b' or ' tun b' brand, and with this trade mark their cement has attained a high reputation and commands a large sale all over india, and their dispatches from the works during the five years have averaged over eighteen lacs of bags per annum.2. about the beginning of the year 1931 the plaintiffs came to know that the defendant was importing into bombay and selling large quantities of japanese cement in bags bearing the letters 'rrr' with the word ' portland '.....
Judgment:

Rangnekar, J.

1. The plaintiffs are an incorporated company registered in Bombay under the Indian Companies Act of 1882. The defendant is a merchant carrying on business in Bombay. The plaintiffs manufactured cement, and it is sold in Bombay and other Indian markets in bags bearing three letters ' B B B ' on them with the word ' Portland ' above such letters and the word ' Cement' below them. The plaintiffs' cement is well known in the market as the ' B B B ' brand, or the ' tin B' or ' tun B' brand, and with this trade mark their cement has attained a high reputation and commands a large sale all over India, and their dispatches from the works during the five years have averaged over eighteen lacs of bags per annum.

2. About the beginning of the year 1931 the plaintiffs came to know that the defendant was importing into Bombay and selling large quantities of Japanese cement in bags bearing the letters 'RRR' with the word ' Portland ' above such letters and the word ' Cement' below the same, which words according to the plaintiffs are similar to the words used on the plaintiffs' bags. They learnt that two consignments, each of a thousand bags of Japanese cement bearing the letters 'RRR ', had been imported by the defendant. The plaintiffs, therefore, say that the get-up of the defendant's bags, and more particularly the letters 'RRR' placed between the words ' Portland ' and ' Cement' are a colourable imitation of the plaintiffs' bags and trade mark calculated to deceive a purchaser into the belief that in purchasing the defendant's cement he is purchasing the cement of the plaintiffs.

3. The defendant denies that the bags in which he was importing and had imported cement were similar to the plaintiffs' bags, and says that there were many points of dissimilarities. He denies that the get-up of his bags is a colourable imitation of the plaintiffs' bags or trade mark or that it is calculated to deceive a purchaser into the belief that in purchasing the defendant's cement he is purchasing the cement of the plaintiffs. The defendant, by his written statement, points out various differences in the bags which, he contends, clearly distinguish his goods from those of the plaintiffs.

4. The defendant then counterclaims for a sum of Rs. 57,460 for damages alleged to have been sustained by him by reason of the goods having been detained by the Customs Authorities at the instance of the plaintiffs.

5. In the plaint as framed, the plaintiffs, in para. 6, allege that the defendant was in fact wrongfully passing off his goods as those of the plaintiffs by selling his Japanese cement with the marks and get-up used by the plaintiffs. This was denied by the defendant, and this case has now been given up by the plaintiffs.

6. This then is a passing off action. The basis of it being injurious falsehood or a false representation by the defendant, it must be proved as a fact that the false representation was made. The principle is well put by Lord Justict Parker in A.G. Spalding & Bros. v. A.W. Gamage, Ltd. 32 R.P.C. 234, in these words (p. 234) :-

The false representation may, of course, have been made in express words, but cases of express misrepresentation of this sort are rare. The more common case is, where the representation is implied in the use or limitation of a mark, trade name, or get-up with which the goods of another are associated in the minds of the public, or of a particular class of the public. In such cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the mark, name, or get-up in question impliedly represents such goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or quality, or, as it is sometimes put, whether the defendant's use of such mark, name, or get-up, is calculated to deceive.

What the plaintiff has to prove in such a case is, in my opinion, that the conduct of the defendant is such as is calculated, that is to say likely, to pass off the defendant's goods as his. Fraudulent intention is not necessary. It is sufficient to prove that the practice complained of is of such a nature that it is likely in the ordinary course of business to deceive the public. In considering whether deception is probable or not, account has to be taken, as Lord Selbourne L.C. observes in Singer Manufacturing Company v. Loog (1882) 8 App. Cas. 15, 18, not of expert purchasers but of the ordinary ignorant and unwary member of the public. The question really is, whether the defendant has or has not knowingly put into the hands of retail dealers the means of deceiving the ultimate purchasers. (Reddaway v. Banham [1896] A.C. 199) Where, therefore, there is anything so characteristic in the get-up or appearance of the defendant's goods that it identifies those goods as the merchandise of the plaintiff, any deceptive adoption or imitation of that get-up or appearance or mark is enough. These principles, I think, are well established.

7. I have referred to the plaintiffs' case set out in para. 3 of their plaint. That was expressly denied by the defendant by his written statement, but no issue on that question was raised by the learned counsel on behalf of the defendant, and that contention has now been given up by him. I must, therefore, assume that the facts which the plaintiffs have stated in para. 3 of their plaint are proved and admitted by the defendant. The only question then is, whether the get-up adopted by the defendant with regard to his goods is such a colourable imitation of that of the plaintiffs that it is likely to deceive the public. It is common ground that the words ' Portland Cement' are commonly used to describe cement in the Indian market, and that it is sold in bags which are more or less similar.

8. Before dealing with the facts of the case, it would be convenient to dispose of one preliminary point raised by the defendant. He contends that the plaint is not properly declared, and that the suit should be dismissed. This contention is based on the provisions of Order XXIX, Civil Procedure Code, which by Rule 1 requires that-

In suits by or against a corporation, any pleading may be signed and verified on behalf of the corporation by the secretary or by any director or other principal officer of the corporation who is able to depose to the facts of the case.

The plaint in this case was declared by the witness Paton, who describes himself in the verification clause as one of the principal officers of the plaintiffs' company. Now, it is argued that Mr. Paton is not a principal officer of the plaintiffs' company who is able to depose to the facts of the case.

9. The rule in Order XXIX is, in my opinion, clearly permissive and not imperative in its terms, and it lays down mere procedure. The rule, however, does not exclude the operation of the provisions of Order VI, Rule 14 and Rule 15, .Civil Procedure Code, and there can be no doubt now that in , the case of ordinary pleadings if the signature on the plaint or the verification of the pleading is defective, the defect can be cured at any subsequent time. Order VI, Rule 15, says inter alia that a plaint may be verified by some person proved to the satisfaction of the Court to be acquainted with the facts of the case. In Calico Printers' Association, Ltd., v. Karim & Bros. I.L.R. (1930) 55 Bom. 151 : 32 Bom. L.R. 1305 it was pointed out that the provisions of Order XXIX, Rule 1, are merely permissive and are subject to the provisions of Order VI, Rule 14. A similar view has been expressed by the Lahore, Madras and Allahabad High Courts.. The precise point has not been decided by the Calcutta High Court.

10. Apart from this, in my opinion, the facts in this case clearly show that the plaint was properly verified. It is undoubtedly true, as urged by the defendant's counsel, that Mr. Paton in the witness-box admitted that he was an employee of Messrs. Killick Nixon & Co., who are the managing agents of the plaintiffs, but the evidence which I have before me of the articles of association read with the agency agreement and the power-of-attorney executed in favour of Mr. Paton by Messrs. Killick Nixon & Company clearly shows that his salary really came from the company, and that he was an employee of the company. Apart from that, I have the evidence of Mr. Paton before me, which I accept, which shows that at or about the time the suit was instituted there was no secretary of the plaintiffs, and he was working as their secretary, that is to say he was a de facto secretary of the plaintiffs. That certainly would make him a principal officer of the plaintiffs.

11. Then the only other question is, whether he is able to depose to the material facts of the case. Now, although the defendant contends that the plaint was not properly verified, he has not set out any particulars on which he bases the objection; but in his arguments the defendant's counsel contended that in order to satisfy the provisions of Order XXIX, Rule 1, it was necessary for the plaintiffs to state, in the body of the plaint or by an affidavit, that the person who was verifying was a principal officer of the plaintiffs able to depose to the facts of the case, and for this purpose reliance was placed on a decision of the Calcutta High Court, according to which the practice there requires either of these courses to be taken. In my opinion, there is not the slightest warrant for this practice. There is nothing in the Code which requires any of these courses to be followed by the person who verifies the plaint. All that the law requires is that the plaint should be verified by a principal officer and he should be able to depose to the facts of the case. It is open to the defendant to object to the verification as insufficient and to show that the person who has verified is not a principal officer, or if he is a principal officer, he is not able to depose to the facts of the case either by cross-examination or otherwise. That has not been done in this case, and I have no reason to disbelieve the evidence of Mr. Paton when he says that at the time when the suit was instituted there was no man in the company better acquainted with the facts of this case than himself, and better able to depose to them. Then the defendant's counsel says that it was not necessary to cross-examine Mr. Paton because the verification clause itself shows that he is not familiar, with the facts of the case. I entirely reject that contention, as the facts have been verified by Mr. Paton and have been found to be true to his own knowledge.

12. I must, therefore, reject the contention and hold that the plaint was properly verified.

13. [After discussing certain questions of fact arising in the case, the judgment proceeded :] As I have said, the real question is the conduct of the defendant which is to be examined and which the plaintiffs have to prove. The Court has to find that the get-up is a colourable imitation on the face of the goods sold by, or belonging to, the defendant, and having regard to the surrounding circumstances it is such a colourable imitation that it is likely to deceive a casual unwary purchaser into the belief that in buying the defendant's goods he is really buying the goods of the plaintiffs. It is not necessary in cases of this kind to show that there was any intention to deceive as a matter of fact as Mr. Maneksha argues. It is not necessary to prove that the defendant not only had the intention to deceive but was actually deceiving his customers. I am unable to see, why, the ordinary presumption, that a man intends the natural and ordinary consequences of his act, cannot apply to passing-off actions. If mere comparison is not sufficient, then the plaintiffs must prove that what may be apparently innocent is really calculated to deceive. In such cases motive becomes material, and the Court may well assume that if a man is fraudulent, the steps which he himself thought sufficient would be likely to achieve his object. It has been held that imperfection in mode of marking so as to more closely resemble the plaintiffs' mark, or the removal of one or two points of difference which originally served to distinguish the defendant's goods from those of the plaintiffs, the adoption of an essential part of the plaintiffs' mark with a trifling and colourable alteration, the placing word on the same spot, small type for a word showing that the article was not of the plaintiffs, and imitation of barrels or bags are all cases in which the Court has held that there was the intention to deceive, and such devices were adopted with fraudulent intent. (See cases in foot-note (c), p. 137, Sebastian on Trade Mark).

14. [After, referring to evidence in the case, the judgment went on :] Having regard to these facts, it is not difficult for me to hold that the defendant, having found that he was making a loss on the goods which he had sold with a mark which would clearly be distinguishable from the plaintiffs', had formed a deliberate intention of imitating the plaintiffs' mark and set about it systematically to achieve his object. It is not for nothing that all the other manufacturers of brands, as appears from exhibit G, adopted quite characteristically different marks or get-up so as to distinguish their bags from those of the plaintiffs; but not so the defendant.

15. The letters 'BBB', denoting the plaintiffs' mark, stand out prominently and the whole get-up of the plaintiffs' goods coupled with the size and position of the three letters is not only characteristic but unique. It is clear law that nobody has a monopoly of the English alphabet or of the vocabulary; but in adopting letters or words which have come in the market to be identified with the goods of the plaintiffs, one has to be careful to see that in adopting the same letters or words, there is some distinguishing feature which would clearly distinguish one's goods from those of the plaintiffs, and the question now remains if there are any distinguishing features in regard to the defendant's goods which would save him from the charge which prima facie has been established against him by the evidence before me. Mr. Maneksha, therefore, very properly emphasized the so-called points of dissimilarity. These differences are set out in the written statement, and an attempt is made to support them by the evidence of the merchant and the broker. Now, as a matter of law, it is not necessary for the plaintiff to prove that the imitation is so similar and so close that there is hardly any difference noticeable between his goods and those of the defendant. Cases of exact imitation are very very rare. In most of these cases the question which the Court has to consider is, whether, having regard to all the surrounding circumstances, the get-up was of such a nature as was likely to deceive people in the ordinary course of business into the belief that they were buying the plaintiffs' goods, and that in fact the defendant's goods were being passed off to them.

16. I may at once say that I do not attach the slightest importance to the minor characteristics. It would be absurd to suppose that a casual purchaser-or, for the matter of that, even a more careful purchaser-would look at the manner in which the bags are sewn or tied up, or that the colour of the contents of the bags differs. These little differences do not, in my opinion, affect the question which I have to decide. I may, however, briefly notice the points of difference stressed by the defendant's counsel. The first is about the colour. According to Gulam Husein Gegabhai, the merchant examined on behalf of the defendant, Japanese cement is rather blackish in colour while Indian cement is pale green. The witness, however, admitted that he did not know if Indian cement varies in colour. Apart from that, the sale by the defendant is by bags and that by the witness is also by bags as he is a wholesale dealer himself. Excepting ten per cent, of the total sales, the sale by the plaintiffs is also by bags, fifty per cent, consisting of very large consignments. It is hardly likely that merchants would notice or buy by colour rather than by marks. The broker started by saying that Indian cement differs in colour from Japanese but had to admit that he had never seen the colour of any cement. No attempt was made by the defendant to show that the colour was different. The next point is about the difference in the sewing of the bags. The difference is hardly noticeable, unless one's attention is specifically and minutely drawn to it. Then it was said next that the bags of the plaintiffs were tied at the top with a copper wire and the Japanese bags with iron wire. The remark I have made as to the sewing will apply to this point also, particularly as Gegabhai admits that the thickness of the wire in both cases is the same. The next point is about the difference in price, the plaintiffs' cement being sold at a higher price. The merchants and importers may perhaps notice the difference, but the consumers, particularly up-country ones, would be glad to get the same goods cheaper, and this would, if anything, help the defendant's goods being palmed off more easily and more widely.

17. Then there remain two more points of dissimilarity which are stressed on behalf of the defendant. The first relates to the words ' Made in Japan' stamped on the defendant's bags below the word ' Cement', and the second is the Japanese maker's mark and some Japanese words in a circle on one side of the bags. It is said that in the market cement is known or described by the country of its origin or manufacture, e.g., as Japanese or Indian or foreign, etc., and purchasers ask for say either Japanese or Indian, etc., cement, and for this purpose reliance is placed on the evidence of the merchant Gegabhai and that of the broker. I am not impressed with this evidence. Gegabhai admits that when he sells the B.B.B. cement, he writes on the memos not Indian but ' B. B. B. cement.' He further admits that he never described in the memos Indian cement sold by him as ' Indian cement' but only describes the mark. He cannot say whether he bought Japanese cement from the defendant containing his previous marks. He asserted that on bags of Indian cement, the words ' Made in India' are printed, but had to admit that it was not so. Moreover, he had to admit that there is nothing in the memos produced or in the account books to show that Indian cement was sold as ' Indian cement,' and not by the marks concerned; and the attempt of the defendant in re-examination by the production of three sign-boards that three kinds of Indian cement are described as ' Indian cement' does not carry the case any further.

18. As to the broker, the entries in his diary show that he effected sales of cement under the description ' Japan cement or bags.' In my opinion, the whole of this evidence is entirely worthless. As I have already stated, the defendant now admits that the plaintiffs' mark is well-known in the market as ' B. B. B.' or ' Tin B ' or ' Tun B,' which means that their goods are sold on the market under this mark of theirs. The question, therefore, whether their cement is sold as Indian cement does not arise. Apart from that the merchant Gegabhai and the broker and even the defendant are wholesale dealers and their experience is confined to wholesale transactions in which merchants dealing with each other may demand, if they want Japanese, ' Japanese cement,' or, if they want Indian, ' Indian cement', and describe the particular kind of cement they want by the country of its origin. This does not affect the real question. It is the larger public, not the public so much in Bombay, but the up-country public, and particularly the ultimate purchasers, with whom the plaintiffs have to deal, and neither of these two witnesses has said that even in regard to small transactions or sales, the purchaser would ask for a particular kind of cement by describing the place of its manufacture and not by the brand by which it is known in the market.

19. Then the words ' Made in Japan' are in such a small type that they would not ordinarily attract the attention of casual purchasers; and if the bags are put together, I have not the least doubt that these words will to a large extent be undistinguishable, if not invisible.

20. The remarks which I have made with regard to the words ' Made in Japan' also would apply to the Japanese mark, because it is after all the mark in large letters which would attract the attention of the purchaser lather than the signs or badges which may be on one side of the defendant's bags, and which would ordinarily escape attention. Under the Sea Customs Act, bags imported from foreign countries have to show the origin of manufacture and the defendant is simply trying to take advantage of this circumstance,

21. I may now refer to another attempt of the defendant to show his bona fides. He says that the letters R. R. R. are the first letters of three names of God, namely, Rab, Rehman and Rahim. They are the 2nd, 3rd and 4th names of God out of about one hundred names of God in all. The initials of these 100 names exhaust practically the whole of the English alphabet and the defendant could have got any letter out of the first letters of the names except the letter X. There is no explanation why he should have chosen the three names beginning with R rather than any others. As I have remarked the letters R R R are the three nearest letters to B. B. B. in point of appearance, and it seems to me that the defendant deliberately chose these as being nearest to B. B. B. It is significant that the idea of Religion did not appeal to him when he started importing cement from Japan, and at one time he even adopted his own initials though he says that the letter B in A E B represents the name of God. From what I have seen of the defendant's son in the witness-box I have no hesitation in rejecting his evidence.

22. Having regard to these facts, I must hold that the get-up of the defendant's goods is a colourable imitation of the plaintiffs' goods and that the plaintiffs are entitled to succeed.

23. [The judgment discussed matters not material to this report, and concluded :] In the result there will be a decree in favour of the plaintiffs restraining the defendant and his agents and servants from importing and selling cement in bags with the mark 'RRR' or any other mark so designed as to be a colourable imitation of the plaintiffs' mark.

24. The other prayers have not been pressed.

25. The defendant to pay the costs of the suit.

26. Counterclaim dismissed with costs.


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