Narayana Pai, J.
(1) Regular appeal No. 137 of 1953 is against the decree in O. S. 29 of 1951-52 on the file of the Court of the District Judge of Bangalore, Miscellaneous Appeal No. 19 of 1952-53 is against the order dated 8-4-1952 of the Ex-Officio Deputy Registrar of Trade Marks, Bangalore, refusing to register the trade mark of the appellant. Both these appeals are by D. Adinarayana Setty, trading under the name and style of 'Good Luck Tea Co.' In Akkipet, Bangalore City. The subject-matter of both the appeals is a trade mark used by the appellant which the respondents, Messrs. Brooke Bond India Ltd., contended constitutes an infringement of their registered trade mark.
(2) It is the case of the respondents that they have been for long trading in a certain grade of tea known as 'Kora Dust Tea' and that they have been marketing the same under a trade mark whose main or distinctive feature is a woman carrying a child in her hand. Although the registration of this mark was effected sometime in June 1950 on an application made in the month of August 1943, the respondents contend that they have been using this mark even long prior to that date. They also rely in substantiation of their claim upon a declaration made by them before the Registrar of Assurances at Calcutta in the year 1924.
They charge the appellant with having imitated their mark only sometime in the year 1946. The appellant, however, contends that his mark has been in use for a considerable length of time and that in adopting the mark, which is now attacked as an infringement, he did not act dishonestly nor did he imitate the respondents' mark. According to the appellant the mark had been in use even prior to the year 1935 and that it was allotted to him in a partition between himself and his brother sometime in 1940. The appellant also relies upon a declaration of ownership made by him before the Registrar of Assurances at Calcutta on 28-7-1936.
(3) The respondents' suit No. 29/51-52 was filed on 20-8-1951. The notices by the respondents complaining of infringement and calling upon the appellant to refrain from using their mark were, however, issued towards the end of 1946. At that time the respondents' application for registration was pending before the Registrar at Bombay. The respondents but continued to use his mark and himself applied for registration under the provisions of the Mysore Trade Marks Act of 1944 on 30-6-1947. The appellant did not enter any opposition against the claim for registration made by the respondents before the Registry at Bombay, but the respondent gave notice of opposition in the appellant's application before the Registry at Bangalore.
(4) Both before the Registrar at Bangalore as well as in the suit filed before the District Judge at Bangalore, the case of the respondents has been that the mark used by the appellant is a colourable imitation of their mark likely to cause deception and confusion. Both before the Registrar and in the Court below the contention of the appellant has been firstly that there is no such similarity between the marks as to constitute infringement and secondly that in any event there has been on the part of the appellant honest concurrent user for a number of years entitling him to get his mark also registered.
Although at the time they entered the opposition before the Ex-Officio Deputy Registrar at Bangalore (hereinafter referred to as the Registrar) the respondents' application for registration at Bombay was pending, that registration was granted to them sometime in the month of June, 1950. The order of the Registrar disclose that although the respondents had secured the registration of their mark before the hearing of their opposition at Bangalore, they did not amend their opposition by invoking the provisions of sub-section(1) of S. 10 of the Trade Marks Act. Nevertheless the Registrar on his own, and as he was entitled and bound to, considered the case of the appellant for registration in the light of sub-section(2) of S. 10 also.
(5) At the time of the suit the respondents were the registered proprietors of the mark and sued as such for infringement. One of the pleas, as already stated, was that of honest and concurrent user. It must be pointed out in this connection that what is commonly described as a plea of honest and concurrent user in an action for infringement really connotes that the defendant contends that on the strength of honest and concurrent user he is entitled to get his mark also registered under the provisions of law. It is only upon the registration that the plea becomes a complete and absolute plea and not before. When, therefore, an unregistered proprietor, if such an expression is permissible, raises a plea of honest and concurrent user in a suit for infringement at the instance of a registered proprietor, the proper thing for the defendant to do to prove the bona fides of his claim is to make an application for registration on the strength of honest and concurrent user and simultaneously ask the Court to stay further proceedings in the suit.
In such an event, the proper course for the court to take would also be to stay further proceedings so that the defendant may substantiate his defence, because to refuse to stay and to proceed with the suit would be to deprive the defendant of a substantial and strong defence. Another reason why the suit should be stayed pending the completion or disposal of the application for registration is that the extent and ambit of the injunction which the court may grant will also depend to a considerable extent upon the conditions and limitations, if any, which the Registrar might impose while granting the registration in terms of sub-section (2) of S. 10.
(6) The above aspect of the matter appears to have been lost sight of in this case. Although the defendant had, even before the filing of the suit, presented his own application for registration of his mark and had been contending throughout that he would be entitled to registration at any rate on the strength of honest and concurrent user, he did not ask the court below to stay its hands until the disposal of his own application for registration.
In actual event, however, this omission has been inoperative for the reason that by the time evidence was recorded at the trial of the suit the appellant's application for registrant to deal with the Miscellaneous appeal against the order of the Registrar in the first instance before proceeding to deal with the decree in the infringement suit.
(7) The order of the Registrar is marked as Ex. J. In the suit. Consequent upon the opposition entered by the respondents, the parties were given a hearing by the Registrar and were also permitted to produce evidence not merely in the shape of affidavits but also viva voce, the deponents of the affidavits having been produced for the purpose of cross-examination. Although, as already stated, the respondents contented themselves by relying upon S. 8 of the Act in substantiation of their opposition, the Registrar has considered the appellant's under sub-sec.(2) of Section 10. The two questions, therefore, for consideration would be: (1) whether the mark of the appellant contains any matter, the use of which would by reason of its being likely to deceive or to cause confusion, disentitle it to protection in a court of law, and (2) whether, notwithstanding the respondents' case that the appellant's mark so nearly resembles their own as to be likely to deceive or cause confusion, the appellant has established honest concurrent user to entitle him to obtain registration under the provisions of sub-section(2) of Section 10.
(8) On the first question the principal point for investigation is the alleged case of similarly. Exs. A, B and C are the marks of the respondents Exs. D and E those of the appellant. In both the principal or salient feature is a woman carrying a child. The case of the respondents is that the same or similar device adopted by the appellant is no similar to their own that it is bound to cause confusion and deception in the course of trade in tea. The appellant categorically denied that there could be any such deception or confusion and also asserted that his mark is dissimilar in every respect.
In a very elaborate statement filed before the Registrar he pointed out the various points of difference between his mark and that of the respondents. Particularly he stated that the woman in his mark is clearly and demonstrably a Hindu lady, whereas the woman in the respondents' mark appears more like a Mohammedan or an Arab lady; he emphasises particularly that the lady in his mark bears a Tilak or vermilion mark on her forehead; secondly he pointed out that whereas the lady in his mark carries the child in her right hand, the lady in the respondents' mark carries the child in her left hand; thirdly the child in his make does not have a cap on his head as the one in the respondents' mark; fourthly he pointed out the lady in the respondents' mark carries a pitcher in her right hand whereas in the case of his mark there is only a flower vase to the left of the lady.
Beyond asserting very emphatically in his counter-Statement that the Indian Public, however uneducated they may be, could not possibly fail to recognise the striking difference, as he described it, between the appearance of the two ladies, the appellant has failed to convince us that the respondents' case of similarity between the marks is unjustified or unwarranted. It is a well established proposition that in matters of this nature the points for consideration are not the simple points of difference which could be discovered by careful scrutiny of the two marks laid side by side. The real object of the investigation is to discover what would be the totality of the impression on the minds of the probable class of customers with average intelligence and average memory subject nevertheless to the common infirmities of human memory.
If the impression created by the mark of the respondents upon such a class of purchases would be simply that of a lady carrying a child, there can be little doubt that an attempt to create a similar impression by adopting the same device of a lady carrying a child in another trade mark is calculated to confuse or deceive. The learned counsel for the appellant, however, has emphasized that there may bee itself be a deciding factor. Those cases however would be ones in which one sees a particular striking difference between the two, which itself will be the central point in the impression created upon the mind of the people. In other words, the point of difference or dissimilarity must be so strong as to make it impossible normally to mistake the one for the other. The present is not such a case.
The differences pointed out are all in minor details. We do not think that the emphatic statement of the striking features of the Hindu lady represented in the appellant's mark is such as to prevent or obviate ordinary customers mistaking the one for the other. The Registrar has, in discussing this question, correctly stated the principles in his order Ex. J. He has also referred to the evidence of some of the witnesses examined before him on behalf of the appellant to the effect that in their opinion the mark of the appellant is not likely to be mistaken for that of the respondents and that many of them were themselves not confused.
This evidence, apart from being interested, was evidence not of the opinion of the ordinary class of buyers, but the opinion of persons in the trade who are acquainted which the respective marks of the appellant and the respondents. Their opinion, therefore, about their ability to distinguish between the one and the other and of their not having got confused is not the type of evidence which is of any assistance to the appellant. The class of persons whose opinion is relevant is the class of buyers of the description already given by us. We do not think, therefore, that the Registrar, therefore, that there was such similarity between the two marks as is calculated to lead to confusion or deception must be confirmed.
(9) The next question is whether the opinion of the Registrar that the appellant is not entitled to registration even on the strength of honest and concurrent user is justified or not on the facts of the case. The user that is relevant for the purpose of the Section is concurrent user and not merely contemporaneous user. The concurrence of the user has to be examined from the point of view of the length of time during which the mark has been used by the appellant as well as the extent of his trade or quantity of the turnover.
(10) With a view to establish that he has been in the trade using this mark for over 25 years at the time of the trial before the Registrar, the principal document on which the appellant relies is the declaration of ownership made by him before the Registrar of Assurances at Calcutta in July 1936. Apart from this there is no other documentary evidence establishing the use of this mark by the appellant at any time, prior to the point of time when disputes arose between the parties. Two other documents produced by the appellant are an agency agreement between 'Good Luck Tea Co.' And another in August 1935 and a partition deed between him and his brother in the month of April 1940 allotting a trade mark to him.
Both these documents may, no doubt, establish that either the appellant in conjunction with his brother was carrying on trade in tea during the period to which the document relates. The former, viz., the agency agreement, does not refer to any trade mark at all. Although the partition deed refers to a trade mark, there is no way of discovering what the mark which was dealt with at that partition was. Regarding the extent of the turnover, there is no evidence whatever. A few bills have been produced. We have one bill for the year 1938 dated 10th of June, another bill of the year 1939 dated 21st of July and a third bill of the year 1940 dated 25th of July and a third bill of the year 1940 dated 25th of May; the production of a single bill for a whole year is significant. If, indeed, there had been a continuous trade with considerable turnover, it is not likely that the appellant would have contented himself with producing a single bill for a whole year.
Reference has been made to the evidence of a letter dated 28-8-1936 received by the appellant from a concern called 'Subedar Tea Syndicate' of Coimbatore and one Rangalal has been examined to speak to that. His evidence accepted at the best discloses that he had purchased either at the time of the transaction in August 1936 or for the whole of that year about a thousand pounds of tea from the appellant.
(11) The appellant also strongly relied upon certain notices issued by him to alleged imitators of his mark and apologies received from them. There is only one such incident deposed to and that is of the year 1946.
(12) Evidence was also let in before the Registrar to show that the business premises of the appellant were a small shop paying a rent of Rs. 15/- a month. This has not been denied. In the course of the cross-examination of witnesses on behalf of the cross-examination of witnesses on behalf of the respondents it has been elicited that besides this shop the appellant was also having what are described as Factories paying a rent of Rs. 80/-.
(13) It is on this evidence that the Registrar came to the conclusion that there was no proof before him of the appellant having traded to any large extent in tea, much less of his having used the mark in question for 25 years as claimed by him.
(14) But, what is of greater importance in this connection is the finding of the Registrar regarding the honestly claimed by the appellant for the use of the mark. The case of the appellant is that the mark now used by him has been in use at any rate from the 28th of July 1936 when he made the declaration of ownership before the Registrar of Assurances at Calcutta. The definite finding of the Registrar is that the label or the mark actually in use and now in question is quite different from the mark whose ownership was declared in July 1936. He also took the view that the earliest documentary evidence of the appellant having used the mark now in question is of the year 1948. He also stated it as his opinion that the appellant has not used and is not using the mark originally declared before the Registrar of Assurance at Calcutta, but that he has taken careful and definite steps to gradually change the design and appearance of the original mark so as to approximate to the design and appearance of the respondents' mark.
We have looked into the mark as declared by the appellant before the Registrar of Assurances at Calcutta in 1936 and the marks subsequently used by the appellant during or after the years 1946-47. Having done so, we do not have the slightest doubt that the opinion expressed by the Registrar was fully justified. The picture of the lady and the child now in use and which is the subject of opposition is vastly different from the picture of the lady and child as found in the original mark declared in 1936. The figure, the appearance and colour of the mark of 1936 are certainly not very attractive.
The features of both the woman and the child have received definite attention towards improvements as years rolled up. The faces of both the child and the mother of the mark now used are pleasing and attractive whereas no such description can be true of the mark declared in 1936. Even in the matter of colour there has been a gradual change. It is quite clear that the latest device adopted by the appellant has become more similar to that of the respondents.
(15) Once this finding of the Registrar is accepted, no other conclusion is possible than that the appellant has been anything but honest in selecting this mark and presenting this mark for registration after the notices complaining of infringement were issued to him by the respondents. The very basis for the application of sub-section(2) of Section 10 is honest user. Both the question of the similarly between the marks and the question of honesty are matters for adjudication by the Registrar.
Even if his finding on adjudication of these matters of fact is in favour of the view that the applicant before him is honest in user although the marks may have been similar, it is still a matter of discretion with him whether or not to allow registration under that provision. That discretion, no doubt, has to be exercised judicially. The basis for such exercise has been stated to be that the fact that one merchant or trader has obtained registration for his mark ought not to be permitted if possible to destory who have conducted themselves honestly. If there is no such honestly at all, as has been found by the Registrar with which finding we agree, it is not possible to contend that the Registrar has not exercised his discretion judicially.
(16) The result is that the Miscellaneous Appeal No. 19 of 1952-53 has to be dismissed.
(17) The dismissed of the Miscellaneous Appeal and the confirmation of the Registrar's rejection of the appellant's application for registration really conclude the suit also. We have already discussed at length the question of similarity between the marks. On the question of likelihood of deception and confusion, the evidence in the suit is, it anything, stronger in favour of the respondents. Finally, as the defence of concurrent user has to be made good by securing registration on the strength of such user, the appellant having failed to secure such registration, that defence must also fail.
(18) The appellant, however, has urged one further point in the appeal against the decree in the infringement suit. He has very strongly contended that although the respondents may be the registered proprietors of the trade mark and although their trade might be of proportions much larger than his own trade, they have, in spite of their knowledge of the use of the mark by the appellant, refrained from taking action against him for a number of years and have thereby acquiesced in the use of the mark by the appellant.
There is no substance in this contention. There is no evidence of any acquiescence on the part of the respondents. From the time they came to know of the use of of the mark by the defendant on the strength of reports from their agents and other officers they have taken up the matter and started issuing notices to the appellant. When the appellant applied for registration and that application was advertised before accceptance, the respondents did not lose any time in entering opposition. They filed the suit almost immediately after obtaining registration of their own mark.
It is contended on behalf of the appellant that if the respondents thought that their rights were being invaded by the appellant, they could as well have filed a suit for passing off without waiting for registration. We do not think that that argument is available because, as already stated, the respondents have protested against the use of the mark by the appellant from 1946 and it is only after that that the appellant made an application for registration. The respondents had already applied for registration of their mark in August 1943. This argument of acquiescence therefore has to be rejected.
(19) In the light of these findings the injunction granted by the court below has to be confirmed. We are not, however, satisfied that the lower court was right in its decree regarding the damages. It finds that there is no evidence regarding the damage suffered by the respondents. It is not merely the absence of evidence for calculation of damage. If that were the only deficiency in the evidence on behalf of the respondents, they could have asked the lower court to direct accounts being taken. There is, however, no evidence even to show that the respondents' trade had suffered by the activities of the appellant.
In fact their attempt throughout has been to show, and they have succeeded to a considerable extent, that the appellant's trade was a small one and had served the needs of a very small section of the people. They cannot, therefore, in the same breath say that they have suffered actual damage. In the absence of any evidence, therefore, of the respondents having suffered any loss, the lower court was not justified in reserving for them the liberty to file another suit to prove a fact which they should have proved but have failed to prove in this suit. Therefore, the direction of the lower court permitting the respondents to file another suit for the ascertainment of the damages is set aside and the suit in so far as it relates to the claim for damages is dismissed. In other respects the decree of the lower court is confirmed and the appeal is dismissed.
(20) In both the Regular Appeal and the Miscellaneous appeal we direct that the parties will bear their own costs both here and in the court below.
(21) Sri Ramachandra Shetty for the appellant wants us to say that this judgment of ours does not preclude him from applying for registration of the mark, the ownership of which he had declared before the Registrar of Assurances at Calcutta in 1936. We have referred to that mark for the purpose of deciding the question of honesty or otherwise in the use of the mark now in question. We do not think that whatever we have said with reference to the mark now in use and now complained of has any bearing upon the question whether Sri Ramachandra Shetty's client is or is not entitled to ask for registration of the mark declared in 1936.
(22) Order accordingly.