1. This is an appeal against the decree passed in O. S. 22/1960 on the file of the District Judge, Mysore. The plaintiff. Sri Ambal & Co.. Madras, which is a registered firm carrying on business in the manufacture and sale of snuff, instituted the above suit against the defendants under Section 105 of the Trade and Merchandise Marks Act. 1958 (hereinafter referred to as the 'Act') for en injunction restraining the defendants from using, exhibiting or advertising by themselves or through their servants or agents or others the offending trade mark 'Sri Andal Snuff' and or 'Sri Andal Officers' Snuff' or any other colourable imitation of the plaintiffs' registered trade mark 'Sri Ambal Snuff' or 'Sri Ambal Officer's Snuff and from trading under the name and style of 'Sri Andal & Co.', or any other name and style which was a colourable imitation of the plaintiffs' trading stvle 'Sri. Ambal & Co.'. It was also prayed by the plaintiffs that the defendants should be directed to surrender all the labels wrappers and several printed matters consisting of or containing the offending trade mark and that the defendants should be directed to render a true and faithful account of the profits which they have made since they commenced using the offending trade mark.
2. The case of the plaintiffs as disclosed in the plaint was that the trade mark 'Sri Ambal' was registered in the name of the plaintiffs under No. 146291 dated 27-11-1950 and that the same had been renewed for a period of 15 years from 27-11-1957. The said trade mark was being used by the plaintiffs in connection with the sale of snuff which the plaintiffs were manufacturing and selling. That in or about the year 1958-59, defendant 1 started carrying on business in snuff with the mark 'Sri. Andal Snuff or 'Sri. Andal Officers' Snuff thereby infringing the right of the plaintiffs in the trade mark 'Sri, Ambal'. Defendants 2 and 3 are the agents of defendant 1 at Mysore City. The plaintiffs therefore asked for the reliefs referred to above against the defendants on the ground that the words. 'Sri. Andal' were only a deceptive variation of the words 'Sri. Ambal' end that there was phonetic similarity between the two expressions which was likely to result in serious damage to the business of the plaintiffs.
3. The above suit was resisted by the defendants. They denied that there was anv similarity between the trade mark registered in the name of the plaintiffs and the mark 'Sri. Andal' which the defendants were using. It was also pleaded that defendant 1 had been using the mark 'Sri. Andal' from the year 1944 concurrently with the plaintiffs and that the case came within the scope of Section 12(3) of the Act.
4. It may be stated at this stage that defendant 1 had filed before the Registrar of Trade Marks an application for registration of their mark 'Sri. Andal' and that the Assistant Registrar of Trade Marks allowed the said application holding that the mark 'Sri. Andal' was not deceptively similar to the plaintiffs trade mark 'Sri. Ambal' and therefore did not contravene Section 12(1) of the Act. The alternative prayer made in the said application for registration under Section 12(3) of the Act was rejected by him. The objections of the plaintiffs raised in the notice of opposition lodged by them were overruled by the Assistant Registrar. Aggrieved by the said order of the Assistant Registrar the plaintiffs filed an appeal in A. A. O, 266 of 1961 before the High Court of Madras. Justice Jagadisan before whom the case came up. allowed the appeal filed by the plaintiffs. He was of the opinion that the members of the public who were accustomed to using snuff were likely to be deceived by the user of the mark 'Sri. Andal'. He therefore, set aside the registration made in favour of defendant 1.
5. Against the order of Justice Jagadisan. defendant 1 filed an appeal before a Division Bench of Madras High Court in L. P. A. No. 57 of 1962. The said appeal was dismissed. Defendant 1 took up the matter before the Supreme Court in appeal and the Supreme Court confirmed the decree of the Madras High Court. The decision of the Supreme Court is reported in K. Krishna Chettiar v. Ambal & Co.. : 1SCR290 . The Supreme Court was of the opinion that where a dealer sold snuff under a registered trade-mark and the word 'Ambal' was the distinctive and essential feature of that trade-mark end that word fixed itself in the mind of an average buyer with imperfect recollection, another dealer also dealing in snuff could not be allowed to get the trade-mark registered, of which the word 'Andal' was a distinguishing feature as there was a striking similarity and affinity of sound between the words 'Ambal' and 'Andal'. In the above view of the matter, the Supreme Court held that defendant 1 was not entitled to registration of the mark 'Sri. Andal'. As a consequence the judgment of the High Court of Madras was confirmed. The decision of the Supreme Court was rendered during the pendency of the suit out of which this appeal arises. The Court below, after recording evidence and hearing the parties, made a decree in favour of the plaintiffs. While doing so, it followed the decision of the Supreme Court referred to above. Aggrieved by the judgment and decree of the Court below, the defendants have filed this appeal.
6. Before the Court below, on behalf of the defendants, the following four points were raised:
(1) That the decision of the Supreme Court referred to above could not be pleaded as a bar by the plaintiffs in the present suit.
(2) That the trade mark in question which was being used by the defendants did not in any way infringe the right of the plaintiffs in the trade mark 'Sri Ambal'.
(3) That the defendants having been allowed to use the trade name or mark 'Sri. Andal' for over 15 veers, the plaintiffs were not entitled to the decree for injunction against then), and
(4) That the defendants were not liable to pav damages and also to render accounts regarding the profits which they had earned during the period when they had used the offending trade mark in connection with their business.
7. The Court below negatived all the contentions urged on behalf of the defendant excepting the last one viz., that the defendants were not liable to pay damages and also to render accounts regarding the profits earned bv them. On the last contention it was held by the Court below that the plaintiffs were only entitled to accounts regarding the profits which the defendants had earned.
8. Sri Hegde. learned counsel for the defendants urged before us all the contentions on which the findings of the Court below were against the defendants. It was argued bv him that the enquiry held before the Assistant Registrar in connection with the application filed by defendant 1 for registering his mark as a trade mark and the appeals filed before the High Court of Madras and the Supreme Court were all proceedings before authorities having a limited jurisdiction and that therefore, any finding given in those proceedings could not be used against the defendants in a suit instituted under Section 105 of the Act. It was next argued that if the decision of the Supreme Court was not taken into consideration in this case, then the other material which was before Court would not be sufficient in the eye of law to hold that there was any similarity between the trade-mark 'Sri. Ambal' and the mark of the defendants 'Sri. Andal'. and therefore, it was urged that the suit was liable to be dismissed.
9. We are of the opinion that there is no substance in the above sub-mission. Even though the scope of the enquiry held by the Assistant Registrar on an application filed for the registration of the mark of a Party is of a limited nature, a decision given in that case cannot be treated as being totally irrelevant for purposes of deciding a suit under Section 105 of the Act, the concerned authority or Court has to decide whether the mark whose registration is sought or the offending mark possesses a deceptive similarity with a registered trademark. If a mark cannot be registered on the ground that it contravenes Section 12(1) then it follows that the user of the said mark will have to be restrained also in a suit filed under Section 105. In such a situation, if a decision is given in an earlier proceeding between the same parties there is little reason for holding that the said decision would not operate as res judicata in a proceeding under Section 105 of the Act in which the same question arises for consideration. The above view receives support from the decision of the Supreme Court in Raj Lakshmi Dasi v. Banamali Sen, : 4SCR154 . It is no doubt true that the earlier decision in this case Is not one rendered in a suit and the same cannot be brought strictly within the four corners of Section 11, Civil P. C. Section 11. Civil P. C. as explained by tile Supreme Court in the above decision is not exhaustive but only deals with one aspect of the general rule of res judicata. If the case can be brought within the scope of the general rule of res judicata, the decision in the earlier proceeding can still be used as a bar in a subsequent proceeding notwithstanding the fact that the earlier decision does not satisfy all the requirements of Section 11, Civil P. C. The facts of the case before the Supreme Court were these;
10. In an earlier proceeding under the Land Acquisition Act the question regarding title to an estate came up for consideration and in the said proceeding the relative rights of the parties in the estate in question were decided, The question for consideration in the subsequent proceeding was also the same even though the subsequent proceeding arose out of a suit. The point for consideration before the Supreme Court in the latter case was whether the earlier decision in the Land Acquisition Proceedings could be used as a bar in a subsequent proceeding. Dealing with the above question, the Supreme Court observed as follows:
'The condition regarding the competency of the former Court to try the subsequent suit is one of the limitations engrafted on the general rule of res judicata by Section 11 of the Code and has application to suits alone. When a plea of res judicata is founded on general principles of law, all that is necessary to establish is that the Court that heard and decided the former case was a Court of competent jurisdiction. It does not seem necessary in such cases to further prove that it has jurisdiction to hear the later suit. A plea of res judicata on general principles can be successfully taken in respect of judgments of Courts of exclusive jurisdiction, like revenue Courts, Land Acquisition Courts, administration Courts etc.'
It is therefore clear that the decision of the Supreme Court in the earlier proceeding can be used by the plaintiffs in this case as a bar against the defendants,
11. Be that as it may, the material placed before us in this case is also sufficient in the eye of law to come to the same conclusion at which the Madras High Court and the Supreme Court arrived in the earlier proceedings. We are of the view that the words 'Sri Ambal' and 'Sri Andal' are phonetically so much similar that they are likely to deceive an ordinary customer or to cause confusion in his mind. It has been held by the Supreme Court in the earlier proceeding between the parties as follows :--
'The vital question in issue is whether, if the appellant's mark is used in a normal and fair manner in connection with the snuff and if similarly fair and normal user is assumed of the existing registered marks, will there be such a likelihood of deception that the mark ought not to be allowed to be registered (see In the matter of Broadhead's Application for registration of a trade-mark, 1950-67 RPC 209). It is for the Court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature 'Andal'. There is a striking similarity and affinity of sound between the words 'Andal' and 'Ambal'. Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned single Judge and the Division Bench, we are satisfied that there is a real danger of confusion between the two marks.'
12. We are therefore of the opinion that the decision of the Court below that the defendants had infringed the trade-mark of the plaintiffs has to be affirmed and we do so.
13. The next submission made by Mr. Hegde is that the Court below was wrong in directing the defendants to render accounts regarding the profits that they had made. He submitted that the burden of establishing the claim for damages was on the plaintiffs and that the defendants could not have been ordered by the Court below to render accounts. It is not disputed in this case and in fact, it was stated by the defendant in unequivocal terms in their written statement that they had been carrying on business in snuff with the trade mark 'Sri Andal' right from the year 1944 on a large scale. It follows that the defendants must have been maintaining accounts regarding their business. Even otherwise, the volume of business which was being carried on by the defendant is a matter which is exclusively within the knowledge of the defendants. In such a situation, there is nothing wrong in the Court below directing the defendants to render a true account of the business that they have been carrying on with the offending trade mark. We do not therefore, find any substance in the above submission,
14. It was lastly argued that the defendants were not in possession of any of the offending labels or marks snd therefore, that part of the decree of the Court below which directed them to surrender the offending marks or labels should be deleted. The said relief has been granted by the Court below in conformity with the provisions of Section 106 of the Act and it is open to the defendants to make appropriate submissions before the Court below with regard to this matter at the appropriate stage, nO other contention survives in this case.
15. In the result, this appeal fails and it is dismissed with costs. (Advocate's fee. Rs. 500/-).