1. This appeal arises out of a suit for a permanent injunction restraining the defendant from selling chewing tobacco contained in tins or packets bearing the trade-mark of an elephant which is a colourable imitation of the plaintiff's trade-mark.
2. The plaintiff is a firm styled 'Thomas Bear & Sons (India) Limited.' The plaintiff's case is that the plaintiff company, or its predecessor in business, have been carrying on the business of manufacturing and selling cigarettes and tobacco for many years and have been doing extensive business in India. All the goods sold by the company bear the design of an elephant which is the trade-mark of the company. In particular, the company has since the year 1922 been selling in India a brand of cigarettes called the 'elephant' cigarettes and a brand of tobacco known as 'Virginia Bird's eye' in tins and packets bearing the elephant trademark. The defendant has recently started the sale of chewing tobacco manufactured by him at Cawnpore and this tobacco is sold in tins bearing a label on which the picture of an elephant and the name 'elephant' is prominently displayed and therefore resembles the plaintiff's trade-mark. The plaintiff contends that purchasers are likely to be deceived by the picture of the elephant on the defendant's tins and will suppose that the defendant's goods are manufactured or sold by the plaintiff, and that the plaintiff's business, goodwill and reputation are likely to sustain injury.
3. The principal defences are that the defendant sells only chewing tobacco and does not deal in cigarettes or any sort of smoking tobacco and therefore the plaintiff has no right to obtain an injunction. It is also pleaded that the appearance of the label and design on the defendant's tobacco tins are quite different from the get up and label of the plaintiff's tins, so customers are not likely to be deceived. The defendant also denied that the plaintiff firm acquired any proprietary right in the elephant trade-mark in respect of their goods.
4. The learned Additional District Judge has discussed the facts, and the law very fully. He found that the plaintiff company and their predecessors have been using the trade-mark of an elephant in respect of their cigarettes, and tobacco since a long time and had acquired a right of property in respect of the trade-mark 'elephant' in respect of their cigarettes and 'Virginia Bird's eye' tobacco. He held however that chewing tobacco was goods of a very different class from smoking tobacco, and he was not satisfied that chewing tobacco and smoking tobacco-were so similar that they could be classified in one class and therefore the plaintiff could not claim an injunction in respect of the trade-mark used, by the defendant only in connexion with chewing tobacco. He also held that even if chewing tobacco and smoking tobacco can be held to belong to the same class, even so, the plaintiff was not entitled to an injunction, because the trade-mark used by the defendant was not a colourable imitation of the plaintiff's trade-mark. On these grounds he dismissed the plaintiff's suit.
5. The learned Counsel for the plaintiff has strenuously contended that the learned Additional District Judge has taken a wrong view in holding that the plaintiff had acquired a right to-use his elephant trade-mark only in connexion with the sale of cigarettes, and smoking tobacco and not in connexion with chewing tobacco. He also argues that the trade-mark used by the defendant is sufficiently similar to the plaintiff's trade-mark to be likely to deceive ordinary unwary and illiterate purchasers.
6. The law on the subject of trademarks in India has been discussed and. laid down by a Bench of this High Court in the Swadeshi Mills Co. Ltd. v. Juggi Lal Kamalpat Cotton Spinning and Weaving Co. 1927 All 81, and by a learned Judge of the Bombay High Court in A.J. Von Wulfing v. D.H. Jivandas & Co. 1926 Bom. 200. In the Allahabad case it was held that if the goods of a manufacturer from the mark of device he has used, have become known in the market by a particular name, the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market may be as much an invasion of right of that rival as the actual copy of his device. It was also held that no general rule can be laid down as to what is or is not a mere colourable variation. All that can be done is to ascertain in every case as it occurs whether there is such a resemblance as to deceive a purchaser using, ordinary caution. It was also pointed out that in a country like India, where there is no statute for registering trade marks, a right to a trade-mark is acquired by user. In the Bombay case it was held that in India, where there was no Registration Act, giving the right of property in trade-marks by registration, the only right of action a trader or manufacturer has is the common law right of action which entitles him to an injunction restraining the use of the trade-mark belonging to him if such use is calculated to pass off the defendant's goods as the goods of the plaintiff's.
7. It appears that in India the rules of the common law of England applicable to trade-marks should be followed by the Courts in this country as being rules of justice, equity and good conscience. Even in England, where provision is made by statute law for the registration of trade-marks, the Courts also give protection to unregistered trade-marks:
It is well settled that, if the use by the defendant upon his goods of an unregistered trade-mark belonging to the plaintiff is calculated to pass off or cause to be passed off the defendant's goods as the goods of the plaintiff, an injunction may be granted to restrain such use, and this whether the use be deliberately fraudulent and intended by the defendant to be deceptive, or not. (Kerly on Trade-marks, Edn. 6, p. 12). The test of infringement laid down in all the cases is that the defendant's acts shall be calculated to pass off goods as the plaintiff's which are not his. (Kerly, p. 34). The question which has always been regarded as the test of infringement is, 'will the use of the trade-mark I by the defendant lead purchasers to mistake his goods for those of the plaintiff?' (Kerly, p. 36).
8. Learned Counsel for the respondent accepts the findings of the trial Court and argues in support of its conclusions. I think there is no dispute regarding the principles of law which are to be applied to a case of this sort. We have to ascertain whether the plaintiff has by user established a right to use his trade-mark in connexion with a certain class of goods which would include chewing tobacco and if so, whether the defendant by using a trademark similar to the plaintiff's in connexion with the sale of chewing tobacco is likely to lead purchasers to-mistake his goods for those of theplaintiff.
9. I think the trial Court is undoubtedly right in finding that the plaintiff firm has acquired a proprietary right in respect of its elephant trade-mark with reference to its cigarettes and 'Virginia Bird's eye' tobacco. The main question seems to be whether the plaintiff's right to the use of its trademark does not. extend also to other articles dealt with in the tobacco trade, such as chewing tobacco. In my opinion the trial Court was not right in finding that the plaintiff's right to use its trade-mark was confined only to the sale of cigarettes and 'Virginia Bird's eye' tobacco. If the plaintiff's right is strictly limited in this manner, then apparently it would be open to any other person engaged in the tobacco trade to use an exact imitation of the plaintiff's trade-mark in connexion with the sale of any smoking tobacco other than 'Virginia Bird's eye' smoking tobacco and certainly in connexion with the sale of cigars or biris. It is not very clear whether the learned Additional District Judge would have refused an injunction if the defendant had been selling a smoking, tobacco, other than 'Virginia Bird's eye' smoking tobacco, under the plaintiff's trade-mark. But it seems certain that according to his view the plaintiff would not be entitled to an injunction if the defendant had sold cigars in tins bearing an exact imitation of the plaintiff's trade mark. If the plaintiff raised an objection to such use of his trade-mark, he would be met by the answer:
you do not sell cigars of any description, therefore you have not acquired any proprietary right, in your trade-mark with reference to cigars.
10. It is true that chewing tobacco is in some respects more unlike smoking tobacco than cigars are unlike cigarettes, because cigars and cigarettes are both consumed by smoking, whereas-chewing tobacco is consumed by chewing. It appears to me however that the view taken by the Court below would apply to the case of cigars or biris just as much as to the case of chewing tobacco and in view of the authorities to which I shall presently refer, I do not think that this view can be correct. It is true that the right to use a trade-mark can only apply to goods of a particular class. In the present case it has been proved that the elephant trade-mark is used by different firms in connexion with goods of a very different nature such as buttons, combs or sacking, which have nothing whatever to do with the tobacco trade and of course the plaintiff has no objection to the use of an elephant trade-mark in connexion with such goods as are not dealt with in the tobacco trade. In my opinion, smoking tobacco and chewing tobacco are sufficiently similar to be regarded as belonging to one class for the purpose of acquiring a right to a trademark. In England, the law relating to trade-marks is to be found mainly in the Trade Marks Act, 1905. Under that Act, certain rules have been made called the Trade Mark Rules 1920. Under those Rules, articles of merchandise have been classified into 50 classes for the purpose of registration of trademarks. Class 45 includes 'tobacco, whether manufactured or unmanufactured.' It appears therefore that in England, for the purpose of the registration of trade-marks, all classes of tobacco, whether smoking tobacco or chewing tobacco or cigarettes or cigars, etc., would be classified under one head and a trade-mark could be registered in respect of the entire class.
11. A survey of the authorities also shows clearly that when a person has established a right to use a trademark in respect of a certain class of goods, this right is not confined only to goods which are precisely similar to the goods which he makes or sells. In some cases indeed, the right to use the trade-mark has been held to extend to goods of a very different nature from the goods sold by the proprietor of the trade-mark. The case of Eno v. Dunn (1890) 15 A.C. 252, seems to go further than any other case in the protection of a trade name. The principles applicable to trade names are similar to those applicable to trade-marks. In that case, Mr. Dunn applied to register the words 'Dunn's Fruit Salt Baking Powder' as a trade-mark for baking powder. Mr. Eno, who had for many years used the words 'Fruit Salt' as his trade-mark for a powder used in producing an effervescing drink, opposed the application. This case gave rise to great conflict of judicial opinion. Kay, J., decided in favour of Mr. Eno and refused the application for registration. His decision was reversed by the Court of appeal, but their decision in turn was reversed by the House of Lords by a majority of three learned Judges to two. It would certainly seem that there is little similarity between Eno's Fruit Salt and a Baking powder. Any one who wished to purchase an effervescing aperient drink would certainly not accept any sort of baking powder as a substitute. Conversely any one who wished to buy baking powder for baking bread or cakes would never be put off with a bottle of Eno's Fruit Salt. The majority of their Lordships however took the view that the words 'Fruit Salt' were associated in the public mind with Eno's Fruit Salt and if Mr. Dunn sold his baking powder under the name of 'Fruit Salt Baking Powder,' then people might suppose that Eno's Fruit Salt was one of the principal ingredients of the baking powder and therefore if a batch of 'Fruit Salt' baking powder proved unsatisfactory, then it might injuriously affect the reputation of Eno's Fruit Salt. On these grounds their Lordships refused the application for registration. This certainly seems to be an extreme case and it shows to what length the Courts in England can go in protecting a right in trade-marks when there is any possibility of the public being deceived by a similarity between two trade-marks or trade-names.
12. It must be noted however that in that case Mr. Dunn was the applicant for registration and the burden was on him to show that there was no possibility or at least probability of deception or confusion. In the present case, the burden is on the plaintiff to show that the use of the symbol of an elephant on the defendant's goods is likely to deceive the ordinary unwary purchaser.
13. The case of In re Gutta Percha and India Rubber Co. of Toronto (1909) 2 Ch. D. 10, was also a question of registration. Registration was opposed by a firm which manufactured all sorts of India rubber goods except boots and shoes and who had registered a trade-mark of which the distinctive part was a Maltese cross, in class 40 for:
goods manufactured from India rubber and gutta-percha not included in other classes but not including dress shields or gussette webs and not including any goods of a like kind to any excluded goods.
The applicant applied to register, in class 38, two trade-marks of which the distinctive feature was a Maltese cross, one for 'boots and shoes made wholly or party of India rubber' and the other for:
India rubber footwear included in this class but not including gaiters or leggings or any goods of the like kind.
14. Although the opposing company did not manufacture or deal in boots or shoes or footwear nevertheless it was held that their trade-mark was for the same description of goods as were to be sold under the applicants proposed marks and the latter were calculated to deceive and therefore registration should be refused. From this case it is clear that the mere fact that the opposing company did not make boots and shoes or footwear whereas the applicants wished their trade-mark to be used only in connexion with boots and shoes or footwear was not considered to be of much importance. This case seems to be some authority for the view that it is immaterial whether the plaintiff in the present case does or does not sell chewing tobacco provided that chewing tobacco can fairly be held to belong to the same class as the goods which he does sell under his elephant trade-mark.
15. Another registration case is Re Turney & Sons Trade-Mark (1894) 10 T.L.R. 175. In that case Turney & Sons applied to register for rum a trademark consisting of a diamond with a smaller diamond superposed and other matter, the outer diamond being coloured red. This was opposed by a firm as owners of a diamond trade-mark registered for beer on the ground that the trade-mark applied for would cause confusion and deceive the trade and the public into believing that the applicants' goods marked with their mark were goods emanating from or in some way connected with the opponents. The application was refused, and on appeal it was held that whether beer and rum are or not the 'same description' of goods still, even if they are not, there was such a probability of deception that the Court ought not to say that the mark must be registered. In that case it must be admitted that there is very little similarity between rum and beer. Rum certainly could not be mistaken for beer and vice versa. The only similarity is that they are both intoxicating liquors and are both goods dealt with in the liquor trade. I think there is at least as great a similarity between smoking tobacco and chewing tobacco as there is between rum and beer. The last registration case that may be mentioned is In re The Australian Wine Importers Ltd. (1889) 4 Ch. D. 278. In that case, the owners of a trade-mark of the 'Golden Fleece' which they used for spirits were successful in preventing the registration of a similar mark of a Golden Fleece for Australian Champagne on the ground that it was calculated to deceive. It was held that although wine and spirits are different goods they might fairly be held to be goods of the same description and even if they were not of the same description they were sufficiently similar to induce the public to believe them to be the goods of the same firm if they were sold under similar trademarks. It is true that in that case there was no question of an injunction to restrain the Australian company from using the Golden Fleece trademark on their Champagne, but Lord Justice Cotton observed that he desired to hold out no encouragement to them to believe that if they did so use the trade-mark, they would not be restrained.
16. I now turn to some cases in which an injunction was sought to restrain the defendants from using trade-marks similar to the plaintiffs. These cases are more directly in point. The case already referred to in Swadeshi Mills Co. Ltd. v. Juggi Lal Kamalpat Cotton Spinning and Weaving Co. 1927 All 81, was a suit for an injunction restraining the defendants from using the lotus trade-mark (Kamalchap) on their goods. That case can however be distinguished because the defendants were manufacturing cotton goods of the same sort as the plaintiffs' cotton goods, and were thus directly competing with the plaintiffs.
17. The case most directly in point is the O.O.C.J.C.S. No. 159 of British American Tobacco Co. (India) Ltd. v. Ismail Saib O.O.C.J.C.S. No. 159 of 1909, decided by the Madras High Court on 23rd November 1910. In that case, the plaintiffs sued to restrain the defendants from passing off their goods as the goods of the plaintiffs' by using on them the 'scissors' mark which had become identified with the goods manufactured and sold by the plaintiffs, namely packets of cigarettes bearing the brand of 'scissors.' The interesting point in that case is that the defendants were not selling cigarettes, but were selling only biris (or 'beedies'), whereas the plaintiffs were selling only cigarettes and not biris. It was argued therefore that although the defendants sold their biris in packets bearing the scissors brand, nevertheless, the plaintiffs had no cause of action to restrain them from doing so. It was conceded that cigarettes and biris are dissimilar in appearance and in many other respects. No one asking for a cigarette could be put off with a biri and vice versa. Nevertheless it was held that the plaintiff had a right to restrain the defendant from selling his biris in packets bearing the scissors brand. The learned Judge found it difficult to say whether the use of the scissors label on the defendant's biris would attract custom from the 'scissors' cigarettes to the 'scissors' biris. But he pointed out that there was another aspect of the case.
But we have further to consider that the sale of the scissors brand of cigarettes depends a great deal upon the reputation of that brand, and is likely to decline if that reputation is in any way affected and it seems to me that the plaintiffs are justified in being apprehensive that if those beedies are widely sold under the scissors brand and are in consequence believed to be the manufacture of the plaintiffs that might affect the reputation of the brand and adversely influence their sales.
18. This is precisely the argument advanced by the learned advocate for the appellant in this case. The defendant is not directly competing with the plaintiff in the present case, because the defendant is only selling chewing tobacco which the plaintiff does not sell. But the plaintiff is apprehensive that if the public considered the plaintiff, to be responsible for the chewing tobacco, on account of the elephant trade-mark, then the plaintiff's reputation might suffer if the chewing tobacco happens to be of inferior quality. The case law has been fully discussed in this case and it seems to me very directly in point.
19. Another suit for injunction is the Warwick Tyre Co. Ltd. v. New Motor and General Rubber Co. Ltd. (1910) 1 Ch. D. 248. In that case the plaintiffs had for many years manufactured and sold tyres for cycles and motor-cycles under the name of 'Warwick' and by the year 1905, that name was distinctive and meant to the trade and to the public tyres of their manufacture. In 1905 they transferred their business with the exclusive right to manufacture and sell Warwick tyres to the Dunlop Company for a term of years. The plaintiffs never manufactured or sold tyres for motor cars. The defendants manufactured and sold only tyres for motor cars, and began to sell them under the name of 'Warwick Motor tyres.' In that case it was held that the use of the name 'Warwick' in connexion with the sale of the defendants' motor tyres was calculated to lead the public to believe that the defendants' motor tyres were tyres of the plaintiffs' manufacture. Here we must note that the plaintiffs had never manufactured tyres for motor cars, but they were nevertheless held entitled to-restrain the defendants from manufacturing and selling tyres for motor cars under the name of 'Warwick Motor tyres.' That case therefore also seems to be clearly in point.
20. I would also refer to the case of Eastman Photographic Materials Co. v. John Griffith's Cycle Corporation (1898) 15 R.P.C. 105. The Eastman Company had for many years used the word 'Kodak' in connexion with their goods and especially for photographic cameras. The Company had made a specially of cameras suitable to bicyclists, and of appliances for fixing the same to bicycles and had largely advertised 'Bicycle Kodaks.' The defendant company had obtained registration of the word 'Kodak' as a trademark in class 22, for bicycles and other vehicles included in that class; and their company was registered as the 'Kodak Cycle Company Limited.' The plaintiff company sued to restrain the defendant from carrying on business under the name of Kodak Cycle Company Limited and from passing off their goods as the goods of the plaintiffs and from infringing the trade-mark of the plaintiff. It was held that the word 'Kodak' had become identified with the plaintiff company's goods and the evidence showed a close connexion between the bicycle and photgraphic trades. It was found that the defendants were trying to get the benefit of the reputation of the plaintiff company and the trade-mark must be expunged as being calculated to deceive, and the defendants were restrained from trading under the name 'Kodak Cycle Company.' At first sight there would seem to be no connexion between a photographic camera and a bicycle, but nevertheless, the Court held that the use of the word 'Kodak' in connexion with bicycles was calculated to lead the public to suppose that the Cycle Company had some connexion at least with, the plaintiff company which sold 'Kodak.'
21. The case of Hargreave v. Freeman (1891) 3 Ch. D. 39, seems at first sight to favour the defendant's contention. In that case, the finding was that there was no infringement of a registered trade-mark. The plaintiff had registered a trade-mark for all classes of tobacco whether manufactured or unmanufactured, but his registered device consisted of a shield with three crowns and the word 'Mixture' underneath. Since registration the plaintiff had used this trade-mark solely on packages containing cut tobacco. The defendant had used a trade-mark consisting of a shield with three crowns, without the word 'Mixture' underneath, on cigar boxes. It was held that the whole trade-mark including the word 'Mixture' was quite inapplicable to cigars and it had not been copied by the defendant and although the plaintiff used part of his registered trade-mark, namely, the shield with three crowns without the word 'Mixture' on cigars which he also sold, he had not registered that mark of three crowns only. The learned Judge observed that the plaintiff was really attempting to sue upon an unregistered trade-mark which he could not do 'by reason of the Act of Parliament.' That case was not an action for passing off nor is there any question of this suit being barred by an Act of Parliament and I agree with the remark of Wallis, J., in the British American Tobacco Company case, that the ruling is distinguishable.
22. It appears to me from a review of these authorities that the right acquired by the plaintiff in respect of his elephant trade-mark should not be confined strictly to cigarettes and to Virginia Birds eye smoking tobacco, or even to cigarettes and all kinds of smoking tobacco only, but should be held to extend to all preparations of tobacco. It is true that the plaintiff company is not at present selling cigars or biris but I think that if another tobacco company started selling cigars or biris under a trade-mark similar to the elephant trade-mark, the plaintiff company would have a right to restrain the other company from using their trade-mark in connexion with the sale of such goods. The same argument seems applicable to the case of chewing tobacco. Some point has been made by the trial Court of the popular Indian belief that chewing tobacco is manufactured and used only in India and not in other countries. This belief is of course erroneous. I have no hesitation in accepting Mr. Gracie's testimony that chewing tobacco is largely used in England and the U.S.A. and that the Imperial Tobacco Company, have for many years been importing chewing tobacco into India. But if the belief were material, then I think it would have to be taken into account even if it were erroneous. The question we have to decide is, in one view, a psychological question. The plaintiff company sells cigarettes and smoking tobacco in tins bearing the picture of an elephant. The public therefore associate the elephant brand with the plaintiff's goods. If a customer sees a tin of chewing tobacco also bearing the picture of an elephant, would lie by the association of ideas, be likely to suppose that the chewing tobacco was also manufactured or selected or sold by the plaintiff? We may assume that the ordinary Indian customer would be under the erroneous belief that chewing tobacco is only manufactured in India. But this seems to be quite beside the point. It would be open to the plaintiff to start a factory for chewing tobacco in India. Many factories for the manufacture of cigarettes have already been started in India and there is no reason why the plaintiff firm should not manufacture chewing tobacco in India whether from imported tobacco or from tobacco grown in India. So even if the customer wrongly believed that chewing tobacco was only made in India he might reasonably believe that a tin of chewing tobacco bearing the elephant trade-mark was manufactured or sold by the plaintiff company. In my view, the plaintiff's right to use his trade-mark extends to all preparations of tobacco and the Court below was wrong in confining the right to cigarettes and Virginia Birds Eye smoking tobacco only.
23. The next question is whether the defendant's trade-mark is a colourable imitation of the plaintiff's. The Court below has given a detailed description of the two trade-marks and has pointed out certain differences. It is noted, for instance, that in the plaintiff's trade-mark, the elephant is either black or red and that its trunk is curled inwards whereas in the defendant's trade-mark, the elephant is white and its trunk is projecting forwards. In my opinion, these minor differences are not of any great importance. It is clear that the plaintiff does not attach much importance to the colour of his elephant, which is sometimes black and sometimes red, and I do not think that the ordinary purchaser would attach much importance to the position of the elephant's trunk. The point is that in each case, the main symbol is an elephant and I think the colour and position and shape of the elephant are questions of minor importance. To my mind, persons who are accustomed to associate the elephant trade-mark with plaintiff's goods would be likely to assume, on seeing the elephant mark on the defendant's goods, that they were the goods of the plaintiff. They would not attach much importance to the differences of colour, etc., even if they happened to notice the differences. It is true that the letter press is also different, but this again does not seem to be of much importance, especially in a country like India, where the great majority of persons of the class who use chewing tobacco are likely to be illiterate. In the 'Kamlachap' case, the difference in the letter press accompanying the lotus brand was considered to be unimportant.
24. Looking at the case as a whole I think that the plaintiff has substantiated his right to restrain the defendant from selling his goods under the trademark of an elephant which is likely to be mistaken for the plaintiff's trademark. As regards damages, only Rs. 100 has been claimed as nominal damages. No damages have been proved, but the Court below has quoted authority for the view that if the plaintiff has proved that his right of trademark has been infringed, then nominal damages can be allowed, even though they are not proved. I agree with the Court below that nominal damages amounting to Rs. 100 should be allowed. It seems to me unnecessary however to grant the ancillary relief claimed, of delivery to the plaintiff for destruction of all the tins and packets and labels bearing the device of the elephant which are in the possession of the defendant. I think the plaintiff's purpose will be sufficiently served in the defendants is prevented from using any colourable imitation of the plaintiff's trade-mark in the future.
25. I would accordingly allow this appeal and set aside the decree of the Court below and decree a permanent injunction in the terms prayed for, and a sum of Rs. 100 as nominal damages. The plaintiff should also receive his costs in both Courts.
Iqbal Ahmad, J.
26. I regret I am unable to agree with my learned brother. There is no controversy about the law applicable to the case, nor is there much dispute as regards the facts. But the difficulty in such cases arises in the application of the law to given set of facts, and the difference of opinion between my learned brother and myself has been occasioned by that difficulty:
It is well settled that, if the use by the defendant upon his goods of...trade-mark belonging to the plaintiff is calculated to pass off or cause to be passed off the defendant's goods as the goods of the plaintiff, an injunction may be-granted to restrain such use : Kerly on Trade-marks, p. 12).
27. It is equally well settled that:
in cases of this description the probability of misleading not experts or persons who know the real facts, but ordinary or unwary customers, is the mischief to be guarded against : Powell v. Birmingham Venegar Brewery Co. (1896) 2 Ch. D. 54.
28. The cardinal question for decision therefore in cases in which plaintiff seeks to restrain the defendant from using a mark or design on the ground that the mark or design is a colourable imitation of the mark or design in which the plaintiff has acquired a right of property must always be:
will the use of the trade-mark by the defendant lead purchasers to mistake his goods for those of the plaintiff, (Kerly p. 36).
29. The answer to this question must primarily depend on the degree of similarity between the trade-mark of the plaintiff and the mark used by the defendant. It is obvious that in the determination of this question decided cases can never be a safe guide, and every case of alleged infringement of the plaintiff's mark or design must be decided on its own facts and circumstances. The best test is to lay the plaintiff's mark and the defendant's mark side by side and then to decide by comparing the two whether the defendant's mark is or is not a colourable or an approximate imitation of the plaintiff's mark:
No general rule can be laid down as to what is or is not a mere colourable variation. All that can be done is to ascertain in every case as it occurs whether there is such a resemblance as to deceive a purchaser using ordinary caution, Swadeshi Mills Co. Ltd. v. Juggi Lal Kamalpat Cotton Spinning and Weaving Co. 1927 All 81, p. 975.
30. In the determination of this question many considerations must enter into the mind and it is impossible to enumerate those considerations. The points of similarity between the two marks and the essential points of difference between them must be given due weight and the conclusion must be arrived at on a consideration of the colour, shape, form and design of the two marks. If on a consideration of all the circumstances the conclusion arrived at is that the defendant's mark is not a colourable imitation of the plaintiff's mark, and is not calculated to deceive average customers, an injunction cannot be granted to the plaintiff to restrain the defendant from using the mark used by him. If on the other hand it is found that the get-up of the two marks is similar, the second important question that arises for consideration in such cases is whether the goods manufactured or sold by the defendant are similar to the plaintiff's goods.
31. The right of property in a particular trade-mark is confined to goods of similar description to which the mark has been attached, and the use of a trademark, identical with the mark in which the plaintiff has acquired a right of property, on goods of a description other than that to which the mark of the plaintiff is attached does not constitute an infringement of the plaintiff's right. The reason is obvious. If the goods in which the plaintiff deals are different from the goods to which the defendant attaches the mark, the unwary purchaser is not likely to be misled into the belief that the defendant's goods are the goods of the plaintiff's manufacture. The use of a trademark in connexion with goods of a particular description for an appreciable length of time leads to the association of that mark with those goods in the market, and thus the public is led into the belief that similar goods to which that mark is attached are goods of the person whose mark they bear. But if the same mark is attached to goods of a different description there is not the likelihood or the probability of the purchaser being deceived. The authorities on the point have been noted by the learned Judge of the Court below in his judgment : vide pp. 34 to 36 of the printed record and it is unnecessary for me to notice those authorities.
32. It follows that in case of alleged infringement of a trade-mark, if it is found that the goods manufactured or sold by the defendant are of a description other than the goods in which the plaintiff deals, the plaintiff is not entitled to an injunction restraining the defendant from attaching to his goods trade-mark similar to the trade-mark in which the plaintiff has acquired a right of property. Even in England where there is a specific statute for registration of trade-marks and where, by the Trade Mark Rules, 1920, goods, have been classified into 50 classes for the purpose of registration of trademarks, it has been consistently held that the registered proprietor's right is limited, and the registration restricts his right to the exclusive use of the trade-mark substantially to the kinds, of goods upon which he actually uses, the mark, and that he is not entitled to restrain others from using the same-mark in respect of other goods. The law on the subject is summed up in Kerly at pp. 118 and 119, and is as> follows:
A trade-mark may be registered for certain only of the goods comprised in a class and it will then, of course, be protected as to those goods only. Many of the classes comprise a number of very different kinds of goods; for example, class 6, 'machinery of all kinds, and parts of machinery, except agricultural and horticultural machines-included in class 7,' comprises both engine-boilers and sewing machines. Registration in a class does not however confer on the registered proprietor any right to sue for infringement off the mark in regard to goods of kinds other than-those for which he uses his mark. Thus, where the owner of a mark comprising the word Neptune, who had used it only for iron sheets, although class 5, for which it was registered, included also wire, brought an action against a person who had registered and used a mark comprising the same word for wire, the Court of appeal refused to grant an injunction, and they ordered the register to be rectified by restricting the registration of the plaintiff's mark to iron sheets only... Cotton, L.J., stated that, in his opinion, it was not the intention of the Act (of 1875) that a man registering a trade-mark for and entire class, and using it only for one article in that class, should be able to claim for himself the exclusive right to use the mark for every, article in the class, and with this opinion the other Lord Justices agreed
33. In the case before me it has been found by the learned Judge of the Court below that the plaintiff company has been using the trade-mark 'elephant' for sufficiently long time and that it 'has acquired a right of property in respect of trade-mark 'elephant,' in respect of its cigarettes and 'Virkinia Bird's Eye Tobacco' and no exception has been taken to this finding by the learned Counsel for the defendant-respondent. In view of this finding of the Court below and the observations made above, the two questions that arise for consideration in, this appeal are:
(1) Is the mark used by the defendant on packets and tins of chewing tobacco sold by him a colourable imitation of the plaintiff's mark, and (2) is chewing tobacco an article of merchandise of similar description as cigarettes or 'Virginia Bird's Eye Tobacco' so as to mislead a purchaser into the belief that the chewing tobacco is also the manufacture of the plaintiff company
34. If the answer to either of these questions is in the negative the appeal must fail. I first proceed to deal with the second question formulated above.
35. It is true that by the English Trade Mark Rules, 1920, 'tobacco, whether manufactured or unmanufactured' has been classified under one class, class 45 but this classification is wholly irrelevant for the decision of the second question noted above. In the first place the rights of industrial property in India are governed by the laws of India and are in no way affected by the laws of England A.J. Von Wulfing v. D.H. Jivandas & Co. 1926 Bom. 200. In the second place the classification of goods by the Trade Mark Rules, 1920, can by no means be an infallible guide for the determination of the question whether or net a particular article is similar to or of the same description as another, though both may have been classified by the Rules of 1920, in the same class. That this is so is put beyond doubt by a reference to the classification of goods by the rules, e.g., in class 2 we find 'chemical substances used for agricultural, horticultural, veterinary and sanitary purposes.' To my mind it is impossible to argue that chemical substances used for agriculture are articles of the same description as chemicals used for veterinary and sanitary purposes, or that a person who registers a trade-mark in England for some chemical substance used for agricultural purposes has the right to prevent the use of the same mark in connexion with chemical substances used for horticultural, veterinary and sanitary purposes. The chemical substance used for one purpose specified in class 2 must necessarily be different from the chemical substance used for other purposes specified in that class. A perusal of the various classes specified in the third schedule of the Trade Mark Rules leads to the same conclusion. It follows that the mere fact that the plaintiff company has secured registration with respect to goods in class 45 is no warrant for holding that it is entitled to restrain the defendant from using its mark to chewing tobacco unless it is found as a fact that chewing tobacco is an article of so similar a description that the goods bearing the defendant's mark may be taken for the manufacture of the plaintiff.
36. In my judgment chewing tobacco is an article of a description totally different from the cigarettes and the smoking tobacco manufactured by the plaintiff company. Cigarettes and tobacco manufactured by the plaintiff are articles that are consumed by smoking whereas chewing tobacco is used mostly for chewing with betels. Mohammad Yakub, plaintiff's witness admitted that:
chewing tobacco manufactured in India and smoking tobacco manufactured by foreign companies materially differ in quality, kind and stuff and one cannot be mistaken for the other.
37. He however added, that if the elephant mark is found on the label of the packets or tins of chewing tobacco the people would conclude that the goods are the manufacture of the plaintiff company as 'they cannot know what is contained inside.' I am not prepared to attach any weight to this portion of the statement of Mohammad Yakub, as no one who goes to buy cigarettes or smoking tobacco purchases a tin of the same without making sure of the fact that the contents of the tin are or are not cigarettes or smoking' tobacco. Similarly, Mr. Grade, another witness for the plaintiff, stated that smoking tobacco manufactured by the plaintiff company differs from the chewing tobacco manufactured by the defendant in quality and appearance. It is evident from the evidence of these witnesses that chewing tobacco and smoking tobacco are different stuffs and that there is great dissimilarity between the appearance and the use of the two. It may be that tobacco leaf is used both for preparing smoking and chewing tobacco, but this does not necessarily lead to the conclusion that one article is of a similar description as the other. Steel is used for the manufacture of needles, pen-knife, surgeon's knife, swords, revolvers, guns, rifles, railway engines, steam boats, etc. Surely it cannot be said that needle or a pen-knife is an article of a similar description as the other articles enumerated above. Again cotton is used for preparation of durries, long cloth, etc., but no one would characterize the two goods as goods of similar description. It follows that the mere fact that the same material has been used for manufacturing two different articles cannot be a warrant for holding that the articles so manufactured are articles of similar description. Much depends on the method and process of manufacture, the nature of the article manufactured, the use for which it is prepared and the class of customers who buy the same. The process of preparing chewing tobacco is essentially different from the process adopted in the preparation of tobacco leaf used in cigarettes and pipes. Chewing tobacco is an article different in nature from smoking tobacco. In India chewing tobacco is of four different kinds:
(1) Surti, (2) Zarda, (3) Qiman and (4) Goli. Even the most over careless purchaser can never mistake either of these species of chewing tobacco with leaf used for smoking. They are so dissimilar from each other that no one can be misled to believe that one is the same stuff as the other. It has already been observed that smoking tobacco and chewing tobacco are used for totally different purposes. The class of customers who buy the two articles is also not the same. I think it is correct to say that chewing tobacco prepared in India is used by Indians alone, whereas the sale of cigarettes and 'Virginia Bird's Eye Tobacco' is not confined only to Indians. Further, chewing tobacco is used by millions of men in villages who use Indian tobacco for smoking purposes and majority of them do not use cigarettes or smoking tobacco prepared in foreign countries. No Indian who purchases chewing tobacco in the market has the remotest idea that the tobacco is the manufacture of a foreign country. It is no doubt a fact that chewing tobacco is also used by few people in England, but the chewing tobacco used in England is not consumed in India. The chewing tobacco sold in the Indian market and used by Indians is the produce of an indigenous trade and it is universally known that it is manufactured in India and by Indian firms alone. But it is contended that the plaintiff company may take to the manufacture of chewing tobacco in India and in that case there would he the risk of chewing tobacco prepared by the defendant being mistaken for chewing tobacco manufactured by the plaintiff. The answer to. this contention is that cases of alleged infringement of trade-marks have to be decided on existing and proved facts and not on hypothetical suppositions of a problematic nature. If the plaintiff company proceeds to manufacture chewing tobacco in India and affixes the elephant labels to packets and tins -of the same, the defendant may very well seek to restrain the plaintiff company from doing go on the ground that so far as chewing tobacco is concerned the defendant has acquired a right of property in elephant trademark. The fact remains that the plaintiff has not upto this day acquired a right of property in Elephant trademark with respect to chewing tobacco. It has been stated above that the test in such cases is whether the defendant by placing the goods in the market is leading the ignorant, illiterate and unwary public into the belief that the goods are the goods of the plaintiff, and in my Judgment chewing tobacco is so materially different from the goods of the plaintiff company that there is not the remotest possibility of one being confused with or mistaken for the other.
38. Before proceeding to deal with the decisions to which reference has been made by the learned Counsel for the parties, I may note that it appears from the judgment of the Court below (p. 36), that it was not argued in that Court on behalf of the plaintiff company that cigarette is an article of the same class as chewing tobacco and the case of the plaintiff company was pressed only as regards 'Virginia Bird's Eye Tobacco.'
39. The decision nearest in point is the case of Hargreave v. Freeman (1891) 3 Ch. D. 39. The plaintiff in that case had registered as his trademark for the whole of class 45, i.e., 'tobacco whether manufactured or unmanufactured', a device consisting of (inter alia) a shield with three crowns, and the word 'Mixture' underneath; since registration the plaintiff used this trade-mark solely on packages containing cut tobacco; subsequently the plaintiff used the shield and three crowns without the word 'Mixture,' a trade term not appropriate to cigars, on boxes of cigars. The defendants, cigar manufacturers, labelled their boxes with a device consisting of a shield and three crowns. On an application for an injunction to restrain this infringement it was held:
that registration of a trade-mark for an entire class, followed by user on one description of goods only, did not give the exclusive right to the use of such trade-mark for all descriptions of goods in that class, and that under the circumstances the plaintiff was not entitled to an injunction.
40. In that case it was observed that:
a man registering a trade-mark for the entire class, and yet only using it for one article in that class,
is not entitled to claim for himself the exclusive right to use it for every article in the class. There is nothing on the record to show with respect to what article of class 45 the predecessor of the plaintiff company had the 'elephant' trade-mark registered in England. It may very well be that the registration was confined only to cigarettes and smoking tobacco. Further the evidence adduced by the plaintiff company falls short of proving that elephant trade-mark has been used by the plaintiff company in connexion with chewing tobacco, and as such, the plaintiff company is not entitled to the injunction prayed for in the present suit.
41. I do not for a moment underrate the importance of industrial and trade security and am alive to the imperative necessity of protecting a dealer, whose goods by the mark that they bear have acquired a particular reputation in the market, for being subjected 'to invasion at the hands of an unscrupulous rival.' But it is of equal importance that a firm or company that has acquired a right of property in a particular trade-mark with respect to particular goods should not be allowed to restrain others from using that mark on goods of a different description and thus jeopardize freedom of trade and stifle the industry of the country. It is to be remembered that in the absence of statutory law on the subject cases of alleged infringement of trademarks have to be decided in India according to justice, equity and good conscience' and I consider it unjust to restrain the defendant from using his mark on goods which have not been manufactured so far by the plaintiff company.
42. I find from the sale-deed printed at p. 49 of the record that Thomas Bear and Sons Ltd., a company incorporated in England, assigned to the Indian company certain trade-marks, etc. in consideration of Rs. 16 lakhs. The English company was competent to do so in view of the provisions of Section 22, Trade Marks Act, 1905, but the right to assign the use of a trade-mark registered under the Act, is confined by that section to the goods for which the trade-mark was registered. The absence of evidence on the point as to with respect to what particular description of goods in class 45 the English company had the elephant trade-mark registered leads me to suspect that the registration was not as regards chewing tobacco.
43. I have given my reasons for holding that chewing tobacco cannot be confused with tobacco leaf used for smoking and there is no risk of deception. The right claimed by the plaintiff company in the present suit to the exclusive use of the elephant trade-mark must, then, be based either on the assignment evidenced by the sale-deed mentioned above, or on the fact that the mark has been used by the plaintiff company on chewing tobacco for such a length of time as to give it a right of property in that mark with respect to chewing tobacco. If the right claimed by the plaintiff company is on the basis of assignment in its favour the short answer to the claim is that, as it is not proved in the present case that the registration secured by Thomas Bear and Sons, Ltd., was also with respect to chewing tobacco, the plaintiff company cannot, by the assignment in its favour, become entitled to the use of the elephant trade-mark with respect to chewing tobacco. If on the other hand the claim of the plaintiff company is based on user, the claim must equally fail as there is no evidence of user of the mark with respect to chewing tobacco by the plaintiff company.
44. The case of Eno v. Dunn (1890) 15 A.C. 252, relied upon by the learned Counsel for the plaintiff-appellant is in my judgment clearly distinguishable. In that case Mr. Dunn applied to register the words 'Dunn's Fruit Salt Baking Powder' as a trade-mark for Baking Powder. Mr. Eno who had for many years used the words 'Fruit Salt' as his trade-mark for a powder used in producing an effervescinc drink, opposed the application. The case gave rise to great conflict of judicial opinion and it was, ultimately held by the majority of the House of Lords that:
upon the evidence the proposed words were a& a matter of fact calculated to deceive the public, that the case therefore fell within Section 73, of the Patents, Designs, Trade-marks Act 1883, and that the trade-mark ought not to be registered.
45. The decision turned on the determination of the question whether the use of the words 'Fruit Salt' which Mr. Eno applied to register were or were not calculated to deceive the public. The question to be decided therefore was essentially a question of fact and the decision on a question of fact in one particular case can never be a guide for the decision of a similar question of fact in another case. It was observed by Lord Watson in that case that:
there would be a supposed connextion between the two articles in the minds of many persons, who would naturally assume that the baking powder had been manufactured with the appellant's fruit salt, and purchase it in that belief; so that a batch of badly made baking powder might seriously injure the credit of the effervescing powder.
46. In the case before me there is no such risk. Howsoever bad the stuff manufactured by the defendant may be, no purchaser of the chewing tobacco can ever by any stretch of imagination conceive for a moment that, simply because the elephant trade-mark is affixed to the packet or tin containing the chewing tobacco, the same has been prepared from the smoking tobacco manufactured by the plaintiff company. As such there is no question of the Elephant trade-mark affixed by the defendant to the tobacco prepared by him of being calculated to deceive the public into the belief that the tobacco has been prepared from the goods manufactured by the plaintiff.
47. It must be remembered that Elephant trade-mark (Hathi marka), is not a mark used solely by the plaintiff company on the goods manufactured or sold by it. It appears on the other hand that the Elephant trade-mark, is used in connexion with various goods such as kerosene oil, buttons, combs, sackings, etc., and the learned Judge of the Court below was right in observing that 'no one can have a monopoly of the symbol of an Elephant.' The symbol of Elephant on goods of merchandise is so common that no customer in the Indian market is likely to particularly associate chewing tobacco with the goods manufactured by the plaintiff company. It is to be noted that the English decisions under the Trade Marks Act, are not a safe guide for the decision of cases in which an injunction is prayed for on the ground of an alleged infringement of the plaintiff's right as to a particular trade-mark. That this is so is put beyond doubt by the following observations of Lords Watson in Eno's case:
These prohibitory clauses cast upon the applicant the duty of satisfying the Comptroller of the Court, that the trade-mark which he proposes to register does not come within their scope. In an inquiry like the present, he does not hold the same position which he would have occupied if he had been defending himself against an action for infringement. There, the onus of showing that his trade-mark was calculated to mislead rests, not on him, but upon the party alleging infringement; here he is in petition, and must justify the registration of his trade-mark by showing affirmatively that it is not calculated to deceive. It appears to me to be a necessary consequence that, in dubio, his application ought to be disallowed.
48. In the suit giving rise to the present appeal the burden of proving that the defendant's trade-mark was calculated to mislead the public was on the plaintiff-appellant and unless the plaintiff company satisfactorily discharged that burden it was not entitled to the reliefs prayed for by it. Similarly the decision in In re Gutta Percha and India Rubber Co. of Toronto (1909) 2 Ch. D. 10, has no application to the present case. In that case the Gutta Percha Company applied to register two trade-marks in class 38
(articles of clothing, such as...boot and shoes....)
the one for
boots and shoes made wholly or partly of India Rubber,
and the other for
India rubber footwear included in this class but not including gaiters or leggings and not including any goods of a like kind to gaiters or leggings.
49. The distinctive part of each mark was a Maltese cross. The Gutta Percha Company carried on business in Canada as manufacturers of all kinds of rubber goods, and the trade-marks were registered in Canada for all their rubber goods. The application was opposed by Leyland Company who had on the register since 1899, in class 40, a mark consisting of a Maltese cross resembling the appellant's proposed mark, for:
goods manufactured from India rubber and gutta-percha not included in other classes but not including dress shields or gussette web's and not including any goods of a like kind to any excluded goods.
50. The Leyland Company did not as a matter of fact manufacture or deal in boots or shoes. The applicant company had done some business in England in goloshes and rubber-soled tennis shoes and sand shoes, but declined to undertake not to sell other rubber goods though they wished to confine the trade-mark in England to boots and shoes. In the words of Cozens Hardy, M. R., the question raised in the case was:
a question of some importance as to the construction and effect of Sections 11 and 19, Trade-Marks Act 1905.
51. It is unnecessary to observe that the decision of the case before me has nothing to do with the construction of those sections. The application of the Gutta Percha Company was refused on two grounds : (1) that the proposed trade-mark of the applicant company might lead to the belief that the boots and shoes made by it were the manufacture of Leyland Company, or it might lead to the belief that the mark indicates the quality of the rubber and that the boots and shoes which are stamped with that mark are made with rubber for the quality of which the Leyland Company are responsible; and, (2) that the applicant company head their invoices with a statement of all the various goods made of rubber sold in America and this was calculated to deceive the public.
52. The second ground assigned by Buckley, L.J., for holding that the marks sought to be registered by the Gutta Percha Company were calculated to deceive has no application to the present case. There is no question of any heading being put on their invoices by the defendant-respondent which may lead to the belief that the chewing tobacco prepared by it is made by the plaintiff company. I have already detailed the reasons for holding that there is not the likelihood of an average purchaser of chewing tobacco harbouring the belief that the tobacco is manufactured by a company which puts in the Indian Market cigarettes and smoking tobacco of a foreign manufacture. Similarly there is no question of any body being misled into the belief that the chewing tobacco made by the defendant is prepared with some stuff for the quality of which the plaintiff company is responsible.
53. Reliance was also placed on behalf of the plaintiff-appellant on the case of Re Turney & Sons Trade-Mark (1894) 10 T.L.R. 175. That case again was a case under the Trade Marks Act. Turney and Sons applied to register, for rum, a trade-mark similar to a trade-mark that another person had registered for beer, and the application was refused on the ground that the trade-mark applied for would cause confusion and deceive the trade and the public into believing that the appellant goods were goods emanating from or in some way connected with the goods of the person who had registered the mark for beer. It was held in that case that:
whether beer and rum are or are not the same description of goods, still, even if they are not, there was such a probability of deception that the Court ought not to say that the mark must be registered.
54. It is to be observed that in cases under the Trade Marks Act, the discretion is vested by the Act, in the comptrollar and Courts to allow or to refuse registration, and an invariable feature of the cases arising under the Act is that, in order to avoid confusion, the English Courts have been universally cautious in allowing registration. Cases of alleged infringement of trade-marks in India however have to be decided on a totally different basis. Unless the plaintiff succeeds in conclusively proving that the mark used by the defendants is calculated to deceive the public, a specific relief by way of an injunction must be refused. Apart from this both rum and beer are alcoholic drinks and the similarity of mark put on both is easily calculated to lead a purchaser to believe that both are manufactured by one and the same firm. There is no such similarity between chewing tobacco and smoking tobacco.
55. The decision in In re The Australian Wine Importers Ltd. (1889) 4 Ch. D. 278, turned on the provisions of particular sections of the Patents, Designs and Trade Marks Act, 1883. In that case one Mason successfully opposed the application of the Australian Wine Importers Company for the registration of a trade-mark consisting of an oblong label, cross which ran a diagonal line bearing the words 'Golden Fleece.' Mason had on the register of trademarks similar trade-marks for spirits. Mason dealt in rum and whisky. The Australian Wine Importers, Ltd. applied to have the trade-mark registered as a trade-mark in respect of wines. The application was refused on the ground that there was a possibility of deception. In my judgment the dissimilarity between spirits and wines is not of such a degree as the dissimilarity between chewing and smoking tobacco. Spirits and wines are both intoxicating drinks and usually, at any rate in India, are, sold by one and the same shop-keeper. On the other. hand more often than not a shopkeeper who deals in cigarettes and smoking tobacco (not Indian smoking tobacco), does not sell chewing tobacco. Cotton, L.J., observed that the spirits and wines 'are goods which are generally sold by the same persons and they are both alcoholic.' In the case of the Australian Wine Importers, Ltd., the difference between cases of registration and action to prevent the use of trade-mark was again emphasized and it was observed that:
If there is possibility of that kind of deception the Comptroller ought...to say that the mark cannot come upon the register. It is not at all the same question as though the spirit merchants were now bringing an action against the applicants to prevent their using the trademark. That is quite a different matter. Probably he might not succeed; it might be said to him 'you shall not have an injunction; the Court will not interfere by its extraordinary jurisdiction in your favour, because you are only using the mark for spirits; but does it follow that, because he could not get an injunction, the other man is entitled to put the trade-mark upon the register? In my opinion it does not follow at all, and I have said so many times. In my opinion the Comptroller ought to exercise his discretion in a wide and comprehensive way : vide pp. 281 & 282 of the report.
56. The observations quoted above fully justify the contention that the cases under the English Trade Marks Act, have no application to cases of infringements of trade-marks arising in India. The words, 'the same description of goods' find a place in the Trade Marks Act, and in cases of registration of trade-marks the English Courts have to construe those words. But in cases of the description giving rise to the present appeal the question for consideration is not whether the defendant's goods are goods 'of the same description' as the plaintiff's, but whether the goods of the defendant and the plaintiff are of so similar a description as to be calculated to lead to deception if sold with identical trade-marks.
57. I now proceed to deal with cases in which injunction restraining the defendant from using a trade-mark similar to the plaintiff's mark was prayed for and granted. In the case of Warwick Tyre Co. Ltd. v. New Motor and General Rubber Co. Ltd. (1910) 1 Ch. D. 248, the plaintiffs who manufactured and sold tyres for cycles and motor cycles under the name of 'Warwick' were held entitled to an injunction restraining the defendant company from selling motor tyres under the name of 'Warwick motor tyres' on the ground that the use of the word 'Warwick' was calculated to lead the public to believe that the defendant's motor tyres were tyres of the plaintiff's manufacture. The case is clearly distinguishable. There is practically no difference between a motor cycle tyre and tyres for motor cars. Both are made of the same material, the process of manufacture is the same, the ultimate shape of both is identical and both are used for the same purpose, viz., to ensure acceleration and smooth running of vehicles. The only difference is that in the case of motor cycles the vehicle consists of 2 or 3 wheels whereas in the case of motor. cars the number of wheels is 4.
58. Further there was no evidence in that case that the word 'Warwick' was used in connexion with any other article of merchandise in the British market. On the other hand, in the case before me, as has already been pointed out, there is evidence to show that the words 'Hathi marka' are associated with numerous articles of merchandise in the Indian market.
59. The case of Eastman Photographic Materials Co. v. John Griffith's Cycle Corporation (1898) 15 R.P.C. 105, has similarly no application to the facts of the case before me. In that case the plaintiff company invented and had for some years used the word 'Kodak' in connexion with their goods, especially for cameras. The company had specialized in cameras suitable for bicycles and the appliances for fixing the same to bicycles and had advertised bicycle 'Kodaks.' The defendant company applied for and obtained registration of the word 'Kodak' as a trade-mark for bicycles and other vehicles included in class 22. The plaintiff company then commenced an action to restrain the defendant from infringing the trade-marks of the plaintiff company and it was held that the word 'Kodak' had become identified with the plaintiffs' goods and as the evidence showed a close connexion between the bicycle and photographic trades the plaintiffs were entitled to an injunction to restrain the defendants from trading under the name 'Kodak Cycle Company, Ltd.' and from selling their goods as 'Kodak.' The plaintiff company in that case had largely advertised 'Bicycle Kodaks,' and therefore the cycle to which the word 'Kodak' was attached could easily be believed to be the manufacture of the plaintiff company. It is unnecessary to emphasize that every case is an authority for the proposition that it actually decides, and the decision of the question whether a particular article is likely to be mistaken for the article manufactured by a particular company must necessarily depend on the similarity or dissimilarity between the two articles, and the facts and circumstances of each particular case.
60. The last case on which reliance has been placed on behalf of the plaintiff-appellant is an unreported decision of the Madras High Court in O.O.C.J.C.S. No. 159 of British American Tobacco Co. (India) Ltd. v. Ismail Saib O.O.C.J.C.S. No. 159 of 1909. In that case an injunction was granted restraining the defendants from selling their beedies bearing the scissors brand imitated from the brand used by the plaintiffs on their Scissors Cigarettes. The learned Judge who decided that case observed that cigarettes and beedies are in many respects closely allied and in some respects different and 'as to their comparative use, it is clear that they are dealt with by the same people.' It is unnecessary for me to say whether or not I am prepared to agree with that decision as in my judgment that decision is of no help in the present case. It is distinguishable on the ground that beedies and cigarettes are articles that are consumed by smoking whereas chewing tobacco is not so consumed. For the reasons given above my answer to the second question formulated above is in the negative.
61. I am also in agreement with the Court below in holding that the trademark used by the defendant is not a colourable imitation of the plaintiff's mark. The only resemblance between the two marks is that both bear the symbol of an Elephant, but, barring this resemblance, there is no other point of similarity between the two marks. The learned Judge of the Court below has noticed in detail the points of dissimilarity between the two marks and it is unnecessary for me to reiterate those points in my judgment. As a number of trade-marks attached to different articles of merchandise sold in the Indian market bear the symbol of Elephant, that symbol, by itself, cannot lead a purchaser of chewing tobacco to believe that the mark, on the packet or the tin of chewing tobacco is necessarily the mark of the plaintiff company. If the trade-mark of the plaintiff company is put side by side with the defendant's trade-mark it is at once apparent that the two marks are different in practically every respect. The colour, the shape, the form, the character in which the words are written, the get up of the label and the design of the two marks are palpably different. In considering the question whether the defendant's mark is a colourable imitation of the plaintiff's mark it is not permissible, in my judgment, to ignore the matters noted above and to take into account the solitary fact that both the marks have the picture of an Elephant printed on them.
62. It is true that in 'passing off' actions and in actions for infringement of trade-marks all that is necessary for the plaintiff to prove is that the mark used by the defendant is likely to deceive purchasers of the class who buy the goods bearing the plaintiff's mark and it is not necessary to prove actual deception. But it cannot be disputed that the best possible proof of the fact, that the defendant's mark is such an imitation of the plaintiff's mark as is calculated to lead to deception, is evidence of the fact that some purchasers of the defendant's goods purchased the same in the belief that it was manufactured by the plaintiff. It appears from the evidence of Prag Narain, defendant, that he has been manufacturing and selling chewing tobacco since 1926. Thousands of persons must have purchased the chewing tobacco of the defendant in Cawnpore, but not one witness has come forward on behalf of the plaintiff to testify to the fact that, by the existence of the Elephant mark on the chewing tobacco sold by the defendant, he was led to believe that the tobacco was the manufacture of the plaintiff company. In considering the question whether or not the defendant's mark is such an imitation of the plaintiff's mark as is likely to deceive an unwary purchaser, I must give due weight to the fact that no evidence of actual deception was adduced by the plaintiff, and this possibly was due to the fact that no one was actually deceived.
63. In my judgment the burden that lay on the plaintiff-appellant was not discharged and the learned Judge of the Court below was right in dismissing the suit. Accordingly I would affirm the decision of the Court below and dismiss this appeal with costs.
64. This is a reference under Clause 27, Letters Patent, of this High Court in an appeal arising from a suit brought by the plaintiff company, Thomas Bear & Sons, Ltd., the appellants for an injunction restraining the defendant-respondent from using the symbol of an Elephant on tins and packets of chewing tobacco sold by him. The plaintiffs also claimed damages amounting to Rs. 100.
65. The plaintiff company are the manufacturers and sellers of cigarettes, and, tobacco known as 'Virginia Bird's Eye,' smoked in pipes of the European style. The packets and tins containing respectively the cigarettes and the tobacco manufactured by the plaintiffs have the picture of an Elephant on them. It is no longer in dispute that the plaintiff company have acquired a right in the trade-mark of Elephant for their cigarettes and tobacco, having used the same for a considerably long time. The defendant has been manufacturing and selling chewing tobacco since 1926. He sells in small packets tobacco manufactured for use with chuna only. That sold by him in tins is meant for use as an addition to 'pan.' Both contain certain ingredients which impart fragrance to the weed. The packets and tins in which the defendant sells his tobacco are quite unlike those in which the plaintiffs sell their articles. The only common feature is that the defendant's packets and tins also have the figure of an Elephant on the label, though its colour and the posture are different in the two. The learned District Judge has noted in detail the difference between the two disigns, and I shall refer to this aspect of the case later.
66. The plaintiffs' case is that the adoption by the defendant of the Elephant trade-mark for chewing tobacco is an invasion of the plaintiff's right in the trade-mark of an Elephant by which their goods are known in the market. The defendant's reply is that the plaintiffs can claim exclusive right to the use of the Elephant trade-mark only for cigarettes and the 'Virginia Bird's Eye Tobacco,' but cannot extend it to other articles and to chewing tobacco. The learned District Judge of Cawnpore accepted the defence and dismissed the plaintiffs' suit. On appeal to this Court the two learned Judges who constituted the Bench hearing the case differed in their conclusions. King, J., who was in favour of decreeing the suit, was of opinion that the plaintiffs' trade-mark extends to chewing tobacco. Iqbal Ahmad, J., agreed with the Additional District Judge in holding that it was restricted to cigarettes and smoking tobacco and did not entitle the plaintiffs to an injunction restraining others from using the Elephant trade-mark for chewing tobacco. The learned Judges formulated two questions for reference to a third Judge. They are as follows:
(1) Does the plaintiffs' right in respect of his elephant trade-mark apply only to cigarettes and smoking tobacco or does it extend also to chewing tobacco? (2) Is the defendant's trade-mark a colourable imitation of the plaintiffs' trade-mark, so that ordinary or unwary customers are likely to mistake the defendant's goods for the goods of the plaintiff
67. It will be seen that the answer to the first question largely depends upon the answer to the second. I propose to consider the latter first. There is no statutory law in India on the subject of trade-marks. Cases of this description have to be decided according to rules of justice, equity and good conscience. English law on the subject may be applied not because it is applicable as such in India, but because it embodies rules of justice, equity and good conscience. Conditions peculiar to this country may however necessitate acceptance of the English law with certain modifications. In England there is now the Trade Marks Act, of 1905, under which trade-marks are registered for specified classes of goods. Though the provisions of that enactment are based on decisions given before the Act was passed, the decisions under the Act should be applied with caution, as they are not infrequently based on the terms of the statute rather than on the broad principles of justice, equity and good conscience, which influenced the decisions before the Act. For this reason I do not propose to discuss cases arising from disputes as to registration of trade-marks.
68. It cannot be denied that no one has the monopoly of using a particular mark or symbol to advertise his goods, so that no other person can use it for advertising his goods which have nothing in common with the former's goods. At the same time, no trader has a right to use a trade-mark so nearly resembling that of another trader as to be calculated to mislead unconscious purchasers, and the use of such trademark may be restrained by injunction, although no purchaser has actually been misled : R. Johnston & Co. v. Archibald Orr. Ewing & Co. (1882) 7 A.C. 219. It was held in the leading case of Reddaway v. Bentham Hemp Spinning Co. (1882) 2 Q.B. 639, that if the use by the defendant upon his goods of unregistered trademark belonging to the plaintiff is calculated to pass off, or cause to be passed off, the defendant's goods as the goods of the plaintiffs, an injunction may be granted to restrain such use, and this whether the use be deliberately fraudulent and intended by the defendant to be deceptive or not : See also Thompson v. Montogomery (1889) 41 Ch. D. 35. At the same time, the exclusive right to use a trade-mark is ordinarily restricted to the class of goods to which it has been attached or applied : see Somerville v. Schemberi (1887) 12 A.C. 453.
69. The underlying principle of these cases obviously is that the defendant should be restrained from deliberately or inadvertently creating an impression in the mind of customers that his goods are those manufactured by the plaintiff. Where there is a likelihood of such impression being created, the defendant is restrained not only from manufacturing precisely the same kind of goods as those manufactured by the plaintiff, but also goods having some affinity with the plaintiff's goods. The case of Eno v. Dunn (1890) 15 A.C. 252, seems to be an extreme case illustrating the above rule. I am not inclined to treat that case as a clear authority for the question involved in the present case, partly, because it arose under the Registration Act, and the question was whether Dunn should be allowed to register the name of his baking powder as 'Dunn's Fruit Salt Baking Powder,' to which Eno objected on the ground that the words 'Fruit Salt' had become associated with his well-known medicine and was likely to lead the customers to believe that Dunn's baking powder was manufactured by Eno. Another reason which detracts from the authority of that case is that there were sharp differences of opinion among eminent Judges who had the occasion to consider it. The trial Judge, Key, J., decided in favour of the plaintiff Eno. His decision was reversed by the Court of appeal, whose decision was reversed by the House of Lords by a majority of three to two, while a good deal can be said in favour of the view taken by the minority, the. decision of the majority is based on the consideration that the words 'Fruit Salt' may lead the unwary customers to believe that Eno has extended his business for the manufacture of baking powder, the common ingredient of his medicine and baking powder being supposed to be the fruit salt. The decision is based on peculiar circumstances of that case and cannot be a useful guide in determining the question arising in this case, namely, whether the defendant's chewing tobacco and the plaintiff's smoking tobacco will become so far identified in the public mind from the use of a common symbol as to lead the unwary to believe that both are manufactured by the plaintiffs.
70. The case of Warwick Tyre Co. Ltd. v. New Motor and General Rubber Co. Ltd. (1910) 1 Ch. D. 248, was one in which the plaintiffs, who are manufacturers and sellers of tyres for cycles and motor-cycles under the name of 'Warwick' sued the defendants for injunction. The defendants were the manufacturers and sellers of tyres for motor cars, and began to sell them under the name of 'Warwick Motor Tyres.' The plaintiffs' suit was successful. Eastman Photographic Materials Co. v. John Griffith's Cycle Corporation (1898) 15 R.P.C. 105, is another case in which, though the defendant manufactured a different article, he was restrained from using the name which had become associated with the plaintiff's goods. The plaintiff manufactured cameras suitable for use by cyclists, who could affix them to bicycles. They were called 'Bicycle Kodaks.' The defendant, who manufactured bicycles called them 'Kodaks;' he was restrained from using that word to advertise his bicycles.
71. The defendant in the present case strongly relies on the case of Hargreave v. Freeman (1891) 3 Ch. D. 39. It seems to me that this case is of no assistance to us, as it turned upon the provisions of a particular enactment in force in England. After noting the facts of the case Chitty, J., observed:
Upon these facts it is argued for the defendants that although the plaintiffs have registered their trade-mark for the whole of class 45, yet, by force of the terms of the trade-mark itself, it is confined to part only of the goods within the class, and therefore the registration must be restricted to such goods only.
72. The facts were that the plaintiffs registered their trade-mark for the whole of class 45, i.e., tobacco, whether manufactured or unmanufactured, a device consisting of, inter alia a shield with three crowns, and the word 'Mixture' noted underneath. The defendants, cigar manufacturers, labelled their boxes with a device consisting of a shield and three crowns, omitting the word 'Mixture,' which was, of course, not appropriate to their goods. It was held that the registration of a trade-mark for an entire class, followed by user on one description of goods only, did not give the exclusive right to the use of such trade-mark for all descriptions of goods in that class, and that under the circumstances the plaintiffs were not entitled to an injunction. The ratio decidendi of that case appears from the following passage:
In fact the plaintiffs' case appears to resolve itself into this : they are or claim to be the proprietors of two trade-marks; one for cut tobacco or mixture, which they have registered, the other for cigars, which has not been registered, and registration of which has not been refused : they are really attempting to sue on the latter; which they cannot do by reason of the Act of Parliament.
73. The decision seems to be based on some provisions in the 'Act of Parliament.' The plaintiffs rely on an unreported decision of the Madras High Court in British American Tobacco Co. (India) Ltd. v. Ismail Saib O.O.C.J.C.S. No. 159 of 1909. In that case the plaintiffs, the manufacturers of cigarettes, sold in packets bearing the mark of Scissors, sued the defendants, who manufactured and sold 'beedies' in packets also marked with the figure of scissors, for injunction. In spite of cigarettes and 'beedies' being somewhat different, they were considered to be species of the same genus. Wallis, J., held, on a review of a number of English decisions and the circumstances of the particular case, that the common mark of scissors was likely to lead the customers to believe that the plaintiff company had taken to the manufacture of 'beedies' also. The damage, which the plaintiffs sustained did not lie in the fact that their customers would be attracted by the defendants, but in the fact that the the inferiority of the defendants' goods might adversely affect the reputation of the plaintiffs. In my opinion that case is of little assistance in arriving at a conclusion in the present case. Manufacturers of cigarettes may well be considered to have extended their business to the manufacture of 'beedies,' and the similarity of trade-mark is likely to create an impression on the minds of the customers that the manufacturers of both are the same. That consideration is not however applicable in this case for reasons which will be presently stated.
74. As regards the adverse effect on the plaintiffs' reputation, I do not think there is any risk to the plaintiffs if the unwary customers believe that the defendant's tobacco is manufactured by the plaintiffs. On the contrary, Orthodox Hindu customers are more likely than not to be deterred from purchasing the defendant's tobacco, if they suspect the same to have been prepared by the plaintiffs, who are well known European manufacturers of tobacco, as, in the preparation of chewing tobacco sold by the defendant other ingredients, including liquid substances, are used. It seems to me that in deciding to adopt the figure of an Elephant as his trade-mark the defendant was not prompted by any desire to imitate the plaintiffs' mark. For some reason or other the symbol of an Elephant has become a great favourite in trade circles. It is employed by manufacturers of a number of articles having nothing in common. Dealers in kerosene oil, buttons, combs, sackings, papers &c.;, employ the figure of an Elephant to advertise their goods. It is prominently shown on the labels embossed or attached to the cases containing these goods.
75. The rule deducible from the foregoing cases appears to be that the plaintiffs, whose goods have acquired a reputation in the market through a trade mark or name with which their goods have become associated, have a right to restrain the defendant from using a trade-mark or name which is identical with or similar to that of the plaintiffs, and such right extends not only to the particular goods sold by the plaintiffs, but also to cognate classes of goods, provided the cumulative effect of the similarity of the mark, the commercial connexion between the plaintiffs' goods and those of the defendant and surrounding circumstances is such as to lead the unwary customers to mistake the defendant's goods for those of the plaintiffs. The raw material with which the articles in question are prepared, any affinity in the process employed in manufacturing them, the fact that the production of one can result from a slight extension of the business of the other, the habits and notions of the customers of the two, and the uses made of the article afford indicia of more or less cogency for determining whether the customers of the defendant's goods are likely to mistake them for those of the plaintiffs. Direct evidence establishing the fact that such impression was created in the past in the minds of certain persons is also of value. The inference to be drawn from all the circumstances should not be speculative, but probable. The difficulty of a case like this arises mainly from the fact that the Court has to record a finding not in respect of what has happened, but in respect of what is likely to happen.
76. Another important factor is that the class of persons, whose mentality is to be considered is that of 'unwary customers.' It seems to me that the standard to be borne in mind is neither that of a person who is devoid of all sense of discrimination, nor of persons who are very careful observers of things around them. It is that of an average man exercising ordinary caution. This seems to be the view taken in Swadeshi Mills Co. Ltd. v. Juggi Lal Kamalpat Cotton Spinning and Weaving Co. 1927 All 81, at p. 990, in which it was observed that:
The defendant's trade-mark is certainly not the same as that used by the appellants. But is it only colourably different? I think it is so different as to make it impossible to say that it is substantially the same. No general rule can be laid down as to what is or is not a mere colourable variation. All which can be done is to ascertain in every case as it occurs whether there is such a resemblance as to deceive a purchaser using ordinary caution.
77. The question in each case is one of inference from facts. Two cases are seldom exactly parallel, and therefore decided cases are of little value in determining the question whether the goods manufactured by the defendant are likely to be mistaken for those of the plaintiff. It will be found that the decision in each case was influenced by one or more of the circumstances to which I have referred. I would examine the circumstances of the present case and apply those criteria in answering the main question on which its decision hinges.
78. The District Judge has given a comparative description of the labels on the packets and tins in which the plaintiffs and the defendant sell their articles. It appears that they differ in all details. The only thing which is common is the picture of an Elephant. Even as regards this feature, it is pointed out that the position of the trunk and the colour are different. As against this, it is said that the defendant's goods are likely to be known as 'Elephant mark' tobacco, a description which may, in certain minds, confuse it with the plaintiffs' goods, which have become associated with that mark, and may lead the public to think that the plaintiffs have taken to manufacturing chewing tobacco. The possibility of such a mistake should be weighed against contrary influences derivable from other circumstances.
79. In considering whether the defendant's tobacco is likely to be mistaken for the plaintiffs' manufacture the important point to consider is the peculiar character of the chewing tobacco sold by the defendant. Mr. Gracie, one of the witnesses for the plaintiffs, tells us that chewing tobacco is used in England and America and is not peculiar to India, and that chewing tobacco is imported in this country by the Imperial Tobacco Company. This may be correct; but it should be borne in mind that the defendant's tobacco sold in tins is used only as an addition to 'pan' and is prepared with spices. Such tobacco is not probably used in that manner anywhere outside India. Similarly, the defendant's tobacco, sold in packets, is meant for use with chunam and not with 'pan.' This use again is peculiar to this country. The tobacco which is used by the plaintiffs in manufacturing cigarettes or the 'Virginia Bird's Eye' smoked in pipes of the European style cannot be used in India for chewing purposes, and whether the plaintiffs manufacture them in India or import them from Europe, the popular belief is that they are of foreign make, besides being totally unlike the tobacco which is chewed in this country. Some consumers of the defendant's brand of chewing tobacco may be surprised if they are told that it is manufactured by the plaintiffs, who have specialised in cigarettes and 'Virginia Bird's Eye Tobacco.' Judging from the character of the two substances, it is not likely that the kind of tobacco which the defendant sells will be considered to be a by - product of the plaintiffs' concern or that the plaintiffs have any special facility in manufacturing that brand so as to induce the belief that the plaintiffs have taken to manufacturing the kind of tobacco sold by the defendant. On the contrary, the uses made of them are calculated to create the opposite belief. I put it to the learned advocate for the plaintiffs to mention any instance of the manufacturers of cigarettes being also the manufacturers of tobacco chewed as an addition to pan or with chunam. He could not mention any, and it can be confidently asserted that there is none. The combination is so unusual as to counteract the effect that might be produced by the mark of an Elephant which is the common feature of both.
80. Of the defendant's customers those who can read Urdu or Hindi cannot be deceived in respect of the tins containing the defendant's tobacco intended for use with 'pan,' as the name of the manufacturers, Rama and Company, is clearly noted in Urdu and Hindi. The packet in which the other kind of tobacco is sold by the defendant is described by the learned Judge as 'crude' perhaps implying that it is a mere paper wrapper and not regular card-board cases like those containing cigarettes. The packets have noted on them in Hindi that the content thereof is Bisma tobacco. The name of Rama and Company, is also, mentioned. Persons who generally use this kind of tobacco are drawn from better class of villagers and men of the same position residing in towns. They are moistly Hindus, and probably for this reason the inscription on the packets is only in Hindi. Biswan is a town in the Sitapur District and is noted for its tobacco. The reference to Biswan is intended to be a recommendation for the stuff. Any one who can read Hindi can at once find out the brand and the name of the manufacturer.
81. The defendant had been selling tobacco for three years before the suit was instituted. Hundreds, possibly thousands, of persons must have purchased the defendant's tobacco during that time. The plaintiffs did not examine any of them to prove that he was misled into the belief that the defendant's tobacco was manufactured by the plaintiffs, ff instances of this kind had been established by reliable evidence, they would have gone a long way in proving the plaintiffs' case. The absence of this class of evidence shows that no such instances have ever occurred. The learned advocate for the plaintiffs explains that, as soon as the plaintiffs came to know of the invasion of their trade-mark by the defendant, they instituted the suit. Even if this was so, there was plenty of time for the plaintiffs to investigate and find out the names of persons who could give evidence in their favour. They examined some witnesses, but none on this point. They had competent legal advice, and it is not unreasonable to presume that their failure to produce this class of evidence was due to the fact that none existed.
82. Taking all the circumstances into account and making allowance for the fact that the symbol of Elephant is a common feature of the tins and packets of chewing tobacco sold by the defendant and those of cigarettes and 'Virginia Bird's Eye Tobacco' sold by the plaintiff, I am led to the conclusion that, while it is not impossible for some ignorant and particularly discriminating persons to mistake the defendant's goods for those of the plaintiffs, persons exercising ordinary caution are not likely to assume that the tobacco sold by the defendant was manufactured by the plaintiffs. Accordingly I answer the second question in the negative. The answer to the first question should follow that to the second, and I answer the first question also in the negative.