P.K. Tare, J.
1. This order shall also govern the disposal of Misc. (First) Appeal No. 146 of i960 (Firm Lal Mohammad, a registered firm through partners v. Mohanlal Harprasad a registered firm through partners).
2. The present appeal is by the plaintiff against the order, dated, 9-8-1960, passed by Shri S. M. Pagnis, District Judge, Hoshangabad in Civil Suit No. 7-A of 1959, granting, a temporary injunction to the plaintiff under Order 39 Rule 2 of the Civil Procedure Code on certain terms. The plaintiff in the present appeal questions the imposition of the terms. The term imposed was that the plaintiff should undertake and bind itself in writing that in case it fails in the suit, it will pay to the defendant for each of the two labels E and G, one-twelfth of the total net profits learned by it in its bidi business during the continuance of this injunction and for this purpose, the plaintiff was. directed to keep regular, complete and correct accounts of its business.
3. The connected appeal, namely, Misc. (First) Appeal No. 146 of 1960 is filed by the defendant against the same order of the District Judge. The defendant impugns, the order relating to grant of a temporary injunction,
4. The plaintiff-appellant has a registered trade-mark, which is marked as Exh. A and Exh. B in the documents filed by the plaintiff. The wrapping covers are kept in a separate envelope. The plaintiff's trade-mark consists of oblong square with the background of green colour. At the top is. printed the name of the plaintiff-firm, namely, Mohanlal Harprasad and Company, Sihora Road. At the bottom the same thing is printed in Hindi. In the middle there is a circle within which is printed the picture of a cow in saffron colour with a green background showing the earth, and white and blue background showing the sky. On the four corners of the circle are printed the words in English and Hindi Bidl No. 7. On the left of the circle are printed words 'G. Jabalpur', while on the right are printed Urdu words. Wrapper of the Bidis is a plain white Jhilli paper and on it is stuck up an oblong piece of paper with white, blue and red colour showing the name of the founder, namely, Lalchand Agrawal and the name of the firm, namely, Mohanlal Harprasad, Sihora Road, District Jabalpur.
5. The plaintiff filed the present suit, alleging that the defendant-firm had infringed its registered trade-mark by putting in the market similar labels. Therefore, the plaintiff's suit was mainly based on the allegation of infringement of a registered trade-mark. The plaintiff's case, at appears, was not based on any passing off action, nor is lit the plaintiff-appellant's case that the defendant-firm tried to pass off its goods as the goods of the plaintiff-appellant,
6. It would, therefore, be necessary to examine the particulars of the labels E and G of the defendant-respondent-firm, regarding which the learned District Judge has granted a temporary injunction on certain terms.
7. The label E of the defendant-respondent consists of a red border similar to the label of the appellant. It has a green background. On the top, are printed the words Lal Mohammad Jan Mohamad Harda.' The same words are printed at the bottom in Hindi. Instead of a circle there is an enclosure of a heart-shape, wherein is shown a cow with green background for the earth and dark blue background for the sky. The cow in the appellant's label (Exh. A and Exh. B) is shown a little side-wards and her head towards the right side of the person seeing the same. In the defendant's labels Exh. E and Exh. G, the cow faces towards the left of the person seeing the label. Upon a perusal of the two labels side by side, the only similarity between the two appears to be that they consist of yellow, red, green and blue background and there is a cow shown in both the labels. Besides these facts, the two labels do not appear to bear any similarity. Upon a visual impression they appear to be quite dissimilar. Similarly, the label G of the defendant-respondent is further distinctive, inasmuch as, it bears a photograph of the founder in a circle above the cow with a blue background. It is true that a visual test by keeping the labels side by side is not the real cost, as has been laid down in the cases, which I shall presently refer to. But, it is only for the purpose of ascertaining the fact or the points of similarity between the two that I have elected to describe them in details. Besides, the wrapper of the defendant's labels consist of a Jhilli paper on which there are squares of green or red. The wrapper of the defendant-firm does not bear any similarity whatsoever to the wrapper of the plaintiff-firm. In fact, they are distinctive and they can easily be identified by a mere perusal, not by comparing the two side by side, but by perusing them one at a time on different occasions. To conclude, it is clear that as regards the labels, the only similarity may be in selection of the colours and the picture of a cow. There is no similarity in the labels. On this material, we have to decide whether the grant of a temporary injunction to the plaintiff-appellant on certain terms was justified.
8. Before discussing the instant question, it would be necessary to state certain other facts. The appellant carries on its business in the States of Madhya Pradesh, Uttar Pradesh, Bihar and West Bengal. Its total business has been near about 4 lacs in the years 1954-55, 1956-57 and 1957-58. In the years 1955-56 and 1958-59, it was near about 3 lacs and a half. These total sales obviously relate to the area covered by the four States of Madhya Pradesh, Uttar Pradesh, Bihar and West Bengal.
9. The defendant-respondent's business is mainly confined to the three districts of Madhya Pradesh, namely Hoshangabad, East Nimar and Dewas. Its business runs to the extent of a little over 2 lacs, as is shown by the schedule filed with the written statement relating to the years 1954-55, 1955-56, 1956-57 and 1957-58. it is also the defendant's allegation that the plaintiff's bidis have no appreciable sales in those districts where the defendant's bidis are in vogue.
10. So far as the law on the point is concerned, theprinciples for grant of an injunction were indicated byHidayatullah, C. J. (as he then was) in Beniprasad Agarwal v.Hindustan Lever Ltd., Bombay, 1957 MP LJ 676 : (AIR1958 MP 348), in the following words:
'Their Lordships of the Privy Council in many cases have laid down the tests which have to be applied in such matters. In Malayan Tobacco Distributors Ltd. v. United Kingdom Tobacco Co. Ltd., AIR 1934 PC 167 and Thomas Bear and Sons (India) Ltd. v. Prayag Narain, AIR 1940 PC 86, we get a discussion of how the matter is to be approached. Their Lordships have laid down that comparison side by side of the two labels is not an appropriate method of discovering whether an unwary purchaser would be deceived or not. The reason given by their Lordships is that the purchaser never compares the two labels together side by side, and therefore, the comparison in Court is not correct. It has also been laid down by their Lordships that mere similarity or dissimilarity is not to be noticed, but an overall view of the impugned label must be taken by the Court so as to find out whether it is so designed in its get up, in its lettering and in its colours as to deceive an unwary purchaser. For the purposes of this case which is before me, namely, the grant of temporary injunction, I have taken the precaution to keep within the four corners of their Lordships' precepts, and I have looked at the labels from that point of view only. In thing so I have come to the conclusion that prima facie the label which has been put on the market is one which is likely to deceive an unwary purchaser into accepting goods of the defendant firm instead of those of the plaintiff Company. I do not say that there is an attempted passing off, because that would be a matter for decision in the case if the plea were raised. What I have to find out is whether there is an infringement of the trade mark of the plaintiff-Company sufficient to warrant me to hold that some temporary action has to be taken to safeguard an irreparable injury to the plaintiff-Company. The learned Judge in the Court below has considered the matter also from the same angle, and I Sind no misdirection in his order. I have reached precisely the same conclusions on viewing the impugned label vis-a-vis the label of the plaintiff-Company; and I think that there is a likelihood of confusion in the mind of a purchaser, particularly an unlettered and ignorant villager, who wants to purchase a particular soap, being indifferent as to what the lettering on the label is. He is likely to think that the Swanwhite soap is the same as the Sunlight soap, and he is not likely to find that it is not of the same type. I think that 'in this case there is a likelihood of injury to the plaintiff-Company by reason of the sale of this imitation article, and therefore it is necessary to prevent the mischief.'
11. The view propounded by Hidayatullah, C.J., was based on the principle laid down by their Lordships of the ' Privy Council in AIR 1934 PC 167, wherein their Lordships made the following observations:
'Their Lordships are therefore of opinion that the finding of fraud cannot stand and that as that finding was the basis of the finding as to the possibility of confusion, it is proper for their Lordships themselves to examine and consider the later question notwithstanding that there are concurrent findings below. Now it must be borne in mind (1) that the action is in substance a quia timet action, as Burton, J. recognised and that in the absence of evidence of actual confusion a strong case must be made to justify a conclusion that confusion will result from what the appellants are doing; and (2) that the market where alone confusion is alleged to be possible is the market whers the consumer buys.
The consumer cannot read English though he may recognise English numerals. He is admittedly quick torecognize differences in any article offered him from the article which he has been accustomed to buy. In the present case the two articles are different in size and colour and the appellants' cigarette has on it no numeral nor any thing which the Asiatic can read. Assume that the Asiatic sometimes asks in his own language for the respondents' cigarettes as two one or twenty-one, why should he use the same term for the appellants' cigarettes?'
further on, their Lordships observed as follows:
'Giving the best consideration which they can to the materials before them their Lordships reach the conclusion that the respondents have not made out that the use by the appellants of their device is calculated to deceive in the consumers' market. Their Lordships desire to call attention to the fact that even if the injunction could stand it should not have been granted in its present absolute form but should have been qualified by the addition of some such words as, without clearly distinguishing the goods of the defendants from the goods of the plaintiffs'. Having regard to the conclusions which their Lordships have reached they think that the appeal should be allowed and the orders below should be discharged, and that the action should be dismissed, the appellants having their costs here and below.'
12. In AIR 1940 PC 85, their Lordships of the Privy Council laid down the following tests:
'It seems desirable to state the views of their Lordships on some of the topics of criticism of the views of the learned Judges which were urged on behalf of the appellants. Their Lordships think that the test of comparison of the marks side by side is not a sound one, since a purchaser will seldom have the two marks actually before him when he makes his purchase; and marks with many differences may yet have an element of similarity which will cause deception, more especially if the goods are in practice asked for by a name which denotes the mark or the device on it. This has been settled in England since the case in Seixo v. Provenzende, (1866) 1 Ch A 192, where there will be found some remarks by Lord Cranworth, L. C. very relevant to this matter. He also pointed out (at page 197) that the adoption by a rival trader of a mark which would cause his goods to bear the same name in the market, may be as much a violation of the rights of the first owner as the actual copy of his device. This same view was taken in Johnston v. Orr Ewing, 1882-7 AC 219 at pp. 225 and 226, a case relating to the use of two elephants on tickets placed upon goods for sale In India. (See as to the effect of the differences between the tickets the remarks of Selborne, L. C. at p. 224 et seq.) Further, it is not an- answer to the claim of a Trader who has established, as the appellants have cone in the present case, the right to a trade mark (e.g. a device or a fancy word) to say that, apart from the device or the word, the labels or containers of the rival trade are very different from those of the trade mark owner. It may be observed that, if it were so, such a trade mark would be of little value, for its use by several traders would soon result in its becoming common to the trade: see Wotherspoon v. Currie, (1872) 5 HL 508 and 1882-7 AC 219. In the present case there may well have been persons who knew of the reputation of the appellants' 'elephant mark' goods, but were illiterate or did not know or did not remember the particular get-up of their goods, and again the differences of labels and get-up might have been supposed to have been made by the appellants themselves in putting a different or cheaper article upon the market. Their Lordships however are not to be understood as saying that the differences in get-up are immaterial; for they must inevitably form an element in considering the question of probability of deception by the use of the mark.'
13. Therefore, according to the principles laid down by their Lordships of the Privy Council, it would be necessary to see in each case whether the defendant has different mark or labels, which bear any similarity to the registered trade mark and which are likely to deceive an unwary purchaser. Their Lordships also have laid down that a comparison side by side would not be the real test. But, it is the general similarity that would be material, which may result in decention.
14. Further on, in Subbiah Nadar v. E. P. Kumaraval Nadar, AIR 1946 PC 109, their Lordships of the Privy Council laid down as follows :
'The learned Judge also raised an issue as to whether registration of the plaintiff's said trade marks entitled them to prevent the user by the defendants of the features and devices surrounding the portraits of the plaintiff ana he answered that issue in the affirmative. In their Lordships view, this issue raised a purely hypothetical question which the learned Judge ought not to have raised or attempted to answer. The question of infringement must be answered in relation to the plaintiff's trade marks as a whole, and not to particular parts of them. There is no evidence that the defendants have made use of a mark containing the features surrounding the plaintiff's portrait either without any portrait, or with a portrait in no way resembling that of the plaintiff, and the question whether such a mark if and when adopted by the defendants will involve infringement of the plaintiff's marks does not arise.'
Therefore, it is clear that the plaintiff has certainly a vested right in the registered trade mark, which means the general features of the trade mark. He cannot claim that he has a vested right in any particular aspect of the trade mark. As for instance, he cannot 'say that no other person shall use the picture of a cow in his labels. Similarly, he has no vested interest in the choice of colours, although it is true he would certainly have a vested interest in the general get up of the trade mark and any attempt to copy the same or to put any similar labels, which are likely to create confusion can be resisted by him by way of a suit for injunction. But, the confusion is to be on the general get up and not any particular aspect of the trade mark.
15. In Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142, their Lordships of theSupreme Court laid down the following principles regarding infringement of trade marks.
'We may also refer to In re, Harrods Application, 1934-52 RPC 65, mentioned in the quotation from Beck, Roller and Co.'s case, (In re, an application by Beck, Koller and Co., Ltd., (England)), (1947) 64 RPC 76, set out in the preceding paragraph. It was there said at p. 70:
'Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade-marks, that, whether those two marks contain a common element which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used.'
The series of marks containing the common element or elements therefore only assist the applicant when these narks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p. 507 and Willesden Varnish Co. Ltd. v. Young and Marten Ltd., 1922-39 RPC 285. It also appears that the appellant itself stated in one of the affidavits used tin its behalf that there were biscuits in the market bearing the marks 'Glucose Biscuits', 'Gluco biscuits' and 'Glucoa Lactine biscuits'. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks having 'Gluco' or 'Vita' as a prefix or a suffix.'
In that particular case, the two goods were different in the market under the name of 'Glucovita' and 'Gluvita'. Their Lordships of the Supreme Court laid down that such a similarity in commonly used names was not likely to create a confusion amongst consumers.
16. So far as this Court is concerned, Shiv Dayal, J. had to consider the question of grant of a temporary injunction in relation to a trade mark in Abdullahkhan Sahebkhan v. Mohammad Ismall, 1959 MPLJ 544, wherein he observed as follows:
'In Read Bros v. Richardson and Co., (1881) 45 LT 54, on the defendants undertaking to keep an account, Jessel, M.R., refused an interlocutory injunction, but the Court of Appeal granted it because, while the defendants had only recently commenced to use their mark, and their trade mark was admittedly not dependent on it, the plaintiffs had a large trade in connection with which they used a label alleged to be infringed, and their rights would have been irremediably and incalculably injured unless the injunction were granted, if their case should be established at the trial.
In a similar case and in similar circumstances, the Mysore High Court issued an injunction in appeal setting aside the order passed by the first Court. Recalling the principles on which injunctions are issued and ad interim reliefs are granted, it has been observed in that case that in cases of passing off actions, it is not necessary that there must be an element of fraud exercised or likely to be exercised by one party against another to justify issue of an injunction. It has been further held that its issue is governed by the balance of convenience as between granting or refusing such an ad interim relief, that is, on consideration as to the comparative mischief or inconvenience which might arise from granting or withholding such an interlocutory injunction. Mangalore Ganesh Beedi Works, Mysore v. Free India Beedi Works, Bangalore City, AIR 1951 Mysore 29.
Relying on a number of decisions, it has been stated in Venkateswaran's book on Trade Marks Act, page 456, that where the plaintiff's trade is considerable and the defendant's business has just commenced, or is small and negligible, an interlocutory injunction will ordinarily be granted.'
17. In Radhakishan Naraindas v. Trilokchand Chhabilal, AIR 1959 MP 21, a Division Bench consisting of Hidayatullah, C. J. (as he then was) and Naik, J. had to consider the question as to what evidence would be sufficient to warrant the grant of an injunction. The learned Judges laid down that it would be the actual user the proof of which would be necessary. The mere fact that a declaration might have been made by a party before a Justice of the Peace would not by itself be sufficient to warrant the issuance of an injunction. The question of an injunction will usually be dependent on a likelihood of a confusion being created and the same being necessary in order to prevent irreparable injury. Therefore, it is necessary to examine whether the grant of an injunction in the present case was justiiied.
18. The learned counsel for the plaintiff-appellant urgeo that the appellant's registered trade mark is known as Gai Chhap in the market and if the respondent is also permitted to put in the market bidi under that distinctive mark, confusion was likely to be created. In this connection, I might observe that there is practically no similarity or negligible similarity between the two bidi bundles of the appellant and the respondent. The only similarity that might be there is in the picture of a cow and the use of four colours. That by itself is not likely to cause any confusion because of the distinctive wrappers. Moreover, there is no proof that the respondent has tried to pass off goods, or that he has put in the market labels, which are likely to create confusion. In fact, the appellant has practically no sales in the three districts of Hoshangabad, East Nimar and Dewas, while the respondent's business is centered in those three districts. The respondent has his business in those districts to the extent of a little over two lacs, while the appellant's business to the extent of about 4 lacs is spread over in four different States. This is also one of the reasons why there is no likelihood of any confusion being created or any attempt at passing off succeeding on account of the mere fact that the respondent has put in the market a label which also has the picture of a cow.
19. It is also an record that the respondent has not put in the market new labels recently. In fact, the respondent has been using them since the years 1936-37. That is much before the registration of the appellant's trade mark in the year 1944 after the enactment of the Trade Marks Act, 1940. Before that the respondent was using rubber stamp labels marked as Ex. H. But, there can be no doubt that the labels (Ex. E and Ex. G) have been in the market for the last 24 years and the respondent has built up its business on the reputation of that particular trade mark, although it may not have been registered. But, there is no attempt at causing confusion or at passing off the respondent's goods for the appellant's goods. Applying the tests laid down by their Lordships of the Privy Council, as also by their Lordships of the Supreme Court, and of the learned Judges of this Court in the cases mentioned above, I am of opinion that the grant of a temporary injunction in the present case by the learned trial Judge was not in accordance with law, nor in consonance with judicial principles. By the grant of a temporary injunction, the respondent is likely to be prejudiced and the injury caused to him would be irreparable, which may not be off-set by a pecuniary compensation. On the other hand, the injunction, if granted, is not going to help the appellant in any way, as the appellant's sphere of business is different from the sphere of business of the respondent. As already indicated earlier, the respondent's business is centered in three districts of Madhya Pradesh, where the appellant has practically no sales. It is for this reason as well that I am of opinion that the grant of an injunction would be improper, as it Would not be necessary in order to prevent any irreparable injury to the appellant, but on the other hand, it will definitely cause irreparable injury to the respondent, which cannot be off-set by a pecuniary compensation. To conclude, I am of opinion that the action of the -learned District Judge in granting a temporary injunction on certain terms was not proper, nor for the balance of convenience of the parties, Therefore, I am of opinion that it is liable to be vacated.
20. As a result of the discussion aforesaid, the present appeal, namely Misc. (First) Appeal No. 139 of 1960 fails and is dismissed with costs of both the Courts, while the connected appeal, namely, Misc. (First) Appeal No. 146 of 1960 succeeds and is allowed with costs of both the courts. Counsel's fee in each case Rs. 100/- if certified'.