Prithvi Raj, J.
(1) This is plaintiff's application under Order 39 Rules 1 and 2 and S. 151, Civil Procedure Code ., for grant of temporary injunction against defendants from using the offending trading style Duke Enterprises and the trade mark Duke in respect of insulated automobile cables and other automobile parts.
(2) The plaintiffs are a private limited company manufacturing and marketing automobile parts under the trade mark 'Duke'. They are stated to be registered proprietors of (Details of registration of oil Seal and rubber bushes is then given).
(3) According to them, they have been continuously for the last nine years prior to the filing of the suit, manufacturing, selling and offering for sale automobile parts of various kinds and types under the trade mark DUKE. They allege that their sale of such automobile parts was 10 to 11 lakhs of rupees per year and that for the last nine years their safe had been about 55 lakhs of rupees They had effected sale of their Duke brand automobile parts throughout India and in foreign countries. The buyers of their Duke brand automobile parts include State Transport Services in the country and defense Department of Government of India, besides many manufacturers of automobiles and manufacturers of industrial engines use Duke automobile parts as original equipment in their respective product. Their trade mark Duke, it is alleged, is very well advertised by various media, i.e. distribution of calendars, plastic goods including the figure of Goddess Lakshmi in golden and silver colours and that they had during the last nine years incurred approximately Rupees two lakhs on advertisements. The plaintiffs contend that on account of long, continuous and extensive use of the trade mark Duke, their goods affixed with the said trade mark are very well known and are associated in the minds of the public throughout the country with the goods of the plaintiffs. They claim to have built a handsome goodwill, name and reputation in respect of their trade mark DUKE. The purchasers and the intending purchasers of the automobile parts, they aver include illiterate drivers, mechanics and cleaners who recognise the plaintiffs' goods by their trade mark DUKE.
(4) In the end of January, 1974, it came to their notice that defendant No. 1 whose proprietor is defendant No. 2 started selling P.V.C. insulated automobile cables under the trade mark DUKE. The defendants are alleged to have deliberately adopted the trading styles 'DUKE ENTERPRISES' and the trade mark 'DUKE' in respect of automobile cables in order to create confusion in the market and to give impression to the trade and the public that Duke Enterprises is an organisation, a branch, an enterprise, a subsidiary or a unit of the plaintiffs and automobile cables were another product from the plaintiffs. The defendants accordingly are alleged to have selected their trading styles and trade mark in respect of automobile cables with a view to pass off their business and goods as the business and goods of the plaintiffs and thereby earn undue profits. Further, the defendants have on their letter-head printed an exactly similar device of Lakshmi and the word Duke in red bold print which also convey an impression in the minds of the trade and the public that defendant No. 1 has some association with the plaintiffs and their predecessors in title. The plaintiffs aver that they have intentions to extend their business in recent future particularly by manufacturing insulated automobile cables. The plaintiffs further aver that their goods under the trade mark Duke and the defendants' goods are being sold through the same channel and are allied goods used in automobiles that the defendants have passed off and are likely to pass off their cables as the goods of the plaintiffs manufacture and are taking advantage of the plaintiffs' name, reputation, and goodwill; that the automobile P.V.C. cables under the trade mark Duke are an instrument of fraud in the hands of the unscrupulous dealers. The plaintiff claims that their business is an old established business and the defendants' use of the offending trading style and trademark is very recent one and that unless the defendants are restrained by a temporary injunction from using the offending trading style Duke Enterprises and the trademark Duke in respect of insulated automobile cables during the pendency of the suit, an irreparable loss and injury would be caused to their business, reputation, name and good will Rawal Industries P. Ltd. v. Duke Enterprises for which the pecuniary compensation would not afford an adequate relief to them.
(5) The defendants in their reply traversed and denied the allegations of the plaintiffs. The defendants deny that the word Duke is associated with the goods of the plaintiffs throughout India and that the goods bearing the word Duke are treated as those of the plaintiffs ; that the defendants do not manufacture or sell automobile paints but admitted that they manufacture and deal in P.V.C. insulated cables which are used for electric wire particularly in automobiles. The defendants averred that it is incorrect to say that they had adopted trading style Duke Enterprises as well as the trade mark Duke in relation to the insulated cables in order to cause confusion or in order to give an impression that their product is that of the plaintiffs or it is, in anyway, connected with the plaintiffs; that the manufacturers of insulated cables do not manufacture automobile parts which are different goods. According to the defendants P.V.C. insulated cables are not automobile parts and that they are accessories which are manufactured by different manufacturers. They further accept having used the device of Lakshmi appearing on their letterhead contending that it is a common well- known device introduced by the printers of letter heads who maintain such fancy block and print them on they letter-heads as pious symbols. According to the defendants, the plaintiffs till the date of the suit had not manufactured insulated cables and had deliberately made false claim for their starting the manufacture of insulated cables for use in automobiles. They denied having passed off their cables as plaintiffs' automobile cable or were likely to pass off their cables as automobile parts such as oil seals and suspension rubber bushes and that the question of taking advantage of the plaintiffs' alleged reputation in respect of those items did not arise or that the plaintiffs have suffered any loss or damage, the defendants aver that the balance of convenience lies in their favor in as much as they are manufacturing items which are entirely of different character. The plaintiffs in their rejoinder traversed the pleas raised by the defendants in their reply and reiterated their pleas.
(6) On behalf of the plaintiff it was strenvously contended that the defendants selecting their trade style 'Duke Enterprise' and trade mark 'Duke' in respect of automobile cables was a calculated attempt to deceive a buyer into the belief that the article thus sold was that of the plaintiffs. A buyer being not on his guard what was likely to catch his eyes was the word 'Duke'. An unwary purchaser was likely to be duped in believing that the insulatated cables manufactured by the defendants were those of the plaintiffs The act of the defendants was dubbed as a case of rank dishonesty in that the defendants had not put even its name on the carton to distinguish that the cables manufactured and sold by it were their goods.
(7) On behalf of the defendants it was contended that the word 'Duke' is an ordinary English word and would not constitute monopoly of the plaintiffs. The insulated automobiles cables, goes the argument, has its own identity and can be considered an article itself. Merely because it can be used in the automobile would not give a legal right to the plaintiffs to say that it amounts to passing off-more so when the word 'Duke' and label under the head 'Duke' was registered in respect of oil seals and suspension rubber bushes of the plaintiffs and not qua automobile parts. In comparing the two sets of goods, it was contended, one must also consider 'he nature of the article and if a part of an article itself constitutes an article it would be a different thing in nature and description; more so when traders of cables do not manufacture automobile parts. Merely because the two sets of goods viz; insulated automobile cables, oil seals, and suspension rubber bushes were liable to sale at the same shop was of no consequence.
(8) It is well-settled that no person is entitled to describe or mark his goods as to represent that they are goods of another.
(9) In the instant case the plaintiffs in paras 3 and 4 of the plaint have categorically averred that they had been continuously for the last nine years manufacturing selling and offering for sale automobile parts of various kinds and types under the trade mark 'Duke' throughout India and in foreign countries ; that its buyers, among others, include State Transport Services and the defense department of the Government of India etc. that their present sale of such automobile parts was approximately 10 to 11 lacs per year and that their total sale for the last nine years- is about Rs. 55 lacs. To these avernments the reply of the defendants is one of denial 7975 Rajdhani Law Reporter 440 (Prithvi Raj, J.) simplicities alleging that they have wrongly claimed to be manufacturers and sellers of various kinds and types of automobile parts.
(10) Before filing of the suit the plaintiffs served notice Exhibit P/2 on the defendants. In paras 2 and 3 of the said notice they had alleged that 'on account of long, continuous and extensive user of the trade mark 'Duke' in respect of the goods registered and other auto goods manufactured' by the plaintiffs the mark/name 'Duke' when used in connection with automobile parts and goods conveys the .goods of the plaintiffs and that 'on account of long standing, reputation and wide publicity the literate and illiterate persons associate the mark/name 'Duke' with the plaintiffs goods only.' To these averments the defendants in their reply. Exhibit P/3, contended that the goods manufactured and offered for sale as stated by the plaintiffs in their notice were of quite different nature and character. The defendants did not traverse the allegation of the plaintiffs that they are the manufacturer of auto goods under the mark/name 'Duke'. In not specifically refuting the allegation of the plaintiffs that they are the manufactures of auto goods, the defendants thus admitted the claim of the plaintiffs of their being manufacturer of the said goods. The denial on their part in the written statement to the plaintiffs' contention in para 3 of the plaint that they are manufacturing, selling and offering for sale automobile parts of various kinds and types under the trad- mark 'Duke' prima facie appears to be an after-thought.
(11) The plaintiffs in Annexure 'A' to the application have given their sale figures and advertisement expenses from the years 1965-66 to 1973-74 according to which their total sales for the said period were in the sum of Rs. 54,15,078.86 while a sum of Rs. 2,21,0200/00 was spent by them on the advertisement of their goods. The plaintiffs being the manufacturer of Universal Joint Cross and Bonnet Clip Tmb is borne out from samples of the said goods produced in Court.
(12) From a prima facie appreciation of the above material on record a legitimate inference can be drawn that the plaintiffs are the manufacturer of automobile parts and goods apart from being the manufacturer of oil seals and rubber suspension bushes.
(13) The defendants in manufacturing their insulated cables under the trade mark 'Duke' cannot escape their liability. The use of the word 'Duke' as their trade mark and trading style as 'Duke Enterprise' is likely to create confusion in the mind of a purchaser. That being so, injury is likely to be caused to the plaintiffs more so in the absence of any added matter on the goods and carton of the defendants to distinguish their goods from the goods of the plaintiffs.
(14) The plaintiffs in para 12 of the plain have averred that they are progressive and expanding concern and have intentions to extend their business by manufacturing insulated automobile cables particularly. In view of this averment and the fact that the plaintiffs have been selling their goods under the name and trading style 'Duke' if the defendants are allowed to carry on their business of the insulated cables under the trade mark 'Duke' it would induce a belief in the minds of the prospective buyers that the defendants' company was the same company or that the business of the plaintiffs company was connected withthe business of the plaintiff company. Without giving added matter on their goods and cartons to substantially distinguish their goods from those of the plaintiffs the representation is implied in the use and imitation of the trade marke 'Duke' and trading style 'Duke Enterprise' by the defendants. There appears to be a reasonably calculated effort on the part of the defendants to deceive the public ; more so when on their letter heads of the figure of Goddess Laxmi is also printed knowing well that the plaintiffs had been advertising their goods by various media, amongst other, plastic goods including the figure of Goddess Luxmi in gold and silver colours. The attempt of the defendants to sell insulated cables manufactured by them under the trade mark 'Duke' would constitute an actionable wrong quite irrespective of the motive of the fraud on their part.
(15) In Dunlop Pneumatic Tyre Co. Ltd. v. Lubricant Co. 16 Rfc 12, the plaintiffs objected to the use of the word 'Dunlop' with the objects of the defendant alleging that the use of the said word would injure them if not stopped. The defendant used the word 'Dunlop' with regard to his burning oil and his graphite which he sold. The plaintiffs were sellers of cycle accessories though as a matter of fact up to the time of the litigation they had not sold burning oil or lubricant. Considering that they might do so. it was held that the plaintiffs were entitled to contend that a name substantially identical with theirs ought not to be allowed to be used by the defendant. The defendants were accordingly injuncted from doing business under the style comprising the word 'Dunlop' so as to induce the belief that the defendant company was the same Company as the plaintiff Company or was in connection with them or that the business of the defendant company was the same or in any way connected with the busi- ness of the plaintiff company (see also the Eastern Photographic Materials Co. Ltd. v. The John Grifits Cycle Corporation Ltd. and Cycle Co. Ltd. 15 RPC. 105.
(16) In an action for passing off, the test for deceptive similarity, that is, as to the likelihood of confusion or deception arising from similarity of the mirks is practically the same as in an action for infringement except that it has to be seen whether the defendants mark or get-up, packing etc. of his goods has besides the essential features of the plaintiff's mark or goods, any additional features which distinguish it from the plaintiffs' mark or goods. (See Mis. Atlas Cycles Industries Ltd. V. Hind Cycle Ltd. (1973) 2 Delhi 393.
(17) In the instant case no doubt there is difference in the shade of the colours used and the size of the cartons of the defendants but the word 'Duke' adopted as their trade mark is the same as used by the plaintiffs as their trade mark. The word 'Duke' having an over-all structural and phonetic similarity the likelihood or reasonable probability of the defendants passing off their goods as those of the plaintiffs to a purchaser of an average intelligence and imprefect memory or recollection cannot be altogether eliminated.
(18) The use of a particular trade mark of the plaintiff need not be large and substantial. It would be sufficient if it is proved that there was a commercial use of the mark. It is true that where the use is of ordinary words no one has any right in them. But when a party proves that he has been using a particular trade mark which had acquired a reputation by user in the market prior use of the said trade mark by the defendants, the objection that use is of the ordinary dictionary word cannot be sustained. The figures of sale and advertisement expenses given by the plaintiffs in Annexure 'A' to the application is an eloquent proof of the popularity of the plaintiffs goods- sold under the trade mark 'Duke'.
(19) On behalf of the defendants it was strenuously contended that the articles, viz, insulated cables manufactured by them are different goods falling under clause 9, not allied with class of goods such as oil seals or rubber suspension bushes manufactured by the plaintiffs. That being so, the defendants are not debarred from manufacturing the insulated cables under the trade mark 'Duke' or manufacturing the same under the trading style 'Duke Enterprises'. In support of this contention strong reliance was placed upon case. The Bridgestone Company (P) Ltd. v. Bridgestone Tyre Company Ltd. Tokyo, Japan. 1966 Dlt 143. In that case, the appellant company applied for registration of trade mark in respect of bicycles and parts thereof included. in class 12 but not including the rubber tyres and tubes. The mark consisted of the word 'Bridgestone.' The respondent company filed a notice of opposition alleging that registration of the trade mark bridgestone in respect of the articles of the appellant was likely to create confusion. Repelling the contention it was observed that bicycles parts other than tyres and tubes could neither be said to have trade links nor termed as goods of the same description as the heavy vehicles tyres and tubes manufactured by the respondent-company.
(20) The above cited authority is of no assistance to the defendants. In para 8 of the written statement the defendants have admitted that they manufacture and deal in Pvc insulated cables which are used for electric wiring particularly in automobiles. That being so, there is a trade connection between the goods of the defendants (insulated cables) and the automobile goods manufactured by the plaintiffs.
(21) In Corn Products Refining Co. v.- Shangrila Food Prodcuts, : 1SCR968 , it was observed that absolute identity of the two competing marks or their close resemblance was one of the tests for determining the question of likelihood of deception or confusion. The trade connection with different goods was another such test. It was observed that there was no reason why the test of trade connection between different goods should not apply where the competing marks closely resembled each other in view of the two trade marks.
(22) Reference may also be made here to case Prim-hard & Constance (Wholesale) Ltd. v. Amata Ltd. and others 42 Rfc 63. The plaintiffs in the rase carried on business as manufacturer of perfumery toilet preparations and other similar articles under the word 'Amani' which name had come to be known when applied to the above goods as the goods of the plaintiff. The defendants floated a company under the name of Amta Ltd. amongst others, for carrying on business as wholesale manufacturer cf toilet preparations. In an action seeking to restrain the defendants from carrying on its business as manufacturer of toilet preparations under the name 'Amta Ltd.' the Court observed 'the act cf the defendants would almost necessarily lead to confusion and to the defendant company's goods being sold to people who wanted the plaintiff's preparations and would think that they were getting them.' In the premises the defendants were restrained from manufacturing the goods in question under the name 'Amata'. '
(23) Instances of actual deception need not be proved if the Court is otherwise satisfied of the probability of deception. (See Kerly on trade marks and trade names (10th Edition) 427.
(24) In the instant case by the use of the word 'DUKE' as trade mark in selling insulated cables, the representation is implied that the insulated cables manufactured by the defendants are the goods of the plaintiffs, which is likely to create confusion and deception. The device adopted by the defendants would amount to the false representation that the goods (insulated cables) are manufactured or put on the market by the plaintiffs whether the defendants intend it or know it or not.
(25) For the reasons stated above the application is allowed. The defendants, during the pendency of this petition, are restrained from using the offending trade style 'DUKE ENTERPRISES' and the trade mark 'DUKE' in respect of insulated automobile cables and other automobile parts.