M. S. Joshi, J.
(1) Wippermann Jr Gmbh, a West Germany Company has instituted a suit (No. 471 of 1976) against Wipperdrive Engineering, a Bombay concern for damages and injunction. In that suit an application has been filed under Order 39 Rules I and 2 read with Section 151 of the Code of Civil Procedure with the prayers that (1) the respondents, its servants etc. be restrained by an interim injunction from selling or offering for sale industrial or other chains under a mark containing a cross-legged 'W' in device of a star or a mark consisting of the word Wipperdrive or any other word deceptively or confusingly similar to Wippermann, and (ii) that the respondents, its servants etc. be restrained from infringing the applicant's said marks by using any mark or marks deceptively or confusingly similar thereto.
(2) It has been alleged by the applicant that it was established in 1892 and has been engaged, inter alia, in the business of manufacture of chains of various kinds. Its products are exported to all countries of the world including India and have become well-known due to the excellence of their quality. The applicant is registered proprietor of the following trade marks in India. No. Mark Class Description of goods 274021 Wippermann 12 Vehicles, apparatus for loco- motion by land, air or water. 274019 WIPPERMANN. 16 Roller Chains. 274024B Cross legged 'W' in the device 12 Parts included in Class 12 of of a star. motor vehicles. 274022 Cross legged 'W' in the device 6 Chains (except driving chains of a star. for vehicles). The applicant's products are marketed 'under its trade marks consisting of a cross legged 'W' in a star device and the word 'WIPPERMANN' and in cartons of a distinctive get up, colour scheme and designs. The products so sold have become associated in the minds of consumers of industrial chains and the public at large as being the products of the applicant. The respondent is selling and offing for sale a variety of industrial chains under trade 'mark of a crossed legged 'W' in a star device which is deceptively similar to the registered trade marks of the applicant and it has fraudulently adopted a trading style which is copied from and is confusingly and/or deceptively similar to the applicant's trading style and registered trade marks WIPPERMANN'. Further, the respondent is using in relation to its products the mark and trading style 'WIPPERDRIVE' which is intended to deceive and is confusingly and/or deceptively similar to the applicant's registered trade mark and trading style 'WIPPER MANN'. The respondent is 'using the cross legged 'W' within a star device and/or 'WIPPERDRIVE' on or in relation to its products which are sold and offered for sale which is similar to that which has become associated in the minds of the purchasers and the general public with the products of the applicant and is, thus, passing off its goods as those of the applicant. By reason of the wrongful acts of the respondent the applicant has suffered loss and irreparable damage and if it is allowed to continue to infringe the applicant's rights it will amount to a fraud on the applicant as well as the trade and public interested in the purchase of the applicant's products. The balance of convenience is said to be in favor of restraining the respondent from continuing its objectionable activities. It has also been stated in the application that on account of the respondent's offering for sale in the Federal Republic of Germany diverse chains under a representation which consisted of the letter 'W' with crossed legs represented in a star device and its adopting a trading style 'WIPPERDRIVE', the first and most prominent part of which had been lifted from the the applicant's registered trade mark and trading style, an action for passing off was filed in the Hamburg District Court in May, 1975 and a judgment restraining the respondent from using in the Federal Republic of Germany a trade mark consisting of 'W' in a multipoint star device was obtained.
(3) The respondent has opposed the application and denied infringement of the applicant's registered trade marks as well as passing off of its goods as those of the applicant. It has challenged the jurisdiction of this Court to entertain the application.
(4) I will take up the point of jurisdiction first. The applicant has E produced an advertisement inserted by the respondent in the Delhi Telephone Directory whereby it has offered for sale in Delhi various types of chains including roller chains under the trading style of 'WIPPERDRIVE ENGINEERING' and under the mark of cross legged 'W' in star device. A part of the cause of action has, thus, undeniably arisen in Delhi and this Court has jurisdiction to entertain the suit as well as the interlocutory application for injunction. In Kheshtra Pal Sharma v. Pancham Singh Varma I.L.R. 37 All 446 the defendant, a resident of Gaya, had published advertisements and distributed hand-bills at Muttra in the Agra Judgeship in respect of a particular medicine and the Court held that the plaintiff's trade-mark had been infringed by means of the said publicity and because of the said infringement the cause of action had arisen partly at Muttra, the Courts there had the necessary competence to try the suit.
(5) The applicant has set up a case of infringement as well as of passing off. It is registered proprietor of the trade marks referred to above and has an exclusive right to their use in respect of the goods for which the said trade marks have been registered. The respondent is said to be using trade marks deceptively similar to the applicant's trade marks in relation to goods in respect whereof the last mentioned trade marks have been registered. The respondent's use of trade marks which are colourable imitation of the applicant's trade marks is likely to deceive or cause confusion. That is how infringement is being committed. Moreover the two marks Wippermann and crosslegged 'W' within device of a star are claimed to be distinctive of the applicant's goods so that goods bearing those marks are identified by customers as goods of the applicant. By use of the impugned marks the respondent is inducing the customers of the relevant goods to believe that the same are applicant's goods and is thus trading on the applicant's goodwill.
(6) Vide section 28 of the Trade and Merchandise Marks Act, 1958 subject to the other provisions of the said Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered subject to any conditions and limitations to which the registration is subject. Section 29(1) of the Act provides that a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to the trade mark, in E relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(7) Their Lordships of the Supreme Court held in Corn Products Refining Co. v. Shangrila Food Products Ltd. : 1SCR968 to arrive at a finding as to the similarity between two marks the relevant marks have to be considered as a whole and the issue of resemblance has to be approached from the point of view of a man of average intelligence and of imperfect recollection. Such a man is likely to be confused by the overall structural and phonetic similarity - and the similarity of the idea in the two marks. It was reiterated in Amritdhara Pharmacy v. Satya Deo Gupta : 2SCR484 that the question whether a particular trade name is likely to deceive the public or cause confusion to trade has to be approached from the point of view of a man of average intelligence and imperfect recollection.
(8) For determining whether the assailed trade mark tends to deceive because of its similarity the Court has to compare the relevant marks. The resemblance may be phonetic, visual or even in the basic idea depicted by the infringed mark. The comparison is meant to find out whether the essential features of the plaintiff's registered mark has been appropriated by the defendant. Identification of the essential features of the mark is basically aquestion of fact and the A enquiry is aimed at leading to the conclusion whether the defendant's mark as a whole is deceptively similar to that of the plaintiff. (Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, : 1SCR737 .
(9) It was observed by the Punjab and Haryana High Court in M/s. J. and P. Coats Ltd., Scotland v. M/s. Gurcharan Singh and Brothers, Amritsar and another that 'in deciding whether the alleged infringing trade-mark is likely to cause confusion in the trade or not it is the totality of the trade mark which has to be kept in view' and also that 'the question of possibility of confusion is not to be decided on the basis of a person looking at the two trade-marks side by side, but on the basis that normally a customer would see one trade mark in the absence of the other and will have to make up his mind about the trade mark before him being one he is looking for or not in the light only of his general recollection of what the nature of the trade mark sought for by him was'. On the subject of right of passing off action observations of Lord Parker in W&G; Du Cros Ld.'s Appl. (1913) 30 R.P.C. 660 are partinent: 'Independently of any Trade mark legislation, whenever a person uses upon or in connection with his goods some mark which has become generally known to the trade or the public as his mark, and thus operates to distinguish his goods from the goods of other persons, he is entitled in equity to an injunction against the user of the same or any colourable imitation of the same mark in any manner calculated to deceive the trade or the public. Equity has never imposed any limitation on the kind of mark entitled lo this protection, but in every case it has to be proved that the mark has by user become in fact distinctive of the plaintiff's goods'. Tatachari and Shanker JJ. (as their Lordships then were) in M/s. Atlas Cycle Industries Ltd. v. Hind Cycles Ltd. I.L.R. 1973 Del 393, summed up the principles bearing on infringement and passing off actions in the following words:
'In an action for an alleged infringement of a registered trade mark, it has first to be seen whether the impugned mark of the defendant is identical with the registered mark of the plaintiff. If the mark is found to be identical, no further question arises, and it has to be held that there was infringement. If the mark of the defendant is not identical, it has to be seen whether the mark of the defendant is deceptively similar in the sense that it is likely to deceive or ca^use confusion in relation to goods in respect of which the plaintiff got his mark registered. For that purpose, the two marks have to be compared, 'not by placing them side by side, but by asking itself whether having due regard to relevant surrounding circumstances, the defendant's mark as used is similar to the plaintiff's mark as it would be remembered by persons possessed of an average memory with its usual imperfections' and it has then to be determined whether the defendant's mark is likely to deceive or cause contusion. For such determination, the distinguishing or essential features (and not every detail) of the two marks and the main idea, it any, underlying the two marks which a purchaser of average intelligence and imperfect memory would retain in his mind after seeing the marks, have to be noticed. It has then to be seen whether they are broadly the same or there is an overall similarity or resemblance, and whether the resemblence or similarity is such that there is a reasonable probability of deception or confusion. In doing so, the approach has to be from the point of view of purchaser of average intelligence and imparfect memory or recollection, and not an ignorant, thoughtless and incautious purchaser. In an action for passing off, the test for deceptive similarity, i.e. as to the likelihood of confusion or deception arising from similarity of the marks or the get up, packing, etc. is practically the same as in an action for infringement [vide Edwards v. Dennis, (1885) 30 Ch.D. 454, Lambert and Butler Ltd. v. Goodbody, (1902) 19 R.P.C. 377, Addley Bourne v. Swan & Edgar Ltd, (1903) 20 R.P.C. 105 and Tavener Rut ledge Ltd. v. Specters Ltd. (1959) R.P.C. 355, except that it has also to be seen whether the defendant's mark or the 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 plaintiff's mark or goods, and whether it is likely or reasonably probable that the defendant can pass off his goods as those of the plaintiff 'to a purchaser of average intelligence and imperfect memory or recollection.'
(10) In N. Arumagam Pillai v. K. S. Syed Abbas and another : AIR1964Mad204 it was held that the use of the word 'Thangapavan' as a part of the respondent's mark was likely to be confused with 'Thanga Baspam', a mark already registered in favor of the appellant, because of the two words being similar phonetically and registration of the mark which included the first-mentioned word in favor of the respondent was refused. In Amritdhara Pharmacy case (supra) the court found that the overall structural and phonetic similarity of the two names, 'Amritdhara' and 'Lakshmandhara' was likely to deceive or cause confusion. The same would appear to be the case with 'WIPPERMANN' and 'WIPPERDRIVE'.
(11) The plaintiff's trade mark has been registered with a disclaimer as to the letter 'W. Disclaimer in a registration of trade mark has of course a very material bearing because the disclaimed portion of the mark has to be ignored while considering infringement. It does not form an essential feature of the mark. 'But copying of the manner of representation of the disclaimed feature, especially when that representation is distinctive, will constitute infringement'. (Narayanan's Trade marks & Passing Off, para 674). Moreover, as per proviso to section 17 of the .Trade and Merchandise Marks Act, 1958 disclaimer does not operate to the prejudice of a passing off action and the fact remains that the court has in the- ultimate analysis to consider whether the impugned mark is likely to .deceive the unwary customer. (M/s. Bawa Masala Co., Delhi -v. M/s. Guizari Lal Lajpat Rai, Delhi, 1975 D.L.T. 270. In the case reported in Messrs Lakhpat Rai Sampat Rai-Sadhv. Dhanpat Rai Goel.and another : AIR1974Delhi91 the device of Bamboo had been disclaimed by the appellants and still it was held that .their pictorial device of 'Bamboo Grove' had' peculiarities of its own which -gave ft distinctiveness and it had, thereforee, to be protected despite the said disclaimer.
(12) There is no dispute as to 'WIPPERMANN' being the applicant's registered trade mark. The respondent has adopted 'WIPPERDRIVE ENGINEERING' as its trading style. It .is in the respondent's pleadings that 'WIPPERMANN' is a common surname in Germany and its ordinary dictionary meaning is a see-saw' or 'a device of a person for cleaning or wiping'. But it has been conceded in the course of arguments that the German equivalent for 'see-saw' is 'wippe' not 'wipper' and it has not been explained why 'wipper', a word totally alien to India and English language, had to be dovetailed with 'drive' for fashioning the respondent's trading style. The applicant has been manufacturing and selling chains under the trading style of 'WIPPERMANN' and the respondent's pamphlet shows that it is manufacturing and selling goods of the same class in Delhi under the trading style of 'WIPPERDRIVE ENGINEERING'. The applicant is proprietor, moreover, of the trade mark representing cross-legged 'W' in the device of a star registered for chains. The device used by the respondent too is comprised of a cross legged 'W' within a drawing that is by and large similar to a star. It is true that the registration of the applicant's trade mark is qualified by a disclaimer, that it will give no right to the exclusive use of the letter 'W and it goes without saying again that the mark of star is being used by other people in the trade but the device of the applicant has to be viewed as a whole and not in parts and the respondent's device would appear on the face of it to be a colourable imitation of that device. It cannot be a matter of coincidence that the major part of the applicant's registered trading style, 'WIPPER' figures in the respondent's trading style and the respondent's trade mark incorporates a cross legged 'W' placed inside a device quite akin to a star. It will not be unfair in the circumstances to assume that the respondent's goods are intended to pass off as the goods of the applicant and there is a strong likelihood of the persons concerned being deceived by the stratagem adopted by the respondent.
(13) It has been urged on behalf of the respondent that the type of chains sold by it are purchased mostly by factory owners and such customers will not fail to appreciate the difference between Wippermann and Wipperdrive Engineering or the cog-wheel in the applicant's device as against the star in that of the respondent. But I do not feel inclined to agree because to my mind the total visual image reflected by Wipper and cross legged 'W' placed inside a star is so very Iikely to deceive unwary customers endowed with average intelligence and imperfect recollection. The applicant appears to have made out a prima facie case of infringement of its trade marks as also of passing off.
(14) It is, however, pertinent that the applicant claims to have sold in India goods worth bare Rs. 45,000, Rs. 32,000, Rs. 1,10,000, Rs.2 , and Rs. 1,58,000 in the years 1970, 1971, 1972, 1973 and 1974 respectively and on the other hand the sales of the respondent were in the staggering figures of Rs. 1.61.646 in 1970, Rs. 77,670 in January to April, 1971, Rs. 7,92,590 in 1971-72, Rs. 8,68,964 in 1972-73, Rs. 12,90,207 in 1973-74, Rs. 16,79,240 in 1974-75 and Rs. 18,99.622 in 1975-76. The applicant has acquiesced in the respondent's carrying on its business under the said offending marks for more than 5 years.
(15) In Firm Gaylord Shangrila and another v. Kwality Restau1 rant and Ice Cream Company, New Delhi 1962 P.L.R. 1128 the defendants held used the trading style of Gaylord Shangrila for only ten months or so and the court decided on consideration of balance of convenience that they should not be made to stop their business altogether during the pendency of the suit, they should be put to terms. The expansion of the respondent's business during the last five years has been so phenomenal that its volume has become manifold to that of the applicant. By infringement and/or passing off a trader may take some gain at the expense of the aggrieved party but it will be impossible for him to beat the manufacturer of the genuine article with such stupendous margins as have been evidenced in this case. The only possible reason for the respondent's colossal success can be that its goods command popularity more by virtue of their excellence than because the same are being offered for sale under trade marks imitating those of the applicant. I think the circumstances of the case would not warrant issue of an ad interim injunction as prayed for by the applicant and the ends of junstice will be satisfied if the respondent is put to terms. It is, thereforee, ordered that (i) the respondent shall furnish security to the satisfaction of the Registrar in the amount of Rs. 40,000 for meeting the claim of the plaintiff for damages in case the applicant succeeds in the suit; (ii) it shall publish notices in Hindustan Times, Statesman and National Herald to inform the prospective buyers of the relevant goods that the goods marketed by it under the impugned trade marks have no connection with the plaintiff, and (iii) it shall maintain true and regular accounts of its sales under the offending trade marks and file statements of the same in this Court every six months. In the event of its failure to comply with this order the plaintiff's application will be treated as granted and an infunction will issue in the terms set down in its prayer clause.
(16) The observations made in this order shall not in any manner affect the ultimate decision of the suit on merits.