Prithivi Raj, J.
(1) [PLAINTIFF claiming to be owner of Regd. trade Mark of 'MATADOR' for combs etc. sued Deft. for restraining them from manufacture and sale of combs bearing mark identical or similar to bis. He also filed an application for interim injuction. Before filing suit plaintiff had served Defts. with a 'cease & desist' notice on 28.2.78. Deft. 1 replied that he was using mark since 1964 and claimed to have applied for registration on the basis of concurrent use. In the W/s reply of Deft. 1 was that he innocently began use in 1966 and applied for registration on 27.12.66 and Registry informed him on 5.4.67 that Mark was registered in favor of plaintiff and he applied for Rectification on 26.7.67 and plaintiff is not entitled to relief on the ground of laches and the Mark had become invalid on the ground of non-user. That import of combs was banned and the suit should be stayed u/s 111 of the Act as application of Deft 1 is pending for registration since 5.7.77 and that he is entitled to concurrent registration u/s 12(3). Objection was also taken that person who had signed plaint was not duly authorised. Court found the Power of Attorney in order u/s 85, Evidence Act and in accordance with law in Jugraj v. Jaswant : 1SCR38 , judgment is:
(2) It is well-settled that action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark for the vindication of his 'exclusive right to the use of the trade mark in relation to those goods', while an action for passing off is a common law remedy. In an action for infringement where defendant's trade mark is indentical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test for infringe- ment is the same as in an action passing off, i.e., a passing off by a person of his own goods as those of another.
(3) In an action for infringement a plaintiff can succeed not only when he proves that the whole of his trade mark has been copied but he can also succeed if he shows that the defendant's mark is similar to the plaintiff's mark as it would be remembered by persons possessed of average memory with its usual imperfections of that its essential particulars or distinguishing or essential feature has been copied (See Division Bench judgments of this Court in Nanak Chand and others v.Kohinoor Chemical Co. Ltd. I.LR. (1970) 2 Del344 and Jagan Nath v. Bhartiya Dhoop Karyalaya. I.L.R. (1975) 2 Del 225.
(4) In M/s Atlas Cycle Industries Ltd. v. Hind Cycles Limited, , a Bench of this Court held that in an action for 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 cause 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 it self '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 imperfection', and it has then to be determined whether the defendant's mark is likely to deceive or cause confusion. For such determination, the distinguishing or essential feature (and not every detail) of the two marks and the main idea, if 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 was further held that it has then to be seen whether they are broadly the same or there is an overall similarity or resemblance, and whether the resemblance or similarity is such that there is a reasonable probability of deception or confusion.
(5) In the instant case the allegation of the plaintiff is simple. It is this, that the plaintiff is the registered proprietor of the trade mark 'Matador', registration No. 143896, of goods under class 21 and that the registration of the aforesaid mark is valid and subsisting up to 1980 and that defendant No. 1 is infringing the said trade-mark 'Matador' by manufacturing combs under the mark 'Matador' by which combs were being sold or being offered for sale by defendants 2 and 3. The plaintiff accordingly contends that by using an identical mark' matador' on combs defendant No. 1 is infringing its trade mark in relation to the goods manufactured by it and that defendants 2 and 3 have aided and abetted the first defendant in infringing the plaintiff's registered trade mark' matador' . The trade mark 'matador' in respect of goods in class 21 having been registered in the name of the plaintiff gives him exclusive right to the use of the trade mark in relation to these goods.
(6) The use of the word 'matador' on the combs manufactured by defendant No. 1, in the circumstances, gives rise to a statutory remedy enabling the plaintiff to enforce the statutory remedy in asking this Court to restrain the defendant from the use of the said trade mark. That being so, there is no question of comparing the two marks with a view to find out whether the mark used by the defendants is similar to the plaintiff's mark in its essential features of the main idea underlying the two marks.
(7) There can be no denying the fact that the combs manufactured by the defendants under the name 'matador is likely to give rise in the mind of a person possessed of an average memory with its usual imperfections that the combs manufactured by the defendants under the name 'matador' are those of the plaintiff.
(8) In Prina Chemical Works V. Sukhdayal , a Division Bench of this Court observed that in passing off cases, the true basis of the action is that the passing off by the defendant of his goods as the goods of the plaintiff injured the right of property in the plaintiff, that right of property being his right to the goodwill of his business. It was further observed that it is now well settled that proof of fraud is unnecessary, whether the relief asked for be an injunction or damages, and that it is sufficient that an offending trade mark is calculated or likely to invade the proprietory right. It was held that an action for passing off seeks to protect only the plaintiff's proprietory right in his goodwill, the object being preventing the dishonest trading, the trade interest of the plaintiff being property.
(9) On behalf of the defendants, howover, it was submitted that the plaintiff's combs are not available in India and that the plaintiff's trade mark has become invalid on account of non-user for a period of five years and one month, because the import of plaintiff's combs into India is banned since 1946. That being so, it was contended that not only the plaintiff's trade mark is required to be rectified but the non-user for a long period should be regarded as abandonment of the trade mark by the plaintiff. I see no force in this submission. It is no doubt true that because of the trade ban for import of plaintiff's combs they are for the present not being imported and sold in India. But that does not amount to abandonment of the trade mark on the part of the plaintiff. Such a contention was raised in Nanak Chana's Case (supra) but did not find favor with the Bench. In that case the learned counsel for the appellant on the question of balance of convenience contended that it was incontrovertible that the face cream bearing the respondent's trade mark and manufactured by it in Pakistan was not being imported in this country since some years past and that in those circumstances respondent could not restrain the appellants from marketing their product under that mark when there was no probability of the respondent's own product being made available to the public in India. Repelling the argument the Bench observed that to accept the argument of the learned counsel for the appellants that since the respondent company was not having any sales of its product in this country on account of trade restrictions one would have to go to the length of holding that it had also no right to its rights as the registered proprietor of the trade mark being protected by injunction or otherwise. The Bench fur- ther observed that on that view of the matter they shall have to establish two separate standards, one for the protection of the rights of a national of this country and another for a foreigner who may be registered as a proprietor of a registered trade mark in this country. The Bench observed that in the latter case, the trade mark could be successfully purloined by any scrupulous indigenous producer on the ground that the Government had temporarily imposed trade restrictions on the import of the product. The Bench accordingly held that was not the law as they understood it to be.
(10) Reference here may also be made to case M/s. Plaza Chemical Industries v. Kohinoor Chemical Co. Ltd AIR. 1973 Bom 181. In that case a trade mark consisting of a label containing a device of a head of a woman, snow-clad mountain and the word Tibet' was registered as from 16th April, 1943, in the name of the respondents Kohinoor Chemical Company in respect of facial cream. Upon partition of the country the respondents migrated to Pakistan. The petitioners, Plaza Chemical Industries, started manufacturing and marketing a facial cream under a label containg the words 'Tibet Snow', since 1962. On 6th March, 1964, the petitioners filed an application in the office of the Trade Marks Registry at Delhi for registration of the said label as a trade mark. That application was refused on the ground that the respondents were the registered proprietors of a trade mark containing the word 'Tibet Snow'. On 4th March, 1966, the petitioners moved an application in the office of the Trade mark Registry at Bombay for removal of the Registered trade mark in the name of the respondents alleging that the respondents got the said trade mark registered without any bona fide intention on their part to use it in respect of facial cream and that up to a period of one month before the date of the application for rectification, the respondents had not used the said trade mark for a continuous period of five years in respect of facial cream. In the circumtances it was urged that it should be regarded as an abandonmrent of the mark by the respondents. The respondents resisting the application contended that prior to the partition of the country they were carrying on their business at Delhi and after the partition they had shifted their business to Karachi and that the goods covered by the registration of the trade mark were being sold in India until a ban on the imports by the Government of India was imposed but that inspire of the ban the mark was being used in India through the medium of advertisement in leading newspapers and journals which had circulation in India as well. It was submitted that the temporary suspension of imports due to restrictions imposed by the Government was not a ground for rectification and that non-user was due to the said circumstance in the nature of restriction imposed by the Government. In the circumstances, it was urged that the petitioners were not entitled to rely upon the said non user. The contention was accepted by the Registry of Trade Marks and the application of the petitioner was rejected. The petitioners filed appeal against that order in the High Court. The High Court held that the import restrictions imposed by the Government constituted special circumstances within the meaning of section 46(3) of the Trade and Merchandise Marks Act, 1958, and that special circumstances in the trade justifying non-use of the trade mark did not end but continued as long as importation was impracticable in a business sense.
(11) In the instant case, as already noted above, the combs of the plaintiff are not being imported and sold in India because of a trade ban imposed by the Government. In the circumstances, non-use of the trade mark would not defeat the exclusive right of the plaintiff to use their trade mark in relation to their goods under class 21.
(12) It may also bear mention here that defendant No. 1 applied for rectification of the mark of the plaintiff, inter alia, on the grounds (1) that the Registered Proprietor had abandoned the mark 'Matador' in India ; (2) that up to a date of one month before the application a continuous period of 5 years and longer elapsed during which there was no bona fide use of the mark in relation to the goods for which the trade mark had been registered ; and (3) that the trade mark 'Matador' was not at the commencement of the proceeding distinctive of the goods of the Registered Proprietor. The defendant No. 1 further stated in the said application that they had made an application of the trade mark 'Matador' in respect of 'hair combs' under No. 239687 which had been objected to by the Trade Marks Registery on the ground of the existance on the Register of the impugned mark. Defendant No. 1 accordingly contended that under those circumstances they were persons aggrieved for the purpose of rectification. The Deputy Registrar of Trade Marks, Calcutta, by his order dated 7th March, 1970, dismissed the application of defendant No. 1. (pages) 27 to 34 of the documents file). The application of defendant No. 1 for rectification having already been dismissed the grounds taken therein are not open to the defendants in challenge to the present application of the plaintiff.