V.D. Misra, J.
(1) The plaintiffs have brought this suit alleging infringement of registered trade marks of their syrup 'Rooh Afza' and for passing off this syrup by the defendants. The plaintiffs aver that trade mark 'Rooh Afza' is registered under trade marks Nos. 3007, 138780 and 173555 in Class 32. The first trade mark was registered on May 17, 1949. Thereafter, the registration has been duly renewed from time to time. Plaintiffs No. 2 are the registered proprietors of the, trade marks and have appointed plaintiffs No. 1 as the registered users of the same. Defendant No. 1 is stated to have started manufacturing, selling and offering for sale his sharbat under the trade mark 'Rooh Afza'. He is said to have imitated the general get-up, lay out and colour scheme of the plaintiffs' labels with respect to the same. Defendant No. 2 is the person through whom defendant No. 1 introduced his product in the market at Delhi. Defendant No. 2 in his written statement admitted selling defendant No. 1's syrup under the name 'Sharbat Rooh Afza Muraqab (medicated).' Defendant No. 1 denied that defendant No. 2 was his agent or in any way linked with him for selling his syrup. He also averred that his forefathers had been Hakims and had introduced the prescription of syrup 'Sharbat Rooh Afza Muraqab' sometimes in 1888. He also denied any similarity between the packages, bottles and general get-up. Defendant No. 2 compromised the subject matter of the suit with the plaintiffs and a decree in terms of the compromise was passed in favor of the plaintiffs and against this defendant on February 2. 1971.
(2) On the pleadings of the plaintiffs and defendant No. 1, following issues were framed:
'1. Whether the plaintiffs are proprietors and users of registered trade mark 'Rooh Afza' for Sharbat? 2. Whether the defendant has infringed the trade mark of the plaintiff 3. Whether defendant is manufacturing, selling and offering sharbat so marked as to be calculated to deceive or cause confusion amounting to Passing Off 3 (a) Whether defendant No. 1 has been manufacturing and selling 'Sharbat Rooh Afza Muraqab' prior to the date of registration of the Trade Mark by the plaintiffs It so, since when and to what effect? (O.P.D.) '3(b) If issue No. 3 (a) is decided in favor of defendant No. 1 then how does the registeration of the Trade Mark by the plaintiffs affect the rights of defendant No. 1 ....... .(O.P.D.) 4. Whether the plaintiffs are entitled to claim rendition of accounts from defendant No. 1 5. What directions should be given to the Commissioner, if any? 6. Relief ?'
Mr. M. S. Vohra, learned counsel for defendant No. 1, did not address any arguments on issue No. 1, and stated that he does not challenge the fact that the plaintiffs are proprietors and users of the trade mark in question. This issue is, thereforee, decided infavor of the plaintiffs. Issue NO. 2.
(3) I have seen the bottles Exhibits Public Witness 3/3 and Public Witness 4/1 belonging to the plaintiffs and defendant No. 1 respectively. I find that the plaintiffs are using the word 'sharbat' along with their registered trade mark 'Rooh Afza'. Defendant has used? the words 'Sharbat Rooh Afza Murakab (medicated).' Words 'Rooh Afza' are common. The word 'sharbat' used by the parties only denotes the fact that the article sold is a syrup. The word 'murakab' used by the defendant is also a generic term meaning that the sharbat is made up of various constituents. The word 'medicated' is again a generic term.
(4) The distinctive and essential feature of the trade mark of the plaintiffs is the words 'Rooh Afza'. Similarly the distinctive and essential feature of the trade mark under which defendant sells his syrup is the words 'Rooh Afza' Letters Exhibits Dw 3/1 dated March 20, 1965, Exhibit DW4/10 dated November 4, 1968, Exhibit DW4/11 dated March 19, 1971, Exhibit DW4/12 dated March 3, 1970, Exhibit Dw 4/13 dated March 29, 1971, Exhibit Dw 4/14 dated December 5. 1967 and other letters produced by defendant himself show that persons had been asking for his syrup by referring to it as 'Sharbat Rooh Afza' only. An average buyer is going to ask for the syrup by the words 'Rooh Afza'. He is never likely to ask for the syrup by asking for 'Murakab (medicated)' Rooh Afza.
(5) I also find that defendant has used the words 'Sharbat Rooh Afza' in Urdu prominently, whereas the words 'Murakab (medicated)' cannot even be read from a distance. As long as the distinctive and essential feature of the trade mark used by defendant happens to be the same as that of the plaintiffs, the defendant cannot be allowed to use that trade mark since it amounts to the infringement of the trade marks which were got duly registered by the plaintiffs. (See k. R. China Krishna Chettiar v. Sri Ambal & Co., and another, : 1SCR290 ). This issue is, thereforee, decided in favor of the plaintiffs. Issue NO. 3.
(6) The plaintiffs have produced various witnesses to show that their product had become well-known in the market and buyers were associating the trade mark 'Rooh Afza' with the plaintiffs. The plaintiffs were spending very substantial amounts every year for the publicity of Rooh Afza through Hindustan Thomson which was formerly known as J. Walter Thomson & Co., advertising agents. Sukhdev Raj (Public Witness 1), Accounts Executive of this Company, has produced Art Pools (Exhibits Public Witness 1/1 to Exhibit Public Witness 1/11) which were prepared by them for press advertisements etc. S. H. Zaidi (Public Witness 2), who is in charge of Rooh Afza Branch of the plaintiffs since 1954, deposed that they were turning out about 12,000 bottles of this syrup per day. He stated that their agents tour all over the country and send them the demands for this syrup, and that they have not been able to cope up with the demand. They are also putting up extra factories in Ghaziabad to meet the extra demand for the syrup.
(7) Shamsul Rab (Public Witness 3), who is an Accountant of the plaintiffs since August, 1959 proved Exhibit Public Witness 3/1-statement of sale of Rooh Afza from 1960 to 1969. He also proved Exhibit Public Witness 3/2, estimated publicity expenses on this syrup, year-wise. These documents show that the sale of Rooh Afza by the plaintiffs for 1969 amounted to Rs. 38.5 lacs, whereas for 1968 it was for Rs. 41.5 lacs. Except for the year 1967 when the sale was only for about Rs. 9.5 lacs, the sales have been very substantially higher. The publicity expenses for 1969 were more than Rs. 1.80 lacs, whereas for 1968 those were more than Rs. 1.70 lacs. I find that over the years the publicity expenses have increased which has resulted into an appreciable increase in the sale of this syrup.
(8) The defendant in his statement admitted that prior to 1965 he was only keeping Kacha accounts of the sales of his syrup. He could not, however, give the annual sales of his shop. He used to buy the empty bottles from a kabadi for bottling his syrup. He has failed to prove the amount spent by him even for the printing of the labels which he affixes on his bottles. He does not even pay income-tax. I do not believe the defendant when he says that he had been advertising his syrup. He has failed to prove the expenses, if any, incurred by him for that purpose. He has also not produced the advertising material or the newspapers etc. in which his syrup was advertised. Even his sales seem to be at a very small scale. He could not give the names of any dealer to whom he was supplying outside Fazilka and Abohar. When he was specifically questioned about the names of the dealers to whom he had supplied the syrup before 1966-67, he could not give the name of a single dealer.
(9) Krishan Lal (DW 2), who runs a canteen at Ferozepore, has stated that the defendant has closed his shop for 5/6 years and he now works at home. The defendant himself has also admitted that his business has come to a standstill as his sales had been steadily going down. There is nothing to show that the syrup marketed by the defendant had come to be associated with him. I do not believe the witnesses produced by the defendant who state that they always associated the Sharbat with the defendant and had never heard of Rooh Afza marketed by the plaintiffs. Kherai Lal (DW 1 ) is a Hakim just like defendant No. 1 who is also a Hakim. They belong to the same city of Ferozepore. He admitted that he did not sell the product of defendant but was only dispensing it as a medicine. His annual income is stated to be Rs. 1,000.00. According to him he was buying the syrup for dispensing from the defendant off and on. Krishan Lal (DW 2), as already discussed above, is running a canteen for the last six years. He would have us believe that the only syrup used by him is that of the defendant. He has never heard about Rooh Afza of the plaintiffs nor has seen any advertisement about it. Madan Gopal Nayyar (DW 3) also belongs to Ferozepore and would have us believe that off and on he sends for the defendant's syrup which is brought to him in Delhi whenever some family member goes to Ferozepore. He also proved letter Exhibit DW3/1. I find that this letter is on a page taken out of student's exercise book and there is nothing to show that it was written to the defendant on the date on which it purports to have been written. Be that as it may, the letter only shows that he is asking for Sharbat Rooh Afza.
(10) Admittedly the colour of the defendant's syrup is the same as that of the plaintiffs' syrup. The labels used by the defendant on this bottle Exhibit Public Witness 4/1 are very much similar to the labels used by the plaintiffs on their bottle Exhibit Public Witness 3/3. The colour scheme is practically the same. Unless one is extremely careful in scrutinising the labels, one is likely to mistake the one for the other. The plaintiffs have used a device consisting of fruits and flowers encircled prominently, and the defendant has also done the same. It is true that on a close comparison the two labels look different. However, in a Passing Off action what has to be determined is not whether there is an exact reproduction of plaintiff's device or mark by the defendant, but it has to be seen whether the defendant's device or mark is deceptively similar to that of the plaintiff's. The standard to be adopted is that of an average buyer with an imperfect memory. At the time of buying an article a buyer has to depend on his imperfect recollection of the device to be satisfied that he is buying the same article which he needs. Keying this in view I have no hesitation in coming to the conclusion that the defendant's device containing flowers is deceptively similar to the device used by the plaintiffs for their product. Similarly, the second label used by : the defendant is also deceptively similar to the one used by the plaintiffs with the same colour scheme i.e. white and red.
(11) Mr. M. S. Vohra, learned counsel for the defendant, submits that the plaintiffs have failed to produce any evidence to show that the defendant's syrup has been mistaken for the syrup of the plaintiffs by anyone. He also submits that the defendant has never represented his syrup to be that of the plaintiffs.
(12) Lord Parker of Waddington in A. G. Spalding & Bros. v. A. W. Gamage Ltd. 32 Rpc 273, while approving the proposition that nobody has any right to represent his goods as the goods of somebody else, observed that the actual passing-off of a defendant's goods for the planitff's need not be proved as a condition precedent to relief in Equity or of an inquiry as to profits and damages. It was further observed that it was unnecessary to prove that the representation be fraudulently made and that it was enough that it had infact been made. It was observed.
'INsuch cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the; goods of the mark, name, or get-up in question impliedly represents such goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or quality, or, as it is sometimes put, whether the defendant's use of such mark, name, or get-up is calculated to deceive. It would, however, be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on.'
There is thus no force in the above contentions of. Mr. Vohra. This issue is, thereforee, decided in favor of the plaintiffs.
(13) These issues may conveniently be decided together. The defendant, in order to prove that he has been manufacturing and selling his syrup before the date of registration of trade mark by the plaintiffs, examined the three witnesses referred to above in addition to his own statement. He also produced some documents.
(14) As already discussed, I am not ready to believe the witnesses produced by the defendant. Kherai Lal (DW1), who is a brother Hakim, made a bald statement that the defendant has been in trade for the last 40 to 45 years and that he bought the syrup 30 to 32 years ago. Krishan Lal (DW2) has been running the canteen for the last six years only though he states that he has been buying the defendant's syrup for the last fifteen years. Even if his statement be true, it does not show that the defendant started manufacturing and selling the syrup before the plaintiff got his trade mark registered. Madan Gopal Nayyar (DW3) also made a bald statement that he had known the defendant's syrup since he was a child. He would have us believe that the came to know about Rooh Afza of the plaintiffs for the last 10 or 15 years only and that he was not aware of any advertisement by them. Admittedly, he has been living in Delhi for a long time. It seems that since this witness belongs to Ferozepore he is out to help the defendant and is ready to go to any length for that purpose.
(15) The plaintiffs produced L. N. Swami (Public Witness 5) from the office of the Registrar of Trade Marks at Delhi. He proved that application No. 3007 was filed on August 3, 1942 for the registration of trade mark. 'Sharbat Rooh Afza'. The 'user' claimed in this application was since the year 1908. Application for the registration of trade mark words 'Rooh Afza' claimed the 'user' since the year 1907. Shamsul Rab (Public Witness 3) deposed that the manufacture of the syrup was started in 1907. He stated this fact on the basis of the registration files and the record of the Hamdard Dawakhana.
(16) Defendant No. 1 deposed that the formula of his syrup was recorded for the first time by his great grandfather who was practicing as a Hakim sometimes in 1888. Thereafter, his grandfather copied this formula (prescription) in Persian script in aprescription book. This defendant's father, who was also practicing as a Hakim, then copied it. The defendant thereafter copied the same in his own handwriting. A copy of this prescription is Exhibit DW4/4 (Exhibit DW4/1 is the copy in Persian). The defendant has not been able to explain the necessity of each one of his predecessors copying the same prescription again and again. The original prescription recorded by the great grandfather and grandfather of the defendant has not been proved. The defendant did depose that original of Exhibit DW4/3 was in the handwriting of his father in a small note book. Assuming that it was so, there is nothing to show that the predecessors of the defendant at any time started marketing the syrup or had the intention to use this as a trade mark. The evidence on the other hand produced by the defendant consisting of Kherai Lal (DW1) and Madan Gopal Nayyar (DW3) shows that the syrup was being used as a medicine. Kherai Lal (DWI) categorically states that he does not sell the syrup as such but dispenses it as a medicine. It may be that the defendant's ancestors were also dispensing it as a medicine and not selling the syrup as such under the name 'Rooh Afza'. It is common knowledge that Hakims do prescribe various kinds of syrups as a medicine and also dispense the same. These circumstances do not show that they had any intention of marketing this syrup under a particular trade mark. As already discussed, the defendant's business consisted of carrying on the Attar's shop started by his ancestors in which they dispensed medicines. Admittedly, he never kept any records of his business. Until 1965 he was only maintaining some Kacha accounts which he did not care to produce. In these circumstances. I do not believe the defendant that he or his ancestors at any time marked this product under this trade mark.
(17) It is true that the defendant's father did get the label bearing the words 'Rooh Afza Murakab' registered on May 17, 1926 from the Northern India Chamber of Commerce, Lahore. This fact shows that at that time the defendant had the intention of marketing his syrup under this trade mark though only a label was got registered. This label admittedly was in blue colour. The design of that label is not before me. Exhibit DW4/4, the certified copy is without the label. The defendant has also produced various copies of the railway receipts to show the dispatch of the syrup. However, these relate to the years 1928 onwards. This evidence shows that from 1926 onwards the defendant had started marketing his product under the trade mark 'Sharbat Rooh Afza Murakab.' It may be noted that the notice sent by the defendant to the plaintiffs (marked 'A' by the Local Commissioner) shows that the defendant claimed the manufacture and sale of the syrup since 1926. No mention is made in this notice of the formula which had been inherited by the defendant from his forefathers. Had the defendant or his ancestors started marketing the product at any time before 1926 this fact would surely have been mentioned in the notice which was given by the advocate of the defendant.
(18) My attention has been drawn by the plaintiffs to a Division Bench judgment of Lahore High Court in Unani Dawakhana v. Hamdard Dawakhana, Air 1930 Lahore 999. This judgment has been referred to show the fact that Hamdard Dawakhana had filed a suit against Unani Dawakhana for restraining the latter from marketing the syrup under the trade mark 'Sharbat Rooh Afza.' A note before the head-notes shows that the District Judge, Delhi, had passed a decree against the defendant on November 9, 1925. The judgment shows that the District Judge had passed the decree on an appeal against the decision of a Subordinate Judge. The other facts show that the suit must have been filed sometimes in 1923. Even at that time the Hamdard Dawakhana had alleged that Sharbat Rooh Afza had been introduced in the Delhi market in 1907, and that it had registered this name in 1918. It is true that I cannot give any weight to the facts proved in that case, but I mention the fact of the plaintiff's syrup being in the market in 1907 to show the consistency of stand taken by the plaintiffs. The filing of the suit in 1923 also shows that the plaintiffs were successfully preventing others to use their trade mark. In other words, the plaintiffs had marketed their product under the trade mark 'Rooh Afza'. long before the defendant started marketing his product in 1926. The defendant admittedly was not taking any steps to preserve his trade mark. Though he took steps for rectification in respect of some of his product of vinegar sold under the trade name 'Florance' he never took any steps in respect of Rooh Afza. The defendant would have us believe that he never knew about the plaintiffs' Rooh Afza before 1968. I am not ready to believe him at all on this aspect. The plaintiffs were not only spending a very substantial amount on advertisement but had their agent in Ferozepore. This agent is carrying on his business under the name and style of M/s. Hari Chand Hans Raj at Delhi Gate, Ferozepore. The defendant's Explanationn was that since he is not on good terms with this agent, he does not know if he deals in Rooh Afza manufactured by the plaintiffs.
(19) Had the defendant been using his trade mark simultaneously with the plaintiffs' use of their trade mark, the burden was on him to prove that there has been a continuous user of this trade mark before he could be allowed to market his product under the same. The defendant has failed miserably to show the continuous user. He has not produced any accounts. Stray letters have been produced to show that some persons did demand this product at some stage. It is true that for a continuous user it is not necessary that a person should prove the sale on every day or even perhaps once a week. But a person claiming continuous user should produce enough evidence to enable the Court to come to the conclusion that there has been a continuous user. The total sales in the shop of the defendant seem to be very meagre. The sale was in the bottles which he was buying from the Kabadis and about three years ago he finally closed his shop since it was not a paying proposition. All these circumstances taken together show that the defendant was not even a continuous user of this trade mark from 1926. Even if it be held that he was a continuous user, it will be of no benefit to him since, as already discussed, he has failed to show that he started using this trade mark before the plaintiffs' predecessors started using the same. These issues are, thereforee, decided against the defendant. Issues NOS. 4 & 5.
(20) Mr. N. K. Anand, learned counsel for the plaintiffs, was not serious in pressing these issues. In my opinion, he was right in doing so since admittedly the defendant has closed his shop long ago and is admittedly not selling the syrup nor perhaps doing any business. These issues are, thereforee, decided against the plaintiffs.
(21) The result is that the plaintiffs are entitled to a permanent injunction restraining defendant No. 1, his servants and agents and representatives from manufacturing, selling, offering for sale or otherwise dealing in syrup or any such products under the trade mark 'Rooh Afza' and such or similar mark amounting to infringement of Rooh Afza registered trade marks of the plaintiffs. Defendant No. 1 is also restrained from selling the syrup in bottles bearing mark, labels, words 'Rooh Afza' or any expression giving an impression that the defendant's product is that of the plaintiffs or connected with the plaintiffs trade or business. The plaintiffs will have their costs.