G.C. Jain, J.
(1) The main question for determination in this application under Order XXI. Rule 32, and s. 151 of the Code of Civil Procedure, 1908, is whether the mark 'OSSO' adopted by the respondents-judgment-debtors Is deceptively similar to the registered trade mark 'ESSCO' of the petitioners-decree-holders and amounts to disobedience of the decree for permanent injunction passed by this Court in favor of the petitioners against the respondents on July 30, 1980.
(2) On February 14, 1980, the petitioners-decree-holders M|s. Essco Sanitations, brought a suit seeking permanent injunction restraining (1) the judgment-debtors, their servants, agents, representatives, dealers, workmen and all those acting for and on their behalf from infringing their registered trade mark No. 214447 by adopting and|or using the mark 'ESSO' and|or any other deceptively or confusingly similar mark which was an infringement of their registered trade mark 'ESSCO' in relation to brass cocks (sanitary and bath-room fittings); (2) from manufacturing, selling, offering for sale and|or otherwise dealing in sanitary and bathroom fittings including brass cocks under the mark 'ESSO' or any other deceptively similar mark being colourable imitation of their trade mark 'ESSCO' as was likely to cause confusion and deception and from passing off these goods as those of the decree-holders in any manner whatsoever. They also prayed for an order for destruction of the goods, cartons, dies and blocks, labels and other media bearing the impugned mark 'ESSO', and for rendition of accounts etc.
(3) The reliefs were claimed mainly on the allegations that in the year 1961 the decree-holders adopted the trade mark 'ESSCO' in relation to sanitary and bath-room fittings particularly brass cocks of its manufacture and sale as a distinctive trade mark. The said trade mark was duly registered under the Trade and Merchandise Marks Act. 1958. under No. 214447 and had acquired high reputation and was well-known in the market and had come to mean the products of the decree-holders' exclusive manufacture. The Judgment-debtors M|s. Mascot Industries were manufacturing and selling various types of sanitary bath-room fittings including brass cocks and had adopted an identical and deceptively similar mark 'ESSO' as that of the decree-holders trade mark.
(4) In these proceedings, the decree-holders had also filed an application (IA No. 595|80) for temporary injunction. The judgment-debtors resisted the suit as well as the application for temporary injunction. However, this Court vide order dated May 6, 1980, granted temporary injunction restraining the judgment-debtors from infringing the registered trade mark 'ESSCO' of the decree-holders and from manufacturing, selling or offering for sale or otherwise dealing in bath-room fitings including brass cocks under the mark 'ESSO' or any other colourable imitation thereof.
(5) The parties thereafter entered into a compromise and on July 30, 1980, filed an application under Order 23, Rule 3, read with s. 151, Civil Procedure Code ., for passing a decree in terms of the said compromise petition. The terms and conditions of the compromise are as under :
'(I)That the defendant No. I admits the plaintiff's right to the trade mark Essco in respect of sanitary and bath-room fittings including brass cocks etc. (ii) That defendant No. I admits the validity of the plaintiff's registered trade mark Essco under registration number 214447 under the Trade & Merchandise Marks Act 1958. (iii) That the Defendant No. I admits the right of the Plaintiff to the exclusive use of the trade mark Essco along with the get-up, layout and colour scheme in respect of which the aforesaid trade mark is attached to the goods of the Plaintiffs manufacture and sale. (iv) That the Defendant No. I undertakes not to manufacture, sell, offer for sale directly or indirectly deal in through his representatives, agents, servants and dealers sanitary and bath-room fittings including brass cocks under the trade mark Esso, Essco, Sco, Osso or any other mark as is identical to or deceptively similar to the registered trade mark of the Plaintiff or as might amount to an infringement of the Plaintiff's trade mark No. 214447. (v) That the Defendant No. I further undertakes not to pass off sanitary and bath-room fittings including brass cocks of his manufacture or of the manufacture of other traders not being the Plaintiff's as and for the goods of the Plaintiff. (vii) That the above undertaking shall be binding on the Defendant No. I, its servants, agents, representatives and assigns for all time to come. (viii) That in view of the above undertaking, the Plaintiff foregoes its claim for rendition of accounts as well as costs in the present proceedings. It is, thereforee, prayed that a decree in terms of paragraph 20(i) & (ii) of the plaint be passed in favor of the Plaintiff and against the Defendants with no order as to costs'.
On the same day, a decree in terms of the compromise petition which was marked as C-1, was passed by the Court. A formal decree followed the judgment.
(6) On March 10, 1981, the decree-holders filed the present application under Order 21, Rule 32, read with s. 151, C.P.C., alleging that the judgment-debtors were still manufacturing, selling, offering for sale and dealing in bath-room littings including the brass cocks under the trade mark 'OSSO' in willful disobedience of the orders and the decree of this Court and that in spite of an opportunity of obeying the decree, they had wiltuily tailed to obey it. It was prayed that in the circumstances Chander Prakash Arora, partner of the judgment-debtor firm, and all other partners thereof, may be detained in civil prison and their properties be attached in execution of the decree dated July 30, 1980.
(7) The judgment-debtors resisted the application. It was alleged that in the compromise petition or at the time of recording of the compromise, no reference to the trade mark 'SCO' or 'OSSO' was made by the parties, and these had been unauthorisedly added in the compromise petition subsequently. It was further averred that the trade mark 'OSSO' was not a disputed trade mark between the parties, and soon after the order of the Court dated February 15, 1980, granting temporary injunction in favor of the decree- holders, the judgment-debtors adopted the trade mark 'OSSO' and filed an application for its registration on June 10, 1980, and started selling their goods under the newly adopted trade mark and there was no disobedience of the decree.
(8) It may be added here that the marks 'SCO' and 'OSSO' which are included in para (iv) of the terms and conditions of the compromise and which had been underlined by me have been written in hand while the entire compromise petition is type-written. These two marks have been added in between the 5th and 6th line of para (iv) of the original compromise petition. They bear the initials of only the learned counsel for the decree-holders and do not bear 5ny initials or signatures on behalf of the judgment-debtors. To be fair to the decree-holders, it may be mentioned that para (vi) of the compromise petition had been scored off and that also bore the initials of only learned counsel appearing for the decree-holders and did not bear the initials of the judgment-debtors or their counsel.
(9) Mr. N. K. Anand, learned counsel appearing for the decree-holders, agreed that for purposes of deciding this application, the words 'SCO' and 'OSSO' written in hand in para (iv) of the application for compromise may not be treated as part of that application. This was, however, without prejudice to the plea of the decree-holders that those words existed at the time of recording the compromise and at the time of signing the application for compromise. The decree is based on the compromise which has been marked as C-l. The words 'SCO' and 'OSSO' have to be excluded from clause (iv) of the compromise deed for purposes of this judgment.
(10) It is not disputed that the parties in the compromise deed prayed that a decree in terms of para 20(i) and (ii) of the plaint be passed in favor of the plaintiffs and against the defendants. Paragraphs 20(i) and (ii) of the plaint read as under : '20. The plaintiff prays : (i) for an order for permanent injunction restraining the defendants, their servants against representatives, dealers workmen and all those acting for and on their behalf from infringing the registered trade mark number 214447 by adopting and|or using the mark Esso and|or any other deceptively or confusingly similar mark which is an infringement of the plaintiff's registered trade mark Essco in relation to Brass cocks (sanitary and bath room fittings). (ii) for permanent injunction restraining the defendants, their servants, agents, representatives, dealers, workers and all those acting for and oil their behalf from manufacturing, selling offering for sale and] or otherwise dealing ii sanitary and bath-room fittings including Brass cocks under the mark Esso or any other deceptively similar mark being colourable imitation of the plaintiffs' trade mark Essco as in likely to cause confusion and deception and from passing off these goods as those of those plaintiff in any manner whatsoever.'
(11) The decree which has been passed in terms of par; 20(i) and (ii) prohibits the defendants from infringing the decree-holders' trade mark 'ESSCO' by adopting and[o using the mark 'ESSO' andjor any other deceptively or con flisingly similar mark in relation to the Brass cocks (sanitar and bath-room fittings). There is no restraint order from using the mark 'OSSO' as such and, thereforee, it has to be seen whether the trade mark 'OSSO' which is admittedly being used by the judgment-debtors is deceptively or confusingly similar to the decree-holders' registered trade marl 'ESSCO'.
(12) Under s. 2(l)(d) of the Trade and Merchandise Marks Act, 1958 (hereinafter refrered to as 'the Act'), ; mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely t o deceive or cause confusion.
(13) For determining whether a particular trade mart is deceptively similar to another mark or is likely to deceive or cause confusion, the factors that must be taken into consideration are, (1) the nature of the marks; (2) the degree of resemblance between the marks phonetic, visual as well as similarity in idea:. (3). the nature of goods in respect of which they are used or are likely to be used as trade marks (4) the similarity in the nature, character and purpose of the goods of the rival traders; (5) the class of purchaser? who are likely to buy the goods bearing the marks, their level of education and intelligence, and the degree of care they are likely to exercise in purchasing the goods; (6) the mode of purchase of the goods or of placing orders for the goods; and (7) any other surrounding circumstances.
(14) Lord Parker in Pianotist Company Ltd.'s Application (1926) 23 Rpc 774 (1), laid down the rule of comparison as follows :
'YOUmust take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likey to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be confusion that is to say, not necessarily that one man will be insured and the other will gain illicit benefit, but that there will be confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case.'
(15) It is admitted in the compromise deed C-1, that the decree-holders were the proprietors of the trade mark 'ESSCO' in respect of saintary and bathroom fittings including brass cocks. The iudement-debtors are using the trade mark 'OSSO' in respect of the same goods. Thus, the goods in respect of which these two trade marks are being used are identical and of the same description.
(16) The brass cocks are articles reouired by common people, who have water connections in their premises where they live either as owners or tenants or licensees. The goods are likely to be purchased by ordinary common persons including illiterate people. The mode of the purchase of such goods is mostly not by placing orders for the goods but by going to the shop and purchasing the same straight except in cases of large orders. Most of the persons concerned with the purchase of these goods would be people who would pronounce the words in a variety of ways and a variety of distortions and slurs, and all these facts have to be kept in mind while deciding the question of confusing similarity between the two trade marks.
(17) Looking at the articles, i.e. the brass cocks of the parties, with the eyes of public who are expected to buy these goods, the trade mark 'OSSO' adopted by the judgment-debtors , my judgment, is deceptively similar. The offending trade mark 'OSSO' has taken a substantial part of the registered trade mark 'ESSCO' of the decree-holders. The two marks are too close phonetically, visually and in similarity in idea. The first letters of the two trade marks are no doubt different being 'O' and 'E' respectively, but these are vowels which are most likely to be mis-pronounced. The other two letters 'SS' and the last letter 'O' are common in the two marks. There is no manifest difference between the two seletin' the letter 'C' from Essco and substituting the first letter 'O' in place of 'E' is of not much consequence. The ordinary customers who are likely to purchase these goods are not expected to carry in their heads the minister details of the registered trade mark of the decree-holders. A purchaser will seldom have the twomarks actually before him when he makes the purchase. He cannot retain in his mind every detail of the mark which he has once seen. Very often, he will have only a general recollection of what the nature of the trade mark is.
(18) There appears to be no doubt that the adoption of the trade mark 'OSSO' by the judgment-debtors is dishonest. The trade mark 'OSSO' is not descriptive of the goods in question. There is nothing on the record to suggest that the four letters containing this mark represent the names of the partners or proprietors of the defendant-firm. The decree holders, as mentioned earlier, had earlier objected to the trade mark Esso which was being used by the judgment-debtors and had claimed a decree restraining the judgment-debtors from using the said trade mark. They obtained the decree restraining the judgment-debtors from using the trade mark 'ESSO' and in spite of this, the judgment-debtors conveniently adopted the trade mark 'OSSO' which is in no way different than the trade mark 'ESSO'. The fact that they started using this trade mark even before the passing of the decree is of no consequence. It, on the other hand, shows their dishonest intentions.
(19) In Corn Products Refining Co. v. Shangrila Food Products Ltd., : 1SCR968 , the marks 'Glucovita' and 'Gluvita' were held to be deceptively similar in spite of the fact that the mark 'Gluvita' was used with reference to biscuits while the mark 'Glucovita' was used with reference to glucose with vitamins. Of course, it had been proved that the appellants trade mark 'Glucovita' had acquired reputation among the buying public.
(20) In Ana Laboratories Ltd.'s Application (1952) 69 Rpc 146 (3), the dispute was between the marks 'Vanildene' and 'Vaseline'. Deciding the question, it was observed at p. 150, as under : In the next place, as regards the comparison of the two marks regarded solely as words, I think it is a matter of almost immediate appreciation that both words 'Vaseline' and 'Vinildene' are trisyllabic, and that the latter differs phonetically from the former by the substitution of a letter 'n' in place of the 's' in the word 'Vaseline', and by the additional sound of the letter 'd'. These are differences which' in my view, are by no means negligible but are, nevertheless, quite insufficient to prevent the two words being confused phonetically, particularly when one considers the varied classes of customers who may desire to purchase the the goods concerned.'
(21) In Unimex Trade Mark's case 1979 Rpc 469(4), the two marks in question were 'Unimax' and 'Univac'. It was held that the two marks were too close visually and phonetically to be used on identical goods without a tangible risk of confusion and deception.
(22) In Banwaridas Pugalia v. Colgate Palmolive Co. Ors : AIR1979Cal133 , the two marks under comparison were 'Formis' and 'Charmis'. On examining the facts, it was held that they were deceptively similar.
(23) Mr. Anoop Singh, learned counsel appearing for the judgment-debtors contended that the trade mark of the decree holders, i.e. Essco, consisted of five letters while the trade mark 'OSSO' of the judgment-debtors consisted of four letters and that the two marks were visually and phonetically different. While considering the possibilities of phonetic confusion, the words must not be subjected to a side by side comparision or to a meticulous individual analysis. Only some structural examination of the words is permissible to find out if the marks possessed any outstanding characteristic that would inevitably create a more or less lasting impression on the hearer's mind. I have already made a structural comparison and there is a lot of simlarity.
(24) In the matter of an Application by Smith Hayden & Coy. Ltd. (1946) 63 Rpc 97, the marks under comparision were 'Ovax' and 'Hovis'. It was held that the two marks were not deceptively similar or likely to cause confusion. The finding was, however, based merely on the ground that the word 'Hovis' was so very well-known as to render confusion on that account less likely. This authority, thereforee, is not applicable to the facts of the present case.
(25) In Mem Trade Mark's case 1965 Rpc 347, the marks under examination were 'Mem' and 'Gem'. It was held that they were not deceptively similar, observing that the word 'Gem' is well-known and easily remembered because of its laudatory significance. The world 'Mem' has no obvious meaning except possibly as suggesting something to be remembered. It was also observed that the first two letters 'M' and 'G' were letters of different sound. This docs less lasting impression on the hearer's mind. I have already not apply to the first two letters 'E' and 'O' of the marks in dispute in the present case.
(26) Reliance was then placed on a Division Bench decision of the Punjab High Court in Stadmed Private Ltd. v. Hind Chemicals (1965) Plr 329. The two trade marks in question therein were 'Entozine' and 'Entozyne' It was held that the two marks were not deceptively similar, but the reason, it appears, was that these goods were drugs and could only be obtained on doctor's prescription.
(27) In Manyam & Co. Bangalore v. Balasubramania : AIR1967Mad186 , the two trade marks were 'Roji' and 'Raja'. It was held that they were not deceptively similar, for the reasons that it was not likely that 'Raja' will be mistaken for 'Roji' and vice-versa during a conversation in person of over the telephone and that the customers who were likely to buy the goods were not likely to mistake one marks for the other. This authority does not apply to the facts of the present case.
(28) Reference was also made to Fif Trade Marks' case 1979 Rpc 355. That case was decided on its own facts and is not of much help.
(29) In my considered opinion, the trade mark 'OSSO' adopted by the judgment-debtors is deceptively similar to the registered trade mark 'ESSCO' of the decres-holders and thus the judgment-debtors had disobeyed the decree for permanent injunction granted in favor of the decree-holders by this Court on July 30, 1980.
(30) As observed above, the user of the mark 'OSSO' by the judgment-debtors is dishonest. However, in the interests of justice it would be proper if an opportunity was given to them to discontinue the user before passing an order of their detention in civil prison, which is a very harsh order. Accordingly, the judgment-debtors are warned and directed to stop manufacturing, selling, offering for sale or otherwise dealing in sanitation and bathroom fittings including brass cocks under the mark 'OSSO' within one month from the date of this order. They are further directed to file an affidavit within one month from the date of this order before the Registrar staling that they had complied with the directions and had stopped the disobedience of the decree, failing which they will be liable to be detained in civil prison. The decree-holders will be at liberty to move the Court for further directions in this behalf. The decree-holders will also be entitled to costs.