D.R. Khanna, J.
(1) In this suit based upon infringement of trade mark, the plaintiffs have sought a permanent injunction against the defendants for restraining them from infringing their registered trade mark 'Zorex' by using deceptively similar trade mark 'Zorrik' in reject of ties manufactured by them. Further reliefs by way of accounts etc. are sought. ^
(2) Briefly stated, the averments made in the plaint are that the plaintiffs are the registered proprietors of trade mark 'Zoex from 25th May, 1971 and are using it on ties manufactured by them since 7th June 1965. In the year preceding the mstitution of the suit) their sales from this business amounted to over rupees 8 lakhs. Huge amounts are claimed to be Spent by them over the publicity of. this trade mark. Becanse of superiority of their goods and the extensive publicity and skill in advertising, it is stated the plaintiffs' ties have achieved a unique reputation throughout India.
(3) From middle of July 1973, it is alleged the defendants have started selling ties with mark 'Zorrik' affixed on them. The same is stated to be deceptively similar to the plaintiffs trade mark 'Zorex' and amounts to infringement of their rights. As such a notice was served upon the defendants to desist from affixing the mark 'Zorrik'. The defendants first assured the plaintiffs that they would discontinue their activities, but later again started infringing the trade mark.
(4) Consequently, a suit was brought bearing no. 123 of 1974 in the Court of Shri H. K. S. Malik, Additional District Judge, Delhi in which the claim was based on 'passing off'. That suit was however, dismissed. An appeal against the same is pending in in the High Court.
(5) In the meanwhile, on an application moved by the plaintiffs on '25th May 1971 for registration of trade mark 'Zorex', the registration certificate was granted on 4th November, 1978. This was in spite of content raised by the defendants against the registration.
(6) In the present suit thereforee, the plaintiffs basing their claim on the registered trade mark have sought the afoiesaid reliefs.
(7) The defendants have in their written statement disputed the maintainability of the suit, and it is asserted that the subjectmatter of the present suit is the same as was involved in the proceeding before the Additional District Judg
(8) On merits, it has been urged that the trade mark 'Zorrik' used by the defendants is not in any manner identical or deceptively similar to the trade mark of the plaintiffs. Trade marks starting with letter 'Z' are claimed to be widely prevelant in relation to ties in the market, and the trade mark of the defendants does not create any confusion or deception.
(9) Along with the suit, the plaintiffs moved an application under Order 39 Rules I and 2 and Section 151 of the Code of Civil Procedure for interim injunction restraining the defendants from using the trade mark 'Zorrik' on the ties produced by them.his application was however, dismissed by Aggarwal, J. on 3rd April, 1979 on the ground that the defendants were having the trade mark from 1972, and in case any restraint order was passed, it was likely to injure their business substantially. A note was taken of the dismissal of the plaintiffs suit earlier by the Court of Additional District Judge and his finding that the trade mark of the defendants was not likely to create confusion with trade mark of the plaintiffs. The appeal of the plaintiffs against this order was dismissed lmine by a Division Bench of this Court'.
(10) Issues were framed in. the present suit do 6th February, 1980. Issue No. 3 amongst them is to the following effect and the parties have sought that it be treated as a preliminary issue and a decision given hereon first :
'WHETHERthe present suit is liable to be stayed for the reasons stated in the written statement?'
(11) I have heard the parties on this issue and given my due consideration to all the circumstances. As is clear from the narration of facts above, the earlier suit brought by the plaintiffs in the Court of Additional District Judge was based on allegations of 'passing off'. At that time their application for getting the trade mark 'Zorex' regstered under the Trade and Merchandise Act, 1958 was pending and formal registration was not granted The present suit is for infringement of the registered trade mark which they have in the mean while obtained in the year 1978, and which according to them has related back to the year 1971 when they formally applied for registration. The plaintiffs there* fore, plead that the cause of action in the present suit is distinct from the one in the previous suit and the subject matters too cannot be treated as simlar.
(12) It has also been pointed out that their appeal moved against the dismissal of their suit by the Additional District Judge, Delhi has been stayed by Rajinder Sachar J. by an order dated 11th October, 1979 after observing that 'the matter in controversy in that appeal and that raised in the present suit are quite similar and it will be proper if that appeal was held over till after the decision of this suit.
(13) Before proceeding further, note may be taken of the findings given by the learned Additional District Judge, Delhi. During their course, it was observed .as under :
'THEtrade mark Zorrex and the trade mark Zorrik are no doubt confusingly similar but ties are not purchased by every one. Generally the person purchasing ties are from the educated class. Even an uneducate person purchasing a tie would have a long look over the tie before purchasing it. One would feel the texture of the cloth and examine the shape of tie, its length, colour and other similar matters The tie is not purchased in the same manner in which one . would purchase a cake of soap or a packet of razor blades. It is, thereforee, very difficult for a purchaser of a tie to be deceived by any similarity in the names of two brands ties. Secondly, it was admitted by Romesh Kumar Bhatia, partner of the plaintiff himself that Zonark, Zoadac ties are also in the market. DW4 Mangey Ram and some other witnesses also stated that ties under the trade mark Zovax and Zeenath were also available in the market and there is no reason to disbelieve him. All these names are also confusingly similar to that of the plaintiffs trade mark Zorrex. Learned counsel for the defendants stafed at the Bar that.' all these trade marks including that of the plaintiff arc the copies of original trade mark Zodiac. There is nothing to show on the record that these names have caused any confusion in the market. It is, thereforee, apparent that the trade mark of the defendant could not create any confusion with the trade mark of the plaintiff. As stated already the reason why these various similar trade marks do not create confusion is that the persons going in for the ties do not' purchase them just as they would purchase a cake of soap or a packet of razor blades. They would see the tie for themselves for sometimes before purc hasing it.'
(14) Two other reasons were given for refusing relief to the plaintiffs. One was that the suit was instituted belatedly and the other that the evidence produced did not prove that the defendant was passing off the goods as those of the palintiff.
(15) The observations of the Additional District Judge, Delhi as reproduced above thus show that the purchasers of ties are not likely to be deceived' by the confusingly similar ties marketed: by the defendants. It has also been found that trade marks of almost similar types are widely used by manufacturers of ties, and though they are confusingly similar, they do not creat any deception or confusion in the market amongst persons generally buying them.
(16) Although in the present suit the plaintiffs have urged that these findings are not sustanable on facts and in law. it is not for this Court in this suit to sit in judgment over them. They will duly receive adjudieation in the appeal now pending in the High Court. Till the time those findings are set aside, they remain operative and must hold the field. It thereforee, follows that the decision that the marketing of ties by defendants under the name 'Zorrik' does not cause anydeception or confusion with the people so as to connect them with those of the plaintiffs must be treated as subsisting and binding on the parties for the present suit as well.
(17) The question that thereforee, arises is whether an independent and different finding on the matter of deception and conclusion can be given in this suit. This will be inescapable as no relief can be granted to the plaintiffs unless it is held that the use of the word 'Zorrik' by the defendant? results in deception and confusion so as to infringe the trade mark of the plaintiffs.
(18) The present is not a case where the defendants are using an identical or exactly similar trade mark to that of the plaintiffs. Instead the allegations are that the defendant's mark is deceptively similar to that of the plaintiffs. The term deceptively similar has been defined in Section 2(i)(d) of the Trade and Merchandise Marks Act, 1958 as a' mark nearly resembling that of another as is likely to deceive or cause confusion. Section 29 next envisages that an infringement of a trade mark takes place when a person uses in the course of a trade mark which is identical with or deceptivelly similar to the registered trade mark of another in such manner as to render the use of mark likely to be taken as being used as the registered trade mark.
(19) So far as cases in which identical trade marks are used, no further questions arise as their user itself constitute infringement and an action for restraint or seizure is maintainable. The marketing of such goods or their impact in the nature of deception or confusion on the consumers does not arise. However, where the allegations are not of user of identical marks, but' of deceptively similar marks, there is little difference in the ingredients which go to constitute passing off or infringement of trade mark. In substance and in effect, in such cases an action for passing of an easily be telescoped into an action for infringement and vice versa. To this extent the law relating to infringement and passing off is fundamentally similar in its scope and application. The test as to likelihood of confusion or deception arising from similarity of marks is the same.
(20) The following observations in this regard in the case of the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd. (1941) 58 Rpc 147(1) which have been quoted with approval by the Supreme Court in the case of Ruston and Hornby Ltd. v. Zamindara Engineering Co. 1649 S.C.(2) may be reproduced with advantage :
'INan action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not inquire 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 of infringement is the same as in an action for passing-off. In other words, the test as to likelihood of confusion or deception arising from similariy of marks is the same both in infringement and passing-off actions.'
(21) In actions for infringement of trademark- Where deceptively similar marks are used, the persons who would be deceived are of course the purchasers of the goods, and it is the likelihood of their being deceived that is the subject-matter for consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. See in this regard the decision of the Supreme Court in the case Kaviraj Pandit Durga Dutt Sharma v. Navarataa Pharmaceutical Laboratories 1964 S.C. 980(3). It was recognised in this decision also that :
'WHEREthe evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark.'
(22) With this state of law, there is no escape from the conclusion that as long as the finding of the Additional District Judge in the earlier suit that the sale of ties by the defendants under the mark 'Zorrik' does not result in deception and confusion with the consumers in the market so as to identify them as those of the plaintiffs stands, no relief whatsoever can be granted to the plaintiffs in the present suit. The proper course for the plaintiffs, thereforee, is to pursue their remedy in the appeal now pending in the High Court. The subject-matter in the present suit to this extent, thereforee, must be held as directly and substantially similar to that involved in that appeal. The provisions of Section 10 of the Code of Civil Procedure are, thereforee, attracted. It is not necessary that the subject matter and cause of action in two suits should be indentical. Where there is substantial identity between matters in dispute in earlier and later suits, the final decision in the earlier suit would operate as binding in the subsequent suit. It is also immaterial that different reliefs are claimed, in case the matters in issue in the two suits are substantially the same. (See in this respect : AIR1957Cal727 , in Shorab Merwanji Modi & another v. Mansata Film Distributors & another(4), and : AIR1957Cal727 , in Guruswami Asari & others v. Raju Asari & others(5).
(23) The result, thereforee, is that I answer the issue in affirmative. The suit is stayed under Section 10 of the Code of Civil Procedure till the final decision in the appeal now pending in the High Court against the decision of the Additional District Judge, Delhi in Suit No. 123 of 1974.