1. The plaintiffs, the Asiatic Government Security Life Assurance Co., Ltd., sue the defendants, the New Asiatic Life Insurance Co., Ltd., claiming an injunction restraining the defendants from carrying on business, etc., under the name of 'The New Asiatic Life Assurance Co., Ltd.,' or any other name which includes the word 'Asiatic' which is likely to deceive or mislead the public into the belief that the defendant's company is the same as the plaintiff's company. In para. 3 of the plaint the plaintiffs allege that their name, and particularly the word 'Asiatic' had come to be associated with the plaintiffs'' company in the minds of the public. I emphasise 'the public' In para. 4 they allege that the defendants' name substantially is the same as that of the plaintiffs' company and is a colourable imitation of the plaintiffs' company's name. In para. 5 plaintiffs allege that the defendants must have known of the plaintiffs' company's existence and designation and that the action of the defendants in choosing and coining for themselves a name substantially similar to that of the plaintiffs is deliberate and is not bona fide. In para. 7 they allege that the defendants' name is calculated to deceive the public and that considerable confusion is likely to be caused by a similarity of the names. I observed that in the plaint title the plaintiffs have wrongly described the defendants as an Assurance Co., whereas the correct description is Insurance Co., and I directed the plaint to be amended accordingly so as correctly to describe the defendant company.
2. The defendants in their written statement, para. 13, pleaded that, by reason of the plaintiffs' company being incorporated in Mysore State and not under the Companies' Act, it had no right of suit, but that defence has not been put forward before me on the other hand, the right of plaintiffs to sue is conceded. In para. 5 they state that they were not aware of the existence of the plaintiff company either at the time of its registration or for a considerable time thereafter. The general trend of the written statement is a denial of the allegations in the plaint,, especially the allegation that the defendants' name is calculated to deceive or likely to cause confusion. No issues were settled, but I hold that the issue before me is whether the plaintiffs have proved that the use of the defendants' name is calculated to deceive and so to divert business from plaintiffs to defendants or to cause a confusion between the two companies. This topic has been the subject of a very large number of decisions many of which have been cited before me, but I consider that the point I have to decide is as indicated above and is correctly stated in Kerly on Trademarks, 6th Edition, at the bottom of page 567.
3. This suit has been tried before me in August, 1938. The plaint was filed on the 19th October, 1934, nearly 4 years ago. The delay has therefore been deplorable and has been the subject of an investigation not relevant to the decision of the case, but the fact of the delay must be emphasised for two reasons: Firstly because the defendants say that during all this interval of time the Court did not grant an injunction and secondly because owing to passing of time the actual development of the business of these two companies is known, and I am now in a different position from that in which I should have been in 1934 when the developments in the future would naturally be matters of conjecture. I should however say a word about the absence of an application for an interim injunction. It seems to me to be common ground that at the time, it was agreed that an interim injunction need not be sought and that a speedy trial should be had. I draw the inference from the records that neither side was specially concerned at the speedy trial not materialising; but it is well to say that the case appeared in the list an immense number of times. It may be for this reason that the question of the interim injunction disappeared. However, the suit now comes before me for trial under the above circumstances.
4. I propose first of all to examine the facts and later to consider the law in relation to the facts as I find them. (His Lordship then discussed the evidence)....
5. I have endeavoured to summarise the evidence before me and have given a finding with regard to one aspect of the case--the conduct of the defendants' company. I must now turn to what is really the crux of the matter, namely, whether the similarity in the names of the two companies taken with the evidence satisfies me that the defendants' company's case is calculated to deceive the public and to divert business from the plaintiffs to the defendants or to cause confusion between the two companies. A comparison of the two names is therefore important. The plaintiffs' name is the Asiatic Government Security Life Assurance Co., Ltd., the defendants' is the The New Asiatic Life Insurance Co., Ltd. I attach no importance to the difference between 'Assurance' and 'Insurance' for I very much doubt if the average man could be sure whether companies of this sort with which he was familiar described themselves as 'Insurance' or 'Assurance', although he might know the rest of the names well enough. The plaintiffs' company's name has the words 'Government Security'. Those words are not present in the defendants' name. Before the word 'Asiatic' there is the word 'New' in the defendants' name. It is known that the plaintiffs' company must have the words 'Registered in Mysore' attached to its description, but those words are absent from the defendants' name. One has only to look at the authorities to realise the difficulties of arriving at a decision in this matter. In Kerry on Trademaks, 6th edition, will be found collected on pages 571 to 574 examples where injunctions have been granted and where injunctions have been refused. Many of these cases have been cited to me and I will deal with some of them, but, with the utmost respect, I do not find the authorities of great assistance beyond the point where they lay down the law to be applied. In each case it is a question of fact to be decided on the special facts of that case and it is interesting in this respect to see how distinguished judges have taken the view that a name was likely to deceive when other distinguished judges have taken exactly the opposite view. It must come back always to answering one question-on the facts of the case before me, guided by the law laid down in the decided cases, has it been proved to my satisfaction that the defendants' name is calculated to deceive or to occasion confusion? The decided cases do however seem to impress me with one idea, namely, that before the Court will grant an injunction, a very high standard of affirmative proof is required to establish the plaintiffs' case or that the similarity of the names is of itself sufficient.
6. In Hendriks v. Montagu (1881) 17 Ch. D. 638, James, L.J., states what the Court has to decide in these matters in the form of a question at page 645:
Now, is there such a similarity between those names as that the one is in the ordinary course of human affairs likely to be confounded with the other? Are persons likely who have heard of the 'Universal' to be misled into going to the 'Universe'?
7. In that case the plaintiff represented the Universal Life Assurance Company and the defendant 'The Universe Life Assurance Association'. James, L.J., proceeds:
I should think, speaking for myself, very likely indeed. Many people do not care to bear in mind exactly the very letters of everything they have heard of, and we have had a great body of evidence before us of persons, whose business it is to be acquainted with these Life Assurance companies, all of whom concur in deposing in the strongest possible terms that nothing is more calculated to injure an old society of this kind than having a new society established which has got a name so similar to that of the other as that it is likely to be mistaken for it.
8. Mr. Grant relies very strongly on this case. I would respectfully say that it seems to me clear that the name of the defendant company in that case must have misled and confused persons with regard to the plaintiff company. But, apart from that, there was, I observe, a great deal of affirmative evidence on the point. There is none before me. A further circumstance is that, at its inception, there was included in the defendants' advertisements a statement that its temporary offices were at Mansion House buildings, only about 300 yards from the plaintiff company's premises. The Guardian Fire and Life Assurance Co. v. Guardian and General Insurance Co., Ltd. (1880) 50 L.J. (Ch.) 253, is a decision of Jessel, M.R. The plaintiff company was incorporated in 1821 and carried on its business at 11, Lombard Street and the defendant company carried on business at 31, Lombard Street, and it had been formed to take over the goodwill of the Guardian Horse and Vehicle Insurance Association, Ltd., which was registered under the description of the Guardian and General Insurance Co., Ltd. There was evidence in that case about the misdirection of letters and the learned Judge took the view that the plaintiff company was known to the public as 'Guardian Assurance' or 'Guardian Company'. He also took the view that the change of the name was deliberate and found the defendant guilty of 'legal fraud'. That again seems to be a very strong case. Mr. Grant relies on it and says 'Here is a case of a company known by a shortened name'-a fact which appears to have been established; but I do not think it has been established in this case that the plaintiff company was known to the public by its shortened name, however much its title may have been abbreviated in the official publications. After all this interval of time, I have virtually no evidence before me to show that the public thought that the plaintiff company was known by the name 'Asiatic' and, as I have indicated, none of them have come forward to say that they were misled.
9. Turton v. Turton (1889) 42 Ch.D. 128 and Tussaud v. Tussaud (1890) 44 Ch. D. 678 were cited, but those cases do not assist me as they are directed towards establishing the proposition that a man cannot be deprived of the use of his own name. Manchester Brewery Co., Limited v. North Cheshire and Manchester Brewery Co., Limited (1898) 1 Ch. 539 is an interesting case. There were at one time two companies, the Manchester Brewery Company and the North Cheshire Brewery Company. The latter company was purchased by persons who started a new company named the North Cheshire and Manchester Brewery Company. Byrne, J., took the view-that the defendant's name was not likely to deceive, but the Court of Appeal decided otherwise, and, as I understand it, the basis of their decision, as expressed by the Master of the Rolls, was that to embody the whole of the name of another company into a new company was likely to suggest to the public that the original company's business was being carried on by the new company. I observe in that case that oral evidence was forthcoming to this effect. That case is, of course, very different from the case before me. Ewing v. Buttercup Margarine Co., Limited (1917) 2 Ch. 1 was cited and I observe that Astbury, J., states the question for decision on page 6 as I have endeavoured to state it from the authorities, and it would seem that since 1917 the law has undergone no change. Astbury, J., thought that that case was very near the line, but Lord Cozens Hardy, M.R., considers that it was 'a perfectly plain and clear case, not very near the line, but well over the line'. There was apparently a great deal of affirmative evidence in that case. Mr. Grant relies on it very strongly because the plaintiff company was a north British concern, the nearest branch to the south being at West Hartlepool, whereas the defendant company had its office in Westminster. In that case, of course, the decision turned on the use of the word 'Buttercup' by the defendant. As Bankes, L.J., said at page 12 'the distinctive feature' of the plaintiff's 'trade name is 'Buttercup' '. The learned Judges have no hesitation whatever in holding that there was a probability of deception and confusion. Bankes, L.J., points out, on page 12, that it was not material that the business of the plaintiff was mainly confined to Scotland and parts of the North of England. I would respectfully say that that case seems to me to be a very clear example of one company using the distinctive name attached to the goods sold by an earlier established company and that, the goods being identical, confusion would be inevitable.
10. The National Bank of India v. The National Bank of Indore : AIR1923Bom119 is a decision of Mulla, J. He emphasizes that it is not necessary for the plaintiff to prove fraudulent intention. It would seem that the learned Judge was influenced, and I respectfully agree, by the fact that the plaintiff bank's business in gold bars was likely to be prejudiced by the similarity of the names. He was impressed by the great similarity in the names and it is on that general impression that the defendant's name was likely to deceive that he decreed the plaintiff's suit. The learned Judge was naturally impressed by the similarity in the pronunciation of 'India' and 'Indore', but what also appears to have influenced him was that with this similarity in pronunciation, the defendant should have thought fit to add also the words 'National Bank'. From a perusal of the judgment I would respectfully say that I too take the view that in that case the defendant's name is likely to deceive. Mr. Grant relies on the decision of Pearson, J., in Accident Insurance Co., Ltd. v. Accident, Disease and General Insurance Corporation (1884) 54 L.J. (Ch.) 104. Pearson, J., held in that case that
either of the companies would, in the course of business, become known by a name shorter than the whole name, and that the old company (which had been in existence for 14 years at the time of the judgment) is known as 'The Accident Company'.
11. The learned Judge comments on the fact that the defendant company did not put the word 'Disease' first in its name. 'It might', he observes, as well have called itself by the words 'Disease, Accident and General Insurance Corporation' or 'put the word 'General' first'. In the form in which it did come into existence he considers there was a probability of deception and that the plaintiffs were entitled to succeed. In the case before me, the defendant does not begin its name with the word 'Asiatic' but puts the word 'New' first.
12. Mr. Grant naturally relied on the judgment of Fletcher, J., in Oriental Government Security Life Assurance Co., Ltd. v. Oriental Assurance Co., Ltd. I.L.R.(1913) 40 Cal. 570 which, on the face of it, would seem very near to this case, because Fletcher, J., held that as the word 'Oriental' has become identified with the plaintiff company the defendant company would be restrained from using the word 'Oriental' in its name, by which I understand the learned Judge to mean that the word 'Oriental' could not be used at all. The plaintiffs relied very strongly on that case, but there the defendant company was known as 'The Oriental' or 'The Oriental Assurance Company,' and I would respectfully agree with Fletcher, J., in holding that the 'Oriental Assurance Co.' would almost inevitably be confused with another beginning with the word 'Oriental' and ending with 'Insurance Co.' But if this is a decision that the use of the word 'Oriental' at all is prohibited, I would record my respectful doubt as to that part and that part only. The above cases are relied on by Mr. Grant.
13. Mr. Rajah Aiyar has also referred to certain authorities. The Society of Motor . v. Motor . (1925) 1 Ch. 675 is a decision of Lawrence, J., as he then was. I do not think that case assists me. As observed by Lawrence, J., at page 685:
It is important to bear in mind first, that this is not a case of fraud; secondly, that the business of the defendant company is altogether different from and in no way competes with the business of the plaintiff society; and, thirdly, that the name of the plaintiff society is descriptive and consists entirely of words in ordinary use in the English language
14. He considers that the addition in the defendant's name of 'Mutual Insurance Co.' and the absence of the words 'Society of' are sufficient to distinguish the two companies. The short judgment of Sargant, L.J., at page 692,1 respectfully suggest, differentiates that case from this case. Saunders The Sun Life Assurance Society v. Sun Life Assurance Co. of Canada (1894) 1 Ch. 537 is an authority for the proposition that, in the absence of fraud or dishonesty the defendant could not be restrained from the use of their own ame if it involved no misstatement of fact. The Sun Life Assurance Co. of Canada had as well established a name in Canada as the Sun Life Assurance Society in England. Stirling, J., held that the defendant company must take all steps to prevent their agents using the words 'The Sun' or 'The Sun Life' without the addition of the words 'of Canada' in referring to their company. The plaintiff company had been established in 1810 and the defendant company in Canada in 1882 after various changes in its description. It seems to me that that case would have been more relevant if this was a suit by the defendants against the plaintiffs instead of by the plaintiffs against the defendants and if the question had arisen if the plaintiff company having in the Mysore State acquired the name of the Asiatic Government Security Lite Assurance Co., Ltd., could be restrained from using it in British India. Mr. Rajah Aiyar relied very strongly on Hopton Wood Stone Firms, Ltd. v. Gething (1910) 27 Patent and Trademark Cases 605. That was a passing off action in which the Hopton Wood Stone Firms, Ltd., sought an injunction to restrain the defendants from carrying on business under the name of Hopton Stone and Marble Quarrying Co., Ltd. and the case turned on the significance of the word 'Hopton' in relation to 'Stone' and a great deal of evidence was called about it; but Parker, J., at page 626, was satisfied with the undertaking by the defendants made at his suggestion that the defendants should carry on business as 'The New Hopton Stone and Marble Quarrying Co.' or from their proposed company under the name of the 'New Hopton and Marble Quarrying Co., Ltd.' in which case, as he observed, all danger of any such confusion would be avoided. Parker, J., continues:
The defendants consented to this suggestion and offer that undertaking that the word 'New' shall be the initial word of their business style and the name of any company they register. I accept this undertaking as giving the plaintiffs all the reliefs to which on the facts as I find them they would possibly be entitled.
15. The learned Judge had previously found that the plaintiffs' stone and the defendants' stone were the same and that the defendants were entitled to sell their stone under that name, but it will be seen at page 625 he observes that confusion would probably arise if the defendants carried on business or formed a company under or with the title, of which the, word 'Hopton' is the first word. And it will be seen that the learned Judge took the view that by prefixing the word 'New' all difficulties would be avoided. This is of great interest, because both the learned Counsel in this case have been unable to refer me to any case like the case I have to decide-a case where a company with an established name sued another, company with the same or a similar name but with the word 'New' added at, the beginning of the latter's name. It is appropriate at this stage to say-and these matters must be surely matters of impression-that the word 'New' to my mind, differentiated the defendant company from the plaintiff company even without the other difference which is in the title; and it is interesting in deciding matters of this sort which, except in the most flagrant cases, must always be of difficulty to find that so distinguished a Judge as Lord Parker, sitting then as a Judge of First Instance, should have taken what seems to be a similar view, and it is some satisfaction to me in arriving at this result, to know that my impression was formed before the above decision had been brought to my notice. In the vast number of law suits authorities cited are generally relevant to questions of law but in this case the authorities are virtually decisions on questions of fact and indicate how questions of fact impress the minds of the judges by whom the cases are tried. Mr. Rajah Aiyar referred to the following cases, Colonial Life Assurance Co. v. Home and Colonial Assurance Co. (1864) 33 Beav. 548 : 55 E.R. 482 where Romilly, M.R., repelled the claim of the plaintiff company to obtain what he described as the monopoly of the use of word 'Colonial'. In the case before me the plaintiffs are claiming the sole use of the word 'Asiatic' because they claim that that word is the sign mark of their company. It seems to me that that is an untenable position and that they must succeed, if they succeed, not on that basis but on the basis of similarity of names. In The London and Provincial Law Assurance Society v. The London and Provincial Joint-Stock Life Assurance Co. (1847) 17 L.J. (Ch.) 37, Shadwell, V.C., did not think that the defendants' name was likely to deceive. In Merchant Banking Company of London v. Merchants' Joint Stock Bank (1878) 9 Ch. D. 560 Jessel, M.R., decided against the plaintiff company and it will be seen from his judgment that he arrived at his conclusion on a very simple basis that he does not consider that the names are sufficiently similar to deceive. In Bumsted v. The General Reversionary Co., Ltd. (1887) 4 T.L.R. 621 was referred to. The plaintiff company's name was the General Reversionary and Investment Co. and the defendant's name was General Reversionary Co., Ltd. Sterling, J.'s judgment is of assistance to me in that he states that it is not sufficient to show that there is a similarity of names but it must also be shown that there is a reasonable probability that the use of the name would result in the defendant appropriating the material advantage of the plaintiff's business. He held on the evidence and considering the small nature of the defendant's business and that it was carried on m Liverpool that there was no such reasonable probability as to justify him in interfering on an interlocutory application, but the learned Judge concludes his judgment by suggesting that the defendants would do well to change their name as soon as possible. Meikle v. Williamson (1909) 26 Patent Cases 775 was cited, because in that case a misdirection of letters alone was held not sufficient and does not alone tend to prove that a customer who intends to deal with the one firm, is likely to mistake the other for that firm. In this case, it is important, as I have already said that there is no evidence that anybody was misled.
16. So much for some of the cases which have been cited. As I said at an early stage it seems to me that, as the case-law is so well established, the decision must rest on the facts. Putting the names side by side and comparing them I can only say that it does not seem to me that the defendant company's name was likely to mislead the public, that the word 'New' at the beginning was a decisive difference and, added to that there are the following circumstances, all of which should be taken into account. The plaintiff company has the words 'Government Security' which the defendant company has not. The plaintiff company is a Mysore company and must have the description ' 'Registered in Mysore' added to its name. The defendant company lays stress on the fact that it is sponsored by and associated with name of Birla Brothers and is in Delhi. I am not in the least satisfied that the plaintiff company is generally known as the 'Asiatic'. I do not consider that abbreviations in some books, although not in all the books, is sufficient to establish that fact. I think that that is a fact which the plaintiff should have proved to my satisfaction. I agree that whether the name is calculated to deceive is entirely a matter for myself, and on the alleged similarity of name alone I am not in the least persuaded that the plaintiffs have a good case. But, even adding to such similarity as there is the statement of the defence witness Subbiah, there still remains as far as I am concerned a complete lack of certainty that the public spoke and thought of the company as the 'Asiatic'. Even if the public did so speak of the plaintiff company, I am not thereby satisfied that they would confuse the 'Asiatic Company' with the 'New Asiatic Company'. The evidence on the plaintiff's side does not alter any impression I have formed as to the probability, or perhaps I should say improbability, of deception by the defendant's name. I am not satisfied that, because in insurance matters insurance experts may have abbreviations to refer to certain companies, it necessarily follows that the public used the same term. No expert has said that he was confused. I am not satisfied, if it is material, that any actual harm has been done by the defendant company. The plaintiff company has, I am glad to see, prospered. It is notorious that a large number of insurance companies have come into existence in India and the progress of the plaintiff company seems to be entirely satisfactory. I have already emphasized the very strange position in which I am placed in trying a suit for an injunction when matters remained as they were for a period of four years, but I ought to record that, had the case been tried within a week of its being filed, I feel I should have arrived at the same conclusion. Holding as I do that the defendant company's name was not calculated to deceive or cause confusion, in accordance with the legal principles which are now so clearly settled I must dismiss this suit with costs, but, in view of my last observation, I would add again (if it is relevant for me to do so) that, since the filing of the suit, nothing has happened to satisfy me that there has been that measure of confusion and deception as would entitle me to grant an injunction. Two counsel certified.