Ramachandra Iyer, C.J.
1. This appeal arises out of an action instituted by the appellant in the District Court, Madurai for infringement of their trade mark. Messrs Parry and Co. Ltd. the appellant herein is a company with limited liability engaged on several lines of business activity. They are interested in a sugar factory at Nellikuppam in South Arcot District. They have also been manufacturing confectionery. For marketing their confectionery products they are using two trade marks which have been registered under Class 30 of the Trade Marks Act, 1940, the registered numbers being 92, 251 and 1,24634. The first of the two marks is in the name 'Parry's' in block letters and the second is a design which contains the word Parry's written in script form. Both the marks were by virtue of the original registration to enure for a period of 7 years the former being in respect of sugar and all kinds of confectionary, while the latter was confined to all kinds of confectionery.
The said trade marks have been subsequently renewed for a further period of fifteen years from 5-2-1951 and 30-2-1953 respectively. The respondents, Messsrs. Perry and Co. is a firm consisting of two partners by name K.K. Palanikumar Nadar and K.K.P.T. Periasami Nadar who are engaged in the manufacture and sale of biscuits at Usilampatti in Madurai District. Evidence shows that they have been trading under the name of Perry and Company since at least the year 1934. In respectof biscuits manufactured by them, they have been using labels containing the words Perry and Co. In the year 1950, the respondent applied to the Registrar of Trade Marks, Bombay for registration of their trade marks in regard to biscuits manufactured by them. Their applications were registered as Nos. 106242, 106244 and 121221 the trade mark being the name Perry's written in script form and also written in block letters. The appellant protested against the use of the words Ferry as according to them they would amount to a colourable imitation of their mark. Correspondence followed between the parties with a view to explore possibilities of settlement. The respondents assured the appellant company that as they were going to use the labels only in respect of biscuit manufactured by them and that they would give an undertaking not to use the mark in respect of the pepermints or other confectionery even if they were to manufacture them in future.
The appellants were not satisfied with that assurance, as they thought that as both confectionary and biscuits come under the same category, in class 30 for purposes of registration of trade marks it was necessary to protect their property rights in their trade mark with respect to the word Parry's in script form. The parties ultimately entered into an agreement on 4th of May, 1951 under which they, proceeding on the assumption that Parry's were manufacturers of confectionary. while Perry's were manufacturers of biscuits, agreed that the respondents might use or adopt as their trade mark Perry's or labels containing that word if they were to use block letters. If, however, the script form were to be adopted, the agreement, specified the form of the script in which the name Perry could be used. The respondents further agreed to amend the application for registration of their trade marks in accordance with the terms of the agreement. After doing so they obtained registration for their trade mark 'Perry' in regard to biscuits manufactured by them. They subsequently obtained renewal of registration for their trade mark for a period of 15 years from 19th February, 1952.
2. In the year 1956 the respondents extended their business activity to manufacturing and putting into the market confectionery. For the sale of their manufactured products they began to use wrappers containing their registered trade mark. The appellants complained that the user by the respondents of their trade mark in connection with confectionery manufactured by them amounted to an infringement of their own trade mark and asked the respondents to desist from infringing their rights. Not finding a satisfactory response they instituted the suit out of which this appeal arises for an injunction restraining the respondents from using the name of Perry's for their confectionery products and for other allied reliefs.
The suit claim was put on an alternative basis. The first ground was that they had acquired a proprietary right by virtue of their having become entitled to the user of the word 'Parry's' in relation to their products and secondly on the ground that the user of the labels with the name Perry's by the respondents on the products manufactured by them amounted to a passing off of their goods as those of the appellants. The respondents contested the suit denying the infringement and contending that by virtue of the agreement referred to above, they had acquiured an exclusive right to the use of the trade mark Perry's in connection with all the goods manufactured by them whether it be merely biscuits or confectionary as well. The suit was also resisted on the ground that the word Perry was the contraction of the proper name of Periaswami one of the partners of the firm and that as such, they would be entitled to protection offered Section 26 of the Indian Trade Marks Act,
3. The Learned District Judge while he did not accept the case of the respondents that the word 'Perry' is an abbreviation of the name Periasami held that there was no infringement, as the agreement entered into between the parties did not stand in the way of the respondents using the name Perry in connection with all the products manufactured by them. The Learned District Judge also held that the appellant's action could not be sustained as a passing off action, as there was no possibility of the labels used for the sale of the respondent's products creating any deception in the customers. The suit was accordingly dismissed and hence this appeal.
4. We are of the opinion that the claim of the appellants who have exclusive use of their registered trade mark 'PARRY'S' cannot be disposed of merely on the ground that under the agreement entered into between the parties, the user of the mark Perry's on confectionary by the respondents was not expressly prohibited. The more important point to be considered in deciding the case is to see whether in law it can be said that there has been an infringement of the appellant's trade mark by reason of the respondents using the labels with their trade name 'Perry's' on the confectionery manufactured by them. It must be remembered that the respondents too have registered their trade mark, 'Perry's' in respect of biscuits manufactured by their concern. They would, therefore, be entitled to use that trade mark on the biscuits manufactured by them.
But whether they can do so even in regard to the confectionery manufactured and sold by them is the main matter that has to be considered. Before we do so we feel that we must indicate our view as to whether under Ex. A.9 the agreement, it can be said that the respondents have reserved to themselves the right to use their trade mark 'Perry's' with reference to all the goods or products manufactured by them including confectionery. Undoubtedly the terms of the agreement have to be understood in the light of the surrounding circumstances. It is clear on the evidence that at the time when the respondents applied to the Registrar of Trade Marks at Bombay for registration of their trade mark, 'Perry and Co.' their intention was to confine that trade mark only for the sale of their biscuits By their letter addressed to the appellants on 17th February 1951 (Ex. B13) the respondents categorically stated that they were using the labels with the words 'Perry and Co' in respect of biscuits only and that they were even prepared to give an undertaking not to use that word in respect of peppermints and other confectionary even if they were to manufacture themin future. The preamble to Ex. A.9 in a way confirms this when it says:
'Whereas 'Parry' and 'Perry' have had discussions and in view of the fact that the former are confectionery manufacturers and the latter biscuit manufacturers, both have decided to settle the matter amicably'.
5. There can thus be no doubt, that there was no intention on the part of the respondents at the time of the agreement, Ex. A.9, to use their trade mark 'Perry' on goods other than biscuits which alone they were then manufacturing. This trade mark itself was registered only with respect to biscuits.
6. Mr. R. Gopalaswami Iyengar learned counsel, appearing for the respondents contends that the objection of the appellants throughout was confined only to the use by the) respondents of the words 'Perry and Co'., in script form on their products and not with reference to any particular class of goods and that the agreement merely intended to regulate the user of the script form of the word Perry, as the trade name of the respondents. We are unable to accept this contention. The parties to the agreement proceeded on the footing that the respondents were to use their trade mark 'Perry' only with reference to biscuits of their manufacture. Even in regard to biscuits the agreement stipulated that the script form employed by the appellants in connection with their goods should not be copied by the respondents. It cannot, therefore, be held that the agreement impliedly authorised the respondents to use the trade mark 'Perry' to goods other than biscuits manufactured and sold by them.
7. But as we stated earlier, the substantial question to be decided is whether there has been an infringement in law by the respondent's using the words 'Perry' on the products manufactured and sold by them. The respondents have registered their trade name 'Perry' under the Indian Trade Marks Act but that was with reference to biscuits. Whether such registration will give them the right to use labels bearing that mark on confectionery manufactured and sold by them, is a matter that has got now to be considered. But before we take up that question for consideration, it is necessary first to decide whether the use of the word 'Perry's' by the respondents (forgetting for the moment that the respondents are the registered proprietors of the mark) on their goods would amount to an infringement of the word 'Parry's' used by the appellants in respect of their goods. In other words, are the respondents using a mark which is the same or a colourable imitation of the trade mark used by the appellants?
Section 21 of the Indian Trade Marks Ad confers an exclusive right on the Proprietor who has registered his trade mark to the use of the trade mark in relation to the goods in respect of which it is registered. The Section also indicates what amounts to an infringement, thus if the two marks are so nearly resembling each other as to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered by the plaintiff, then the defendant's mark will be deemed to have infringed the plaintiff's. In the present case, both the appellants as well as the respondents are respectively using the words 'Parry's' and Perry's in relation to the same goods manufactured by them namely, confectionery. We feel no doubt that the marks so closely resemble each other that there is a real danger of deception or of causing confusion ifthey are used in respect of the same goods. The words used are strikingly similar when pronounced and they are also deceptive to the eye particularly if looked at from a distance.
In re Magdalena Securities Ltd., (1931) 48 RPC 477 a question arose with regard to the registrability of the word 'Ucolite' for partially coked coal as trade mark by a particular firm. The registration of this expression was opposed on the ground that this mark would conflict with the opponent's registered trade mark 'Coalite'. Maugham, J. rejected the application for registration holding that the applicant failed to show affirmatively that the word in question was not calculated to deceive the purchaser. The Learned Judge observes:
'If you pronounce 'ucolite' with the accent substantially on the second syllable you get a resemblance to 'coalite' which it is perfectly plain might conceivably lead to confusion and coming from the mouths of ignorant people or people who were not particularly well educated it might well lead to regrettable mistakes'.
8. In Re Electrix Application Ltd., 1959 RPC 283 the House of Lords upheld the decision of the Court of appeal disallowing an application to register the word 'Electrix' as it was identical in sound with 'electrux' which had been earlier registered with respect to the same kind of goods. In Societe Monsavon 1'Oreal and Golden Ltd. v. Coiffeur Supplies Ltd., 1961 RPC 219 it was held that the particular mark 'Plix' would be infringed by the word 'Pilexa' as the latter very closely resembled the former and as the dealers might use the names verbally in such a way as to cause confusion. Similarly In re: Velva Glo's Trade mark, 1961 RPC 255 the mark Velvaglo was held to be too similar to the mark Velglo which had earlier been registered in respect of the same goods and therefore registration was refused. In Ciba Ltd. v. M. Ramalingam, : AIR1958Bom56 the word 'Cibol' was considered as closely resembling the word 'Ciba' which had previously been registered and, therefore, the registration of cibol was refused. It was held that the resemblance between the two words might be visual or phonetic and the only test that had to be applied by the Court, would be the test of identity of resemblance in relation to the goods to which they were to be applied.
9. There can be no doubt that the probability of confusion and deception has to be considered with reference to the nature of the goods of the question of phonetic similarity will have to be kind which a customer would be likely to buy in the market. In Corn Products Refining Co. v. Shangrila Food Products Ltd. : 1SCR968 the Supreme Court uttered a note of caution in relying on English decisions as they proceeded on the way of pronouncing an English word by Englishmen which might not always be the same in this country and that therefore, the judged with great care. The Learned Judges observed :
'Again in deciding the question of similarity between the two marks, we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the over-all structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause confusion between them.'
10. In that case the respondent applied for registration of the mark glunita used with reference to biscuits manufactured by him. The appellantwho opposed the application for registration of that mark was using the mark (registered) Gluco vita with reference to Glucose, with vitamins. The Supreme Court held that the commodities concerned were so connected with each other as to lead to confusion or render deception likely in view of the similarity of the two trade marks. It is clear from the principle underlying all the cases referred to above, that there will be infringement if there is a probability of deception or confusion in the mind of a customer by reason of either visual or phonetic similarity between the two words one of which has been registered as a trade mark. In the present case the words Parry's and Perry's are so similar to each other when seen while displayed on the labels or wrappers or heard when pronounced, that it must be held that the use of the word 'Perry's' will be an infringement of the trade mark 'Parrys.'
11. It is contended for the respondents that the mark having been registered they would have the exclusive right of using the word on all their goods whether it be biscuits or confectionary. Section 5 of the Indian Trade Marks Act declares that a trade mark may be registered only in respect of particular goods or class of goods. Section 84 (2) confers on the Central Government power to make rules and prescribe classifications of goods for purposes of registration of trade marks. In exercise of such powers, the Central Government has framed rules. Rule 13 of the Rules states that application for registration of trade mark should be in respect of goods in one class only, the classes being specified in Schedule IV to the Rules. Rule 30 of Schedule IV gives the names of the classes of goods. It runs :
'Coffee, tea, Cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread, biscuits, cakes, pastry and confectionary, ices, honey, treacle, yeast, baking powder, salt, mustard pepper, vinegar, sauces, spices, ice.'
The effect of Rule 13 read with Schedule IV is only to regulate the application for registration by insisting that it should be confined only to goods in respect of which the mark had been actually used or proposed to be used. Section 21 gives an exclusive use of the right in respect of a trade mark only in relation to the goods in respect of which it has been registered. That section cannot be read as giving an exclusive right to a registered proprietor to use the mark not only in respect of the goods in relation to which it is registered but also in respect of other goods which are found in the same category or classification. If a registered owner wants to use a mark in respect of several goods in a particular class, he will have to apply for registration in respect of all those goods, what Rule 13 enables him to do in such cases is to file one application for one class of goods.
12. But it is contended on behalf of the respondents '' that registration of the goods under class 30 will entitle a registered proprietor of the mark to use such mark with respect to any of the goods specified therein or in respect of all goods specified in the class. That contention cannot be accepted.
13. Classification of the goods under Rule 13 read with Schedule IV is only for the purpose of applications i. e. for the purpose of registry but the operation of the protection given by the Act is confined to the goods in respect of which registration is made. Section 21 of the Act gives protection for the use of marks with respect to the goods for which it is registered. In Kerly's Law of Trade Marks (8th Edn. by R. C. Lloyd at page 63) it is stated :
'Classification is primarily a matter of convenience in administration (e. g.) in facilitating the search which is necessary to ascertain whether application is objectionable under Section 12. What is of real importance in determining the rights of parties, as has been pointed out, in the specification of the goods entered on the register and the validity of the registration. The fact that certain goods may fall within the same class is no evidence that they are goods of the same description which is the important criterion in considering restrictions on registration imposed by Section 12 and the provisions relating to rectification on the ground of non-use contained in Section 26.'
In the Upper Assam Tea Company v. Herbert and Co., (1889) 7 R. P. C. 183 a certain person registered the trade mark of an elephant as applicable to tea sold by him. Sometime later the defendants in the case became owners of a trade mark of elephant as applied to coffee. Later on the defendants began to sell tea also with the trade mark, of elephant. The former thereupon instituted an action to restrain the latter from infringing the trade mark and from selling in tea by the description as Elephant Tea of tea with elephant brand. The Court of appeal upheld the view of Sterling I. granting the injunction.
14. The contention in the present case is that confectionary and biscuits fall under the same classification under Schedule IV of the Rules and that registration in respect of the latter goods would entitle a registered owner to the exclusive and lawful use of the mark even with respect to confectionary. That cannot be accepted.
15. It is next contended that biscuits would include confectionary. In shorter 'Oxford Dictionary' 'biscuit' is defined as a kind of crisp dry bread more or less hard made generally in thin flat cakes. The essential ingredients are flour and water or milk without leaves. In U. S. a small soft cake usually fermented. Confectionery is defined as a 'sweetmeat.'
16. In Fund all Wagnalls New Standard Dictionary biscuit is defined as
'a small soft cake generally shortened with lard or butter and unsweetened while a confectionery is defined as a sweetmeat. Collectively, that a confectioner makes or sells as candy or other articles made of sugar, sirup honey or the like.'
17. Confectionery therefore, is sweetmeat, while biscuit is in the nature of dry bread which has the characterstic of being baked. It cannot therefore be said that biscuit and confectionary are identical But there can be fancy biscuits in which confectionary can be put on the top of them. But the essential characteristic of biscuit is different from that of confectionery. When therefore registration is granted under Trade Marks Act with respect to biscuit it cannot obviously give a right to its proprietor of the mark to use that trade mark for confectionery. If he does so and there is already a registered owner of the same or similar mark with respect to confectionery the latter can sustain an action for infringement.
18. Mr. Gopalaswami Iyengar appearing for the respondents then sought to support the judgment of the lower court on the ground that the respondents were protected under Section 26 of theTrade Marks Act, when they use the word Perry's on their products it was done as a result of a bona fide use of their name. The argument is this : One of the partners of the respondent's firm is Periaswami Nadar, the abbreviated form of whose name is 'Peri or Pery' and when that word Perry is used, it tantamounts to use of the partner's own name. The Learned District Judge has rejected this contention.
Section 26 of the Act gives protection only in respect of the full name of an individual. An abbreviated name or expanded name of the individual cannot obviously come within the terms of the Section. In Shorts Limited v. Short, 1914 31 P. P. C. 294 a company called Shorts Ltd. obtained an injunction against the defendant Greer Louise Short starting a new firm under the name of Shorts. There is therefore no substance in the contention advanced on behalf of the respondents. The result is that the appellants will be entitled to a decree restraining the respondents from selling their Confectionery under labels containing the words Perry's or Perry and Co. An injunction will issue accordingly. But it is made clear that this will not prevent the respondents from using that name in relation to biscuits manufactured by them or even in relation to biscuits in which there is superficial coating of confectionery. The appeal will stand allowed with costs.