P.V. Rajamannar C.J.
1. This is an appeal against the judgment and decree of Ramaswami Gounder J. in a suit filed on the original side of this court, C. S. No. 233 of 1950, by the respondents, C.H. Kizar Mohammad and Co., in the following circumstances. The plaintiffs are a registered firm of merchants carrying on lungi business in Madras. The defendants are a firm of merchants carrying on business in Moore Street, Madras. The plaintiffs alleged that their business consisted in the manufacture and sale of a special class of cloth known as lunghi, kylie and sarangs, that their business had been established and had been in existence for over 80 years and their goods have become well known in many places and territories; that from about the year 1913, the plaintiffs had been using for their goods, a trade mark the outstanding feature of which was a chair printed on a label.
A specimen of the label was appended to the plaint and marked as Ex. A. The plaintiffs alleged that their goods with the trade mark of the said description had acquired a special name and fame for the quality and genuineness in the markets throughout India and outside India. It was further alleged by them that they came to know recently that the defendants who are also lunghi merchants trading in Madras were adopting a device or mark for their goods labels with the representation of the chair and practically of the same size as the label used by the plaintiffs.
A specimen label used by the defendants was appended to the plaint, marked as Ex. B. The plaintiffs charge that such user by the defendants of the mark resembling the trade mark used by the plaintiffs has the effect of passing off the defendants' goods as goods manufactured by the plaintiffs which have come to be known in the market popularly as Karzi or chair brand goods. The plaintiffs, therefore, had to seek the protection of the court to prevent such passing off.
The plaintiffs prayed that the defendants be restrained by a permanent injunction from using the said trade mark in future for their goods, that the. defendants be directed to surrender all the printed labels with such marks to the plaintiffs; that the defendants be directed to render an account of all the sales effected by the defendants! of their goods with sueh trade marks from the date when they commenced to use the mark inquestion and that an account be taken of the profits made by the defendants on such sales, and defendants be directed to pay such amount as may be found due on the taking of such accounts.
2. Several pleas were taken by the defendants in their written statement. They pleaded that one of the several trade marks used by them was the table brand mark which was in use ever since 1928; that there was practically nothing in common between the plaintiffs' trade mark and the defendants' table brand mark which can in any sense be regarded as calculated to deceive the unwary public into believing that the goods of the one are really the goods of the other. They pointed out that there was great dissimilarity in device, size, get-up, colour, name lettering and other details. There was, therefore, no chance of any deception resulting in the passing off of the goods. A legal plea was also taken, namely, that the suit was barred under S, 20 of the Trade Marks Act, 1940.
3. The following issues were framed:
1. Whether the plaintiffs are entitled to the right of trade mark claimed by them;
2. If so, whether the defendants have infringed the plaintiffs' rights; and what are the reliefs the plaintiffs are entitled to;
3. Whether the suit is not maintainable under Section 20 of the Trade Marks Act (V of 1940).
The learned Judge, Ramaswami Gounder J. who tried the suit held that if the defendants were allowed to retain the chair in their label it would enable them to pass off their goods as those of the plaintiffs, and, therefore, they should be directed to remove the chair from their label. The learned Judge found that the plaintiffs' label and the defendants' label were more or less of the same colour and size, and both of them contained the device of a chair, the only difference being that there was in addition a table in the defendants' label. He, therefore, granted an injunction restraining the defendants from using label or trade mark with the device of the chair but observed that there will be no objection for their using it without the chair. The rest of the plaintiffs' claim was dismissed. The defendants are the appellants before us.
4. Mr. Srinivasagopalachariar, the learned counsel for the defendants-appellants argued that there is a fundamental difference between an action for infringement of a registered trade mark and an action for passing off the goods of the defendants as the goods of the plaintiffs; and that the learned Judge has not borne in mind this distinction in deciding the case. We do not agree that the judgment of the learned Judge is vitiated by not adverting to this distinction. The learned Judge has clearly dealt with the case as an action for passing off.
In the plaint it was unequivocally stated that the user by the defendants with the label closely resembling the label of the plaintiffs has the effect of passing off the defendants' goods as the goods manufactured by the plaintiffs. The learned Judge has decided the case on that footing. It is, of course, not necessary that there should be actual evidence that the similarity had deceived the buyers. Sometimes when a plaintiff comes to court expeditiously before any perceptible loss has been sustained it will not be possible to adduce evidence of actual deception. Then it would be for the court to find out if an ordinary buyer would or would not be taken in by the close similarity between the trade marks adopted by the two contesting parties.
5. We have looked at the two labels and we entirely agree with the learned trial Judge that there is similarity between the two to such an extent as would lead an ordinary buyer not to make a difference between the two. As the learned Judge has pointed out, there will be no opportunity for the purchaser to have these labels side by side and then to make a decision himself.
6. Mr. Srinivasagopalachariar, next contended that the onus was wrongly thrown on the defendants to establish that they had been using the impugned label from a very long time without any objection on the part of the plaintiffs. But we do not think so. The plaintiffs' case was simply this: that they were using this particular label with the device of a chair for a considerably long period and that only recently the defendants had begun to use a label which very closely resembles their own. It is the defendants who pleaded that they had been using exactly similar labels from a long time and, therefore, it is incumbent on them to prove their case.
There is one circumstance which is clinching namely that if the defendants had been using a similar label for a long time and they found that the plaintiffs were using a label closely resembling theirs, they would have taken proceedings to prevent the plaintiffs from using the label and the very fact that they never made any such complaint certainly inclines one to accept the version of the plaintiffs. The evidence on either side is very meagre but it cannot be said that the learned Judge's, finding is not supported by the evidence on record. We have no hesitation in agreeing with the learned Judge's conclusion that by the use of the label closely resembling the label of the plaintiffs in size, colour and design, the defendants were passing off their goods as those of the plaintiffs. The plaintiffs are entitled to the relief of injunction restraining the defendants from so doing.
7. Mr. Srinivasagopalachariar complained that the learned Judge did not give a definite finding on one of the issues based on Section 20 of the Trade Marks Act. Evidently, this was not pressed before the learned Judge, but, in any event, we find that there is no substance in this plea. Section 20 of the Trade Marks Act, 1940, runs thus:
'1. No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark unless such trade mark has been continuously in use since before the 25th day of February 1937, by such person or by a predecessor in title of his and unless an application for its registration, made within five years from the commencement of this Act has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused.
2. Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.'
Having regard to Sub-section (2) which expressly saves the rights of action against any person passing off goods, we fail to see how the suit is barred by the provisions of this section. In our opinion, Section 20 in no way bars the present suit, This objection must be overruled.
8. Finally, Mr. Srinivasagopalchariar took exception to the form of the decree. The decree runs thus:
'1. That S.M. Syed Haji Abdul Rahiman and Co., the defendants herein, their servants and agents be and are hereby restrained by a perpetual injunction from using the label or trade mark Ex. P-2 or Ex. D-1 (annexed hereto) with the device of the chair, and that there be no objection to their using the said device without the chair.' Learned counsel drew our attention to the ruling reported in Munnalul Serowjee v. Jawala Prasad, ILR 85 Cal 311 and Shanmuga Nadar v. Shanmughavel Nadar : AIR1940Mad145 , and the observations occurring in the judgment of the learned Judge who decided Lissen Ltd. v. Harley, 1929 46 RPC 10. In the last case an order was passed restraining the defendants from selling or offering for sale any batteries under a label containing the word 'Lissen' or under any label calculated to deceive, without clearly distinguishing the said batteries from the batteries of the plaintiffs. In : AIR1940Mad145 , Patanjali Sastri J. (as he then was) granted an injunction in the following terms :
'An injunction restraining the appellant and his father from using the term 'Shanmugam' in connection 'or association with beedies as a descriptive term thereof or from using any trade name or trade mark in which the term 'Shanmugham' occurs or from carrying on business in the Ambasamudram taluk in the firm name in which the word 'Shanmugam' occurs without taking reasonable precaution to clearly distinguish the business Carried on or beedies manufactured or sold by the defendants from the business carried on and the beedies manufactured by the plaintiff.'
Fletcher J. in the Calcutta case ILR 35 Cal 311 (a similar case) granted an injunction in the following terms:
'An injunction restraining the defendants from selling or offering for sale ghee not prepared or manufactured by the plaintiff in canisters having embossed thereon a flower on a stem with leaves (the flower being in the shape of an ellipse with an indented circumference) without clearly distinguishing such ghee from the plaintiff's ghee.' Johnston v. Orr Eving, (1882) 7 AC 219, is a case which resembles our? substantially. There the resemblance was in respect of the devices used in the label to indicate the goods of the contesting parries. In that case there was no evidence of actual deception; but the court found that there was a possibility of such deception. In the result an injunction was granted to the aggrieved plaintiff in the following manner;
'To restrain the defendants, their servants, workmen and agents, from affixing or causing to foe affixed to any Turkey red yarn not dyed by the plaintiffs, the ticket marked B, and from using two elephants on any ticket used on Turkey red yarn, without clearly distinguishing such ticket from the plaintiff's ticket mentioned in the pleadings, being, the exhibit marked A referred to in the said depositions, so as to represent or induce the belief that any of the said yarn was dyed by the plaintiffs.'
Mr. Krishnamurthi Aiyyar who appeared for the respondents did not seriously take exception to the injunction being passed in such a manner. We, therefore, modify the injunction embodied in the decree of Ramaswami Gounder J. and instead of the said injunction we grant the following injunction:
'That S.M. Syed Haji Abdul Rahiman and Co., the defendants herein, their servants and I agents be and are hereby restrained by perpetual I injunction from using the label or trade mark Ex. P-2 with the device of the chair without clearly distinguishing such label from the label used by the plaintiffs marked Ex. P-1 so as to induce the belief that the lunghis sold under the said trade mark are the lunghis manufactured by the plaintiffs.'
Except for this modification of the decree, the appeal is dismissed. No costs.