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T.M. Abdul Rahim and Co. Vs. Ahmed Basha - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai High Court
Decided On
Case NumberLetter Patent Appeal No. 67 of 1963
Judge
Reported inAIR1965Mad250
ActsTrade Marks Act
AppellantT.M. Abdul Rahim and Co.
RespondentAhmed Basha
Cases ReferredSubbiah v. Kumaraval
Excerpt:
.....trader who asserts that he is entitled to be protected with regard to his trade mark (1) that his trademark or part of it is not likely to deceive or cause confusion and (2) that his mark is not identical with or closely similar to the trade mark belonging to a different proprietor in respect f the same goods. ..furthermore, evidence is admissible to establish what is or has become an essential feature, but evidences not essential if the court feels satisfied on inspection in coming to the conclusion that some particular feature is a distinguishing feature of the mark allegedly infringed. the likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side ad demonstrating how small is the chance of error in any customer who places his order for..........could the two trade marks be said to be closely resembling each other and hence the defendant's trademark was not likely to be mistaken for the plaintiff's trade mark. in the end, the learned judge dismissed the appeal preferred by the plaintiffs. now it is against this judgment the plaintiffs have preferred this letters patent appeal.(6) in the appeal once again the same arguments were addressed before us by the same counsel who appeared before ganapatia pillai j. the only point that was strenuously argued before us was whether the mark for the defendant-respondent is deceptively similar to the mark of the appellant, which is a registered trade mark. the question whether there is or there is no resemblance between two marks or get up of the goods depends upon particular facts of.....
Judgment:

(1) This Letters Patent Appeal is preferred by the plaintiff's against the judgment of Ganapatia Pillai, J., confirming the dismissal their suit for an injunction restraining the defendant and his agents from selling beedies under the name 'Maharani Beedi' or under any name which is a close and colourable imitation of the plaintiffs' trade mark 'Maharaja Beedi' and from using wrappers, labels and ring labels, in colourable imitation of those of the plaintiffs and from passing of his beedies as those of the plaintiffs, for directing the defendants to deliver to the plaintiffs all the printing blocks used by him for printing his wrappers and labels and ring labels and to deliver to the plaintiffs all the unused wrappers and labels of the Maharani beedies and for recovery of damages of Rs. 1,000 and costs.

(2) The plaintiffs are manufacturing and selling beedies under the name of Maharaja beedies for the past 30 years. In e plaint, they state that their Maharaja beedies have acquired a wide reputation and popularity in the market, especially in the States of Mysore, and Andhra Pradesh. Their factory for manufacturing these beedies is at Ranipet for the past several years,. They registered the said mark under Trade Marks Act of 1940 on 26-1-1945 under the mark bearing No. 105149. The central and prominent feature of the said mark is the picture of a Maharaja and this as well as the other features of the mark including the colour, the lettering, the lions, the floral designs, etc., have for long been associated by the smoking public with beedies known as Maharaja beedies. The plaintiffs have also registered on 28-1-1955 another mark as part of a series bearing No. 105150 under the Trade Marks Act and that mark consists of the picture of a Maharaja with the letters T. M. on each side of it. It is alleged in the plain that the defendant, who was previously employed as a car driver under the plaintiffs till a year prior to the filing of the plaint, started manufacturing and selling beedies under the name of Maharani beedies, and trade name of the plaintiffs. The main complaint of the appellants in the plaint ifs that the Maharani beedies are almost an exact reproduction of the appellants wrappers and labels except for the slight ad deceptive change in the name of the mark from Maharaja to Maharani. Hence the suit.

(3) The defendant denies that his trade mark was a colourable imitation of the plaintiffs' trade mark and asserted that the plaintiffs cannot claim any monopoly or exclusive right to the use of the word 'Maharaja' and that even assuming that the plaintiffs have aright to the use of the word 'Maharaja', the two trade marks of the plaintiffs and the defendant are different, dissimilar and distinct in every respect and by no stretch of imagination could the Maharani mark be said to be a close and colourable imitation of the Maharaja mark. He alleged that the Maharani mark originally belonged to one Hameed of Wallajah from whom the defendant purchased the said mark together with the good will of the business on 2-4-1958, under a registered deed of sale for Rs. 1,500. He also set up various defences like estoppel, waivers and acquiescence and further pleaded that he was protected by honest and concurrent user.

(4) On these pleadings the parties went to trial before the District Judge, North Arcot. The learned District Judge found that the defendant's mark cannot lead to confusion or deception and that the defendant cannot be said to have copies the dosing of the plaintiff and in this view he dismissed the plaintiff's suit.

(5) When the matter came up in appeal to the High Court, Ganapatia Pillai, J., after considering the relevant sections of the Trade Marks Act and the cases cited by the respective counsel agreed with the finding of the trial Court that the similarity between the two marks is not likely to lead to deception or confusion and held that neither by the auditive test not the visual test could the two trade marks be said to be closely resembling each other and hence the defendant's trademark was not likely to be mistaken for the plaintiff's trade mark. In the end, the learned Judge dismissed the appeal preferred by the plaintiffs. Now it is against this judgment the plaintiffs have preferred this Letters Patent Appeal.

(6) In the appeal once again the same arguments were addressed before us by the same counsel who appeared before Ganapatia Pillai J. The only point that was strenuously argued before us was whether the mark for the defendant-respondent is deceptively similar to the mark of the appellant, which is a registered trade mark. The question whether there is or there is no resemblance between two marks or get up of the goods depends upon particular facts of every case. Two important things have to be satisfied by any trader who asserts that he is entitled to be protected with regard to his trade mark (1) that his trademark or part of it is not likely to deceive or cause confusion and (2) that his mark is not identical with or closely similar to the trade mark belonging to a different proprietor in respect f the same goods. We have, therefore, to consider whether the defendant's trade mark is identical with or closely resembles the plaintiffs' trademark, whether the defendant's trade mark contains or consists of the whole or any essential or leading feature of the plaintiff's mark combined with other matter and whether the defendant's mark is deceptively similar to, and is a colourable imitation of, the plaintiffs' mark notwithstanding that none of the integers appearing in the defendant's mark is identical with any of them in the plaintiff's mark.

Where the marks are identical, the plaintiff has merely to show that the defendant is using the trade mark in relation to goods which are included in the plaintiff's registration. As was observed by Farewell, J. in Sphinx case (1902) 19 RPC 377 --

'the registration shows his title to the mark, and if the infringer has absolutely copied the mark and made a fascimile representation of it, you do not want any further evidence. The thing speaks for itself. 'You have copied'. As I understand Lord Halsbury in the case in the House of Lords of he North Cheshire and Manchester Brewery Co., v. Manchester Brewery Co., 1899 AC 83 that is sufficient by itself without more............'

Where the whole or any essential particular of the plaintiff's Mark forms an element of combination with other matter in the defendants label, the Court will grant an injunction, if it finds that the addition of the other matter in the label is in effect only a colourable introduction to disguise the real purpose of infringement. As pointed out by Upjohn, J., in Cluett Peabody and Co. Inc. v. McIntyre Hogg March and Co. Ltd., 1958 R. P. C. 335

'A man infringes the mark of another if he seizes upon some essential feature of the plaintiffs mark. That essential feature may be ascertained by the eye or by the ear in this sense, that goods bearing that mark may be likely to become known by a certain name.................Furthermore, evidence is admissible to establish what is or has become an essential feature, but evidences not essential if the Court feels satisfied on inspection in coming to the conclusion that some particular feature is a distinguishing feature of the mark allegedly infringed.........'

(7) The question whether the defendant's mark is deceptively similar to the plaintiff's mark is a question of fact. As observed by Lord Macnaghten in Reddaway v. Banham, 1896 AC 199

'Cases of this sort must depend upon their particular circumstances. The facts of one case are little or no guide tot he determination of another.' Similarly in Johnson and Co. v. Orr. Ewing and Co., 1882 7 AC 219, Lord Watson observed : 'How can observations of Judges upon other and quite different facts bear upon the present case, in which the only question is what is the result of the evidence?'

(8) The Court must look at each of the marks as a whole ad to merely at particular differences and resemblances. In Thendstikker case Lord Esher said :

'The trade mark is the whole thing, the whole picture on each. You have, therefore, to consider the whole'.

Each dissimilarity or resemblance must not be taken by itself and a conclusion based thereon. The true test is whether the totality of the proposed trade marks such that it is likely to cause mistake or deception or confusion in the minds of persons accustomed to the existing trade mark. Minor details or non-essential points of difference between the marks are not important provided the main idea is the same. The whole question in these faces is whether the thing--taken in its entirety, looking at the whole thing--is such that in the ordinary course of things in person with reasonable apprehension and with proper eyesight would be deceived. Byrne J., said that in deciding the question of deceptive similarity, the Court--

'must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective whole, Clark v. Sharp,(1898) 15 RPC 141 .'

Where there are may points of dissimilarity and the is great difference in the marks taken as a whole we should not hear the objection of the plaintiff. Equally the authorities have laid down that no useful purpose will be served by comparing the marks side by side. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side ad demonstrating how small is the chance of error in any customer who places his order for goods with both marks clearly before him, for orders are not placed under such conditions. The eye is not an accurate recorder of visual detail and arks are remembered rather by general impressions or by some significant detail that by the photographic recollection of the whole.

(9) Having reviewed the case law on the subject, we have to consider the question of resemblance and the likelihood of deception taking not only the whole trade mark but also its distinguishing or essential features. In the instant case, the District Judge has given the following graphic description of the two marks in para 7 :

'The most dominant feature of the Maharaja trademark is that it contains in the centre a portrait of a masculine native ruler with a conspicuous and massive ornamental turban, coming down to covering the ears of the Maharaja as well as both his temples and the whole of his head,. The face of the Maharaja is distinguished by a tilak on he forehead and a pair of moustaches. The body of he bust is covered by a lavishly decorated coat with, a red coloured cross-belt across the right shoulder. The entire portrait is enclosed in an oval setting without he words 'Trade mark' on the one side and the word 'registered' on the other. Lateral support is given to the portrait by a ion on one side and unicorn on the other against a back ground of floral designs. In a rectangular panel on top of the trade mark ware printed the words 'Maharaja beedi' in English characters. In a rectangular panel at the bottom are painted the words 'T. M. Abdul Rahim Beedi Merchants, Ranipet'.......the dominating feature of the Maharaja beedi wrapper is the portrait of the bust of a Queen who is essentially feminine and who by the delicacy of her features, posture, mien and looks can, by no perverse imagination, be confused with the moustached and turbaned Maharaja. There is a tiny Crown on the head of the Queen, while unlike the turban of the Maharaja sits lightly on the top of her head exposing part of the head and the whole of the forehead. Unlike the Maharaja, the Maharani wears no tilak. Her neck is bare and also part of her bosom. She also wears a necklace which gives her a distinctive look. He sharp feature offers a striking contrast to the blind looks of the Maharaja.'

Equally Ganapatia Pillai, J. has observed :

'.................I am not impressed that on seeing the two labels one can say that he Maharani label resembles the Maharaja label so closely as is likely to lead to confusion or deception..............'

The learned counsel for the appellants referred to a series of cases where when two marks were identical and the essential part of the plaintiffs mark formed an element of combination with other matters in the defendant's label, it was held that the similarity was such as to lead to deception. This in Jugal Lal Kamalapat v. Swadeshi Mills Co., Ltd., AIR 1929 PC 11, the plaintiffs, a milling company dealing in Indian cloth, used a trade mark in which, either in conjunction or alone, the lotus flower was the leading feature. The defendants used a similar trade mark, which if looked at property showed the emblem adopted was not lotus but a rose and the whole get up of the one was like the whole get up of the other. Viscount Dunedin observed that the evidence was quite satisfactory to show the plaintiffs cloth was associated with the name of 'Lotus' and that any lotus device would lead to clothe being able to be palmed off as their cloth which was the cloth of another manufacturer. This decision has no application to the facts of this case.

(10) The appellant's counsel associated the decision in Subbiah v. Kumaraval, AIR 1946 PC 109, where the facts are the following: The plaintiff, whose native place was Mukkudal in Tirunelveli district went to Bombay to learn the manufacturer of beedies from his uncle and on his return to his native place commenced the manufacture of beedies adopting the name of Shokkalal Ram Sait, displaying a portrait of himself in Marathi dress in his registered trade mark. The defendant, who was also a resident of South India and manufacturer of beedies, displayed in his trade mark a portrait of himself in Marathi dress and had dress closely resembling that in the plaintiff's photo. The Privy Council held the general effect on the mind of anybody dealing in beedies would be to confuse the beedies sold under the marks and labels of the defendants with those sold under the plaintiff's trademark. As pointed out by Ganapatia Pillai, J., this decision must be taken to be a decision on the facts of that case.

(11) Mr. Ahmed Meeran also cited the decision in In re Sandow Ltd., (1914) 31 RPC 196, where the facts are: An application was made by Sandow Ltd. for registration of a trademark consisting of the letter 'S' twined round the figure of a female said to be a cottage worker, the whole being surrounded by a circular laurel wealth. The application was opposed by another person, who was the owner of the similar trademark consisting of the letter 'S' twined round the figure of a bird, said to be a jay, the whole being surrounded by an oval, on the ground that here would be confusion between the two marks. Sargant, J., held that there was reasonable probability that section of the public might be deceived. This decision also connote apply to the facts of the instant case.

(12) In the present case, there is no question of deception resemblance between the two marks and there is also no likelihood of confusion arising in the minds of the public between these two marks. The essential part of the plaintiffs' mark is a pictorial representation of a Maharaja, a king, that of the defendant is Maharani, a Queen. No person is likely to mistake one for the other. Taking all the circumstances into consideration, we are of opinion that he plaintiffs have not discharged the onus of proving to the satisfaction of the Court that if the defendant is allowed to use his mark, there is reasonable likelihood of deception or confusion created in the minds of the public. We are not satisfied that any infringement of the plaintiff's trade mark has been made out.

(13) The result is the appal fails and it is dismissed with costs.

AI/AGJ/VBB.

(14) Appeal dismissed.


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