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V. Abdul Kareem Sahib Vs. A. Abdul Kareem Sahib - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai
Decided On
Reported inAIR1931Mad461
AppellantV. Abdul Kareem Sahib
RespondentA. Abdul Kareem Sahib
Cases ReferredReddaway v. Banham
Excerpt:
.....restraining a man from using his own name does not extend, at any rate, in anything like the same degree, to the use of that name as the descriptive part of the trade designation of an article. 2 it is stated that the plaintiff's beedies are well known in the market as 'kareem beedies,'complaint is rather directed against the use of his trade-mark and design than specifically against the appropriation of this designation. there is something like actual abstention from such a course, and considering that the defendant began to use the term only two years after the plaintiff, and the plaintiff did not bring his suit until eight years after that use began, we do not think that we ought to vary the decree in the manner prayed......which we have to decide. in 1915 the plaintiff adopted as a sort of trade-mark, although of course trademarks in the strict; sense are nob legislated for in india, a single violet hemisphere, ex. b-3, which was registered on 24th february 1915 by the local chamber of commerce. such registration, it may be explained, does not carry with it any legal rights. at the same time the plaintiff designated his goods as 'karim beedies.' the defendant; followed also with a hemisphere which he impressed in violet ink with a rubber stamp on his own packages. in february 1911 the plaintiff changed to a pair of hemispheres joined together and the defendant countered in november 1917 with a similar mark. these were both registered with the chamber of commerce, but it is noteworthy that, while the.....
Judgment:

Curgenven, J.

1. The plaintiff is a manufacturer of beedies or Indian cigarettes, which he sells wholesale in packages of a thousand. He sued to restrain the defendant, who is also a manufacturer, from selling beedies in wrappers got up to resemble his own. He also claimed damages as compensation for loss incurred, but disallowing these, the learned City Civil Judge has given him a decree restraining the defendant from imitating his wrappers in certain respects, and from this the defendant now appeals. The plaintiff has filed a memorandum of objections with respect to a particular feature of she defendant's imitation. Both parties, it will be seen have the same name with only a difference in the first initials. The plaintiff in his evidence has stated that he manufactures as many as ten lakhs of beedies per day, that he has 95 branches for this work, and that he pays tax on an income of Rs. 15,000 per annum. He adds that his beedies are very popular and has acquired a reputation in the market. These statements have not been challenged by cross-examination, nor have they been disputed before us. The defendant on the other hand is clearly in quite a small way. After deposing that he made from Rs. 500 to Rs. 1,000 per mensem, he had to confess that he paid neither income-tax nor professional tax, that he owned no property, that he was living in a rented house, that he was in the same condition ten years, after be started trading and that he keeps no accounts of his transactions, although he boasts that he gets orders from half a dozen places in the Madras Presidency. The wrapper upon which the plaintiff founds his claim was actually introduced by him in 1920, but the earlier history of the defendant's conduct is not without its bearing on the points which we have to decide. In 1915 the plaintiff adopted as a sort of trade-mark, although of course trademarks in the strict; sense are nob legislated for in India, a single violet hemisphere, Ex. B-3, which was registered on 24th February 1915 by the local Chamber of Commerce. Such registration, it may be explained, does not carry with it any legal rights. At the same time the plaintiff designated his goods as 'Karim Beedies.' The defendant; followed also with a hemisphere which he impressed in violet ink with a rubber stamp on his own packages. In February 1911 the plaintiff changed to a pair of hemispheres joined together and the defendant countered in November 1917 with a similar mark. These were both registered with the Chamber of Commerce, but it is noteworthy that, while the defendant registered his design in black: ha actually printed it in violet, the colour adopted by the plaintiff. This was followed by an exchange of lawyer's notices, Exs. 2 and 3, and the plaintiff tiled two successive criminal cases, with the fate of which we need not specially concern ourselves because admittedly they were misconceived. They seem however to have resulted in an undertaking given by the defendant to alter his design, which he did not fulfil.

2. In 1920 the plaintiff adopted yet another design of wrapper, Ex. B-2, registering, the whole wrapper with the Chamber of Commerce on 29th January 1920. At some date not proecisely fixed, but probably in November 1920, the defendant made a corresponding change. The actual printing of his new wrapper, he says, was on 5th November, and this is supported by a printer's bill of that date. On 29th November the plaintiff sent him a lawyer's notice, Ex. 8, imputing to him that he was fraudulently and dishonestly making use of a colourable imitation of the plaintiff's wrapper. The two wrappers are produced as Exs. B-2 and X the corresponding packages which are made up with them being M. Os. 1 and 3. There can be no question of the striking similarity between these two packages. Each is a rectangular package of precisely the same size and shape and the whole get-up of the plaintiff's wrapper, the letterpress and the hemispheres which form its distinctive devices are imitated in colour, size and distribution of marks on all the six sides of the defendant's wrapper. Even apart from previous history of the defendant's efforts, which we have summarized, an inspection can leave no doubt that the defendant's wrapper was deliberately-designed as an imitation of the plaintiff's. We are further satisfied that the imitation is close enough to deceive an unwary purchaser. The imitation is of course directed not to deceive the retail vendor, who must know the source from which he obtains his stock-in-trade and whose co-operation the defendant has endeavoured to enlist by selling his packages at one anna cheaper than those of the plaintiff. These packages are exposed by the beedi-sellers in their shops, and customers come and buy one or more single packets of beedies put of them. Such a customer would have two ways of: indicating what he wants, either by naming the article or by pointing to it whore it is in the shop. The defendant, as has bean said, happens to have the same name as the plaintiff, and describes his beedies on the wrapper as ' Karim Beedies.' The customer who points, and who perhaps cannot read, would naturally be guided by the general appearance of the wrapper and we think that the defendant's wrap-par is a close enough imitation of the plaintiff's to deceive anyone into the belief that the goods are the plaintiff's.

3. It has bean sought to cast doubt on one necessary element in the plaintiff's case, that the public had come to identify his goods by the external appearance presented by his wrappers. It must no doubt be proved, before an action of this kind can succeed, that the imitation is of some marks or other appearances associated in the minds of the customers with the plaintiff's goods. There must, in other words, be evidence of repute : see Kerely on Trade-marks, Edn. 6, p. 559. The position was clearly put by Benson, J., at p. 98 in Nooroodeen Sahib v. Charles Sowden : (1905)15MLJ45 as follows:

Every one may use any mark or combination of marks or symbols that ha likes unless some other person has by user acquired a reputation. which couples his name with the mark or combination of marks or symbols.

4. In that case the user acquires a pro-party in the mark or combination which the law will protect just as much as if it were a registered trade-mark. As observed by the Privy Council in, Somerville v. Schembri:

As soon, therefore as a trade-mark has been so employed in the market as to indicate to purchasers that the goods to which it is attached are the manufacture of a particular firm, it be-comes to that extent the exclusive property of that firm, and no one else has a right to copy it or even to appropriate any part of it, if, by such appropriation, unwary purchasers may be induced to believe that they are getting goods which were made by the firm to whom the trademark belongs.

5. It is not necessary to prove that any-one has, in fact, been deceived. It is enough if

the defendant's trade-mark bears such a resemblance to that of the plaintiff's as to be calculated to mislead incautious purchasers, per Lord Kingsdowri in Leath Cloth Company v. American Leather Cloth Company.

6. No length of time during which the plaintiff's goods must have been exposed for sale in these wrappers can be laid down, the question whether an association of ideas has been created in the minds of customers being dependent on the special circumstances of each case and being of course, a question of fact; nor as the above citation shows is it necessary to adduce the direct evidence of purchasers. The facts of reputation and deception may be inferred from the attendant circumstances. In cases like the present it seems legitimate to argue that, unless the imitated wrappers had become associated with the goods of a manufacturer of popular articles the defendant would not have undergone the trouble and incurred the risk of so sedulously imitating them. Apart from that it will be clear from what we have said of the dimensions of the plaintiff's business that many thousands of his packages must have been exposed for the sale of beedies in shops in Madras and elsewhere during the period, not far short of a year, which intervened between the introduction of the two wrappers. We feel no reason to doubt that the plaintiff's wrapper had become clearly identified with his beedies in the minds of purchasers when the defendant placed his imitation upon the market.

7. Having adverted to the degree of closeness to which the defendant's wrapper resembles the plaintiff's we turn to the actual terms of the decree, which restrains the defendant

from using on the wrappers of his packets of beedies the two red transverse stripes and the green lines of latitude and longitude that he places on his green hemispheres.

8. That is the respect in which he has been forbidden to imitate the plaintiff's wrapper and we have no hesitation in saying that an order in such moderate terms is justified, and perhaps more than justified, by the facts. The defendant has gone so far as to copy not only the position, size and colour of the plaintiff's hemispheres but to a large extent the distribution of colour and design within them and it is in this latter respect only that the injunction has been passed against him. On the conclusions which we have already expressed there can be no ground for interference with an order in these terms.

9. Before however confirming the decree we think We ought to advert to the contention that the plaintiff has been guilty of 'considerable delay in pursuing his remedy. The cause of action arose at the end of 1920 and the suit was not filed until September 1925. The plaintiff's first step was to send the notice Ex. 8, which elicited a reply, Ex. 9, from the defendant denying that he had infringed any right. The plaintiff sent another notice (Ex. 6) in 1922, specifically complaining that the defendant was using wrappers exactly similar to his own and in particular bearing two green globes with transverse red stripes. The defendant's reply to this is Ex. 7 and certainly is in very unsatisfactory terms. No further correspondence took place between the parties before the institution of the suit. The plaintiff's excuse for not taking action in the meanwhile is that the defendant's trade went to pieces, he himself being implicated in a murder case. It does not seem true that he completely lost his trade because there are certain printing bills etc. which point to the contrary, but it may very well be the case that his interference with the plaintiff's business was not serious enough to make it worth while to sue him, especially as the plaintiff says that during 1922-23 he had to file three suits for infringement against other persons. There is one document, Ex. 12, which purports to be a circular issued by the defendant to his customers explaining that he had had for some time past to dispense with the use of labels and wrappers in selling his beedies, and which, if genuine, certainly points to a failure to maintain his trade. The defendant repudiates this document and, although from internal evidence it seems probable that he issued it, and it first appears in evidence in his own deposition it may be objected to as not proved by legal evidence. We think on the whole however that there is no substance in this objection on the score of delay. Certainly there is no ground to assume from it any acquiescence on the part of the plaintiff, and mere delay should not, it has been held in. passes of this character, disentitle the plaintiff to the grant of an injunction: see Rowland v. Michell [1896] 13 Rep. Pat. Cas. 457 and Fullwood v. Fullwood [1878] 9 Ch. D. 176.

10. We accordingly dismiss the appeal with costs.

11. In his memorandum of objections the plaintiff protests against the dismissal of his claim for injunction as regards the trade name ' Karim Beedies ' which the defendant equally with the plaintiff has been in the habit of using on his wrappers. The learned City Civil Judge has gone into the whole question of the use by the defendant of his name upon these wrappers.. There seems no doubt that step by step he, has altered it into closer and closer resemblance to the plaintiff's. Thus he was originally V.A. P. Abdul Karim Saheb, then he dropped the 'P' and later the 'Saheb,' adding & Co.' These changes seem obviously designed for the purpose indicated and certainly show a lack of bona fides on the part of the defendant. Nevertheless, it is not now contended that he should be restrained from using his name, in whatever form, but only the word Karim ' as a descriptive epithet in '' Karim Beedies.' Now there can be no doubt that the adoption of this description has led, and has indeed been designed to lead, to the confounding of his beedies with those of the plaintiff. Further, the objection which in general may attach to an injunction restraining a man from using his own name does not extend, at any rate, in anything like the same degree, to the use of that name as the descriptive part of the trade designation of an article. The principles which should be applied in such circumstances have been very fully enunciated by the Court of appeal in Valentine Meat:, Juice Co. v. Valentine Extract Co. Ltd. [1901] 83 L.T. 259. There is in principle no distinction between a case in which the name of the use of which the complaint is made, is the name of the person carrying on the business and a case in which it is not; the law, as laid down in Reddaway v. Banham [1896] A.C. 199 is, equally in the two cases,. that nobody has any right to represent his goods as the goods of somebody else.' The only difficulty that arises is in the application of this proposition to the facts of the particular case. We should have had little hesitation in enlarging the injunction by restraining the defendant from making use of the description 'Kareem Beedies' were it not for certain circumstances which we are bound to consider. His own use of this description appears to date from 1915, when it is found in association with his single' hemisphere (Ex. B-3). As early as 1917 the defendant began to make use of the phrase (see Exs. B and 15), and he has used it ever since. Although in the notice Ex. 2 it is stated that the plaintiff's beedies are well known in the market as ' Kareem Beedies,' complaint is rather directed against the use of his trade-mark and design than specifically against the appropriation of this designation.

12. After the criminal cases, the plaintiff, in his notice Ex. 7 states that the parties had come to an arrangement that the defendant should not ' use the same or similar trade-mark and property mark ' as that used by the plaintiff; but should adopt three globes instead of two. The written memorandum to this effect referred to in the notice is not-forthcoming, but the defendant appears to confirm the nature of his undertaking when he says : ' before the Magistrate I agreed thenceforth to use. three globes.' It cannot be said therefore that the plaintiff made use of this opportunity to insist upon the defendant abandoning the description. Later again, in the notice Ex. 6 emphasis is laid upon the similarity in the appearance of the packages and the trade-mark, the content showing, that the hemispheres were referred to, no express allusion being made to the use of the description 'Kareem Beedies.' We think that there is here something more than mare delay in seeking a remedy. There is something like actual abstention from such a course, and considering that the defendant began to use the term only two years after the plaintiff, and the plaintiff did not bring his suit until eight years after that use began, we do not think that we ought to vary the decree in the manner prayed. The memorandum of objections, is dismissed with costs.


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