1. The plaintiff has preferred this appeal against the dismissal of his suit in 0. S. No. 4 of 1972 on the file of the District judge, North Arcot,
2. The plaintiff, a manufacturer of beedies at Vaniyambadi under the name fish beedies' with wrappers and labels showing the picture of fish in water, applied to the Court for declaration of his right to 'use the trade mark Meen Beedies to the beedies manufactured by him as shown in Annexure II to the plaint and for permanent injunction restraining the defendant who is also engaged in the. Business of manufacture of beedies at Vellore from using the infringed trademark. The plaint averred that the plaintiff has been using his trade mark of fish in water encircled with an oval ring with the letters PLA on either side of Oval ring within a circle as set out -in Annexure I to the plaint with the trade name Meen Beedi both in Tamil and Urdu beneath it and in Telugu above it with the words 'Fish Mark Beedi and Meen mark Beedi on either side of it, that the beedies of the plaintiff are of high quality and were very popular with the beedi smoking people and that he has also spent a large amount in advertising his beedies in journals and news Papers and wall posters including exhibition of slides in Cinemas. It was further averred that he is using this trade mark from 1959 onwards uninterruptedly, that he has also registered the trade mark, under the Indian Copyright Act, as early as in 1965, that he has also applied to the Registrar of Trade Marks for registration of the trade mark under the Trade and Merchandise Marks Act and that the said application is pending registration. The plaint further stated that the defendant who was also a manufacturer of beedies has used the trade mark of the plaintiff and thought of passing off his inferior goods as those of the plaintiff in the year 1972. It is also stated that by such passing off the goods, he has caused confusion in the mind of the public and has also caused loss to the plaintiff. The plaint also stated that the mark used by the defendant is identical with the trademark used by the plaintiff, and that any unwary beedi smoking Person is likely to be -confused. The plaintiff therefore prayed for the reliefs already stated.
3. The defendant in his answer denied the allegation in the plaint that he thought fit to Pass off his goods as those of the plaintiff, and stated that the beedies manufactured by the defendant are wrapped in cartons of different colour, that his beedies are in great demand and the beedi smoking people have come to associate the name 'flying fish beedies' and. the design of the defendant's goods, as articles manufactured by the defendant and that the beedies of the defendant are superior in quality to those of the plaintiff and there is also difference in size and can easily be distinguished. The defendant also denied .the allegation that his beedies were sold in the market Only from October 1972. Finally he contended that the court has no jurisdiction to entertain the suit as the plaintiff has not registered the trade mark under the Trade and Merchandise Marks. Act.
4. On these pleadings the following issues were framed by the District Judge:-
1. Whether the plaintiff has acquired a proprietary right to the use of the mark and design depicted in Annexure II (a), II (b) and 11 (c)?
2. Whether the designs and marks depicted. as Annexures III (a), III (b) and III (c) are colourable imitations of the plaintiff's marks?
3. Whether the defendant has been passing off his goods as those of the plaintiff?
4. Whether the defendant had started using marks in Annexure III (a) III (b) and 111 (c) only from September 19,72 as alleged by the plaintiff or even from 1952 as. alleged by the defendant?
5. To what if any damages is plaintiff entitled?
6. Whether this Court has no jurisdiction to entertain the suit in its present form?
7. Whether the plaintiff has acquired any copyright to the trade mark?
8 To what relief, if any, is the Plaintiff entitled?
1. Whether the subsequent registration secured by, the plaintiff is a ground for sustaining the plaintiff's claim?
The learned District Judge, after comparison of the marks used by the plaintiff and the defendant observed that 'it is not possible to come to the conclusion that they are similar or deceptively similar enabling the plaintiff to seek an injunction or damages'. He is also further of the view that the marks used by the, defendant are not colourable imitations or similar to the trademarks used by the plaintiff. on the question of jurisdiction, he held that he can entertain the suit as the plaintiffs trade mark has been subsequently registered. He further found that there is no infringement of the trademark used by the plaintiff, and that the defendant has not been passing off his goods as those of the Plaintiff. Finally, he found that the plaintiff has acquired 'proprietary right for the use of the mark'. He dismissed the suit and the claim for damages.
5. Before I advert to discuss the contentions raised in this appeal, I must point out that the plaintiff before the registration of the mark filed the suit, though he had applied for registration earlier. Under Ex. A. 6, the trademark of the plaintiff has been registered in part A of the register. After this registration, the plaintiff amended the plaint on. 29-4-1975 to include a prayer for injunction on the ground that he has since become the owner of a registered trade mark. That amendment was allowed. Obviously aware of the fact that no person shall be entitled to institute any proceeding to prevent or to recover damages, for the infringement of an unregistered trade mark, the plaintiff originally filed the action against the defendant for passing off' the goods as the goods of the plaintiff. Later, when the trademark was registered, he included the prayer for an injunction on the ground that his, trademark was registered.
6. It is contended by the counsel for the respondent that the suit by the plaintiff at the time of institution is not competent as he could not institute any proceeding for the infringement of a mark, which was not registered on the date of plaint. But, I must point out that under Section 23, the trade mark, when registered, shall be registered as on the date of making of the application, for registration of a trade mark in part A or part B of the register and that date shall, subject to the provisions of Section 131 of Trade and Merchandise Marks Act, be deemed to be the date of registration. From Ex. A. 6, it is seen that the date of registration is 18th September 1969, obviously referring to the date of application, though the certificate is dated 30th November 1974. The contention of the respondent therefore that the court has no jurisdiction to entertain the suit is not correct. Kerly in his book 'Law of Trade Marks and Trade Names', 10th Edition, CIL 15, paragraph 15 at page 309 says :-
'The writ for infringement may be issued before registration of the mark, provided that registration has been applied for, since the registration is dated back to the application.'
Therefore, it is clear that in view of Section 23 of the Trade and Merchandise Marks Act, the date of registration of the trade mark of the plaintiff should be taken as 18th September, 1969 as found in Ex. A. 6, the certificate. The suit is therefore competent and the plaintiff can maintain an action for infringement.
6A. Before I deal with the facts of the case, I must point out that a reading of the plaint would show that the plaintiff has combined his action brought, for infringement of the trademark as well as the action described as 'pawing off action'. The distinction between these two must be borne in mind. In an action for infringement of trade mark, the Plaintiff complains that the defendant has infringed his trade mark by taking in its entirety or by taking a substantial portion of it, or by colourably imitating it, and he relies on his statutory title to the exclusive use of the mark in question for goods of a specified kind. In a passing off action the Plaintiffs case is less specialised, for he complains that the defendant is using means which are calculated to pass off, or cause to pass off, the goods of the defendant as and for those of the plaintiff and the means may or may not comprise or consist of the trade mark, either registered or not. (See Kerley's Law of Trade Marks and Trade Names l0th Edn. Ch. 15 para 592, page 307). Bearing this in mind, we may now turn to Section 29 of the Trade and Merchandise Marks Act which runs thus
'29 (1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof, using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff it the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark'.
7. What is deceptively similar has been defined in Section 2(d), which reads as follows
'A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as to be likely to deceive or cause confusion.'
8. In dealing with this action for infringement, their Lordships of the Supreme Court in Durga Dutt v. Navratna Pharmaceutical Laboratories, : 1SCR737 , observed thus
'In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to decisive; but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the getup, packing and other writing of marks on the goods or on the packets in which he offers his goods for sale show marked differences 'or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial'.
9. We may now examine the facts of this case with reference to the test laid down by the Supreme Court. The trial Court has found that the plaintiff is entitled to the use of the trade mark in Exs. A. I to A- 3. The label of the defendant is marked as Ex. A. 8. The learned District Judge compared these two marks and observed as follows
'In Exs. A. I to A. 3, the position of the fish has been shown in horizontal manner just on the surface of water with a blue background, evidently showing the sky and blue and white surface indicating the water. In Ex. A. 8 design, the fish is shown in a completely different shape and position. It is not given in the shape of a floating fish on the surface but the position is that of a diving fish from above into the water surface. The fish has been provided with wings. There is no possibility of mistaking the figure of the fish occurring in Exs. A. I to A. 3 to the figure of the fish occurring in Ex. A. 8. As such it is not possible to uphold the plaintiffs claim that there has been similarity between the two figures. Further, the fish in Exs. A. 1 to A. 3 is found in a ring; whereas the fish in Ex. A. 8 is in a round ring with something like a flag around. There is no similarity between the symbols in Exs. A. 1 to A. 3, and the symbol in that the plaintiff's claim that the two marks are deceptively similar and that the marks used by the defendant are similar to the marks to which he is entitled is not correct. In the writings in the wrapper and label also, there is no similarity either in the matter of position of the writings or in the wording. In Exa. A. 1 to A. 3 symbols, there is writing in Telugu above the ring and in Urdu below the ring with the Tamil words 'Meen beedi' by the side of the Urdu writing. In Ex. A. 8 it is written as 'Meen beedies' in English at the top followed by the words 'Meen mark beedi in Tamil and the words 'flying fish' on either side of the ring and as 'Meen beedi' in one side of the oval ring and also Urdu writing an the other side and Telugu and Hindi writings at the bottom. So, there is no possibility of mistaking the one for the other even by referring to the writings in the two sets of labels. So, on a consideration of the symbols used by the plaintiff and the defendant and on a scrutiny of the same, it is not possible to come to the conclusion. that they are similar or deceptively similar enabling the plaintiff to seek for a decree for an injunction 'or damages.'
10. I may at once point out that this kind of comparison is what is precisely prohibited in Parle Products (P.) Ltd. v. J. P. and Co., 1973 2 SCJ17, where their Lordships of the Supreme Court have observed-
'It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so whether they are of such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.'
11. Keeping these observations in view, we may now analyse the marks. The plaintiffs label Exs. A. I and A. 2 show a fish just above the water. Ex. A. 8, the label of the defendant shows a fish with the outstretched fish in a diving position. We also, find the words 'registered trade mark' in the label in Ex. A, 8. (It is not disputed that the defendant has not registered the trademark). We further find the words 'Meen mark beedies' in Tamil. There are writings in Canarese and Urdu also in Ex. A-8 as in Ex. A-2. In Ex. A-3 which is wrapped around a single beedi, we find the word 'meen' in Tamil and between the two letters, the mark of the fish as seen in Exa. A-1 and A-2 is printed. I shall advert to the label Ex. A. 3, which is the plaintiff's label a little later. When a question arises whether a mark bears such resemblance to the mark infringed as is likely to deceive, it should be determined by considering the broad and essential features of the mark. The following observations of the learned author Kerly in his book Trade Marks and Trade Names, 10th Edn. CIL 17, paragraph 8, pages 456 and 457 can be extracted with much use
'Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example a mark may represent a game of football, another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would he too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own'.
12. It is, therefore, clear that though a critical comparison of the 2 marks may disclose some points of difference, yet the idea which would remain with a person seeing them at different times might be the same. There is clear evidence in this case that beedi users are mostly illiterate. These beedies are largely sold to illiterate or badly educated persons. The learned counsel for the respondent that one cannot say as a general rule that only illiterate people smoke beedies points it out. It is no doubt true that some people who are literate may smoke beedies. But then there may be very few people and the majority of people who smoke beedies will not pause to consider the fine points of difference between the two marks for as pointed out in Parle Products (P.) Ltd. v. J. P. & Co., (1973) 2 SCJ 17, an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes. It has been repeatedly laid down by a catena of decisions that the question has to be approached from the point of a man of average intelligence and imperfect recollection. To such a man, the overall structure and the similarity of the two names Meen mark beedies' in my opinion, are likely to deceive or cause confusion. I do not think that the learned trial Judge was right in saying that the marks are not deceptively similar or that it may not cause any confusion. I earlier pointed out that I will deal with Ex. A. 3, the label on the single beedi. The defendant who has been examined as D. W. 1 stated in his evidence that Exs. A.1 and A. 2 are not his labels, but Exs. A. 3 and A. 8 are his labels. I must point out that Ex. A. 8 is the label of the defendant and Ex. A.3 is the label of the plaintiff. It is contended for the appellant that the label of the defendant is so identical with the label A. 3 used by the plaintiff, that the defendant is not able to see any difference and therefore says that Ex. A. 3 is his label while in fact Ex. A. 3 is the label used by the plaintiff. The learned counsel for the appellant that if the label Ex. 3 causes confusion even in the mind of the manufacturer himself, it would cause greater confusion in the mind of the purchaser of the beedi pertinently points it out. I agree with the learned counsel for the appellant It is also pointed out by the learned counsel for the appellant that if an illiterate person or a person of average intelligence asks for Meen mark beedi manufactured by the plaintiff and if he is supplied with the beedi of the label in Ex. A. 8, he would be under the impression that he has been supplied only with the beedi of the plaintiff's make. But it is pointed out for the respondent that that may be a point, which may be germane in an action for passing off. But on a consideration of the circumstances, I have to come to the conclusion that the overall similarity between the labels of the plaintiff Exs. A. 1 and A. 2, with the label Ex. A. 8 of the defendant and the. identical name 'meen mark beedi used by both the plaintiff and the defendant are likely to cause deception or confusion within the meaning of Sec. 2(d) of the Trade and Merchandise Marks Act 1958. 1 am therefore of the view that the mark used by the defendant is deceptively similar to the trade mark of the plaintiff.
13. It was pointed out by the counsel for the respondent that there is no evidence of actual deception. But that is not necessary. Kerly in 'Trade Marks and Trade Names', 10th Edn. CIL 17, paragraph 38, page 478 says
'Proof of actual deception, if the mark is in the opinion of the Tribunal likely to deceive or if it has been substantially copied from another, is unnecessary. Nevertheless, if one or more cases of actual deception are made out to the satisfaction- of the court, this will, of course, afford very strong evidence that the resemblance of the marks in question is so close as to be likely to deceive'.
14. Even intentions to deceive need not be proved. As regards damages claimed by the plaintiff, I must point out that there is no evidence of damage.
15. For the reasons stated above, this appeal is allowed, the judgment and decree are set aside and the suit to decreed for declaration and injunction prayed for by the plaintiff with proportionate costs throughout. The claim for damages is disallowed.
16. Appeal allowed.