1. The plaintiff-appellant sued to restrain the respondents from passing off or attempting to pass off defendants' goods as the goods of the plaintiff's manufacture, by use of packages of similar design, mark, figure, get up and name as those used by the plaintiff for his goods. The mark used by the plaintiff consists of a figure of Sri Krishna in a crawling posture. Below it are the words 'Krishnan mark cheroot Subedar' and next below 'Vyarandha Dhantham patti churuttu' and lastly the plaintiff's name and address. The defendant's mark consists of the mark of Sri Krishna slightly bigger and in a slightly different posture, but substantially a crawling posture. Below it we get the words 'Balakrishnan mark cheroots 25' and underneath we have the defendant's name and address. It would appear that for some years between 1915 and 1924, the plaintiff's brother, one Abdul Ganni Rowther, was carrying on business in cheroots and he used on his goods a. mark very similar to the one now adopted by the plaintiff, except for the difference in the name of the trader himself. It is admitted that Abdul Ganni Rowther became insolvent, and ceased to do business sometime in 1924 and it is only at least several months-later, i.e., sometime in 1925 that the plaintiff commenced doing business in his own name. In 1929, the plaintiff started criminal proceedings against the defendants under Section 482, I.P.C. The complaint was there presented in the name of Abdul Ganni Rowther and it stated that Abdul Ganni Rowther and the plaintiff were partners and that the plaintiff was the managing partner. In the course of the enquiry in that case, the plaintiff was forced to admit that that partnership, if it ever existed,. came to an end by 1924-25, and on the evidence recorded in that proceeding the accused were discharged under Section 253, Criminal P.C. This suit was instituted within a few months of the termination of that proceeding.
2. In the plaint the plaintiff alleged that for the last 20 years he had been manufacturing and selling a brand of cheroots with the mark now in question and para. 3 contained the allegations required by law that 'the said cheroots had come to be known, associated, distinguished and recognised by purchasers in the market as being the cheroots of the plaintiff's manufacture and of his manufacture alone'. In the written statement, the defendants drew pointed attention to what has been established in the course of the enquiry in the criminal proceedings as to the termination of Abdul Ganni's business and of the plaintiff having started business only in 1925. On these allegations in the pleadings, issue 1 was framed in the following words:
Is the plaintiff entitled to the exclusive right to the name and mark Krishna in regard to his cigars ?
3. The learned District Munsif who tried the case in the first instance did not keep the period of Abdul Ganni's trade sufficiently distinct from the period of plaintiff's own trade and he expressed his conclusion to the effect that the firm's name and the plaintiff's name have become associated with the mark. In the appellate Court, this way of dealing with the case was naturally objected to and the lower Court sent down fresh issues for trial with reference to the plaintiff's connection with the anterior business. On this remand, the trial Court returned a finding that the plaintiff was not a partner with his brother, Abdul Ganni in the business carried on by him. After the return of this finding, the lower appellate Court held against the plaintiff both on the question of his right to complain of any infringement and also on the question whether the name and mark adopted by the defendants were really calculated to pass off the defendant's goods as those of the plaintiff. If the determination of the second appeal should depend upon the latter question, I should have hesitated to accept the finding of the lower Court that the name and mark adopted by the defendants are not likely to deceive purchasers into believing that they represented the goods of a rival trader. There is great force in the criticism of the appellant's learned Counsel that this conclusion has been arrived at without due regard to the tests indicated in the leading eases. But as I am dismissing the second appeal on the first question, I do not propose to pursue the second question any further. The enquiry before the criminal Court as well as the allegations in the written statement in the present suit clearly put the plaintiff on enquiry as to what he had to prove, and the passage already extracted from para. 3 of the plaint clearly shows that the plaintiff's advisers fully realised what the law required the plaintiff to prove. Yet, when it came to trial, there was merely some jumble of what happened prior to 1924 and what was imagined have happened after 1925 and the learned District Munsif gave a kind of composite finding. The evidence on the plaintiff's side consists of that of the plaintiff and two other witnesses. The plaintiff distinctly admits that he has not produced any orders of goods received by him after he began to trade separately.
4. He admits that the firm of his brother is no longer in existence and that he is carrying on business under a different vilasam. It seems to me immaterial whether the plaintiff and his brother were in any legal sense partners or not. There has been no assignment of any goodwill or trade name to the plaintiff. In fact any such basis of his claim is precluded by the admitted fact that he is trading in a different vilasam altogether. The evidence by no means makes it clear what kind of reputation these goods enjoyed in the market prior to 1924. There is nothing to show whether during that period the plaintiff or his connexion if any with his brother's business was known to the purchasers at all. As to the period subsequent to 1925, there is no evidence whatever as to what kind of reputation these goods have been enjoying since 1925 and certainly nothing whatever to indicate that the market associates the goods bearing this mark with any manufacture by or trade of the plaintiff, Mr. T. M. Krishnaswami Iyer relied on a passage in the judgment of Lord Herschell in Birmingham Vinegar Brewery Co. v. Powell (1897) AC 710 to the following effect that one man may quite well pass off his goods as the goods of another if he passes them off to people who will accept them as the manufacture of another although they do not know that other by name at all.
5. But this very passage and other observations of the learned law-lords in the case recognise what has been well established by several other cases that:
Before a dealer can restrain another from using ]a name or mark it is not sufficient to show that the article with that name or mark has acquired a reputation in the market, but it must also be shown that the public have grown to associate that particular name or mark with himself as the manufacturer of or dealer in that article :
6. See Mahomed Esuf v. Rajaratnam Pillai (1910) 33 Mad 402. See also Heiniger v. Droz (1901) 25 Bom 433 and Somerville v. Schem Bri (1887) 12 AC 453. In the present case there is absolutely no evidence to establish any such association in the public mind between the plaintiff's business and the goods bearing the mark in question. On this ground the decision of the lower appellate Court should be affirmed and the second appeal dismissed with costs.
S.A. No. 4 of 1933.
7. This second appeal arises out of a suit for damages for malicious prosecution in respect of the criminal proceedings referred to in my judgment in S. A. No. 120 of 1933. The lower appellate Court has held that the mere fact of its reversing 'the judgment of the District Munsif in the main suit suffices to show that the criminal proceedings were initiated without reasonable and probable cause. Before me it has also been insisted that the defendant could not have bona fide believed the allegation with which he started the criminal proceeding that he was a managing partner in the firm of Abdul Ganni Rowther and Bros., when that firm, if it ever existed, had admittedly ceased to do business several years before. The evidence, however, establishes that, whether in legal contemplation the defendant was a partner with him or not, the defendant has certainly been in some manner connected with that business and notwithstanding the cessation of the old business, he has been doing the business in his own name. I have also indicated in my judgment in the other second appeal that the question of the similarity of the two marks and the chances of purchasers being misled are not by any means so clearly in favour of the present plaintiffs. There is also the fact that in the civil suit itself, the District Munsif made a very emphatic pronouncement in the defendant's favour. In these circumstances, I am not prepared to accept the conclusion that the criminal proceedings were started without reasonable and probable cause. I therefore set aside the decree of the lower appellate Court and restore the decree of the District Munsif dismissing the Suit, but in the circumstances, I direct that the parties shall bear their costs throughout.