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Aravind Laboratories Vs. V. Annamalai Chettiar - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai High Court
Decided On
Reported in(1981)1MLJ75
AppellantAravind Laboratories
RespondentV. Annamalai Chettiar
Cases ReferredParle Products (P.) Ltd. v. J.P. and Co.
Excerpt:
- - according to the plaintiffs, the defendant had been called upon to produce the genuineness of his trade mark which he has failed to do and had evaded. vasudevan, and the carton published by the plaintiffs will clearly go to show that it is only the plaintiffs who have copied the defendant's trade mark. it is further stated in his written statement by the defendant that the name of the plaintiff's laboratory is distinctly printed in the carton, while the defendant's products do not have that mark and the word 'kanmye' is printed in malayalam in large and bold letters in his carton which is absent in the plaintiff's carton. 1,255 and ends with the letter 'x'.the plaintiffs' predecessor did not complain of any infringement or passing off and the defendant was carrying on the business.....s. swamikannu, j.1. this appeal s by the plaintiffs against the judgment and decree, dated 17th day of november, 1976 in o.s. no. 36 of 1975 on the file of the court of the learned district judge, chengalpattu, decreeing the suit in favour of the plaintiffs restraining the defendant or his agents by a permanent injunction from using the trade mark similar to the trade mark used by him as shown in exhibit a-5 so as to be deceptively similar with the carton of the plaintiffs, as affixed in the plaint. the carton of the plaintiffs and exhibit a-5 were directed to be annexed to the decree. the trial court also observed that inasmuch as the plaintiffs themselves had not raised any objection for the use of the name 'eyesol' by the defendant (exhibit a-10) the defendant will be free to use the.....
Judgment:

S. Swamikannu, J.

1. This appeal s by the plaintiffs against the Judgment and decree, dated 17th day of November, 1976 in O.S. No. 36 of 1975 on the file of the Court of the learned District Judge, Chengalpattu, decreeing the suit in favour of the plaintiffs restraining the defendant or his agents by a permanent injunction from using the Trade Mark similar to the Trade Mark used by him as shown in Exhibit A-5 so as to be deceptively similar with the carton of the plaintiffs, as affixed in the plaint. The carton of the plaintiffs and Exhibit A-5 were directed to be annexed to the decree. The trial Court also observed that inasmuch as the plaintiffs themselves had not raised any objection for the use of the name 'Eyesol' by the defendant (Exhibit A-10) the defendant will be free to use the same name by printing the same in a different manner from that of the plaintiffs. In the circumstances, the parties were directed to bear their own costs by the trial Court.

2. The suit was for declaration of the exclusive right of the plaintiffs to the Trade Mark and for permanent injunction to restrain the defendant from passing off his goods and also for recovery of Rs. 10.000/-as damages.

3. The memorandum of cross-objections is by the defendant, M/s. Eyesol Laboratories, represented by its proprietor, Annamalai Chettiar against the said decree and judgment passed by the learned District Judge, Chengalpattu in the abovesaid suit, O.S. No. 36 of 1975.

4. The case of the plaintiffs, M/s. Aravind Laboratories before the trial Court is that they are the manufacturers of Collyrium and other toilet preparations under the registered Trade Mark 'Eyetex'. Their firm, which is a registered one is engaged in the manufacture of Collyrium under the registered Trade Mark under special design, get up, and distinctive attractive marks. They are successors in trade from one, P.K. Vasudevan, who used the same name and Trade Mark 'Eyetex' for the products manufactured and distributed by M/s. Aravind Laboratories carrying on business at Valasaravakkam, Arcot Road, Madras. The predecessors in trade had registered the mark 'Eyetex' under Trade Mark NO. 124824, dated 11th September, 1946. It is also the case of the plaintiffs, that the plaintiff's carton on the front face shows the eyebrow, eyelashes and side hair of the head with small eyeshaped design in front of the eyeball, that even then, the defendant had made a false claim that his carton was registered under the Trade and Merchandise Marks Act, 1958, and the same is a deliberate falsehood. The plaintiffs after the purchase, registered the design on the front face of the carton and also the entire format of the carton under Trade Mark No. 271584, and it is dated. 24th April, 1971. It is also the case of the plaintiffs that they have acquired a special right to the exclusive use and advertisement of the carton and a long-standing ding and assured reputation at the hands of the public for over 30 years. The goodwill and the Trade Mark have put the plaintiff's goods in the market acquiring wide reputation and extensive demand. The defendant, who has been manufacturing the Collyrium has been passing it off as that of the plaintiffs by copying their design. Trade Mark, colouration, print and size, etc., of the carton with all distinctive, exclusive marks of the plaintiffs and he has chosen to give the name as 'Eyesol' According to the plaintiffs, the Trade Mark of the plaintiffs is fully exploited to the point of similarity, in all respects except in few details. The important features are : -- The eye side hair, eyelashes, eyebrow, sea of floating eyes, on the front and reverse, and small eye letter design in front of the eye in green and the final special mark in the use of words, as special type of 'eye' (Eyetex). In the beginning, the cartons of the defendant ware red, later changed to black and now a clear and full imitation of the plaintiffs in all aspects. According to the plaintiffs the defendant has successfully attempted to deceive the public and there is an infringement of the exclusive Trade Mark as also direct attempt to disrupt the plaintiffs' foot-hold in the market and has caused loss. It is also the case of the plaintiffs that the defendant has not registered the Mark and is misrepresenting that his carton is genuine and registered under the Act and the special features of the registered Trade Mark of the plaintiffs have been infringed and the buyers are deceived by accepting the spurious one as real. According to the plaintiffs, the defendant had been called upon to produce the genuineness of his Trade Mark which he has failed to do and had evaded. Thus, according to the plaintiffs, the defendant has passed off his goods in the area of Tambaram and su(SIC)rbs and the city of Madras with the help and connivance of some of the dealers and has infringed the Trade Mark of the plaintiffs by deceptive and colour get-up in the carton, which fully resembles that of the plaintiffs. The defendant by such sale and deception his caused loss in the trade of the plaintiffs and the plaintiffs have incurred setback in the sale in money value nearly to the extent of Rs. 33,570. The plaintiffs have restricted chair claim of damages to Rs. 10,000. The plaintiffs issued a notice to the defendant addressed to No. 5, Second Street, Sundaram Colony, Tambaram and the defendant had evaded the receipt of the same. The plaintiffs also filed a criminal complaint against the defendant. The defendant issued a notice, dated 14th June, 1974, to the plaintiffs with all incorrect assertions, but the plaintiffs called upon him to give a declaration that he would not infringe and use the plaintiff's registered Trade Mark. But, the defendant has not dons so, but is continuing his act of deception and further infringement and material loss to the plaintiffs. Hence, the plaintiffs have instituted the suit for declaration of their exclusive right to the Trade Mark and for a permanent injunction to restrain the defendant from passing off his goods and also for liquidated damages to the extent of Rs. 10,000.

5. On the other hand, the case of the defendant as contended in his written statement is that he filed an application before the registering authority to register his Trade Mark and there was no intention on his part to deceive or defraud the public and he is doing business in 'Eyesol Kanmye' for the past 22 years, i.e., from 1953 and that his product has won many awards from various exhibitions conducted at Trichi, Tirunelveli and Salem and he had been given gold medals. It is further stated in the written statement by the defendant that the allegations that he has been passing off his product as that of the plaintiffs by copying their design, trade mark, colouration, print and size, etc. is incorrect, that the allegation that the trade mark of the plaintiffs is fully exploited to the point of similarity in all respects is incorrect and that the plaintiffs only are passing off their products as that of the defendant. According to the defendant, a comparison of the carton published by the plaintiffs' predecessor, P.K. Vasudevan, and the carton published by the plaintiffs will clearly go to show that it is only the plaintiffs who have copied the defendant's Trade Mark. It is further contended in his written statement by the defendant that prior to 1954, the Aravind Laboratories advertised a carton wherein the word 'Eyetex' was printed in a separate bold letter with a Tamil word 'Mye' alongwith the word 'Regd', that in the publication made in the 'Indian Express', dated 14th October, 1954 by Arvind Laboratories, the carton contained separate eye mark on a white background with Hindi, Telugu words along with registered Trade Mark No. 124824. The said carton contains the word 'Eyetex' which is different from those advertised earlier and the six letters in the word 'Eyetex' are closely printed and the letter 'Y' is joined to the letter 'E' which is copied from the carton used by the defendant. The word 'Tex' in the publication made in the year 1954 is separate and distinct, whereas in the present carton, the word 'E' was cut only to print the letter 'X' and thus there are three different cartons used by the plaintiffs only to deceive the public. The defendants denied the allegations that the special features of the registration of the plaintiff's Trade Mark have been infringed. According to the defendant, the plaintiff's predecessor P.K. Vasudevan, proprietor of Aravind Laboratories to whom the defendant had issued a notice in the year 1954 had published a statement in the 'Indian Express' regarding the 'Eyesol' as withdrawing the same and an apology was published in the 'Indian Express', dated 14th October, 1954. In that publication, he has stated that he had no objection to use the word 'Eyesol'. The plaintiff's predecessor had registered his 'Eyetex' Trade Mark and the present plaintiff has not done anything new towards registration. The plaintiffs are aware of all the correspondence and publications which can be seen in his reply notice sent to the defendant's counsel on 11th July, 1974. The colour and scheme, design and get-up are common to the trade and has been used by many others, such as 'Eyeolux' ' Eyetex' Eye-torch', 'Eye-touch', 'Eyetek', 'Eyetick', and 'Eyekiss'. According to the defendant, his ''Eyesol' design differs completely from that of the plaintiffs and the same is apparent and eye-figure is on the left side of the nose fixed above the nose at the right hand side. The plaintiff's carton shows the eye-design on the right hand side without nose and cheek. The eye in the plaintiff's product is printed in thick black line with dots up and down while the eye in the defendant's product is printed with thin line without any dots. The eyes are facing each other and not on one and the same side and both are easily distinguishable. It is further stated in his written statement by the defendant that the name of the plaintiff's laboratory is distinctly printed in the carton, while the defendant's products do not have that mark and the word 'Kanmye' is printed in Malayalam in large and bold letters in his carton which is absent in the plaintiff's carton. The plaintiffs have printed full address in small letters, while in the defendant's products, the words 'Eyesol India' are in bold letters inside the circle. The plaintiff's product contains the letters 'E' with No. 1,255 and ends with the letter 'X'. The plaintiffs' predecessor did not complain of any infringement or passing off and the defendant was carrying on the business from 1954. The plaintiff's predecessor has deviated from the original registered Trade Mark and attempted to alter certain features in the carton, but the defendant has never passed off his goods as that of the plaintiffs and had also not. infringed the Trade Mark of the plaintiffs. It is also contended by the defendant in his written statement that he had personally prepared all his products without the aid of much labour, and goods are also of efficient quality and therefore, there was absolutely no necessity for him to infringe the Trade Mark of the plaintiff's or pass off his goods. The defendant stated that the plaintiffs are anxious to have a monopoly of trade and have come forward with the false suit. It is further stated in the written statement by the defendant that the allegation that the plaintiffs have incurred a set-back in their sales during 1973-1975 to the tune of nearly Rs. 33,570 is incorrect and that the defendant is not liable to pay any damages, much less the sum of Rs. 10,000. The plaintiffs had instituted criminal proceedings against the defendant before the Sub Divisional Judicial Magistrate, Poonamallee, under Section 429, Indian Penal Code, and during pendency of that case, they have filed the suit. The defendant has further stated that he is a poor business man and he is carrying on the business with the help of his wife, and the plaintiffs have no cause of action to file the suit, and the suit is liable to be dismissed.

6. On the above pleadings, the trial Court framed the following issues:

1. Whether the defendant is passing of his goods as that of the plaintiffs?

2. Whether the defendant is imitating the plaintiffs' Trade Mark and whether there is any similarity between plaintiffs' carton and defendant's carton to deceive the public?

3. Whether the plaintiffs and their predecessors-in-title have acquiesced in the defendant's using the Trade Mark?

4. Whether the plaintiffs have suffered any damage? If so, what extent?

5. Whether the plaintiffs are entitled to an injunction?

6. Whether there is any infringement of plaintiffs' Trade Mark?

7. Whether the plaintiffs have altered original Trade Mark and copied the defendant's Trade Mark?

8. To what relief, if any, the plaintiffs are entitled?

7. On behalf of the plaintiffs, A.V. Srinivasan, one of the partners of the plaintiff's firm was examined as P.W.1. P.Ws Nos. 2 to 8 were examined on behalf of the plaintiffs. Exhibits A-1 to A-103 were filed before the trial Court on behalf of the plaintiffs. The defendant examined himself as D.W.1. D.W.2, Asamathulla was examined on behalf of the defendant.

8. Under Issue Nos. 1, 2, 5, and 6, the trial Court held that the plaintiffs have got the exclusive right to the said Trade Mark with regard to their product marked as Eyetex. The trial Court also held that the defendant's carton is having an element of similarity and may cause deception to illiterate people who are likely to purchase Kanmye, The defendant's carton is deceptively similar to the carton of the plaintiffs which has been registered. The trial Court also held that inasmuch as the defendant's Trade Mark is not a registered one and as the Trade Mark is deceptively similar to the plaintiffs' Trade Mark, which is a registered one, there is infringement of the plaintiffs' Trade Mark by the defendant and therefore, the plaintiffs will be entitled to injunction. The trial Court held that there was no passing off of the goods of the defendant as that of the plaintiffs. Thus, the trial Court found the Issue No. 1 against the plaintiffs and Issue Nos. 2, 6 and 5 in favour of the plaintiffs Under Issue No 3, the trial Court found that though it can be said that there was no fraudulent representation by the defendant, the defendant cannot claim that there was acquiescence by the plaintiffs' predecessor. Accordingly, the trial Court found the Issue No. 3 in favour of the plaintiffs. Under issue No. 7, the trial Court found that the defendant did not take steps to raise any objection for the alteration before the Registrar of Trade Marks and he had also not objected to the same by Issuing any notice to the plaintiffs themselves or to the plaintiffs' predecessor and the plaintiffs having registered their Trade Mark, the defendant cannot, have any grievance against the plaintiffs with regard to the same. Thus, the trial Court found the Issue No. 7 in favour of the plaintiffs. Under Issue No. 4 the trial Court found that the plaintiffs have not established their claim for damages against the defendant and answered the said issue against the plaintiffs.

9. Aggrieved by the above said decision of the trial Court, the plaintiffs have come forward with this appeal inter alia contending that the trial Court having found that the defendant had committed infringement of the Registered Trade Mark of the plaintiffs, ought to have awarded damages to the plaintiffs. It is pointed out on behalf of the plaintiffs that the trial Court erred in holding that under Exhibit A-10, the plaintiffs themselves have not raised any objection to the use of the word 'Eyesol' According to the plaintiffs-appellants herein in Exhibit A-10, the appellants had not stated that they had no objection to the use of the word 'Eyesol ', nor had they granted permission to the defendant to use the said word 'Eyesol'. According to the plaintiffs-appellants herein, the declaration and injunction granted by the trial Court is of a most comprehensive character both in regard to pectoral design of the plaintiffs'-appellants' Trade Mark and verbal representation in the carton, and having granted such a declaration the lower Court erred in granting permission to the defendant to sue the word 'Eyesol', It is also contended on behalf of the plaintiffs-appellants herein that the trial Court failed to note that the phonetic similarity of the two marks are so similar that there is danger of confusion between the two marks and the phonetic affinity is likely to deceive or cause confusion. According to the plaintiffs-appellants herein, the trial Court ought to have held that the expression 'Eyesol' is phonetically similar to the word 'Eyetex' though ill had found that the entire mark is deceptively similar.

10. On the other hand, the defendant in his cross-objections has inter alia contended that the trial Court had erroneously found that both the marks are deceptively similar, that the trial Court failed to note that the plaintiffs are not the original owners of the Trade Mark and that their predecessor is one Vasudevan, who had written a letter Exhibit B-19 approving the use of the Trade Mark 'Eyesol' by the defendant.

11. Mr. R. Kesava Ayyangar, the learned Counsel for the plaintiffs-appellants herein contends that the trial Court, having found that the defendant's Trade Mark is not a registered one and as the Trade Mark is deceptively similar to the plaintiffs' Trade Mark which is a registered one and that there is infringement of the plaintiffs' Trade Mark by the defendant and therefore the plaintiffs will be entitled to injunction, ought to have granted the claim for the damages against the defendant. He also contends that the trial Court ought to have granted permanent injunction even with respect to the use of the name 'Eyesol' by the defendant on the ground that the trial court is not correct in observing that the plaintiffs themselves have not raised any objection for the use of the name 'Eyesol' by the defendant in Exhibit A-10. The learned Counsel for the plaintiffs also refers to the provisions of Section 2(1)(j) of the Trade and Merchandise Marks Act, 1958 which reads as follows:

(j). 'Mark' includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral of any combination thereof;

Referring to this provision Mr. R. Kesava Ayyangar, the learned Counsel for the plaintiffs-appellants herein contends that the trial Court ought to have granted a permanent injunction even with respect to the use of the name 'Eyesol' by the defendant, The learned Counsel for the plaintiffs also refers to the provisions of Sections 11, 12, 28 and 29 of the Trade and Merchandise Marks Act, 1958.

12. Mr. R. Kesava Ayyangar, the learned Counsel for the plaintiffs-appellants herein refers to the decision in Durga Dutt Sharma v. N.P. Laboratories : [1965]1SCR737 for the following propositions:

An action for passing off is a Common Law remedy being in substance an action for deceit that is a passing off by a person of his own goods as those of another. But that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of 'the exclusive right to use the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the action might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two cases ceases. In an action for infringement the plaintiff must no doubt make out that the use of the defendant's mark is likely to deceive 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 plaintiff's rights are violated. Expressed in another wav, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or 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, whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.

The Supreme Court observed in this decision at page 990 in paragraph 29 as follows:

When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be 'in the course of trade', the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further question arises, for, then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered made mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 71). A point has sometimes been raised as to whether the words 'or cause confusion', introduce any element which is not already covered by the words 'likely to deceive' and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words 'likely to deceive' But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade for the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks, the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The person who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should however, be borne in mind that the object of enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.

13. The decision in Ruston and Hornby Ltd v. Zamindara Engineering Co. : [1971]2SCR497 is relied upon for the following proposition:

In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register but some thing similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions.

14. On behalf of the plaintiffs-appellants herein, the decision in Rachel and Co. v. G. Manners and Co. : [1970]2SCR213 is relied upon for the following propositions:

The marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.

It was held in this decision that on comparison of the trade marks 'Dropovit' and 'Protovit', that they were not deceptively similar.

15. In this decision Rochel & Co. v. G. Manners & Co. : [1970]2SCR213 the Supreme Court has observed at page 2064 in paragraph 11 as follows:

In Parket Knoll Ltd. v. Knoll International Ltd. (1962) R.P.C. 265 at 274 Lord Denning explained the words 'to deceive' and the phrase 'to cause confusion' as follows:

'Secondly' to 'deceive' is one thing. To 'cause confusion' is another. The difference is this: When you deceive a man you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him, But you may cause confusion without telling him a lie at all. and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so. The tests for comparison of the two word-marks were formulated by Lord Parker in Pianotist Co. Ltd's. Application (1906) 23 R.P.C. 774 at 777, as follows:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of those trade marks is for the goods of the respective owners of the marks. If considering all those circumstances you come to the conclusion that there will be a confusion--that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that. It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd v. Rusta Ltd (1945) R.P.C. 65 at 172 the House of Lords was considering the resemblance between the two words 'Aristoc' and 'Rusta'. The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maugham cited the following passage of Lord Justice Luxmoore in the Court of Appeal which passage, he said he completely accepted as the correct exposition of the law.The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for, obviously a person who is familiar with both words will neither be deceived nor confused. It is a person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confuted. Little assistance therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and say that because the portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case, Tokalon Ltd v. Davidson and Co. 32 R.P.C. 133 at 136 Lord Johnston said:... we are not bound to scan the words as we would in a question of comparatio liter arum. It is not a matter for microscopie inspection, but to be taken from the general and even casual point of view of a customer walking into a shop.

16. On behalf of the plaintiffs, the decision in K. Krishna Chettiar v. Ambal & Co. : [1970]1SCR290 is relied upon for the proposition that the resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no visual resemblance between the two marks, that does not matter when there is close affinity of sound between the words which are distinctive features of the two marks. It was also held in that case that merely because the distinctive words used in both the marks have distinctive meanings it cannot be said that the phonetic resemblance does not lead to confusion, when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words. The Supreme Court observed in that decision as follows:

The name 'Andal' does not cease to be deceptively similar, because it is used in conjunction with a pictorial device. The case of Decordova v. Vick Chemical Coy (1951) 68 R.P.C. 102 is instructive. From the Appendix printed at page 270 of the same volume, it appears that Vick Chemical Coy. were the proprietors of the registered trade mark consisting of the word 'Vaporubu' and another registered trade mark consisting of a design of which the words 'Vicks Vaporub Salve' formed a part. The appendix at page 226 shows that the defendants advertised their ointment as 'Karsote vapour Rub'. It was held that the defendants had infringed the registered marks. Lord Radcliffe said:

a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods he uses one or more of its essential features.Mr. Sen stressed the point that the word 'Ambal' and 'Andal' had distinct meanings Ambal is the consort of Lord Siva and Andal is the consort of Ranganatha. He said that in view of the distinct ideas conveyed by the two words a mere accidental phonetic resemblance could not lead to confusion. In this connection, he relied on Venkateswaran's Law of Trade and Merchandise Marks, 1963 Edition, page 214, Kerly's Law of Trade Marks, and Trade Names. 9th Edition page 465, Article 852 and the decision. Application by Thomas, A Smith Ltd. to register a trade mark, 1913-31 RPC 363 In that case Neville, J., held that the words 'Limit' and Summit' were words in common use, each conveying a distinct idea, definite idea, that there was no possibility of any one being deceived by the two marks; and there was no ground for refusing registration, Mr. Sen's argument loses sight of the realities of the case. The Hindus in the Southern India may be well aware that the words 'Ambal' and 'Andal' represent the names of two distinct Goddesses. But the respondent's customers are not confined to Hindus alone. Many of their customers are Christians, Parsees. Muslims and persons of other religious denominations Moreover, their business is not confined to Southern India. The customers who are not Hindus or who do not belong to Southern India may not know the difference between the words Andal and Ambal. The words have no direct reference to the character and quality of snuff. The customers who use the respondent's goods will have a recollection that they are known by the word Ambal. They may also have a vague recollection of the portrait of a benign Goddess used in connection with the mark They are not likely to remember the fine distinctions between a Vaishnavite Goddess and a Shivaite deity.

17. The decision in Amritdhara Pharmacy v. Satya Deo Gupta ( : [1963]2SCR484 is relied upon by the plaintiffs for the proposition that for deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse; and (2) what rules of comparion are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. In this decision, the Supreme Court observed at page 453 in paragraphs 8 and 9 as follows:

Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names 'Amirtdhara' and 'Lakshmandhara' are in use in respect of same description of good's, namely, a medical preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who, instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and towns-folk; literate as well as illiterate. As was said in Corn Products Refining Co. v. Shangrila Food Products Ltd : [1960]1SCR968 the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Lakshmandhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the meaning of the composite words as 'current of nectar' or current of Lakshman. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, of has been told about, or about which he has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between 'current of nectar' and 'current of Laksman' 'Current of Lakshman' in a literal sense has no meaning. To give it meaning one must further make the inference that the current or stream is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman; the story of the Ramayana being familiar to him, but we doubt if he would etymologies to the extent of seeing the so-called ideological difference between 'Amritdhara' and 'Lakshmandhara'. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.

We agree that the use of the word 'dhara' which literally means 'current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, 'fools or idiots', may be deceived A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing--the whole word has to be considered.

In the case of the Application to Register 'Erecktiks' (opposed by the proprietors of the trade mark 'Erector') Farwell, J. said in William Bailey (Birmingham) Ltd.'s Application. (1935) 52 R.P.C. 136

I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole ... I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.

18. On the question of damages for infringement, the learned Counsel for the plaintiffs refers to the decision in Juggi Lal v. Swadeshi Mills Co. 29 L.W. 243 : 56 M.L.J. 232: 56 I.A. 1 : A.I.R. 1929 P.C. 11 for the proposition that there is no cut and dry rule which can be laid down by a Court of law for the estimation of damages in a case of infringement of trade-mark. But instead of making a speculative assumption of sales by defendant by trusting to their own goods without the misleading trade-mark the safer basis would be to calculate on the falling-off in plaintiff's trade which came in after the pirated mark was introduced on the market. The decision in Ruston and Hornby Ltd. v. Zamindara Engineering Co. : [1970]2SCR222 is referred to by the learned Counsel for the plaintiffs appellants herein to show that in the said decision, the appellant therein was also granted a decree for nominal damages to the extent of Rs. 100. in the said case, the appellant was granted a decree restraining the respondent therein by a permanent injunction from infringing the plaintiffs' trade mark 'Rustom' and from using it in connection with the engines, machinery and accessories manufactured and sold by it under the trade mark of 'Rustom' or 'Rustom India'. In the said decision the Supreme Court also observed that the appellant was also entitled to an injunction restraining the respondent and its agents from selling or advertising for sale of engines, machinery or accessories under the names of 'Rustom' or 'Rustom India'. The appellant was further held to be entitled co an order calling upon the respondent to deliver to the appellant price-lists, bills, invoices and other advertising material bearing the mark 'Rustom' of 'Rustom India'.

19. Mr. R. Sundararajan, the learned Counsel for the defendant inter alia contends that the plaintiffs have not objected in the plaint to the use of the name ''Eyesol' by the defendant. He also contends that the plaintiffs have not let in evidence to show that the use of the name 'Eyesol' by the defendant is an infringement of the trade mark of the plaintiffs. In other words, the contention of the defendant is that the plaintiffs have not established that the confusion has arisen in the minds of the customer or deception had been committed by the defendant on account of his using the name 'Eyesol' for his products. It is also contended on behalf of the defendants that the plaintiffs have not let in evidence to show that the name 'Eyesol' has been used by the defendant after the registration of the trade mark by the plaintiffs. It is further contended on behalf of the defendant that the assessment order passed by the Commercial Tax Authorities such as Exhibits A-38, A-39, A-40 and 41, are not only with respect to the dealings of the plaintiffs with regard to 'Eyetex' but also with respect to Aravind Instruments, etc. It is also pointed out on behalf of the defendant that Exhibits A-77 to 82-A bills issued by Ganesh Publicities were for the advertisement charges incurred by the plaintiffs with respect to 'Eyetex' only, it is contended that the plaintiffs have not let in evidence to prove specifically the expenses incurred with respect to manufacture and sale of 'Eyetex' alone. It is also pointed out by the learned Counsel for the defendant that Exhibits A-53 to A-56 which are assessment orders and notices of demand by the Income-tax Officer issued to the plaintiffs do not relate to the profits made by the plaintiffs with respect to 'Eyetex' alone.

20. The learned Counsel for the defendant also refers to the decision in Rustom and Hornby Ltd v. Zamindra Engineering Co. ( : [1970]2SCR222 . F. Hoffimann, La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd. : [1970]2SCR213 . K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., and Anr. : [1970]1SCR290 . Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1966) 1 S.C.J. 731 : A.I.R. 1 65 S.C. 980 and Amritdhara Pharmacy v. Satya Deo Gupta : [1963]2SCR484 .

21. The learned Counsel for the defendant refers to the decision in K.R. Chinna Krishna Chetty v. K. Venkatesa Mudaliar and Anr. : (1973)2MLJ98 for the following observation:

Though at one stage we considered that the addition of the word 'Radha' to the legend 'Sri Andal' makes all the difference, after our attention was drawn to the three cases referred to above, viz, (1) relating to the Vick Vaporub, where the objection to the registration of the respondents Vaporub which infringed the appellant's registered mark was sought to be got over by adding a word 'Karosote to the respondents' legend, and; (2) where the objection to the registration of the respondent's trade mark 'Rustom' was sought to be met by the addition of the word 'India' to the objected legend and (3) where the word 'Balova' was sought to be added to the legend 'Accutron' which legend was held to infringe the respondents' trade mark 'Accurist' we are persuaded to come to the opposite conclusion that the addition of the word 'Radha' to the legend 'Sri Aadal' will not make the slightest difference and that the view of the learned Judge is correct. The appellant's snuff sold under the trade name 'Sri Aadal' the registration of which was objected to by the respondents, has been in the market for some years and the objection to its registration has now been finally upheld. The question for consideration now will be whether the addition of the word 'Radha' to the objected legend makes a vital difference - when the two marks are compared side by side the question will be whether the addition of the word will make any vital difference. As observed by Stamp, J., in 1969 R.P.C. No. 102 at p. 109. where imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect recollection and the resultant confusion. We are of the opinion that the combination of the two words 'Radha's Sri Andal' is likely to be taken by snuff-users as the snuff manufactured and marketed by the appellant originally as 'Sri Andal. The appellant's learned Counsel sought to distinguish the above three cases on the ground that in the aforesaid decisions the new word sought to be added was only the name of the country of manufacture while in the present case, the addition of the word 'Radha' to the legend 'Sri Andal' is a combination which has nothing in common with the respondent's legend 'Sri Ambal.' We are unable to accept the ground of distinction made by the learned counsel. We are of opinion that there is a tangible danger that a substantial number of persons will contuse the appellants 'Radha's Sri Andal, mark applies for with the respondents legend 'Sri Ambal snuff'.

22. The decision in V.R. Subramaniyam v. Balasubramaniam : (1966)2MLJ570 is relied upon by the learned Counsel for the defendant for the following propositions:

A mark would be prohibited whether there was an intention or not to deceive or cause confusion provided the mark was likely to deceive or cause confusion. Confusion might be caused even by telling the truth. Confusion might be caused in the purchasers mind through want of knowledge or ability on his part to distinguish. Whether or not any degree of resemblance likely to deceive or cause confusion existed was a question for the Court to decide upon evidence in each case. The accepted rules of comparison might be stated as follows: (i) The two words should be taken and both of them should be judged by their look and by their sound. (ii) The goods to which they were to be applied and the nature and kind of customer who was likely to buy these goods should be considered (iii) All the surrounding circumstances and what was likely to happen it each of the marks was used in a normal way as a trade mark for the goods of the respective owners of the marks should also be considered. The marks might be considered as a whole as the true test was whether the totality of the impression given both orally and visually was such that it was likely to cause mistake, deception or contusion. In the instant case, the words Raja and Roja, when taken together and judged by their look do not look alike. They were not also similar by sound. The kind of customer who was to buy the goods (cosmetic) was not likely to mistake one mark for the other as there was no great similarity between the two marks. In both the marks were used in a normal way it could not be said that a person was likely to be misled or there would be confusion or deception in the mind of the person who was likely to buy these goods.

23. The learned Counsel for the defendant refers to the decision in Mount Mettur Pharmaceutical Ltd. v. Ortho Pharmaceuticals Corporation (1975) 1 M.L.J. 103 : A.I.R. 1925 Mad. 74 in which it was held that 'Utogynal' in relation to medicinal preparation is not likely to cause confusion with 'Ortho-Gynol' (registered as trade mark). It was also held in the said decision that comparison of the two words not only syllable for syllable but as a whole shows that the total sound effect of the words lacks any similarity. So also when the words are written down and compared, they do not have any similarity which can deceive the eye of the layman.

24. The decision in Mount Mettur Pharmaceuticals (P.) Ltd. v. Dr. A. Wander : AIR1977Mad105 is relied upon by the learned Counsel for the defendant for the proposition that the primary tests are that the words should be judged by their look and by their sound. In this case it is held that there is no similarity in the goods by their look and that 'Asthmix' and ''Asmac' are not similar in sound and are not likely to confuse any person.

25. The decision in Parle Products (P.) Ltd. v. J.P. and Co., Mysore : AIR1972SC1369 is relied upon for the following observation of the Supreme Court in paragraph 9 at page 1362:

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 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. In this case, we find that the are packets practically of the same size, the colour scheme of the two wrappers is almost the same, the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence The words 'Gluco Biscuits' in one and 'Glucose Biscuits' on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who had a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not particular enough to note the peculiar features of the wrapper on the plaintiff's goods, he might easily mistake the defendant's wrapper for the plaintiff's if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendant's wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many other there was absence of it.

26. Thus, for deciding a dispute regarding infringement of a Trade Mark, the following propositions of law are relevant:

(1) In deciding whether the alleged infringing trade mark is likely to cause confusion in the trade or not, it is the totality of the trade mark which has to be kept in view.

(2) Initial burden of showing that the defendant's mark is likely to deceive or cause confusion lies on the plaintiffs who want to restrain the user of the alleged infringing mark. If any resemblance is found to exist between the two marks, it is then for the defendant to show that the two marks are so dissimilar that there is no reasonable probability of any considerable section of the public being deceived.

(3) For deciding a dispute about the infringement of a trade mark, the Court has to have regard to the way in which the infringing trade-mark will appear when it is placed on the goods of the owner of the registered trade mark. If the Courts come to the conclusion that an ordinary purchaser of the goods in question cannot be able to distinguish between the offending mark and the registered mark, the Court will be justified to come to a conclusion in favour of the registered owner of the trade mark.

(4) The question of possibility of confusion is not to be decided on the basis of a person looking at the two trade-marks side by side but on the basis that normally a customer will see one trade-mark in the absence of the other and will have to make up his mind about the trade-mark before him being one he is looking for or not in the light only of his general recollection of what the nature of the trade-mark sought for by him was. In deciding the question of similarity between the marks, the Court has to approach the subject from the point of view of a man of average intelligence and of imperfect recollection. The trade mark is the whole thing, that is the total thing registered, and it is the whole thing or the whole word which has to be considered.

(5) The resemblance, between the two marks may be phonetic, may be visual, may be auditory, or may lie in the meaning of word or mark.

27. Bearing in mind the above principles of law, let me discuss the evidence available on record book oral and documentary.

[The discussion relating to evidence and facts, omitted -- Ed.]

* * * * *

41. The point for consideration is whether there is infringement of the registered trade mark of the plaintiffs by the defendant. In other words, it has to be seen whether there is similarity between the plaintiffs' carton and the defendant's carton. Now both the cartons are available before the Court. We have seen that it has been held that the test of comparison of marks side by side is not a sound one, since the purchaser will seldom have the two marks actually before him when he makes his purchase. So the two cartons have to be scrutinised bearing in mind the said principles. Exhibit A-1, dated 11th September, 1946, is the certificate of registration of the Trade Mark of the plaintiffs' predecessor bearing No. 124825 issued in the name of the plaintiffs and in the annexure, the entire carton is affixed and it is also in black colour. Exhibit A-3 is a portion of the carton of the plaintiffs in green colour with the letters in black and Exhibit A-4 is the entire carton of the plaintiffs. Exhibit A-5, is the carton of the defendant. Exhibit A-6 is another carton bearing the name 'Eyesol' and according to the plaintiffs, it is the carton of the defendant. But the defendant has denied the same and there is no acceptable evidence available on record to show that the defendant ever printed such a carton with regard to his product. Exhibit A-94 is the certificate issued by the Registrar of Trade Marks under Section 75 of the Trade Marks Act, 1940 dated 20th June, 1951 in favour of P.K. Vasudevan. In the annexure to Exhibit A-94, the portion of the carton in green colour is found affixed.

42. The learned Counsel for the defendant contends that there are various points of dissimilarity between the two cartons as stated in the written statement filed by the defendant. According to him, the defendant in his products has printed the word 'Kanmye' in Malayalam language in large and bold letters which is absent in the plaintiffs' carton and at the back of the plaintiffs' carton, the fuli address of the plaintiff's is given in a circle in small letters whereas the defendant has printed the words 'Eyesol' India in bold letters inside the circle and likewise he has also stated that in the defendant's carton left-side eye with the nose fixed above, the nose at the right-hand side is shown, is while in the plaintiffs' carton right-hand side of the nose fixed above, the nose at the left hand side is shown and the eyes are facing each other in the two cartons and both are not on one and the same side and they are easily distinguishable. In this regard, the learned Counsel for the defendant contends that such differences have already been pointed out in the reply notice sent by the defendant to the plaintiffs under Exhibit A-98 dated 29th July, 1974, We have already seen that the question of infringement of plaintiffs' trade mark must be answered in relation to the plaintiffs' trade mark as a whole and not to particular parts of them. It is relevant in this connection to note that the above mentioned dissimilarities pointed out by the defendant can be noticed only by placing the above two cartons side by side and for a casual purchaser, the distinctions and dissimilarities may not be clear. I am convinced that the defendant's carton is certainly deceptively similar to the carton of the plaintiffs which has been registered. The carton of 'Eyesol' in Exhibit A-5 is certainly bearing the features of deceptive similarity with the carton in Exhibit A-2 which is registered, in respect of colour, design and get up. Any person who wants to purchase 'Eyetex' manufactured by the plaintiffs will get confused and misled when 'Eyesol' product kept in Exhibit A-5 carton is offered to him by the dealer. I am certainly of the opinion that the carton of the defendant may cause deception to persons who like to purchase kanmye.

43. It is relevant in this connection to note that the plaintiffs filed cases against one Thakkar, the Proprietor of Pushpa Perfumes, Thiruvott(SIC)yur High Road, Madras in this Court in C.S. No. 62 of 1963 and 65 of 1961 for infringement of their trade mark and for permanent injunction restraining the said Thakkar from selling his products by infringing the trade mark of the plaintiffs. Exhibits A-95, A-96 are the copies of the compromise decree issued in the two cases. The plaintiffs have also filed a certificate of validity of the Trade Mark issued by the High Court in C.S. No. 65 of 1961. It is seen that the trade mark of the plaintiffs is a valid registered Trade Mark and the plaintiffs have got exclusive right to the said Trade Mark with regard to their product marketed as 'Eyetex.'

44. It is contended on behalf of the defendant-respondent herein that even in the year 1954, the plaintiffs' predecessor in trade issued a warning notice in the 'Indian Express' dated 21st September, 1954 regarding the infringement of his trade mark and the defendant gave a reply to the same. The defendant has not filed any copy of the said reply and the original is not available before the Court. The defendant, however has filed the reply notice sent by P.K. Vasudevan which has been marked as Exhibit B-19. I have already extracted the relevant portion of the contents of Exhibit B-19. Exhibit B-2 newspaper publication was given by the plaintiffs' predecessor after the reply was received from the defendant. The contents of Exhibit B-19 and Exhibit B-2 show that the defendant had informed that his Trade Mark had been registered On behalf of the plaintiffs it is contended that such representation was made by the defendant fraudulently and therefore, the plaintiffs' predecessor had not raised any objection for the use of the trade mark by the defendant and the same cannot amount to acquiescence by the plaintiffs for the defendant's use of the trade mark. On a careful consideration of the entite evidence available on record, I find that the defendant cannot claim that there was acquiescence by plaintiffs' predecessor for the defendant's use of the trade mark.

45. It is contended on behalf of the defendant that originally the plaintiffs' predecessor had registered the carton with the word 'Eyetex' printed in separate bold letters with the Tamil word 'Mye' along with the word 'Regd.'; the eye mark is in a white background with Hindi, Telugu words and the word 'Eyetex' is printed separately and only subsequently the letter 'Y' is closely printed and joined with the letter 'E' and the same has been copied from the carton used by the defendant. It is also pointed out that there is difference in the manner in which the word 'TEX' is printed in the carton of the year 1954 and that is found in the present carton. It is relevant in this connection to note that the defendant did not raise any objection for any such alteration before the Registrar of Trade Marks. The defendant had also not objected to the same by issuing any notice to the plaintiffs or to the plaintiffs' predecessor. The plaintiffs have registered the present trade mark.

46. Mr. R. Sundararajan, the learned Counsel for the defendant contends that originally when the plaintiffs' predecessor registered the trade mark, the carton was black in colour and later on only, the plaintiffs have changed the same into green colour and that the defendant has been using the same carton ever since the year 1954. In this regard, the learned Counsel for the plaintiffs points put that under the provisions of Section 10(2) of the Trade and Merchandise Marks Act, 1958, the trade mark is deemed to be registered for all colours and the plaintiffs' predecessor has registered the trade mark even in the year 1949 whereas the defendant claimed to have started the business only in the year 1953. Therefore, it cannot be held that the defendant had been using the trade mark prior to the use of the trade mark by the plaintiffs. D.W. No. 1 has stated in his evidence that he had approached one L.R. Swami for registration of his trade mark, and that the said L.R. Swami had promised to get the trade mark of the defendant registered in due course and subsequently, the said L.R. Swami had died. Exhibit A-99, the letter written by the Examiner of Trade Marks to the advocates of the plaintiffs shows that the application bearing No. 163085 was abandoned and destroyed and as such no certified copy of the same can be furnished. It is been from the evidence that the defendant had been doing the business only from the year 1953 and not earlier to that. Merely on the ground that the plaintiffs' predecessor in trade had expressed no objection for the defendant's products, it cannot be held that there has been no infringement of the Trade Mark of the plaintiffs by the defendant because the defendant's trade mark is not a registered one. In the instant case, we find that the cartons are practically of the same size, colour scheme of the two wrappers is almost the same; the design on both, though not identical bears such a close resemblance that one can easily be mistaken for the other. In the circumstances, I hold that there is infringement of the plaintiffs, registered trade mark by the defendant and therefore, the plaintiffs are entitled to an injunction.

47. In the plaint, the plaintiffs have claimed damages from the defendant to the extent of Rs. 10,000. Though the actual damages according to the plaintiffs, amounts to more than Rs. 33,000 they restricted their claim to Rs. 10,000. As seen above, the plaintiffs have filed the account books showing the sales and also extracts from the account books and assessment orders passed by the Commercial Tax Department as well as the Income-tax Department, The plaintiffs have also examined their printer and filed several orders placed for printing the cartons and other leaflets. It is the case of the plaintiffs that their trade has been affected by the infringement of the trade mark by the defendant Exhibit A-11 is the comparative sales statement, regarding Madras City sales from April, 1973 to March 1974. P.W. 6 the Accountant of the plaintiffs has stated that various other products of collyrium are being sold in various trade names and the same can be seen from Exhibit B-8 to Exhibit B-18. It is relevant in this connection to note that the plaintiffs besides manufacturing Eyetex are also manufacturing other beauty aids and their total turnover is assessed on the sales of their entire products. The defendant has stated in his evidence that he is manufacturing his product in a small scale. The trial Court has found that plaintiffs themselves had not raised any objection for the use of the name 'Eyesol', by the defendant as seen from the contents of Exhibit A-10 and as such, the defendant will be free to use the name 'Eyesol' by printing the same in a different manner from that of the plaintiffs. The relevant passage in Exhibit A-10 reads as follows:

We are also instructed to add that our clients' objection against your clients' Eyesol Trade Mark is not directed towards the word EYESOL per se, but to the colour scheme, design, lay out and get-up of the carton in which your clients' EYESOL product marketed as already pointed in paragraph 4 of ours, Registered Notice, dated 8th June, 1974.

From the above passages, it cannot be spelt out that the plaintiffs have no objection for the defendant's trade mark 'Eyesol' or that the plaintiffs have granted permission to the defendant for using the name 'Eyesol' for their products. Section 2(1)(j) of the Trade and Merchandise Marks Act, 1958 defines 'mark' as including a device, brand, heading label, tickets, name, signature, word, letter or numeral or any combination thereof. As it is also with the name, the registered trade mark of the plaintiffs has been infringed, the defendant cannot be allowed to use the name 'Eyesol' for the products manufactured by him. By using the name 'Eyesol' in Exhibit A-5, the defendant has infringed the registered trade mark of the plaintiffs. Therefore, I hold that the defendant is not entitled to use the name 'Eyesol'.

48. On a careful scrutiny of the accounts and assessment orders relied on by the plaintiffs, I hold that the plaintiffs have sustained damages due to the infringement of their trade mark by the defendant. Yet, they have not proved that they are entitled to claim Rs, 10,000 towards damages. In these circumstances, for the infringement of their registered trade mark by the defendant the plaintiffs can be given only nominal damages.

49. In the result, there, will be a decree in favour of the plaintiffs restraining the defendant or his agents by a permanent injunction from using the trade mark similar to the registered trade mark of the plaintiffs-appellants as shown in Exhibit A-5 attached to the decree of the lower Court so as to be deceptively similar, in particular by using the word 'Eyesol' or any other word deceptively similar to the word 'Eyetex', the registered trade mark of the plaintiffs-appellants, and from selling, offering for sale, passing off or attempting to pass off their collyrium preparations, so as to be likely to deceive, or cause confusion we thused in relation to the goods which are of the same description as the goods for which the plaintiffs'-appellants' trade mark was registered. The plaintiffs are also granted a decree for nominal damages to the extent of Rs 100. The appeal preferred by the plaintiffs is allowed to the extent as ithecated above. Cross-objections filed by misdefendant is dismissed. In the citcuear tances, the parties are directed to bear their own costs, in this appeal.


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