M.M. Ismail, J.
1. The plaintiff in O.S. No. 24 of 1965 on the file of the District Judge, Tirunelveli, is the appellant herein. In view of the narrow compass in which the appeal was argued, before me, it is not necessary to refer to the controversy between the parties very elaborately. The appellant is a firm registered under the Partnership Act, manufacturing and selling safety matches under the name, label and trade mark of Delux Safety Matches. The appellant instituted the suit praying : (i) for an injunction restraining the defendants, their servants and agents from passing off or attempting to pass off and from enabling others to pass off safety matches, not of the plaintiff's (appellant's)manufacture, as the goods of the appellant by using the name either 'Delux' or 'Deluxe' and the trade mark similar to the one used by the appellant or by using packages of similar make and appearance as those used by the appellant for their goods; (ii) directing the defendants to deliver to the appellant for destruction all blocks, printed labels etc, used in the manufacture of the label for safety matches; and (iii) directing an account to be taken of the profits made by the defendants by the sale of their goods from August ,1965 and payment of the same to the appellant.
2. Defendants 1 and 2 filed a common written statement and defendants 3 to 23 filed a common written statement, and they denied the allegations of the appellant and the claim put forward by it.
3. On the above pleadings, the learned District Judge framed the following issues:
1. Whether the plaintiff has acquired a monopoly right over the trade mark claimed by it ?
2. Whether the defendants are trying to pass off their goods as that of the Plaintiff?
3. Whether the suit is not maintainable in this Court ?
4. To what reliefs, if any, is the plaintiff entitled?
4. The learned District Judge held issues Nos. 1 and 2 against the appellant and in view of those findings on issues Nos. 1 and 2, the suit itself was dismissed. It is against this dismissal of the suit the present appeal has been filed by the plaintiff in the suit.
5. Before I refer to the scope of the appeal itself, I must refer to the findings of the learned District Judge. Exhibits A-10 and A-11 are the trademarks used by the appellant for its products. Exhibits B-10, B-11, A-13 to A-24, are the marks used by defendants 1 to 3, 7, 10, 15, 4,8, 11,17, 5,9, 13 and 20 respectively. The learned Judge found that a perusal of those several labels left no one in doubt that they were deceptively similar to each other, that it was not necessary that the appellant should prove that the similarity in the marks had actually deceived the buyers, and that what had got to be found was whether an ordinary buyer would not be deceived by the close similarity. Notwithstanding this finding of his, the learned District Judge, dismissed the suit on the ground that the establishment of that fact alone was not sufficient and that it must also be shown that the public had grown to associate that name or mark with the appellant as the manufacturer of the matches in question. The learned Judge found that that association or connection in the public mind had not been established in the present case. In view of this alone he dismissed the suit.
6. The appeal itself has not been pressed against respondents 1 to 7, 13 to 19 and 21 on the ground that they have given an undertaking to the appellant that they would not use similar labels hereafter, and was pressed only as against the other respondents. Mr. P. Rama-swami, the learned Counsel for the appellant, advanced two arguments in support of this appeal. The first argument is that the learned Judge has held that there had been no assignment or transmission of the trade mark in question from its original owner and that that conclusion is not correct, because the appellant had obtained the consent of the original owner for the use of the trade mark in question. The second argument is that the learned Judge, for coming to the conclusion that it is not enough if the plaintiff shows that his product had acquired a reputation in the market, but he must also show that the public have grown to associate the particular name or mark with the appellant or his product has relied on the decision of this Court in Batchayi Rowther v. Ramaswami Pillai : AIR1936Mad8 , and that subsequent decisions have held that such a requirement was not necessary. I shall now deal with these two points separately.
7. In my opinion, as far as the first point is concerned, it is really not material. Because of some argument advanced before the learned District Judge, he has referred to the definition of the expression 'assignment' as contained in Section 2 (1) (a) and the definition of the expression 'transmission' as contained in Section 2 (1) (w) of the Trade and Merchandise Marks Act, 1958. The case of the appellant was that the trade mark belonged to one New Jothi Match Industries, that with, the consent of New Jothi Match Industries the appellant used that trade mark and that that consent would constitute assignment as that consent was in writing. This question came to be considered in view of the provisions contained in Section 38 of the Act, referred to above. I must, even at this stage, refer to the fact that the entire controversy before the trial Court proceeded on the basis of the trade mark of the appellant being an unregistered one. Section 38 (i) of the Act states that an unregistered trade mark shall not be assignable or transmissible except along with the goodwill of the business concerned. Sub-section (2) of this section deals with certain exceptions. The learned District Judge, in paragraph 12 of his judgment, points out that it was conceded by the appellant before him that Sub-section (2) of Section 38 did not apply to his case. If so, there is no meaning in even relying upon Exhibit A-9 the consent said to have been given by New Jothi Match Industries for the appellant using their trade mark as an assignment, because Section 38 (i) clearly contemplates that an unregistered trade mark shall not be assignable or transmissible except along with the goodwill of the business concerned. It is not the case of the appellant that it had acquired the goodwill of New Jothi Match Industries. Therefore it is not necessary to consider this question further, because it will not be of any assistance to the appellant.
8. As far as the second question is concerned, the learned Judge has relied on several decisions for coming to the conclusion which he did, and among them are two decisions of this Court, one which I have already referred to, viz., Batchayi Rowther v. Ramaswami Pillai : AIR1936Mad8 and the other Venkatachalam v. Rajagopala : AIR1932Mad705 . Venkatachalam v. Rajagopala : AIR1932Mad705 , is a decision of a Bench of this Court. The second head-note to that decision sets out the conclusion. That head-note reads as follows:
that the plaintiff must prove that the name had acquired a secondary meaning and had come to mean goods manufactured by themselves and not by other manufacturers before the question whether the defendants had infringed the plaintiffs' right could be considered. The mere fact that the plaintiffs' goods of that name had acquired a considerable reputation is not enough. Nor the fact that in a particular place by its universal use the name had acquired a secondary signification will entitle the plaintiff to have an injunction in every part of the country.
9. This conclusion was arrived at by the Bench of this Court after referring to a number of English cases. This decision of the Bench is binding on me. The other decision, as I already pointed out, is Batchayi Rowther v. Ramaswami Pillai : AIR1936Mad8 . The head-note of that decision which brings out the principle, slates:
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. Hence in a case where 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, his suit to restrain another from using that mark is not sustainable.
10. Thus, on the finding of the learned District Judge that there was no evidence placed before him by the appellant to show that in the public mind an association between the appellant's business and the goods bearing the mark in question had been established, these two decisions are directly against the appellant herein. As already pointed out by me, that finding was not question before me and all that the learned Counsel contended was that there were subsequent decision to the above decisions holding that such establishment of association or connection was not necessary. In support of this contention the learned Counsel for the appellant invited my attention to a judgment of a single Judge of this Court in Indian Denial Works by its proprietor, Dhanalakshmi Ammal and Anr. v. K. Dhanakoti Naidu (1963) 1 M.L.J. 365 : (1962) 64 L.W. 666 : I.L.R. (1962) Mad. 209 : A.I.R. 1962 Mad. 122. In particular, the learned Counsel relied on the following sentences occurring at page 369:
It is true there is evidence in this case that people have been misled by the first defendant's trade mark into believing that the goods produced by the first defendant are really the goods of the plaintiffs. But even without such evidence it is for me to assess the value of the contention that the public are likely to be misled by the two trade marks. I have perused the two trade marks and they resemble each other very closely both in get-up, in the colour scheme adopted, and, in the descriptive matter and above all in the picture of the human face and the numeral 1431. These are, in my opinion, sufficient to show that the first defendant consciously adopted his trade mark with the idea of pirating the trade mark of the plaintiffs.
In my opinion the above passage has no bearing on the question actually decided by this Court in the two decisions referred to above and argued before me. In view of this fact I am unable to hold that this decision is of any assistance whatever to the appellant herein.
11. Apart from the decisions referred to above, the law regarding a passing off action is clear and has been set out in Kerly's Law of Trade Marks and Trade Names (Ninth Edition) at pages 367 and 380. At page 367 it is stated:
It is essential to the success of any claim in respect of passing off, based on the use of a given mark or get-up, that the plaintiff should be able to show that the disputed mark or get-up has become by user in this country distinctive of the plaintiff's goods, so that the use in relation to any goods of the kind dealt with by the plaintiff of that mark or get-up will be understood by the trade and public in this country as meaning that the goods are the plaintiff's goods.
At page 380 it is stated:
Nevertheless, the plaintiff must establish on the one hand that the badge of trade concerned has been used for goods or a business that are not his or at least they have no right to the badge so as to be recommended by it. On the other hand, if the plaintiff cannot prove the association, in this country, of the mark or get-up concerned with goods that in fact are his (or, in the case of a business name, associated with his business) the action fails in limine. The foundation of a passing off ease is that the party alleging it should prove, in the first instance, that any name which he claims as his trade name has been so extensively used in connection with his manufacture or with the goods which he sells that his goods have come to be known in the market by that name ; that anyone using that name would intend to refer to his goods ; and that anyone to whom the name was used would understand that his goods were referred to.
The above proposition has been taken from the statement of the law laid down by Herschell, L.C., in Laahy, Kelly and Leahy v. Clover (1893) 10 R.P.C. 141.
12. As I already pointed out, the present suit of the appellant is a passing off action and the above principle of law directly applies to it, and, on the finding of the learned District Judge that no evidence has been placed to prove such association, the suit was rightly dismissed by the learned District Judge. Hence the appeal fails and is dismissed with the costs of the 24th respondent.