R. Sadasivam, J.
1. Petition under Sections 56, 107 and 108 of the Trade and Merchandise Marks Act (XLIII of 1958) for rectification of the Register of Trade Marks by cancelling the registration of the trade mark 'Matulaies' adopted by respondents 1 to 3. The petitioners are reputed manufacturers of safety matches, and one of their trade marks ' Three mangoes' which they are using ever since 1934, on the packets and lables of the match boxes sold extensively in different Districts of Andhra Pradesh and more particularly in the Districts of Guntur, Krishna, Khammameth and Warangal. The first respondent is a proprietary concern of 2nd respondent, P. Muthiah Nadar, and the third respondent, the joint owner of the trade mark ' Matulaies '. The complaint of the petitioners is that respondents 1 to 3, in or about 1959, conceived the idea of adopting the mark of 'Matulaies', similar to that of the registered trademark of 'Three mangoes' of the petitioners maliciously and with the intent of causing wrongful loss to the petitioners. The case of the petitioners is that the mark of ' Matulaies ' adopted by respondents 1 to 3 is an obvious and colourable imitation of the trade-mark of ' Three mangoes ' and is calculated to deceive the eye of an unwary purchaser and equally others, resulting in confusion and deception in the minds of the purchasing public. The petitioners filed O.S. No. 1 of 1961 on the file of the District Court, Guntur, against respondents 1 and 2 for infringement of their trade mark. But during the pendency of the suit, respondents 1 to 3 got the trade mark 'Matulaies' registered by the fourth respondent. The petitioners claim that the said registration is in contravention of the provisions of Section 12(1) of the Act and has to be expunged to maintain the purity of the Register.
2. The case of respondents 1 to 3 is that the trade-mark ' Matulaies ' belonging to them is distinctively different from the trade-mark of Three mangoes ' belonging to the petitioners, and that there is no infringement of the trade-mark of the petitioners by respondents 1 to 3.
3. The learned Advocate for the petitioners did not for a moment suggest that any confusion is likely to arise between the trade-mark used by petitioners and the trade-mark used by respondents 1 to 3. The trade-mark 'Matulaies' which is the Tamil word for pomegranate cannot be confused with the trade-mark ' Three mongoes ', whether one sees the mark printed on the lables or hears the marks when they are pronounced. The words are dissimilar ; and it is not urged that there is any phonetic similarity between the words. The learned Advocate for the petitioners rightly stated, even at the commencement of the hearing of the petition, that it is for the Court to test the similarity of trade marks and designs by comparing them. It is true that such comparison should not be made by having the lables of the petitioners and respondents 1 to 3 side by side, because that is not what a customer does when he wants to purchase the goods of the petitioners. The following observations of a Division Bench of the Court in Ebrahim Currim & Sons v. Abdulla Saheb (1922) 65 M.L.J. 617 clearly show how comparison of the marks should be made to test similarity of two marks:
One has got to see whether an ignorant purchaser is going to be in the position of the Court having the two things side by side and examining them critically. The purchaser probably trusts, to his recollection of one or a description of it that has been given to him, or seeing it in the shop, window, goes to the person selling the infrigement who ex hypothesi does not give him the two the genuine one and the infringement to choose from.
4. A person who asks for ' Three mangoes ' mark match boxes of the petitioners Will not be given Matulaies' mark match boxes of respondents 1 to 3. It is clear from the affidavits filed by both parties that the customers generally ask for matches without specifying the name of any particular brand and they rely upon the labels found on the match boxes. Having looked at the two labels, namely, one containing the mark Three mangoes' and the other, 'Matulaies', I have no doubt that no customer who is accustomed to or wants to purchase the ' Three mangoes ' match boxes will be misled or deceived into buying the ' Matulaies ' match boxes. It is impossible even for an unwary or ignorant purchaser who wants to buy the ' Three mangoes match boxes of the petitioners and merely trusts to his recollection of the label to be misled or deceived by the label of 'Matulaies' of respondents 1 to 3 as that of three mangoes' of the petitioners. In view of such vital differences between. me two labels, the learned Advocate for the petitioners tried to support the claim for rectification on two ground, namely, (1) fraudulent intent of respondents 1 to 3. to pass-off their goods as that of the petitioners by trying to sell them in the several Districts of Andhra Pradesh where the Petitioners' goods have become popular and are sold, and (2) deceptive similarity of the colour scheme and particularly yellow background
5. The learned Advocate for the petitioners relied on the affidavit of V.M. Mahadevan, Chief Marketing Officer of the petitioners ' firm, that
the petitioners' match boxes with the trade mark of' Three mangoes ' are particularly sold and are in great demand in the Districts of Guntur, Krishna, Kammamet and Warangal in the State of Andhra Pradesh, and that the mind of the respondents is clear from the discreet attempt made by them to introduce their goods with the offending trade mark in the said Districts.
The learned Advocate for respondents 1 to 3 stated that their match boxes with the lables ' Matulaies' are sold not only in the several Districts of Andhra Pradesh but. also in South India and Delhi. If there was really any fraudulent intent on the part of respondents 1 to 3, as alleged in the affidavit of Chief Marketing Officer of the petitioners firm, it should have been specifically pleaded in the petition ; and that, has been done. In fact there is no reference to the alleged fraudulent intent on the part of the responds 1 to 3 even in the reply statement of the petitioners. It may be that the respondents are rival traders. On that account they cannot be Prevented from carrying on the trade by using their trade mark 'Matulaies' unless the petitioners are able to prove that the said trade mark and and label infringed their rights.
6. The learned Advocat for the petitioners relied on the observation of Lord Lawrence in Reddaway & Co., v. Hartley 48 R.P.C. 283, that where fraud is established,
the court would readily assume that the defendant would be likely to succeed in his design however much it might on the face of it appear to a lawyer that he had sufficient distinguised the destination which he has applied to his goods from the plaintiffs.
The following passage from the judgment of Lindley, L.J. in Slazenger & Sons v. Fetham & Co. 6 R.P.C. 531 is also to the same effect:
One must exercise one's common and, if you are driven to the conclusion that what is intende to be done is to deceived, if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say cannot succeed in doing that which he is straining every never to do?
The learned Advocate also relied of the following statement at page 145 in the law of Trade and Machandise Marks in India By S. Venateswaren (1973 Edition):
If the mere comparison of the goods, explained by surrounding circumstances, is not sufficient, then it is allowed to prove from other sources that what is, or may be, apparent innocent was really intended to device.
It is true that in passing-off actions probability of deception is presumed in cases of fraud; but there is no scope for invoking the principle to the facts of the present.' case. It is clear from what I have stated already that the petitioners have not even alleged that there was any fraudulent intent on the part of respondents 1 to 3 that the trade marks and labels in this case are totally distinct and different, and that there is no likelihood of any one being deceived into purchasing the goods of respondents 1 to 3 as that of the petitioners by reason of the alleged similarities of the trade marks or labels on the respective goods.
7. On a comparison of the label of the petitioners with that of respondents 1 to 3, I see no deceptive similarity of the colour scheme in the two labels. The learned Advocate for the petitioners stated that he would be satisfied if the yellow background in the label of respondents 1 to 3 is changed to some other colour. But there is nothing to show that the petitioners have any monopoly for the yellow background in their labels. In fact, there is nothing to show that yellow background is not used by the manufacturers of match boxes having other trade marks.
8. The Assistant Registrar of Trade Marks has been impleaded as fourth respondent in this petition and, he has filed a statement under Section 112(2) of the Trade and Merchandise Marks Act of 1958 which provides that such statement shall be evidence in the proceeding. In Para. 2 of the statement, the Assistant Registrar has stated the procedure that is followed in respect of an application for registration of trade mark. In Para. 3 of his statement he has stated that the procedure has been followed in the instant case. Thus the 4th respondent made a search among the registered trade marks and pending applications and found no identical or deceptively similar marks on the Register or pending registration which would bar the registration of the trade mark of respondents 1 to 3 under Section 12(1) of the Act. It is clear from the decision in Ciba, Ltd. v. Ramalingam : AIR1958Bom56 at 62 that the relief to be given under Section 46 of the old Act which corresponds to Section 56 of the Trade and Merchandise Act, 1958, is a discretionary relief, and, that though the Court is bound to consider the case independently on merits, it would ordinarily be loath to interefere with the discretion of the Registrar. I have already independently considered the contentions urged by the learned Advocate for the petitioners and I do not find any ground to hold that the registration of the trade mark and label of respondents 1 to 3 was made without sufficient cause or that there is any error or defect in the entry in the Register which requires rectification or correction under Section 56 of the Trade and Merchandise Marks Act, 1958.
9. The learned Advocate for the petitioners relied on the decision in Eno v. Dunn (1890) L.R. 15 A.C. 252. where it was held that the Patents, Designs and Trade Marks Act, 1883, conferred upon the Comptroller a discretion whether to register a trade mark or not and he ought to refuse registration where it was not clear that deception might not result. He particularly relied on the passage at page 263 that a reasonable exercise of the discretion is to refuse registration when it is not clear that deception might not result from it. There is difference in the language of Sections 72 and 73 of the Patents, Designs and Trade Marks Act, 1883, of England and Sections 11 and 12 of the Trade and Merchandise Marks Act, 1958 of India. The words 'calculated to deceive' found in the sections of the former Act do not find place in Sections 11 and 12 of the latter Act. Even assuming that the principle of the decision in the case cited above will be applicable to the cases under 'the Trade and Merchandise Marks Act, 1958, it cannot help the petitioners in view of my finding that there is no evidence that the trade marks and design of respondents 1 to 2 are calculated to deceive the public as that of the petitioner.
10. The learned Advocate for the petitioners, commented upon the fact that respondents 1 to 3 got their trade mark and label registered during the pendency of the petitioner's suit, O.S. No. 1 of 1961 on the file of the District Court of Guntur, But it should be noted that respondents 1 to 3 filed the application for registration of their trade mark and label even prior to the filing of the suit. Respondents 1 and 2 pleaded in the written statement that they had applied for registration of their trade mark and label, and that the same was advertised on 16th February, 1961. Under Section 21 of the Trade and Merchandise Marks Act, 1958, the petitioners could have filed objections to the registration of the trade mark and label of respondents 1 to 3, on the ground that it infringed their rights. But they did not do so.
11. The petitioners have filed affidavits of stockists, retail dealers and users of their match boxes containing the trade mark ' Three mangoes' to show that confusion has arisen in the market on account of similarity of the trade mark and label of respondents 1 to 3. Respondents 1 to 3 have also filed a large number of affidavits to prove that there could be no such confusion. The learned Advocate for the petitioners conceded even at the commencement of hearing of the petition that the Court is the best Judge to determine whether there is deceptive similarity of the two trade marks and labels. It is therefore unnecessary for me to discuss in detail the contents of the affidavits filed by both parties.
12. For the foregoing reasons the petition is liable to be dismissed and is hereby dismissed with costs.