S. Mohan, J.
1. The plaintiffs have preferred the appeal against the dismissal of their suit in O.S. No. 2 of 1975 on the file of the learned District Judge, Tirunelveli.
2. The suit was one for permanent injunction restraining' the defendants, their agents and servants from manufacturing and selling tooth powder with the trade mark label marked 'I' or any other colourable imitation of the plaintiffs' trade mark marked 'A' and produced along with the plaint and for rendition of accounts of the profits earned by the defendants by the use of the offending trade mark label from August, 1974 and to make an inquiry into the quantum of damages as ordered by this Court on 17th February, 1976 and to surrender all unused offending trade mark labels and also the blocks, and dyes used by them in printing the labels marked.
3. The plaintiffs are carrying on business in the manufacture and sale of tooth powder among other articles under the name and style of S.P.S. and Co., and Vel Chemicals Works at No. 25, East Napalayam Street, Madurai. The business was started by the plaintiffs' father S.P.S. Muthu Nadar in or about the year 1946-47. The said Muthu Nadar is dead. The plaintiffs are using from the time of their father the trade mark label popularly known as 'Gopal Tooth Powder' in English and in Tamil. The trade mark label is produced along with the plaint and marked as 'A' and the same has been registered on 30th April, 1947. The plaintiffs' father had also registered the mark of a 'Vel' as an associate trade mark under the provisions of the Trade Marks Act (hereinafter referred to as the Act). The said registrations have been renewed from, time to time. The plaintiffs have extensive business and their tooth powder is sold not only in India but also abroad. None excepting them, have any right to use any trade mark label for tooth powder which is similar to the plaintiffs' trade mark label marked 'A' or which is a colourable imitation of the said label. The first defendant was for sometime a selling agent under the plaintiffs and their father. The defendants started about the end of August, 1974 to manufacture and sell tooth powder with the trade mark label 'Jemy Tooth Powder' in English and in Tamil. The plaintiffs have no objection to the defendants using this name as the trade mark but the size of the defendants label, the red and white, background adopted by the defendants and the figures and distribution of letters adopted by the defendants in their label are all similar to those of the plaintiffs' trade mark label.
4. The introduction of the defendants' tooth powder with the defendants' infringing label is causing and in any event likely to cause confusion among the consuming public and they are sure to be misled into believing the defendants' goods as the plaintiffs' goods. The plaintiffs' trade mark has been copied in order to deceive the general public. The defendants have absolutely no right to apply for registration of one mark and use a close and colourable imitation of the plaintiffs' trade mark. A notice was issued to the first defendant calling upon the defendants to cease using the label marked 'I' but that request had not been complied with.
5. The plaintiffs filed an application in I.A. No. 112 of 1975 along with the plaint for the issue of a temporary injunction and interim injunction was granted on 19th February, 1975. Against that interim injunction, an appeal was filed and an application for interim suspension was also filed and obtained. Finally, the appeal was dismissed. During the interregnum, the defendants sold their tooth powder and as a result there was a drop in the sale of the plaintiffs' goods. Contempt Application No. 12 of 1975 was filed praying that the defendants may be punished for the disobedience of the interim injunction. The matter was heard by the First Bench of this Court which directed the trial Court to go into the question of damages. The damages were valued at Rs. 67,760. Hence the suit.
6. The defendants filed written statement contending that the plaintiffs can have no genuine grievance. The motive is ulterior and speculative. The avowed object of the plaintiffs is to put down every new entrepreneur in the trade of tooth powder by filing suits of this nature and obtaining ex parte injunction order. No doubt, the defendants are selling their tooth powder under the name and style of 'Jemy Tooth Powder'. The trade mark printed on the wrapper is in no way similar to the plaintiffs' trade mark nor is it a colourable imitation. Both the plaintiffs' trade mark and the defendants' trade mark, are entirely different. There is no similarity at all. Neither the size of the label nor the colour can be said to be in any way infringing the trade mark of the plaintiffs. There is no phonetic similarity. The defendants deny that the plaintiffs had suffered any loss and the allegation that the plaintiffs' sales were affected because of the sale during the suspension of the interim injunction. The claim for damages cannot be supported.
7. In the additional written statement, the proceedings relating to I.A. No. 112 of 1975 were admitted. However, what is contended was that the plaintiffs were precluded from praying for damages. In a further additional written statement it was contended that the plaintiffs are attempting to create a monopoly business in the sale of tooth powder by crushing the existence of all small traders. The plaintiffs have no exclusive right to the size of the packets. This size of the packets of the tooth powder is adopted and used by all manufacturers of tooth powder and so also the colour is common to the trade and the plaintiffs cannot claim any exclusive right to the same. Even before the plaintiffs' advocate has sent a notice of suit, the defendants have on 18th December, 1974 applied to the Trade Mark Registry for registration of their trade mark. The trade mark application is pending registration. The plaintiffs have no cause of action and therefore, the suit is liable to be dismissed.
8. On these pleadings, the following issues were framed by the trial Court:
1. Whether the trade mark label used by the defendants is a colourable imitation of the plaintiffs' trade mark?
2. Whether this Court has no territorial jurisdiction to entertain this suit?
3. To what relief, if any, are the plaintiffs entitled?
4. Whether the defendants' trade mark label shown as No. 'I' in the plaint is in infringement of the plaintiffs' trade mark label?
3. Whether the sale by the defendants of their packets of tooth powder with the trade mark label 'I' as affixed in the plaint is likely to deceive or mislead purchasers into believing that they are purchasing tooth powder of the plaintiffs' manufacture?
6. Whether any damages have been suffered by the plaintiffs and if so, what is the extent?
7. Whether the plaintiffs are entitled to the relief for accounts of the profits earned by the defendants as claimed in paragraph 12(b) of the plaint?
9. The learned District Judge who tried the suit came to the conclusion on issue No. 1 and additional issues 4 and 5 that the two trade marks viz., that of the plaintiffs and the defendants have no similarity whatsoever, that an unwary purchaser will not be misled by the label of the defendants, nor again has there been any phonetic similarity. On these findings, he answered these issues in favour of the defendants. The learned District Judge further found that the plaintiffs had not proved their case for damages. In the result, the suit was dismissed with costs.
10. Mr. S. Chellaswamy, learned Counsel for the appellants submits that the lower Court has acted contrary to the principles adumbrated in Parle Products v. I.P. and Co. Mysore : 3SCR289 , wherein it has been categorically laid down that side by side comparison should not be made and what should be taken into consideration is the overall picture. Ignoring these principles, what the Court below has done is to make a comparison side by side and try to bring about all points of dissimilarity which are actually forbidden. Then again, the Court below has not appreciated the fact that both the size of the different labels and the colour scheme adopted will clearly go to show that the essential features of the plaintiffs' label have been adopted and that alone would be sufficient to decree the suit as laid down in K. Krishna Chettiftr v. Ambal and Co. : 1SCR290 . The learned Counsel relied on the decision in Chinnikrishna Chetty v. Venkatesa Mudaliar : (1973)2MLJ98 , and also a decision of this Court rendered by Varadarajan, J., in Amrutanjan Limited v. Mehta Unani Pharmacy Co. and Ors. C.S. No. 54 of 1970, in support of his submission that the overall similarity is the criterion which has to be applied in this case. Learned Counsel also relied on Kerry's Law of Trade Marks and Trade Names, page 792 in support of his above contention. No doubt, having regard to the terms of Section 10(2) of the Act, it is open to the defendants to use any colour but where the colour is so used in order to bring about a deceptive similarity, the Court ought to take note of that fact and ought to have granted relief in favour of the plaintiffs. In support of his submission, the learned Counsel relied on Kerry's Law of Trade Marks and Trade Names, page 855. The learned Counsel also cites page 137 of the Law of Trade and Merchandise Marks by Venkateswaran, page 211 of Narayanan's law of Trade Marks and Passing off and also the decision in In re, Worthington and Co.'s Trade Mark 14 Ch.D. 8.
11. In matters of this kind, the law is well settled that each case has to be decided on merits and it does not depend upon the evidence as to whether the consuming public would be deceived as laid down in Ciba Ltd. v. M. Ramalingam : AIR1958Bom56 , and also page 407 of the Law of Trade and Merchandise Marks by Venkateswaran. Even otherwise, there is the evidence of P.W. 1 who has clearly deposed that most of the purchasers of the tooth powder of the plaintiffs are illiterates and there being no cross-examination on this point, it must be held that, in all probability, the consuming public would be deceived by the label used by the defendants.
12. On the question of damages, pursuant to the orders of this Court that there has been a drop in the sales to the tune of about Rs. 6 lakhs and even assuming that 10% was the profit earned by the defendants, they would come to Rs. 67,760. On that account, it is well open to the Court below to award damages and in so far as it refused to grant damages, it has again gone wrong. On these grounds, the judgment of the Court-below is liable to be set aside.
13. Lastly Mr. Chellaswamy, concedes that he does not complain of passing off but his action is only for infringement of the trade mark of the plaintiffs.
14. Mr. S. Govind Swaminathan, learned Counsel for the respondents, would draw my attention to Parle Products v. J.P. and Co. Mysore : 3SCR289 , and state that there cannot be any uniform law in matters of this kind and the Judge who decides the matter would have to examine the label of the plaintiffs with the offending label and see whether there is overall similarity. The comparison will have to be made firstly for the purpose of the said overall similarity; and secondly to find out whether the essential features have been adopted. In that way, the Court below has examined side by side and such an examination is practically permissible as laid down in F. Hoffmann La Rochee and Co. v. Geoffrey Manners and Co. : 2SCR213 . If the marks are examined, there is no similarity whatsoever. The plaintiffs' label contains the picture of Lord Krishna while that of the defendants' contains two horses standing on their hind legs and resting their forelegs on a hexagonal structure. So, there cannot be any confusion on this score.
15. As regards, the colour, first of all, the defendants' label is dark-red in colour. Even assuming that it is of the same colour, that alone will not be material in view of the provisions of Section 10(2) of the Act. The size of the label is common to all traders in this line and therefore, there is nothing peculiar about that, nor again can that be a matter of complaint. Colour becomes important only in an action for passing off which is not the ease here having regard to the stand taken by the learned Counsel for the appellants. The appellants' tooth powder has distinctive mark as opposed to the two horses. The presence of those two horses is an essential feature. Lastly, it is contended that there is no phonetic similarity at all. So, if these essential features are not adopted, the plaintiffs' suit would have to fail.
16. On the question of damages, as rightly held by the Court below, there has not been any proof on the side of the plaintiffs-appellants. Therefore, it is not open to the plaintiffs to pick holes in the case of the defendants concerning damages and claim damages arbitrarily.
17. Before I go into the facts of the, case, it is better to refer to the law on this question. The relevant provisions of the Trade and Merchandise Marks Act (XLIII of 1958) are Section 2(d) and Section 10.
18. Section 2(d) of the Trade and Merchandise Marks Act (XLIII of 1958) is as follows:
2(d). 'deceptively similar' - A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
Section 10 deals with limitation as to colour and it runs as follows:
10(1). A trade mark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.
(2) So far as a trade mark is registered without limitations of colour, it shall be deemed to be registered for all colours.
Two other sections are also relevant, and they are Sections 28 and 29. Section 28 deals with rights conferred by registration and it reads as follows:
28 (1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under Sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
Section 29 deals which with infringement of trade marks runs thus:
29(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade mark which is identical with, or deceptively similar to the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the trade mark likely to be taken as being use as a trade mark.
(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the Court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right either as registered proprietor or as registered user to use the trade mark.
19. How the matter has to be approached in all these cases can be gathered from two decisions of the Supreme Court. In Parle Products v. J.P. and Co. Mysore : 3SCR289 , it has been held thus:
7. To decide the question as to whether the plaintiffs' right to a trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. According to this Court in Durga Dutt v. Navratna Pharmaceutical Laboratories : 1SCR737 , while 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, 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 the use of the trade mark in relation to those goods (Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, bu is the sine qua non in the case of an action for infringement.
In the above case the Court further pointed out:
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 way, 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.
8. According to Kerly's Law of Trade Marks and Trade Names (9th Edition, paragraph 838):
Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.9. 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 packets are 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 has 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 careful enough to note the peculiar features of the wrapper on the plaintiffs' goods he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him sometime 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 defendants' wrapper is deceptively similar to 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 on how many others there was absence of it'.
The tests which are to be laid down having regard to the above decision are: (1) Whether an unwary purchaser with average intelligence is likely to be deceived; and (2) whether any essential features of the trade mark of the plaintiffs have been adopted by the defendants to create an overall similarity as to make it deceptively similar to another. No doubt, in matters of this kind, it does not depend upon the evidence. It has been laid down in Ciba Ltd. v. Ramalingam : AIR1958Bom56 , thus:
The learned Judge in coming to the conclusion that he did has attached great importance to the evidence given by the respondents of user of their goods. In doing so, the learned Judge overlooked the fact that if he was considering a case falling under Section 10, the evidence of user was entirely irrelevant. The only test that has to be applied when the Court is considering a case falling under Section 10 is the test of identity or resemblance. Even if the respondents could establish a long user and if the appellants could establish no user at all, if there was resemblance between the mark of the appellants and the respondents and if there was a likelihood of deception and if the appellants were first in the field and had their trade mark registered, then the respondents' trade mark could not be registered. The learned Judge has also taken into consideration the fact that although the respondents had proved large sales of their article, the appellants had failed to prove any case of actual deception. Here again, with every great respect to the learned Judge, he was in error because the approach under Section 10 is not the same as in a passing off action. As the authorities have said, it is not for a witness or a large number of witnesses to tell the Court whether there is likelihood of deception. The Court cannot abdicate its own function which is to decide on looking at the two trade marks and on considering them phonetically whether they resemble each other and whether there is likelihood of deception. That function cannot be discharged by a person in the witness-box. It is true that the absence of any evidence of deception may be a material fact which the Court may take into consideration but if the resemblance between the two marks is clear and obvious, then it is the duty of the Courts to remove from the register a mark which is likely to cause deception. Mr. Justice Chitty in In re: Hills' Trade Mark (1893) 10 R.P.C. 113, emphatically stated : 'I state may opinion that directly it is apparent that if any part of a trade mark is calculated to deceive it is the duty of the Court to order it to be removed.Again in Venkateswaran's Law of Trade and Merchandise Marks at page 407, while referring to Payton and Co. Ltd. v. Sneling Lampard and Co. Ltd. (1900) 17 R.P.C. 628, it is stated thus:
Lord Macnaughten commenting on the evidence and the leading questions put to the witnesses spoke: A great deal of the evidence is absolutely irrelevant and I do not myself altogether approve of the way in which the questions were put to the witnesses. They were put in the form of leading questions and the witnesses were asked whether a person going into a shop as a customer would be likely to be deceived and they said they thought he would. But that is not a matter for the witness; it is for the Judge. The Judge, looking at the exhibits before him and also paying due attention to the evidence adduced must not surrender his own independent judgment to any witness whatever.In this background, let me now analyse the trade marks vis., that of the plaintiffs and the defendants in question. The plaintiffs had originally registered their packet in black and white background as seen from Exhibit B-1. Renewal of the registration was ordered under Exhibit A-3. At the time of registration of the trade mark they were using the packet found in Exhibit A-1. Periodical renewals were made. The last renewal was made on 30th April, 1969. It was that packet which is marked as the plaintiffs' label Exhibit A-1. Exhibit A-1 is a cellophane label with a red background which was being used for the past four years which the plaintiffs are entitled to do as a trade mark. Originally, the registration was without limitation as to the colour. I have already extracted Section 10(2) of the Act which is material for this purpose. Therefore, it is not open to the plaintiffs to contend that the defendants are using the same colour as is being done by them. As laid down in Park Products v. J.P. and Co. Mysore : 3SCR289 , there is no uniform rule applicable to all these cases since each case will have to be decided on its own merits. Therefore, in order to find out the overall similarity, the trade marks of the plaintiffs and the defendants will have to be examined as a whole. In fact, in F. Hoffmann-La Roche and Co. v. Geofferey Annees and Co. : 2SCR213 , it was laid down thus:
It is not necessary that the mark should be intended to deceive or intended to cause confusion. It is its probable effect on the ordinary kind of customers that one has to consider. It is necessary to apply both the visual and phonetic texts. It is also important that the marks must be compared each 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.This will also help to consider the broad and essential features.
20. In Exhibit A-1 label, the picture of Gopal or Lord Krishna is found on the extreme left. It also contains the picture of Vel in the centre at the top with the words 'Trade Mark'. The name Gopal Tooth Powder is printed across starting from the left middle and proceeding to the right top and below the name Gopal Tooth Powder then again occurs the words 'S.P.S. Jayam and Company, Madurai'. Below this, it is stated in Tamil and beneath the same f again it is stated in Tamil. The entire label is in red colour while the words Gopal Tooth Powder both in English and Tamil and the Trade Mark 'Vel'(are printed against a white background.
21. The defendants' label Exhibit A-2 will show two horses with raised feet and resting their hind feet on a hexagan. The word 'Jemy' is written and in hexagonal structure, the) words 'Trade Mark' are written. The name 'Jemy Tooth Powder' occupies a major portion of the label. These words are bigger in size than those of Gopal Tooth Powder. The words are written in Tamil in red colour against a background of white. It has to be noted that it is in a curved manner and below that the words 'Jemy Chemical Works, Coimbatore' are printed in white. As rightly contended by the learned Counsel for the respondents Mr. S. Govind Swaminathan, there is absolutely no question of any deceptive similarity between the two marks. The plaintiffs' label Exhibit A-1 which contains the picture of Lord Krishna has a distinctive mark while in Exhibit A-2, there are two horses standing on their hind legs and resting their forelegs on a hexagonal structure. However Illiterate one may be, one is not likely to be misled having regard to the distinctive marks. This distinctive mark is an essential feature. Now in both the labels, the words 'tooth powder' and occur. But that is the product sought to be sold by both the parties. Therefore, those words have necessarily to occur. The decision in Parle Produces v. J.P. and Co. Mysore : 3SCR289 , which has been cited on behalf of the plaintiffs-appellants cannot be of any assistance to the appellants' case. There, their lordships of the Supreme Court found that there was an adoption of essential features whereas, in this case, I am unable to agree that there is such an adoption. Further, it is found in that case that there was deceptive similarity. But here, there is no such deceptive similarity. Having regard to the various features referred to above, the only similarity is with regard to the colour. Concerning that I have already quoted. (Section 10(2) of the Act. Venkateswaran on the Law of Trade and Merchandise Marks at page 137 states thus:
Trade marks are usually registered without limitation as to colour as in such a case the mark is deemed to be registered for all colours.
In Narayanan's Law of Trade Marks and Passing off at page 471 it is stated as follows:
Similarly where a mark is registered in black and white without any restriction as to colours, and it is likely to be used in the course of trade in one or more colours, the mark should be looked at in the manner in which it is likely to be coloured when used. Where a trade mark is registered, it is not merely the outline or design as printed in the advertisement in black and white, which is to be protected but that which is to be protected is the trade mark as it may be used or will be used in the ordinary course of trade, that is, in any colour. This principle applies only where the trade mark is registered without limitation of colours. When it is registered subject to limitation of one or more specified colours comparison with another trade mark must be made keeping this limitation in the background.
But, inasmuch as the learned Counsel for the appellants has fairly conceded that he is not making a complaint on the ground of passing off, the question of colour cannot be held to be material. Again in In re, Worthington and Co.'s Trade Mark 14 Ch.D. 8, it has been stated thus:
Now, that being so, it is obvious that there is nothing in the statute to prevent the trade-mark, which is registered from being used in any colour. Therefore, it seems to me that the proper construction is that where a trade-mark is registered, it is not merely the outline or design as printed in the advertisement in black or black and white, which is to be protected but that which is to be protected is the trade-mark as it may be used or will be used in the ordinary course of trade, that is, in any colour. That being so it seems to me that the proper test is this assume both trade-marks to be registered, and let it be supposed that each person registering is ignorant of the other's trademark, would any fair use of the second be calculated to deceive? I quite agree that we ought not to take into consideration an obliteration or a fraudulent alteration of the second design. The question is whether any fair use of the second would be calculated to deceive. Now, if the first may be used in any colour, so also the second if registered may be used in any colour, and, supposing the parties to be ignorant of each other's marks, they might both with a perfectly fair intention use them with the same colour. The question would then be whether, supposing them both to be registered, and supposing them both to be fairly used with the same colour, would the second be calculated to deceive any person who only used ordinary observation?
The person who uses the primary observation notwithstanding the similarity in colour, would easily to able to see the distinctive marks of Gopal and Lord Krishna as opposed to the two horses standing on their hind legs and resting their forelegs on the hexagonal shaped structure. Kerly on Law of Trade Marks and Trade Names while dealing with this aspect of the matter at page 855 states thus:
Where marks are used in colour, it may undoubtedly affect the likelihood of confusion that the colours are or are not the same. Whilst, however, this is often a circumstance of great importance in relation to passing off, it is (except in the rare cases where a mark is registered in particular colours only) ordinarily of less importance in considering infringement; for the owner of a registered mark may use it in any colour. Even so, however, colour should seldom be entirely ignored.
I am not entirely ignoring the colour; nor again am I resting my judgment on the fine distinction sought to be made that the defendants' labels are deep-red in colour. But in a case of infringement as the learned Counsel for the respondents points out, not only it is less important but is of no consequence as in the instant case there are distinctive features as already stated. Therefore, on a close examination of Exhibits A-1 and A-2, I conclude that neither the essential features have been adopted nor again is there any overall similarity. Only for the determination of these two questions, I have made a comparison and not for any other purpose. In fact, even Mr. S. Chellaswamy, learned Counsel for the appellants would say that there is overall similarity and he rests his case only on that point. The size of the labels is no doubt that same. But it is in evidence that all the traders dealing in this product use the same size of the label. Therefore, that cannot afford the basis for infringement. It has been held in Durga Dutt v. Navaratna Lab : 1SCR737 as follows:
These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade-mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof. While 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, 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 the use of the trade-mark in relation to those goods (vide, Section 21 of the Act). The use by the defendant of the trademark 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 actions 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 way, 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.... But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trademark used by the defendant in the course of trade in 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 persons 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 the defendant. The identification of the essential features of the mark is in essence on a question of fact and depends on the judgment of the Court based on the evidence let before it as regards the usage of the trade. It should, however, be borne in mind that the object of the 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.
22. I will now briefly advert to the evidence of P.W. 1 who says that most of his purchasers are illiterates. It may be so. But nevertheless having regard to the distinct marks, it cannot be said that an unwary purchaser with an average intelligence is likely to be misled.
23. In K. Krishna Chettiar v. Ambal and Co. : 1SCR290 , it has been laid down in paragraph 10 thus:
There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.
That dictum came to be so laid down having regard to the phonetical similarity. But the words 'Gopal' and 'Jemy' have absolutely no phonetical similarity. Therefore, this decision is act of any assistance to the appellants.
24. In Chinnkrishna Chetty v. Venkatesa Mudaliar : AIR1974Mad7 , a Division Bench of this Court, after referring to very many decisions including those of the Supreme Court says as follows:
The question for consideration now will be whether by 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 Bulva Watch Co. Limited v. Accwrist Watches Limited (1969) R.P.C. 102, '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' 'Sri Andal' is likely to be taken by snuff-users as the snuff manufactured and marketed by the appellant originally as 'Sri Andal'.
Hence, this is also distinguishable.
25. In Amrutanjan Limited v. Mehta Unani Pharmacy Co. and Ors. C.S. No. 54 of 1970, Varadarajan, J., found that there was practical similarity between 'Amrutanjan' and 'Amurtmanthan'. That again does not help the plain tiffs (appellants.
26. The learned District Judge has taken great pains to go into all the relevant features and on a careful analysis of the labels found that there is neither infringement of the essential features nor is there any deceptive similarity. I am in entire agreement with the same. Therefore, I have to necessarily hold that this appeal will have to fail, and this relieves me from going into the question of damages.
27. Even otherwise, notwithstanding the fact that Exhibits B-33 and B-34 were produced on the side of the defendants, they could not be accepted as genuine, as rightly held by the trial Court, as no evidence has been let in by the plaintiffs/appellants to show that they have been damnified to any extent. Some drop in the sales cannot be the criterion. In fact, in Venkateswaran's Law of Trade and Merchandise Marks, at page 448, it is stated as follows:
In calculating damages their Lordships of the Privy Council observed, that the safer figures on which to work are the figures which are given which show the falling off in the Respondents' trade which came in after this pirated mark was introduced on the market. But evidence of general drop in sales is not necessarily evidence of damage suffered by the plaintiff as a result of the defendant's improper trading. 'It is very much a jury question'. In Draper v. Trist and Tristhestos Brake Linings Ltd. (1939) 56 R.P.C. 429, the Master of the Rolls expressed thus: 'It is said on behalf of the plaintiffs that they have established a drop in their sales which is evidence of damage suffered owing to this improper trading. Now I myself do not find any real assistance in the evidence in this case with regard to the alleged drop in sales.... Evidence of general drop may be valuable or may be quite valueless in cases of this kind. Similarly, evidence of no drop in sales again may be valuable or may be quite valueless. It does not in the least bit follow that because there has been a drop in sales it is necessarily due to the deceptive trading complained of, nor does it in the least bit follow that because there has been no drop in sale, therefore, the deceptive trading has had no effect. Evidence of that kind is evidence which must be regarded with very great caution. Valuable though it may be in certain cases, in other cases, it may be of very little) value'. The plaintiff must show that the manufacture and sale of the spurious articles bearing the trade-mark complained of caused the damages claimed by him. Damages may be awarded even though there is no evidence of falling off in the plaintiff's trade as a result of the defendant's wrongful act. In exceptional cases the evidence may show that the plaintiff's sale, far from showing any diminution, had actually increased during the period when the defendant had been selling the spurious goods. Nevertheless, damages may be awarded if the Court comes to the conclusion in such cases that the plaintiff's trade was affected as a result of the unlawful act of the defendant.
Again in Narayanan's Law of Trade Marks and Passing Off, at page 785; it is stated as follows:
A fall in the plaintiff's sales after the defendant had commenced use of the infringing mark may give some indication of the effect of the defendant's acts on the plaintiff's trade. But a general drop in the sales may not necessarily constitute evidence of damage suffered by the plaintiff as a result of the defendant's improper trading. Drop in sales may be attributable to causes other than that of defendant's deceptive trading. Evidence of drop in the plaintiff's trade should, therefore, be considered with caution in determining the quantum of damages suffered.
Therefore, evidence of drop in the plaintiffs' sales alone cannot enable the plaintiffs to claim damages.
28. In the result, the appeal will stand dismissed with costs.