V. Sethuraman, J.
1. The defendants in O.S. No. 31 of 1974 on the file of the Court of the District Judge of Coimbatore are the appellants. The plaintiff is a firm known as 'Sri Durga Textiles' carrying on business in the sale of bed-sheets, towels, napkins, pillow-covers, and curtain cloth with the registered trade mark of Sri Durga Textiles. The firm is registered under the Indian Partnership Act. The first defendant is a firm carrying on a business at Chennimalai manufacturing the same type of goods like bed-sheets under the name and style of 'Durga Fabrics'. Defendants 2 to 5 are the partners of the said firm. The plaintiff firm was started in the year 1956 and the partner K.N. Ramamurthi has been a partner right through, though there have been other changes in the partnership on account of death or retirement. The case of the plaintiff was that it was continuously and exclusively using the business name 'Durga Textiles' and the trade mark 'Sri Durga Textiles' in-connection with its goods. The turnover, which was Rs. 1,65,000 in 1956-57 had gone upto Rs, 7,75,000 in the year in which the suit was filed. The income also increased from Rs. 9,750 to Rs. 26,400 in this period. The plaintiff alleged that by continuous and exclusive user from the year 1956 of the trade mark 'Sri Durga Textiles' in connection with the textile goods manufactured and sold by it, it had acquired an exclusive right. The trade mark was also registered under the Indian Trade and Merchandise Marks Act, 1958 on 18th October, 1972. The, plaintiff, therefore gave notice to the defendants requiring them to desist from using the name 'Durga Fabrics' as it was likely to mislead and confuse the public in relation so its goods. The defendants in their reply denied the allegations contained in the plaintiff's notice and proposed to send a further reply, but it did not send any. In these circumstances, the plaintiff carne forward with the present suit praying for a permanent injunction restraining me defendants from passing off textile goods like bed-sheets under the business name -'Durga Fabrics' or with the offending mark of 'Durga Textiles' or any colourable variations thereof and for consequential reliefs including the relief ot accounting.
2. The defendants resisted the suit by contending that they were the manufacturers of handloom textiles for about 20 years prior to the suit at Cnennimalai in Erode Taluk and that they have gained reputation all over India and also abroad. According to the defendants, the plaintiff was not manufacturing any such goods, but merely trading in them. It was also alleged that the defendants had actually 'registered' their own trade mark as 'Durga Fabrics' with the competent authority. The further case of the defendant was they had given all the particulars in the labels used by them, so that there was no likelihood of their goods being mistaken for the plaintiff's goods. If was also pointed out that if the plaintiff had any grievance as against the defendants, the only remedy was to apply for rectification of the trade-mark register before the appropriate authorities and for cancellation of the trade mark registered in favour of the plaintiffs.
3. The main issues in the case ware:
1. Whether the plaintiff firm is exclusively entitled to the trade name of 'Durga Fabrics'.
2. Whether the defendants have been trading under these names even from an earlier point of time and have acquired rights on that basis 1 and
3. Whether-the plaintiff is entitled to the injunction asked for ?
There were other issues as regards, account ing, limitation, surrender of labels and maintainability of the suit. For our present purpose, it is unnecessary to refer to those issues.
4. On issues 1 and 2 as given above, the learned Additional District Judge, by whom the suit came to be tried, held that the plaintiff was exclusively entitled to use the trade mark 'Durga Textiles' and 'Durga Fabrics' and that defendants had not proved to the satisfaction of the Court that they had been using the same trade marks, much earlier in point of time. Consequently it was held that the plaintiff was enticed to the relief of permanent injunction as prayed for. A nominal damage of Rs. 100 was awarded there was also a direction in the decree for surrender of the labels etc , with the offending marks in the defendants' possession. It is this judgment and decree that are now challenged in the present appeal by the defendants.
5. The learned Counsel for the appellants contended that there was no question of infringement of the trade mark in the present case, that, in any event, the defendants have been using their mark prior to the registration of the trade mark by the plaintiffs and that the plaintiff was not also justified in contending that there has been any kind of passing off of the goods. In the submission of Mr. M. Srinivasan, the learned Counsel the plaintiff was not at all entitled to any relief, as there is neither infringement nor passing off Reliance was also placed on Section 33 of the Act in support of the plea that the plaintiff is not entitled to any decree. Mr. Rengaswamy Ayyangar, the learned Counsel for the respondent controverted these submissions, and urged that when once the plaintiff's trade mark was registered and it was found that there was visual and phonetic similarity between the marks used by the plaintiff and the defendants, the plaintiff would be entitled to a decree on account of infringement. The passing off would also stand proved in this case, as the mark used by the defendant was identical and, therefore, deceptive. He contended that there is no proof of user of the mark of the defendants prior to the user or registration by the plaintiff of its mark so as to attract Section 33.
6. The first question that arises for consideration is whether the plaintiff is entitled to any decree for infringement or passing off. The plaintiff's mark was registered on 18th October, 1972, as seen from Exhibit A-22, which was issued by the Assistant Registrar of Trade Marks on 20th December, 1972, stating that the annexure to the certificate was a true copy of the entry in the Register of Trade marks. The entries in the Register give the details of the name and address of the plaintiff-firm and the description of goods as 'bed-sheets, towels, napkins pillow-covers, curtain cloth' There is a note of a disclaimer stating that the registration of the mark did not give any right to the exclusive use of the word 'Sri' The result of Exhibit A-22 is to show that the word 'Durga' is the only word, which would require consideration in the context of this case, as there is a disclaimer as regards the word 'Sri' and the word 'textiles' merely describes the class of goods to which the mark relates.
7. The result of the registration of a trade mark is dealt with in Chapter IV of the Trade and Merchandise Marks Act, 1958. Section 27 provides that no person shall be entitled to institute any proceeding to prevent or to recover damages for, the infringement of an unregistered trade mark. Consequently a person having an unregistered trade mark can only file a suit for passing off. Section 28 provides that the registration of a trade mark in Part A or Part B of the register would 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 the Act. The exclusive right to the use of the trade mark would, however, be subject to any conditions and limitations to which the registration may be subject. Section 29 deals with infringement of trade marks. It provides that a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof, uses in the course of a 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 Sub-section (2) of Section 29 deals with the effect of a trade, a mark in Part B of the register. In such a case an injunction or other reliefs will not be granted to the plaintiff, if the defendant establishes 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. This is a case of Part A registration and, therefore, it is not necessary to consider the effect of registration under Part B on the facts herein. Section 30 sets out acts which do not constitute infringement. It is unnecessary to go into the details of this provision, as it is not suggested for the defendants that the present case falls under the one or the other of the clauses therein. Under Section 31, registration is to be taken as prima facie evidence of its validity, and under Section 32, the registration would be effective and conclusive for a period of seven years and could be renewed thereafter. Section 33 is in the nature of a saving provision and references would be made to it a little later in considering the contentions based on it. Section 34 saves the use of name, address or description of goods, bona fide use by a person of his own name, or that of his place of business. Section 35 is also another saving provision in respect of the words used as name or description of an article or substance.
8. In the light of these provisions, it would be clear that in the present case the plaintiff being the proprietor of a registered trade mark has a right to file an action for infringement of his registered trade mark. Is there an infringement on the facts?
9. The law on the point has been considered in a number of Indian decisions, some of the Supreme Court, It is unnecessary, therefore, to go into the decisions rendered in U. K. as those decisions have also been considered in the reports of the Indian cases. In Ciba Ltd. Basle, Switzerland v. M. Ramalingam and S. Subramaniam trading in the name of South Indian Manufacturing Co., Madras and Anr. : AIR1958Bom56 , the Bombay High Court was concerned with an application for cancellation or variation of a register of a trade mark made under Section 46 of the Trade Marks Act, 194). Ciba Limited is a well-known company manufacturing pharmaceutical products. The respondents in that case had applied for registration of a product under the name 'Cibol', Though the trade mark was registered originally, there was an application for rectification on the ground that the mark 'Cibol' so closely resembled their trade mark Ciba' that the goods would be taken as Ciba's manufacture and that the trade mark 'Cibol' should not have been registered. In dealing with this plea of Ciba Limied, the Bombay High Court held that the opposition of Ciba Limited was proper. In the course of the judgment, Chagla, C J. observed at page 58 as follows:
Now, in considering both Section 46 and Section 10(of the Act of 1940) it has got to be remembered that the primary duty of the Court is towards the public and the maintenance of the purity of the register. When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the irrigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect, the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom particular goods are associated. It is therefore essential that the register should not contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry whereas he is buying the goods of another person or firm or industry.
In that case when the matter was before Coyajee, J. in the first instance the learned Judge attached great importance to the evidence given by the witnesses who spoke to the effect that there was no similarity in the names between 'Ciba' and 'Cibol'. On this aspect, the Division Bench speaking through Chagla C J., observed at page 59 as follows:
Here again, with very 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 % 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 three 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 Court to remove from the register a mark which is likely to cause deception.
10. Even without reference to this decision another Division Bench of the Bombay High Court in Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd. : AIR1969Bom24 , held that whether there is a likelihood of deception or confusion arising between the competing marks, is a matter for decision by the Court, and no witness is entitled to say whether the mark is likely to deceive or to cause confusion. In this context reference was made to a decision of the House of Lords in Parker Knoll Ltd. v. Knoll International Ltd. (1962) R.P.C. 265.
11. The distinction between the two classes of cases viz., infringement and pissing off has been adverted to in Ruston and Hornby Ltd. v. Zamindara Engineering Company : 2SCR222 . In that case an English Company carrying, on business in that manufacture and sale of diesel engines had a subsidiary in India by name Ruston Hornsby (India) Ltd. The English company used the trade mark 'Ruston', while the defendant Indian Company, started dealing in diesel engines with the trade mark 'Rustam'. The English Company filed a suit praying for a permanent injunction restraining the Indian Company from infringing its trade mark. The trial Court dismissed the suit, and on appeal the Allahabad High Court held that the use of the word Rustam' would constitute infringement But the High Court held that the Indian Company was using the words 'Rustam India', that the use of those words was not an infringement, because the plaintiff's engines were manufactured in England and the defendant's engines were manufactured in India and that the suffix India would be a sufficient warning that the engine sold was not a British engine. The muter was, therefore, taken on appeal by the British Company to the Supreme Court. In pointing out the distinction between an infringement action and a passing off action, the Supreme Court pointed out as follows:
Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows:Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods?
But in an infringement action the issue is as follows:
Is the defendant using a mark which is the same as or which is a colourable limitation of the plaintiff's registered trade mark?
It very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get-up of the defendant's goods may be so different from the get-up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on 'he trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark.
As regards infringement action, it was pointed out that the action emanated from a statutory right, that it was dependent only upon the validity of the registration, subject to other restrictions laid down in Section 30, 34 and 35 of the Act and that on the other hand, in the case of a passing off action it was enough if there was a probability of confusion between the two sets of goods. No care of actual deception nor any actual damage had to be proved. Thus registration confers certain rights and involves certain statutory consequences, which are not dependent of proof of deception or damages.
12. In K.R. Chinna Krishna Chettiar v. Sri Ambal and Company : 1SCR290 , an appeal from this Court, the question was whether the registration of 'Sri Andal Madras Snuff' was proper The respondent in that case, before the Supreme Court, was case Sri Ambil and Company, which was using the word 'Arnbal as part of its marks for more than half a century It was held that the words Ambal' and 'Andal' were piotmically similar and that, therefore, there was likelihood of deception, so that the words 'Sri Andal Madras Snuff' could not be registered under the Trade and Merchandise Marks Act, 1958.
13. Thus, the legal position is clear. In the case of an infringement action, it is necessary to find out whether the defendant was selling his goods in such a manner as to lead the purchasers to believe that they are the plaintiff's goods. An injunction would issue as soon as it is proved that the defendant was improperly using the plaintiff's mark The relief as regards the passing off action is based on the possibility of confusion of the unwary. Having regard to the consequences emanating from the registration of the trade mark in the present case as laid down be their Lordships of the Supreme Court, it would be enough if the plaintiff proved that his is a registered mark and that the defendants were improperly using the same or similar mark.
14. In the present case the plaintiff is using the mark 'Sri Durga Textiles', while the defendants are using the mark 'Durga Fabrics'. As mentioned already, the word 'Sri' and Textiles' or 'Fabrics' are not relevant in the context. The only word that would be relevant is 'Durga'. This is not a case of even a phonetic similarity as the word used is identical. The word is used in relation to the identical types of goods ID such a case it has to follow inevitably, as a consequence, that as soon as the plaintiff proved that the defendant was using the trade mark, there was infringement. Therefore, the Court below was right in granting the relief based on infringement.
15. As regards passing off, the point to be examined is whether the defendants were using a mark which is the same or which is a colourable imitation of the plaintiff's registered mark. The mark in the present case as seen earlier is an identical mark. Though the visual expression of the defendants' mark, which is not registered is different, still it is phonetically identical, so that it is bound to cause confusion in the minds of the public The name and address in the defendants' mark cannot be taken to be due to any anxiety to distinguish the defendant's goods from the plaintiff's. It would be more useful to get the custom to them. There is thus no virtue in their statement that they have given all particulars in their label. The label is clearly likely to, if not intended to, injure the plaintiff. The mark of the defendants will receive the unwary. It was stated that purchasers go more by the source or origin of the goods like Chennimalai or Karur rather than by any mark. If so, the defendants cannot have any difficulty in giving up the name 'Durga' and trading on their own name If their contention is right, Durgah is a useless apoendage which they can easily jettison They need not have, in such a case, made a declaration before the Sub-Registrar and attempted to mislead the Court by taking a plea in the written statement that they have a registered mark. This conduct of the defendants speaks volumes of the merits of their case. Therefore, the plaintiff would be entitled to the relief claimed as regards passing off also.
15. Section 33 of the Act was referred to and relied upon by the appellants. That section provides:
33. Saving for vested rights.- Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor m title of his Has continuously used that trade mark from a date prior
(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of bis, or
(b) to the date of registration of the first mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his ;
whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.
This is in the nature of a saving provision. It saves the use of a mark by any person who has been continuously using the trade mark from a date prior to the use of the registered trade mark in relation to the goods or to the date of the registration of the registered trade mark, In (he present case the defendants have not established that they were using their own trade mark prior to the use or registration of the plaintiff's trade mark. Though the defendant-firm claim to have come into existence right from 1951, there is no evidence to show that the firm was using any such trade mark. The defendants were carrying on business as shown by the evidence of D. W. 1 only in the name of A. M. Rathinaswami Mudaliar. M. R. Manicka Mudaliar. It is clear from the ledgers that they are trading in the same name of A. M. Rathinaswami Mudaliar, M. R. Manicka Mudaliar, and the chitta, which was not produced, it was admitted, would also contain the same name. The absence of any evidence on this aspect of user of the mark from 1951 was sought to be made good by filing C.M.P. No. 12085 of 1977 in order to produce additional evidence. The respondent resisted the reception of the additional evidence at this stage. Having gone through the affidavit of the petitioners at support of the prayer for reception of additional evidence, I am not satisfied that this is a case where the additional evidence can be permitted to be receive at this stage there is no proper Explanation as to why this evidence could not be produced at the earlier stage. The only Explanation appears to be that their import was not realised and that the learned Counsel appearing at the trial Court did not think them to be relevant. This is certainly not a plea which can be taken as justifying the reception of additional evidence. If the additional evidence is not to be looked into, then as pointed out by the Court below, there is no evidence to show that the defendants have been marketing their products with the trade mark in question, even prior to the use or registration of the plaintiff's mark. I he plaintiff has the trade name Sri Durga Textiles' right from 1956. There is evidence to show that the business was earned on in that name Therefore, it is not possible to disbelieve the claim of the plaintiff that they were trading m these goods with the said trade mark long before registration. The defendants relied on Exhibit B-2. Exhibit B-2. is merely a declaration registered before the Registrar of Assurances, Calcutta. This declaration has absolutely no effect on the point in issue, and its introduction into the case is nothing but an attempt to mislead the Court that there was some registration for the defendants' mark too. The result is that there is no proof of the defendants' user of the trade mark prior to the use or registration of the plaintiff's mark. In these circumstances, 1 consider that the plaintiff is entitled to the relief prayed for. It is unnecessary in this view to discuss the oral evidence as it was already seen that in a case like this, it is the Court which has to consider the matter in the light of public interest as envisaged by the law.
16. The result is the appeal is dismissed with costs. C.M.P. No. 12085 of is also dismissed but with no order as to costs.