S.C. Ghose, J.
1. This is an application filed by the plaintiff inter alia for an injunction restraining the defendant from passing off Ganjies which are not of the petitioner's manufacture as and for those of the petitioner and from selling or offering for sale under the trade mark or name 'SACHA MOTI' Ganjies not of the petitioner's manufacture. The application is also for an injunction restraining the defendant from displaying or causing to be displayed sign boards or posters inscribed with the mark 'SACHA MOTI' in relation to Ganjies or such other mark which are colourable imitation of the petitioner's trade mark 'MOTI'.
2. The petitioner who has been carrying on business on an extensive scale as a manufacturer of Hosiery goods including ganjies in India has been selling Ganjies manufactured by it since 1956 under the trade mark or name 'MOTI'. The said mark 'MOTI' is embroidered in a particular style in neck labels and stitched to the neck of each Ganjies or Vest. The said label and name is used in the best quality of vests or ganjies produced by the petitioner. According to the petitioner the said mark or name as well as the said get-up in the neck labels as well as in the packing box has acquired great popularity in the market in Calcutta, Madras, Kanpur, Delhi, etc., and has become associated with the petitioner. So much so that the sales of such Ganjies rose from Rupees 97,000/- in 1960 to Rs. 8,50,000/- in 1968. The petitioner's advertisement expenses rose from Rs. 10,000/- to Rs. 16,000/- during the said period. Thus the petitioner came to acquire a proprietary right in the said mark 'MOTI', The petitioner came to know about the use by the defendant of the name 'SACHA MOTI' with regard to the Ganjies manufactured by the defendant from an advertisement appearing in the 'Hosiery Sandesh' during Diwali 1968.
3. According to the petitioner the said mark is a deceptive imitation of the petitioner's aforesaid mark or name and is likely to deceive purchasers and intending purchasers into believing that the said goods bearing the label 'SACIIA MOTI' are the goods of the petitioner for inter alia the following reasons:--
(a) Phonetically the word 'SACHA MOTI' is substantially the same as 'MOTI'.
(b) The get-up of the said mark as embroidered and printed on neck labels and packing box labels of the defendant's products are deceptively similar to the get-up, embroidery and printing of the said marks on neck labels and packing box labels of the petitioner.
(c) There are only very minor differences which are insignificant between the twomarks and/or get-up. The said get-up and the mark used by the defendant is a colourable imitation of the get-up and mark of the petitioner. The word 'SACHA' is written above the word 'MOTI' in smaller letters and is likely to escape notice. The word 'MOTI' is written in bold letters and of similar design as that of the petitioner. So much so purchasers are likely to be misled to buy 'SACHA MOTI' Ganjies believing that they were buying 'MOTI' Ganjies of the petitioner.
4. The defendant in opposition to the present application has pleaded as follows:--
(i) 'MOTI' is not a registered Trade Mark.
(ii) The plaintiff has no exclusive right to use the said word 'MOTI'.
(iii) In fact other persons including one Samarendra Narayan Choudhury had been using the said mark 'MOTI' in Ganjies manufactured or sold by him.
(iv) Since July, 1966, the defendant has been using the said trade mark or name 'SACHA MOTI' which has acquired a reputation in the market as signifying goods belonging to and manufactured and sold by the defendant.
(v) The said words are not unlawful or colourable or deceptive imitation of the said alleged trade mark or name 'MOTI'.
(vi) Phonetically the two words are not at all similar.
(vii) The get-up of the words in their respective neck labels or packing boxes have also no similarity.
(viii) The word 'SACHA' is not in insignificantly small letters.
(ix) The goods of the respective parties are sold by different dealers.
(x) The defendant took the name from the name of one Moti Ram Gupta, father of one of the partners of the defendant firm i.e., Bijoy Kumar Gupta. The said Moti Ram Gupta is well-known merchant of Hosiery goods in Delhi.
(xi) the mark 'HTRA MOTI' is used by one B. M. Oswal Hosiery of Ludhiana. The said mark has already been registered with the Registrar of Trade Marks.
5. In an action in passing off for injunction the plaintiff must prove that his name, mark, sign or get-up has become distinctive of his goods. Substantial number of members of public must understand the name or sign or mark or get-up to mean or signify goods manufactured by the plaintiff. (See Article 998 page 597 Halsbury 3rd Edn.). The plaintiff must further show that the defendant's use of the disputed name or mark was likely or calculated to deceive or cause confusion or injury actual or probable to the goodwill of the plaintiff's business.
6. In the case of Amritdhara Pharmacy v. Satyadeo Gupta, : 2SCR484 the Supreme Court while considering as to what was likely to deceive or cause confusion for the purpose of deciding an objection to an application for registration of 'LakshamanDhara' in respect of medicinal preparation observed as follows:--
(1) There was no criteria for determining what was likely to deceive or create confusion.
(2) Each case must depend on its peculiar facts.
(3) But a mark is likely to deceive or cause confusion by its resemblance to another if it is likely to do so in the course of its legitimate use as a mark where the two marks are assumed to be in use by traders.
7. The Supreme Court quoted with approval the observations of Parker, J., in re: Pianotist Company's Application, (1906) 23 R. P. C. 774 viz.,
'You must take the two words, you must judge them both by their look and by their sound, you must consider the goods to which they arc to be applied, you must consider the nature and kind of customers who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what would likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owner of the marks'.
8. In an action for passing off, it is important to consider -
(i) Who are the persons whom the resemblance would likely to deceive or confuse and
(ii) What rules of comparison are to be adopted in ascertaining the existence of such resemblance.
9. The confusion is likely to be created in the minds of customers who may not be certain on seeing a mark as to whether they had bought goods bearing those marks previously. Supreme Court has said that the question has to be approached from the point of view of a man of 'average intelligence and imperfect recollection'. Overall structural and phonetic similarity has also to be considered, as was observed by Farwell, J., in William Bailey (Barmingham) Ltd.'s Application, (1935) 52 R. P. C. 136
'I do not think it is right to take a part of the word and compare it with a part of the other word. One word must be considered as a whole and compare it with the other word as a whole. I think it is dangerous method to adopt to divide the word up and seek to distinguish a portion of it with a portion of the other word.'
10. In such an action actual fraudulent intention is not necessary but its existence certainly tilts the scale.
11. Cozen Hardy, M. R. in Royal Insurance Co. Ltd. v. Midland Insurance Co. Ltd., (1909) 26 R. P. C. 95 at p. 97 observed.
'I am aware that in an action of this kind it is not necessary to prove fraud on the part of the defendant, if you prove and satisfy the Court that what the defendant is doingis calculated to deceive and to prejudice the plaintiffs in their trade or business. Still the presence of fraud makes an enormous difference. Given a case of fraud, the Court doesnot allow the defendant to say that his intention to take what was not his and to damage the plaintiffs would be ineffective. The Court assumes that the rogue was skilful enough to devise a scheme which would have the effect which he desired, or in other words he is not allowed to say that his fraudulent act would have the effect which he desired that it should have.'
12. Ext. A dated 27-2-1965 shows clearly that there was business relations between a partner of the defendant firm and the plaintiff since 1985 in respect of the same goods having the mark which are the subject-matter of this suit and application (See paragraph 25 of the petition and affidavit of K. R. Kundu affirmed on 18-12-1969 -- paragraph 5).
13. The gradual increase of sale of Plaintiff's . goods from year to year which appears from the figures of the said sales appearing in paragraph 20 of the petition show that the petitioner's goods attained distinctiveness in the market. These figures are not disputed by the Respondent.
14. 'SACHA MOTI' according to the defendant has been used by them since July 1966. But 'MOTI' is being used by the petitioner from 1950.
15. It is urged in opposition to this application by Mr. Das that :
(i) Previous suit against Samarendra Narayan Chowdhury was settled. Only interlocutory order was passed in the said suit for keeping a separate account although defendant in the said suit was using the identical word 'MOTI' in his Ganjies.
(ii) Name 'SACIIA MOTI' has been taken from the name of Moti Ram Gupta, one of the partner's father and a renowned Merchant of Hosiery goods of Delhi as noted earlier.
(iii) Educated people cannot equate 'SACHA MOTI' with 'MOTI'. There is no phonetical similarity.
(iv) There is no supporting affidavit showing that nobody was deceived.
16. According to Mr. Das there is difference between passing off and infringement of trade mark. Mr. Das relies on the case of Kanatraj Pandit Durga Dutt Sarma v. Navaratna Pharmaceutical Laboratories, : AIR1962Ker156 . An action for passing off is in sub-Stance an action for deceit. In the instant case there is no evidence that any person was deceived by defendant's said mark,
17. An action for infringement of trade mark is a statutory remedy conferred on the registered proprietor of a registered trade mark for the enforcement of his right to use the trade mark in relation to the goods for which the mark has been registered. An action for passing off is an action for deceit for colourable imitation of a mark adopted by a person in relation to his goods which hasacquired distinctive reputation in the market, as referring to the goods belonging to on produced by that person only.
18. An action for infringement of trade mark is in substance the same kind of action but is not a common law action, and is based on the statutory right for which the statute itself has given the remedy.
19. Evidence of actual deceit however is not necessary. The cause of action in on Action for Passing off arises by the use of the defendant of mark which is likely to deceive on account of being similar to the plaintiff's mark either visually, phonetically or otherwise so that the Court is likely to conclude that there is an imitation and no further evidence is required to establish that the plaintiff's rights, have been violated.
20. The fact that the get up, packing and other writing and the marks on the goods or on the packages in which the defendant offers his goods for sale are similar to the get up, packing and other writing of the marks on the goods or on the packages in which the plaintiff offers his goods for sale so that it would be likely to create confusion in the minds of customers while purchasing on the basis of such marks, defendant's goods believing them to be plaintiffs. The cause of action for Passing off is complete.
21. No objective standard can be laid down for ascertaining the degree of resemblance necessary to cause deception. But the identification of the essential features of the mark in the goods of the plaintiff is in a sense a question of fact and would in the ultimate analysis boil down to the question as to whether the mark used by the defendant as a whole is deceptively similar to the mark of the plaintiff.
22. 38 Halsbury 597 Article 998 has laid down the essentials of the cause of action in an action for passing off or preventive use of trade name. The plaintiff must prove the following fact:
(i) A disputed name or mark or sound or get up has become distinctive of the plaintiff's goods so that the use of the said name of mark etc., in relation to goods are regarded by a substantial number of members of public or in the trade as coming from the same source.
(ii) The defendant's use of name or mark was likely or calculated to deceive and cause confusion and injury, actual or probable to the goodwill of the plaintiff's business.
23. It is alleged by Mr. Das that no evidence of false representation has been placed before the Court inasmuch as no affidavit has been filed showing that persons have been believing that they were buying plaintiff's goods while purchasing the defendant's goods.
24. According to Mr. Das Prima facie case have not been made out by the plaintiff. According to him only educated people use vest. They cannot be deceived by defendant's work or get-up. It seems it is not correct. All kinds of people in our countryuse vests. The poorer and illiterate section of our people uses vests as the only garment for the upper part of the body and their number naturally are innumerable.
25. Mr. Das relied on the case of Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Marks, : AIR1968Cal582 . According to Mr. Das the petitioner has not been able to establish distinctiveness of the mark 'MOTI' in relation to Ganjies in the trade. But to my mind distinctiveness will appear from mainly the result of the sales although sales may not be conclusive in all cases. There are many cognet factors in coming to the conclusion as to whether the goods of a trader has acquired distinctiveness in the market. Mr. Das relied on the observations of P. B. Mukharji, J., (as his Lordship then was) in the said case and submitted that distinctiveness of goods in a trade by its association with A particular name requires normally a hard laborious and time consuming process in busines. There can be no hard and fast rule that any particular minimum period of time is required to acquire distinctiveness. In some cases the time to acquire distinctiveness may be larger than in others.
26. In the instant case the use of the said trade mark by the plaintiff and the gradual increase in volume of sales of said goods since 1956, i.e., about 15 years prima facie seems to show that these goods have acquired distinctiveness in the market.
27. It has been held by P. B. Mukharji, J., (as his Lordship then was) in the rase of Prem Nath Mayor v. Registrar of Trade Marks, : AIR1969Cal80 , as follows:--
'Distinctiveness being primarily a matter of fact. Evidence can be given regarding distinctiveness in fact. There are no narrow or rigid rules about distinctiveness. Such distinctiveness may be either in individual feature or in general arrangement. A mark should therefore be considered as a whole on its total impression and as a general rule. Attempts to dissect a mark in order to destroy distinctiveness have been disapproved. Its totality of the impression, phonetically and visually which is the test. If that totality of impression is likely to cause deception or confusion then the identity is established. If not then they are dissimilar.'
28. Resemblance in the respective get-up of the two marks and the phonetical similarity of 'MOTI' and 'SACHA MOTI' seems to me to be likely to mislead purchasers in our country by whom the said goods would normally be bought. In this connection it should be noted that the word 'SACHA' is a qualitative word and would signify merely purer quality of the same goods. In this connection it should be noted that the word 'SACHA is written or printed above the word 'MOTI' in smaller letters and importance has to be attached to the size of the letters used in different parts of the same name (See Mitzler v. Wood, (1878) 8 CH D 606 at p. 610). It also appears that the defendant has no millfor manufacturing those goods. The defendant carries on business in a shop room in Calcutta which is its registered place of business.
29. The fact that one of the partners of the defendant firm was a dealer in the said goods manufactured by the plaintiff at Delhi since 1965 admittedly prior to the inception of business in such goods in any event by the defendant leads prima facie to show fraudulent intention on the part of the defendants in the use of the mark 'SACHA MOTI'. This prima facie shows that the defendant's object in using the mark 'SACHA MOTI' and the get-up in the neck labels and packing box labels of his own goods is to produce con-fusion in the minds of purchasers of the said goods. The explanation that the name 'MOTI' has been taken from Moti Ram Gupta, father of one of the partners of the defendant firm appears to me to be thin. It is settled law in any event that the rights to trade in one's own name does not entitle a man to use his name in connection with goods or business if the result will be to deceive the public into believing that they are the goods or the business of another (See Wright Layman and Umney Ltd. v. Wright, (1949) 66 R. P. G. 149, judgment of Lord Greene M. R. and Marengo v. Daily Sketch and Sunday Graphic Ltd., (19-18) 65 R. P. C. 242 at p. 251, judgment of Lord Simons).
30. The fact that there is another registered trade name 'HIRA MOTI' in respect of Ganjies does not in my view equate the case of the plaintiff.
31. For the aforesaid reasons I am of the opinion that prima farie the plaintiff has madeout a case for the reliefs claimed. This application must, therefore, succeed.
32. There shall, therefore, be an order for injunction restraining the defendant from selling or offering for sale under the trade mark or name 'SACHA MOTI' Ganjies without sufficiently distinguishing the same from the products of the plaintiffs and representing the same to be the products of the defendant.
33. Costs of this application will be costs in the cause.