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Hormus Ardeshar Kandawala Vs. Ardeshar Cowashji Dustoor - Court Judgment

LegalCrystal Citation
Decided On
Reported inAIR1935Cal109
AppellantHormus Ardeshar Kandawala
RespondentArdeshar Cowashji Dustoor
Cases ReferredJuggi Lal Kamalapat v. Swadeshi Mills Co. Ltd.
- remfry, j.1. in this suit the plaintiff, who carries on business as 'bombay dyeing and cleaning company,' seeks to restrain the defendant from carrying on business as 'bombay art dyers and cleaners,' and claims damages. the following issues were raised:(1) is the plaintiff's business the 'bombay dyeing and cleaning company' known to the public as the 'bombay art dyers and cleaners?(2) has the plaintiff acquired the sole right to the use of the word 'bombay' in connexion with the dyeing and cleaning business or is it common in the trade?(3) has the defendant lawfully adopted the name of the ''bombay art dyers and cleaners' and is he entitled to use the name?(4) has the plaintiff suffered any damages as alleged in para. 7 of the plaint? is he entitled to any account of the profits made by.....

Remfry, J.

1. In this suit the plaintiff, who carries on business as 'Bombay Dyeing and Cleaning Company,' seeks to restrain the defendant from carrying on business as 'Bombay Art Dyers and Cleaners,' and claims damages. The following issues were raised:

(1) Is the plaintiff's business the 'Bombay Dyeing and Cleaning Company' known to the public as the 'Bombay Art Dyers and Cleaners?

(2) Has the plaintiff acquired the sole right to the use of the word 'Bombay' in connexion with the dyeing and cleaning business or is it common in the trade?

(3) Has the defendant lawfully adopted the name of the ''Bombay Art Dyers and Cleaners' and is he entitled to use the name?

(4) Has the plaintiff suffered any damages as alleged in para. 7 of the plaint? Is he entitled to any account of the profits made by the defendant?

2. The undisputed facts are that, in 1907, the plaintiff started a business as a dyer and cleaner at No. 1, Lindsay Street, on the ground floor, under the name of H. Ardeshar & Co. In 1908, he changed the name of the business to 'Bombay Dyeing and Cleaning Co.' At first the defendant financed the business to some extent. In 1912 the plaintiff went to England for special training as a dyer and cleaner. In May 1932 the plaintiff removed his business to No. 10, Chowringhee, and, for some five years before that date, he had occupied the first floor of No. 1, Linesay Street, as his business premises. In June 1932, the defendant filed a suit against the plaintiff for partnership accounts and obtained the appointment of a receiver. On 8th June 1932, this suit was settled and a consent decree passed, according to which the defendant was to receive Rs. 4,000 and the plaintiff was declared to be entitled to the goodwill and other assets of the business of the Bombay Dyeing and Cleaning Co.'

3. In August 1932, the defendant became a tenant of the first floor of No. 1, Lindsay Street, and started a business of dyers and cleaners under the style of 'Bombay Art Dyers and Cleaners.' This suit was filed on 17th March 1933, and, on an application for an ad interim injunction, an order was passed restraining the defendant from representing himself as a late partner in the plaintiff's business and the defendant was ordered to keep an account of his profits. I was informed that the question as to the ad interim injunction in respect of the use of the name Bombay Art Dyers and Cleaners' was not considered, as the defendant said that he would be ready for the hearing of a suit in seven days' time. In the plaint, the plaintiff claimed that his business was known to the public by six different names. This was based on the fact that he had received letters addressed in these six different names.

4. In my opinion, in cases of this nature, the material points for consideration are: (1) Whether the defendant intended to attract the customers of the plaintiff by using a name likely to cause such customers to think that they were dealing with the plaintiff, and in 'this connexion the general 'get up' of the premises and of the bills or receipts may be material. (2) Whether intention or no intention, the name, and, so to speak the 'get up' of the business were likely to deceive the public and not merely old customers of the plaintiff's business into a belief that the defendant's business was the plaintiff's business. (3) Whether in fact any persons were so deceived. Of these, if No. 2 is established, that is sufficient to entitle the plaintiff to an injunction.

5. It was contended, on behalf of the plaintiff, that, if it was established that letters were misdelivered in consequence of the similarity in the name used by the defendant, that was also a material point. But in Maikle v. Williamson (1909) 26 RPC 775, it was held by a Scotch Court on appeal that the mere misdelivery of letters, more especially if they were misdirected, gave no cause of action. If I may say so, I entirely agree with that decision. At the same time, I decided to admit the letters, not as evidence of their contents, for that was within the rule as to hearsay evidence and none the less so because they were in writing, but because the plaintiff's case was that, on certain occasions, he received letters of instructions and the defendant received the relative parcels-and it was proved that there were four or live instances of this sort and, in my opinion, that affords some evidence, though distinctly feeble evidence by itself, that the defendant's choice of names resulted in some confusion, but, on the evidence, I find it impossible to decide how far that confusion was attributable to the errors of the writers, and how far to the fact that the defendant was occupying the plaintiff's old premises. The evidence as to how the letters were directed was, in my opinion, also admissible in connexion with the plaintiff's claim to six different names, and is material on the question as to the form of the injunction.

6. The undisputed evidence is that the defendant secured the premises, which he knew had been formerly, and then but recently, occupied by the plaintiff. He put up signboards like the plaintiff's old signboards in size and shape. On those signboards-or some of them-the prominent word is 'Bombay'-and his case is that, although some of the plaintiff's signboards contained the words 'Art Dyers,' it was sufficient for him to call his business 'Bombay Art Dyers and Cleaners,' to render it unlikely that it would be taken by the public to be the old business carried on under the name of 'Bombay Dyeing and Cleaning Company.' It is suggested that Bombay has a reputation for dyeing and cleaning, and that was one reason for selecting the word 'Bombay' and another reason was because the defendant admitted that the local reputation of 'Bombay' was earned by the old firm, of which he claimed to have been a partner, and that he himself had the reputation of good work-so people would extend the same patronage which they did previously-see Q. 349. As there is no suggestion that the defendant had any reputation for dyeing and cleaning apart from his alleged connexion with the old business, clearly his idea was that he would use a name that would convey a reputation for good work-in other words he was very much minded to secure the old firm's customers by using a name that would deceive them into the belief that his business was the old business-the old business with the good reputation. There is no evidence of the slightest value that the public associated the word 'Bombay' with good work or thought that a man from Bombay would be likely to do good work apart from the reputation earned by the plaintiff's business.

7. The defendant had no reputation at all apart from the old business. It is unnecessary to decide if, in fact, he ever was a partner in that firm. He had by the consent decree conceded that firm and its goodwill belonged to the plaintiff and, it appears to me, that he wanted to obtain the benefit of that goodwill. The only distinctive part of the two business names is the word Bombay,' the rest was but a description of the nature of the business. The defendant made 'Bombay' the prominent part of some of his signboards. From the photograph exhibited, it appears that the words 'Art Dyers' were also on some of the plaintiff's signboards. The defendant did not advertise in any newspapers, the plaintiff had done so, but to what extent does not appear, but in some of his advertisements he used the words 'Art Dyers.' The defendant, in my opinion, was scheming to secure the local customers of the old business. As I have said, I can attach little value to the evidence as to correspondence, especially as there is no evidence to show that the writers of the letters had ever heard of the defendant's business or its name, save that it goes to show that there was some confusion.

8. The only other evidence, apart from the evidence of the parties, was that of an assistant in Messrs. Hall and Anderson's and a man called Loulie, and evidence of other businesses with the word 'Bombay' as part of their names. The assistant's evidence was that he went to arrange for some dyeing works for his firm and entered the defendant's shop and asked for favourable terms as he came for Messrs. Hall and Anderson, who were, as he told the man in the shop, old customers. Apparently, he obtained the desired terms. He then sent goods to be dyed and those goods were delivered to the plaintiff. The plaintiff telephoned and finally secured the order. Now it is quite clear that the assistant, an intelligent looking man and certainly an intelligent witness, took the defendant's shop to be the shop with which his firm had previous transactions. It may be that the position of the shop contributed to his error, in fact that is quite likely, but, in my opinion, the name used by the defendant was the chief contributory cause of the error. From what he said to the defendant or whoever was in the shop, there could have been no doubt about it in the mind of the person in the shop that the witness thought it was the same old shop. Advantage was taken of his error. I see no reason whatsoever for doubting the accuracy or truthfulness of this witness. In my opinion, his evidence not only shows that a reasonable man took the defendant's shop to be the plaintiff's but that the defendant tried to secure an order which he knew was intended for the plaintiff. As for the other witness, I very much suspect that he was employed to see if the defendant was accepting orders addressed to 'Bombay Dyeing and Cleaning Company.' At the same time I think his evidence as to the address on the order is true. It follows that this is another instance in which the defendant took an order which he knew was meant for the plaintiff. It was argued that two instances did not prove a habit, or an intention, and stress was laid upon the fact that more witnesses were not produced. In my opinion, there is not much substance in this argument. It does not appear that it is easy to obtain such evidence and two instances show very clearly what the defendant's attitude was and the defendant's own evidence really amounts to an admission, that was his idea in setting up his business.

9. It was held in North Cheshire and Manchester Brewery Co. v. Manchester Brewery Co. (1899) AC 83 by Lord Halsbury that the Court must decide as a question of law whether the name used by the defendant was likely to deceive the public into a belief that the defendant's business was the plaintiff's, but Lord Shaw said that this was a mixed question of fact and law. In my opinion, the fact that the defendant was setting up a similar business in the premises occupied some few months before by the plaintiff was calculated to make any similarity in the name adopted likely to lead to that result, and that, even apart from that, the name adopted was so similar that it was in itself likely to make old customers and the public think that the defendant's shop was the old shop. Mr. Pugh for the defendant, in reply, relied on a photograph. This photograph is pinned to a petition filed by the plaintiff in which he prayed for an ad interim injunction. I can find no mark on it--it does not appear to have been exhibited--at any rate formally. It depicts apparently a notice used by the defendant in which it is stated that he is the proprietor of the business of Bombay Art Dyers and Cleaners, and late partner 'Bombay Dyeing and Cleaning Company.' There is no evidence about it at all-nothing to show when or where it was used, how it was used or how much of it was in a conspicious position. In my opinion it is not evidence at all and even if it were, its value is a matter of guess work. Mr. Pugh in his very able argument contended that the defendant was entitled to occupy the premises vacated by the plaintiff, and none the less because there was a likelihood of old customers coming to those premises. That is obviously correct. He then argued that the defendant was entitled to try to attract the customers of his rivals. That also is correct-provided it was not done by representing his business to be the plaintiff's business.

10. The next point was that the fact that letters were misdelivered or misdirected gave no cause of action. For this proposition he cited Maikle v. Williamson (1909) 26 RPC 775, where however their Lordships pointed out that there was no proof that the defendant retained the plaintiff's letters and no suggestion that the defendant intended to mislead the plaintiff's customers into a belief that his business was the plaintiff's. Reliance was also placed on the fact that the defendant has sent circular to the old customers in which he clearly stated that his was a new business. That was a material point, in my opinion, in a case of this nature, though it has been held to be immaterial in the case of a trade-mark. Then it was argued that the plaintiff based his claim to five designations set out in para. 1 of the plaint, on the fact that some of his customers had addressed letters intended for him in those various names. In my opinion, the plaintiff has not established that he used those five names. The fact that some of his would-be customers had not taken the trouble to ascertain the correct name of his business is no ground for claiming that their carelessness, inadvertence or lapse of memory gave the plaintiff any rights in addition to his common law right to a distinct name.

11. It seems to me that these claims were put forward not with any hope of success, but merely to introduce evidence suggesting that some of the customers would remember that Bombay was part of the name of the plaintiff's business, but would not and did not remember the rest of it, and to support the claim for an injunction in a wide form. Great stress was laid for the defendant on the fact that the plaintiff wrote to the postal authorities claiming that only letters sent addressed to 'Bombay Art Dyers and Cleaners, 1, Lindsay Street,' should be delivered to the defendant and thereby admitted the defendant's right to that name, and on the fact that he admitted that he had no objection to that name before he went to his solicitors. But he stated that he wrote a letter protesting as soon as he heard of the name-a fact which the defendant did not challenge; and as far as the post office was concerned, it was not its province to decide a right to a name. Obviously, the plaintiff could claim no more than he did from the post office. In my opinion, it did not amount in the circumstances to an admission of the defendant's right to style his business in the way complained of, and in any case the defendant has not alleged or shown that he acted on any such or any such supposed admission.

12. For the defendant, reliance was placed on the fact that there was a business called 'Parsee Bombay Dyeing and Cleaning Works' at 40, Bowbazar Street, with three branches, which started in 1916. It is established that this was a dyeing and cleaning business, though its business largely consists in ordinary washing. This business issued handbills, price lists and calendars. The plaintiff knew of this business from 1916 and sent one or more letters of protest but took no further steps. Apparently, it is a business as its proprietor said content with a profit of 10 per cent. There was another business called 'Bombay Laundry.' That was started in 1914. It issued handbills, cards and price lists. It carries on business at 93, Wellesley Street and has five branches. Apparently this also catered for poorer persons than the plaintiff's customers, but it also undertook dyeing and cleaning work. It was suggested that there was also a business in Harrison Road called 'New Bombay Dyeing and Cleaning,' but it does not appear that it exists. It was argued that the word Bombay was common to the trade. But this is mot a case in which a trade mark is claimed. The fact that two other firms used 'Bombay' in that trade as part of their business names in my opinion has little bearing on whether the defendant's use of the name 'Bombay Art Dyers and Cleaners' is likely to lead to his business being taken to be the plain-tiff's business. As was said in Dunlop Pneumatic Tyre Co., Ltd. v. Dunlop Motor Co. (1907) AC 430 the locality in which the two firms did business and the articles which they sold are material points. In fact, the more common the name, the more necessary it is for a new rival to select a distinctive name.

13. In my opinion, apart from the motive of the defendant in selecting the name, the name itself, and the distribution and contents of the notice boards, make it likely that old customers of the plaintiff's would take the defendant's shop to be the plaintiff's and selecting the premises formerly occupied by the plaintiff certainly made it all the more incumbent on the defendant to distinguish his business from that of the plaintiff. In my opinion, one of the few distinctions between the principles applicable to this class of case and cases relating to trade marks is that the rule as to anything being common to the trade does not apply to the former class of case, except when it claimed that the business name or part of it connotes the plaintiff's goods or work. At the same time any word descriptive or otherwise, which is common to the trade is not sufficiently distinctive to found a title to an exclusive right thereto, although the man, who is the first who uses a business name entirely consisting of words common to the trade, is entitled to restrain the use of a new name which is likely to deceive the public into a belief that a rival business is his.

14. There are two distinct classes of rights in respect of the name of a business: one only arises when that name or some part of it, whether it be what is known as a fancy word, an ordinary word or a geographical name, has come to mean the goods of, or to connote the skill, probity or excellence of the particular business. The other class of right is to a distinct name, that is the right to prevent others from adopting a name which is likely to lead the public to mistake another new business for the plaintiff's business. This right arises immediately on the user of the name by the first person who uses it, provided that the name used does not infringe the rights of another person. After the name has acquired a reputation the adoption of a similar name by a rival may arouse suspicion that the real object is to get the benefit of that reputation. All the circumstances must be considered and if the conclusion arrived at is that the new name is likely to lead the public to mistake the new business for the former business, that gives a right of action.

15. That conclusion is far more readily reached if there is evidence of an intent to create or foster a mistake. On the evidence in this case, in my opinion, the plaintiff has entirely failed to establish any right within the first class. That would be an extremely difficult matter especially in the case of a geographical name, and that the name of a presidency and of its chief city. What he has established, and the defendant has practically admitted, is that he had a business with a reputation. The next point that he had to establish was that the name, adopted by the defendant, was likely to lead the public to mistake the defendant's business for the plaintiff's. It would not suffice to show that thoughtless persons might, or did unwarrantably, jump to the conclusion that the defendant's shop was the plaintiff's. The curious part of this case was that both sides wanted to establish that Bombay' had a secondary meaning and connoted skilful dyeing and cleaning, the plaintiff, claiming that his efforts had led to that result, and the resulting reputation was attached to his business; the defendant claiming that the city or the presidency of Bombay had earned that reputation. The defendant' supported his contention with his own far from trustworthy evidence, and all the plaintiff could establish, in my opinion, was that his business had a reputation. Doubtless the reputation was attached to the name of his business and doubtless 'Bombay' is the only part of the name of his business that can be called distinctive. But he chose a geographical name, and, in my opinion, has failed to establish any exclusive right to that word, his right is merely that no other person may use a name which in the circumstances is likely to make the plaintiff's would be customers believe that the new business is the plaintiff's old business. As, in my opinion, the plaintiff has established that the name used by the defendant is likely to lead the public to believe that the defendant's business is the plaintiff's it follows that he is entitled to an injunction.

16. It was strenuously argued that such injunction should restrain the use of the word 'Bombay' in connexion with any business of art dyeing and cleaning. The usual form of injunction does not prohibit the use of even what may be called the key word in the objectionable name, for instance in Lloyd's v. Lloyd's (Southampton) Ltd. (1912)29 RPC 433 where there had been a particularly impudent attempt to exploit the reputation of Lloyds, for a branch of that world famous institution had been in Southampton for a 100 years, the injunction prohibited the use of the name Lloyds (Southampton), Ltd., or any other name calculated to induce the belief that the defendant's business is the business of or an agency branch or department of the plaintiff's business, but when counsel asked for the addition of 'or any name of which the word 'Lloyds' forms a part' the Court of appeal refused his application. I must confess that I would have had no doubt that the injunction should have contained those words, but for that decision. Then in Montgomery v. Thompson (1891) AC 217 although it was held that 'Stone', which is the name of a town, meant the plaintiff's ale and the injunction restrained the use of the word 'Stone' in connexion with ale by the defendant, the injunction as far as the name of the business was concerned which included the word Stone' was in the usual form. In that case Lord Macnaghten reluctantly agreed to the form of the injunction (that is the part of it restraining the use of the word 'Stone' as descriptive of ale) on the ground that it was better to make it comprehensive and not to leave anything in doubt to be decided in proceedings for contempt. That impressed me but at the same time all the Lords present were satisfied with the form of the injunction as to the firm's name.

17. Only one case was cited where the injunction, in respect of a business name, was in the form desired by the plaintiff-Pinet case (1897) RPC 65, where the defendants were found to have exploited the plaintiff's reputation. The unreported decision of Page, J., as he then was, in Moolji Sicca v. Ramjan Ali 1930 Cal 678, was relied on by the plaintiff, but it was a case about a trade mark and in fact the injunction was in the usual form. In Lotus Limited v. Nasiunessaba Begum 1934 Cal 600, the injunction restrained the use of the word Lotus' altogether in connexion with boots and shoes, but that was a case of a trade mark and of a fancy word used as a trade mark. I am not suggesting that a different principle applies to trade marks, but, in my opinion, it is easier to obtain an injunction in the desired form in the case of a fancy word which is a trade mark, and it is to be observed that in the case about to be cited on the question of damages the Judicial Committee expressly approved of the form of the injunction granted which restrained the use of the plaintiff's trade marks or any colourable imitation thereof and not the use of the word 'Lotus' altogether, which, curiously enough, was one of the words and emblems used as a trade mark in that case. It therefore appears that it requires very exceptional circumstances to justify an injunction in the desired form.

18 In the case before me the words 'dyeing and cleaning' or 'dyers and cleaners' and those words with the prefix 'Art' are merely descriptive of the business and common to the trade. The word 'Bombay' has been used in conjunction with two somewhat similar businesses in Calcutta. This does not prevent the plaintiff from every reasonable protection for what I may call the right to a distinct and distinguishable name, but is very material on the point as to the form of the injunction. It shows that some uses of the word 'Bombay' in connexion with art dyeing and cleaning do not owing to the locality and class of work of those businesses interferer with the plaintiff's business or give rise to mistakes. I think therefore his right must be confined to the usual form of injunction-which sufficiently protects the common law right of a business to, so to speak, an individuality. The question then arises whether it is necessary or desirable to include in the injunction itself the names or any of the names set out in para. 1 of the plaint. On the one hand, in my opinion, an injunction should be clear and comprehensive; on the other hand, it is undesirable to suggest that the usual form fails in those respects. Obviously the use of names such as those set out in that paragraph would be within the usual form. Even in the peculiar circumstances of this case, I think the form should be the usual one. The defendant, his servants and agents will be restrained from using the name Bombay Art Dyers and Cleaners,' or any other name calculated to induce the belief that the defendant's business is the business of or an agency, branch, or department of the plaintiff's business.

19. The question of damages is a difficult one. But for the decision Juggi Lal Kamalapat v. Swadeshi Mills Co. Ltd. 1929 PC 11, I would have ordered a reference with a direction that the total of all sums received by the defendant from persons who had been at any time customers of the plaintiff while he was at 10, Chowringhee or at 1, Lindsay Street should be ascertained and 40 per cent of that sum awarded to the plaintiff-40 per cent being the percentage of profit made by the plaintiff-on the ground that every reasonable presumption should be made against a man who traded under another's reputation. But having regard to that decision that would be an erroneous application of the principle on which I relied, and it seems, that I should accede to the request of counsel and assess the damages. The Judicial Committee allowed the plaintiff's usual percentage of profit on the difference between the plaintiff's usual gross trade earning before the unfair competition began and his actual earnings thereafter, with a lump sum for expected increase of business. I must endeavour to apply this method. The first difficulty is that the plaintiff admits that trade depression affected his business; that seems to eliminate any increase of business; and he admits that he cut down his advertising and it is also contended that his business was affected by removing from 1, Lindsay Street to 10, Chowringhee. That was said to be an inferior position for a shop of this description, but there was very little evidence to support that. However, I think some allowance should be made both for the change of address and some inferiority in the admittedly cheaper premises. The first point was left vague and no details given about the second point. The plaintiff was in his new premises for nearly four months before the defendant started his business-his average takings were Rs. 621 a month. During the previous year-from the chart he drew up-the average had dwindled to Rs. 1,050 a month, which appears from the chart to reflect the depression in trade. The suit was filed some six months after the defendant started his business; the average for those months was Rs. 813. The plaintiff issued 10,000 circulars about his change of address, employed a sandwich' man with a notice in Lindsay Street, and for some time had a notice on the old premises. For the year 1933 the average was Rs. 536. In that year the average was 115 orders a month. In Lindsay Street he used to get about 300 orders a month, and the defendant obtained about that number when his business had fully started. It is difficult to draw any inference as to any figure, but it certainly looks as if the defendant was flourshing under his false colours.

20. I think the plaintiff's loss of business in 1933 was Rs. 6,276 taking his normal rate at Rs. 1,050 a month and the actual at Rs. 536. In the last four months of 1932-after the competition started-he made Rs. 3,055 against a normal Rs. 4,200, the loss being Rs. 1,145. That makes a total of Rs. 7,421. Forty per cent is the profit he claims, and that was not challenged-that makes the loss about Rs. 3,000. From that, I think, something must be deducted for trade depression, change of address, and curtailed advertising-I think the six months before suit gives a fairer indication of that amount than the first months at the new address-the average was Rs. 813 for those months or roughly a loss of 30 per cent; but the defendant's competition was in being. I think that taking it very roughly 15 per cent is enough to allow for all causes except the defendant's unfair trading. I therefore assess the damages at Rs. 2,550. I have assessed the damages on the supposed loss of the plaintiff up to the end of 1933-no evidence of damages after that date was given. In my opinion as the defendant by agreeing to be ready for the hearing in a few days and to keep accounts of his profits, obtained, as it so happens, a longer time in which his business flourished, the damages should be assessed up to the hearing-but no evidence was given of damages in 1934. There will be a decree for Rs. 2,550 with six per cent interest and an injunction as stated. Costs on scale No. 2.

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