1. The plaintiffs in this case are a company registered at Stafford in England carrying on business as boot and shoe manufacturers. They state that they are the sole proprietors of a registered trade mark known as 'Lotus' in respect of boots, shoes and slippers manufactured and sold by them. It appears that the plaintiffs are the succes-sors-in-title of a corporation known as F. Bostock & Co., Ltd., and that the trade mark has been registered in England since 1903, and in India since 1911. The plaintiffs further say that the boots, shoes and slippers manufactured by them are well known to the public generally by the name of 'Lotus', 'which name distinguishes the plaintiffs' goods from the goods of other manufacturers.
2. They set out in the plaint particulars of the label which is affixed to the boxes in which their goods are sold, and also particulars of the representation of a lotus flower which is stamped upon the soles of the boots, shoes and slippers of their manufacture.
3. The suit was originally instituted against the male defendant who was alleged to be proprietor of a business calling itself 'New Lotus Footwear' carried on at the shop in the New Market, Calcutta. The allegation was that the plaintiffs came to learn in 1932 that the male defendant was manufacturing and offering for sale and selling footwear under the name of Lotus' and passing his goods off as goods manufactured by the plaintiffs. The plaintiffs ask for an injunction for damages and for delivery of all stock and labels for destruction. When the written statement was filed on behalf of the male defendant, the plaintiffs discovered that among the allegations therein was one that the business known as New Lotus Footwear did not belong to him, but to his daughter, a lady by the name of Mt. Nasiunnessaba Begum, wife of Ali Afzal. The plaintiffs therefore took the necessary steps to add this lady as a defendant and asked for consequential amendments of the plaint.
4. With regard to this aspect of the matter I am of opinion that the plaintiffs' case against the male defendant must fail. The evidence that he has anything to do with the management of the business is very scanty and certainly falls far short of proof. As to the ownership of the business, a stamped document has been put in, which has not been challenged, and which shows that in April 1932 the female defendant purchased the good-will and stock-in-trade of the business from its former proprietor for a consideration of Rs. 1,500. The male defendant and another member of his family have given what is prima facie a satisfactory explanation of the source of the purchase money, and the circumstances in which the lady who is now said to be about 16 years of age, came to have the necessary funds to buy the business. I do not think there is any evidence on which I can hold that the lady is a benamidar. It follows that as against the male defendant the suit must be dismissed with costs.
5. With regard to the female defendant who, as I find is the owner of the business, the position is that the suit must be considered on the merits. First of all, it is denied that the plaintiffs have acquired any right to the exclusive use of the word 'Lotus'. As has been pointed out in this country a registered, trade mark as such, is not protected, and the owner has to prove by evidence that he has acquired a right thereto in the sense that the trade mark or, as in this case, the trade name is, associated in the mind of the public with the goods manufactured by him. In my opinion the plaintiffs have satisfactorily proved their title. Their local agent, a dealer in boots and shoes, by the name of Aziz Rahman, has been called, and he states that the shoes have been on the market to his knowledge since 1928, and that they enjoyed a good reputation among purchasers. He says that they are popularly known as 'Lotus' shoes, and that when purchasers ask for 'Lotus' shoes, they want, and what they mean, is, not a particular design of shoe, but a shoe manufactured by the plaintiff company. He has not been cross-examined to any extent on these points, and I am of opinion that the plaintiffs have shown, so far as the local market is concerned, that they have acquired the sole right to the use of the word Lotus' in connexion with boots and shoes, and I think it is clear in this state of things that the Court will restrain the female defendant from using a description containing a word which has come to be associated with the plaintiffs.
6. I need only refer to Ewing v. Buttercup Margarine Co., Ltd. (1917) 2 Ch 1. It is to be observed that 'Lotus' is a name which, as such, can have no possible meaning as applied to boots and shoes, and the only object of its use is to identify the boots and shoes with the manufacturer. It therefore appears to me that cases like Linoleum Manufacturing Co. v. Narain (1878) 7 Ch D 834 are of very little assistance, because they are not concerned with the existing words, but with a fancy word coined by the inventor to signify the article invented by him. Nor can I derive any assistance from cases like Turton v. Turton (1890) 42 Ch D 128, where the names are the names of actual persons, and where it is suggested that, owing to a mistake in identity, customers are misled into dealing with the defendants instead of with the plaintiffs. The female defendant also argues that in the circumstances of the particular case there is no possibility of customers being deceived into purchasing her goods under the belief that they are the goods of the plaintiffs, and she points out that there is no similarity in get up, and also that whereas the plaintiffs deal in high grade shoes of English manufacture at Rs. 19 a pair, the shoes which she sells as 'New Lotus' shoes are made of Indian produced leather, and are of an inferior grade and cost only Rs. 6 a pair. I agree with her contention to this extent: that I cannot imagine a customer who was familiar with the plaintiffs' goods being deceived in buying the sort of article which the female defendant has been proved to be selling. Boots and shoes have this peculiarity: that the customer generally tries them on before he purchases them, and thus has a better opportunity of examining them than in the case of a purchase of goods which are sold in sealed wrappers or bottles.
7. I have however come to the conclusion that this point is really of no importance, because if the plaintiffs are entitled to the exclusive use of the word 'Lotus,' they are entitled to it, in my opinion, in respect of all classes of boots and shoes, and not only of the particular high class grade of articles which they sell at the present time. In my opinion, if they are so minded, they are perfectly entitled to put on the market an inferior grade of 'Lotus' shoe, with which the goods sold as 'New Lotus' Footwear by the defendant might well be confused; and similarly, in my opinion, if the injunction asked for is refused, the female defendant will have the right to sell not only the shoes she is at present selling as 'New Lotus' footwear, but also more expensive and superior shoes, which it is quite possible that purchasers may buy in the belief that they are manufactured by the plaintiffs.
8. It is suggested that the female defendant in addition to goods of her own 3. (1890) 42 Ch D 128 manufacture stocks genuine 'Lotus' shoes, and I am asked to believe that the attention of customers is drawn to the difference in the articles. Apparently the stock of genuine 'Lotus' shoes is now exhausted. It was not imported from England by the defendant, but as I understand it was bought from one of the Exchange Banks presumably because the actual importer had failed to take up the consignment. No documents have been produced to show either the size of the consignment or the date of delivery, and in my opinion that stock was purchased purely for purposes of this case. Be that as it may, the question is not one which turns on the honesty of the defendant. If the use of the name 'Lotus' is calculated to deceive, I consider the plaintiffs are entitled to protection, and it is no answer for the defendant to say that special efforts are made to guard against deception in actual fact. In the circumstances I propose with regard to the female defendant to grant an injunction restraining her, her servants and agents, from carrying on business as a manufacturer or vendor of any boots, shoes and slippers under any name or title of which the word 'Lotus forms part, and from manufacturing, selling or offering for sale any boots, or slippers not being of the plaintiffs' manufacture, under any name or description of which the word 'Lotus forms a part.
9. With regard to damages, I think the position is that the plaintiffs have not been able to prove any damage in fact. Some evidence has been given as regards a falling off in their sales, but I see no reason to connect the diminishing sales with the infringement of which the defendant has been accused. Moreover the claim for an inquiry as to damages is not pressed. The plaintiffs are however entitled to an order that the female defendant do deliver up to the plaintiffs on affidavit all lables and goods in her possession or which are in contravention of the injunction granted, or do delete therefrom any word or words which offend against the injunction. The plaintiffs are also entitled to their costs against the female defendant.