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Judgment
M.L. Bhatt, J.—Ancillary to the suit filed by the plaintiff restraining the defendants from infringing the plaintiff-company's copyright and from
using their Trade mark 'MMB' and for some other reliefs, plaintiff has prayed for ad-interim injunction against the defendants to the effect that
pending disposal of this suit, the defendants should not use the Trade mark 'M.B.B.' on their whisky bottles of various sizes. The plaintiffs are using
the trade mark 'M.M.B' on one of the varieties of their whisky bottles. The defendants have with a view to deceive the public labelled their whisky
bottles with the trade mark 'M.B.B.' and the purchasers are made to believe that the whisky bottles sold by the defendants are the same which are
manufactured by the plaintiff under the trade mark 'M.M.B.'. As an exhibit plaintiffs have produced their own whisky bottles of different sizes with
'M.M.B.' Label, and those of the defendants with 'M.B.B.' mark. The bigger size is 750 ml when filled. Then there are half size bottles which are
375 ml. and there is another size which contains 1/4th of a bigger size.
In order to appreciate the controversy the labels which are fixed on the plaintiffs whisky bottles has a mark in the following manner:
MMB (in black and red) below it.
Whisky (in red)
Thereunder place of its bottling and blending office etc. is written
On the whisky bottles which are prepared by the defendants the labels are in the following manner:
MBB (in black and red) Whisky (in red)
Thereunder the place of distilling and bottling is mentioned.
Plaintiffs blend and bottle their whisky in question under the name and style of 'Mohan Meakin Breweries Ltd.' which has its registered office at
Solan. Defendants distill and bottle their whisky under the name and style of 'Kashmir Dreamland Distilleries' Srinagar-Kmr. On the said bottles of
the defendants 25 with a knot on the right side of 5 with words UP is written on the top of the label opposite the words 750 ml. In the whisky
bottles distilled by the plaintiff 25. UP is written below the words 'Whisky' on right side and on the left side 750 ml is written. Same is the position
with regard to the bottles of smaller size.
During the trial of this suit plaintiffs got their copyright registered and their copyright is, as earlier stated, 'MMB Whisky'.
Mr. Chadda appearing for the plaintiffs has submitted that the defendants are contravening the Copyright Act as also Trade and Merchandise
Marks Act, 1958. It is contended that the Trade mark used by the petitioners in the kind of whisky which is in dispute and that used by the
defendants has similarity and is apt to deceive a purchaser. The defendants are passing off their goods with a view to deceive public and the public
is led to believe that the whisky bottles distilled and bottled by the defendants are that of the plaintiff's company. It is contended that the whisky
bottles labelled by the defendants are so similar in their labels, packing, get up etc. that they are bound to cause confusion in the minds of the
purchaser and deceive him on first impression. The visual and phonetic similarity of plaintiff's bottles and defendants bottles are sure to deceive a
man of imperfect collection or a man of average intelligence so as to lead him to believe that the bottles of the defendants are bottles manufactured
by the plaintiff company. It is also stated that there is no sense in using the word 'M.B.B.' when the defendant-firms name is Kashmir Dreamland
Distilleries. The word 'M.B.B.' is used by the defendants only to pass off their goods for that of the plaintiff-company.
Mr. Z.A. Shah appearing on other side has controverted this position and has stated that there is no similarity between the two labels or the
whiskies. The colour of the two whiskies is also not the same Whisky bottled and distilled by the plaintiff is of a deeper colour and that prepared
by the defendant is of a lighter colour. He contends that the word 'M.M.B.' written on the bottles of the plaintiff-company cannot be confused with
the word 'M.B.B.' engrossed on the defendants bottles. In the plaintiffs bottles there are 2 M's and only one 'B' whereas in the bottles of the
defendants there is one M and 2 'B's. His next argument was that suit was not triable by the High Court but was to be brought before the District
Court.
I would like to decide the main objection first i.e. with regard to the jurisdiction of this court, which is covered by an issue framed on 31-10-
1984.
Under the Trade and Merchandise Marks Act, 1958 a suit for infringement etc. is to be instituted before a District Court. Section 105 of the
said Act says that no suit which relates to infringement of trade mark or relates to unregistered trade mark or for passing off arising out of the use
by the defendant of any trade mark which is identical or deceptively similar to the plaintiffs trade whether registered or unregistered shall be
instituted in any court, inferior to a District Court having jurisdiction to try the suit.
From the perusal of this section it appears that suit brought for infringement etc. cannot be instituted in any court which is inferior to the District
Court, but it does not bar filing of such a suit in any court which is superior to the District Court. Moreover suit of the present nature is essentially
suit for perpetual injunction. Valuation for jurisdiction of the suit is to be the same which is valuation for the payment of court-fee. In fact it is the
valuation for purposes of court-fee which will determine the valuation of the suit for purposes of jurisdiction. That would mean one and the same
valuation for purposes of court-fee and jurisdiction is to be fixed and court-fee paid at ad valorem. Present suit is valued for more than Rs.
20,000/- for purposes of jurisdiction and court-fee and such a suit is necessarily to be presented before the High Court which has the jurisdiction
to try it or it may transfer it for trial to District Court. Any suit valuation where of is Rs. 20,000/-or more is necessarily to be filed in the High Court.
It cannot be filed before the District Judge. That is the mandate of law so far as this stage is concerned, Therefore objection of the defendant about
the jurisdiction of the High Court to try the suit is not well founded.
Mr. Z.A. Shah then referred to Copyright Act and in his opinion Section 62 of the said Act will oust the jurisdiction of this court to try the suit.
This contention also is not well founded for two reasons one, that the District Court as referred in the said section which means District Court as
defined in the CPC of 1908, i.e. Act No. 5 of 1908. The District Court defined under that Act is the principal court of the District as also High
Court which has original jurisdiction over a District or more Districts, secondly, in a suit for perpetual injunction valuation for purposes of
Jurisdiction and court-fee will determine the jurisdiction of the Court. u/s 62 of the Copyright Act also therefore, it is held that the suit is cognizable
by this Court and this Court will not lack jurisdiction in trying and deciding the suit.
The main controversy which needs to be considered now is whether the plaintiff is entitled to get ad interim relief or not. For that plaintiff must
establish that he has a prima facie case and balance of convenience is in his favour. He has also to proved that if ad interim unjunction is withheld
he is likely to suffer irreparable injury.
The labels used by the plaintiff and defendants on their bottles of whisky have been detailed out elsewhere in this judgment, the similarity
between the labels used on the whisky bottles of the plaintiff and defendant is so deep that to a man of imperfect collection and average intelligence
the two labels are apt to be taken as similar and label used by the defendant is to be taken by the purchaser as a label used by the plaintiff. The
word 'M.M.B.' and 'M.B.B.' is not that distinct which is not apt to be confused with each other.
The Supreme Court has drawn distinction in similarity between infringement of trade mark and passing off action. In Ruston and Hornsby Ltd.
Vs. The Zamindara Engineering Co., , it was noted by the Supreme Court that in an action for infringement where the defendant's trade mark is
identical with the plaintiff's mark the court will not enquire whether the infringement is such is likely to deceive or cause confusion. But where the
alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an
action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in
infringement and passing off actions.
Action for infringement was held to be statutory right by the Supreme Court and it would depend upon the validity of the registration and
subject to the other restrictions laid down in the various sections of the Act. On the other hand right of passing off action is that A is not entitled to
represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that
the get-up of B's goods has become distinctive of them and there is a probability of confusion between them and the goods of A. It is not
necessary to prove actual deception or actual damage. The infringement of trade mark and passing off action are similar in some respects. Relying
on Saville Perfumery Ltd. v. June Perfect Ltd. (1941) 58 RPC 147 at page 161 decided by Master of the Rolls, the Supreme Court pointed out
that in an action for infringement where the defendant's trade mark is identical with the plaintiffs mark, the court will not enquire whether the
infringement is such, as is likely to deceive or cause confusion, but where the alleged infringement consists of using not the exact mark on the
register but something similar to it, the test of infringement is the same as in an action of passing off. According to the Supreme Court the test as to
likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off action.
The Supreme Court in Ruston and Hornsby Ltd. Vs. The Zamindara Engineering Co., was considering the resemblance between the word
'RUSTAM' and the word 'AUSTON'. It found that there were deceptive similarity between both and on that basis it granted a decree in favour of
the plaintiff in that case, who had complained of infringement of his trade mark and brought action on the ground of passing off action.
Mr. Chadda next relied on the Panipat Co-Operative Sugar Mills Ltd. v. Mohan Meakin Breweries Ltd. which is said to be reported in 1978
(3) IPLR 53 A photostat copy of that judgment is placed on record by Mr. Chadda. A Division Bench of Punjab and Haryana High Court
decided the case on the question of passing off. The defendant in that case had used a label on his whisky bottles which was marked as 'BMB'
which was similar to letters 'MMB'. In view of the similarity in the labels it was observed that the Court is not to visualise the reaction of an
intelligent purchaser with a sharp menory and astute power of observation, it has to see the type of the goods and the people who commonly use it
and purchase it. Commenting on the question of passing off the learned Judges constituting the Division Bench observed as under:--
In the case of 'passing off', the plaintiff has to allege that the goods of the defendant offered to the hands of the public are likely to be mistaken for
the goods of the plaintiff, thus leading to deception. Actual deception is not necessary. The plaintiff has to prove substantial user of his goods. In
order to restrain the defendant from production and marketing of goods he has to further prove that the two goods are so similar in their labels,
packing, get up etc., that they are likely to cause confusion in the mind of the purchaser or to deceive him on first impression. It is to be
appreciated whether the overall visual and phonetic similarity of the plaintiff's and defendant's labels, marks, get-up etc. is likely to deceive a man
of imperfect recollection, or in the case of a fading memory even a man of average intelligence, so as to lead him to mistake the goods of the
defendant to be the goods of the plaintiff. It is keeping in view of these well-recognised principles approved by the Courts of this country that the
question of granting temporary injunction has to be examined.
Mr. Chadda has also referred to a single bench of the Allahabad High Court (Lucknow Bench) reported in 1980 (4) IPLR 117. He has
produced a photostat copy of the said judgment and after appreciation of case law, the learned judges restrained the defendants in that case from
using the trade mark which was held by him to be deceptively similar to the plaintiff's trade mark in that case.
The defendants argument was that there was no infringement of trade mark committed by them because there was no similarity in the two trade
marks. The plaintiffs trade mark 'MMB' whisky, though registered was not similar to 'MBB' whisky, trade mark used by the defendants though
unregistered. The defendants are not using 'MMB' Trade mark assuming this argument to be correct, the trade mark may be not similar but this
case is to be decided on the question of passing off and if the plaintiff is able to show that the label used by the defendants is deceptively similar to
the label used by the plaintiff and the defendants are likely to pass on their whisky as whisky bottled and blended by the plaintiff and confuse the
average purchaser, the plaintiff will be entitled to grant of ad interim relief. On a visual perusal of the whisky bottles which are presented in the
court along with the labels pasted thereon, a purchaser of average intelligence who is only interested in having a whisky prepared by Mohan
Meakins can be deceived and led to purchase the whisky prepared by the defendants with 'MBB' Label. The similarity and resemblance in the two
labels is so close and near that it is likely to confuse a purchaser and whisky of defendant can be passed on as that made by the plaintiff. The
purchaser would not go to the colour of the whisky or name of the company, but it will look to the bold letters written on the labels. The whisky
prepared by the defendant may be passed off to a purchaser and he may be led to believe that he was purchasing the whisky prepared by the
plaintiff. The element of deceitful passing off whisky prepared by the defendant for that of the plaintiff cannot be altogether ruled out. The purchaser
is likely to be misled by the similarity of the labels and he is not expected to be as astatute observer to make enquiries before the purchase of the
defendant's whisky. The said whisky is likely to be mistaken for the whisky prepared by the plaintiff. I am in respectful agreement with the Division
Bench judgment of the Punjab and Haryana High Court reported in 1978 (3) PLR 53 and the judgment scribed by learned single Judge of
Allahabad High Court reported in 1980 (4) PLR 117.
In the present case the whisky prepared by the defendant has deceptive similarity with the whisky prepared by the plaintiff and an average man
is likely to be confused and deceived by the impression used by the defendant.
The plaintiff therefore has made out a prima facie case that the defendant is likely to pass off his whisky for that of the plaintiff by using
deceptive labels and trade mark on his whisky. If that is not prevented, the plaintiff is likely to suffer injury which cannot be calculated at this stage.
Balance of convenience is also in favour of the plaintiff because he is likely to suffer by the defendant's deceptive user of labels on his whisky.
I would accordingly grant ad interim injunction in favour of the plaintiff against the defendants restraining the defendant from using the label
'MBB WHISKY' or any other label which has deceptive similarity with the label used by the plaintiff on his whisky as 'MMB WHISKY'. The
defendant shall not sell any whisky under this label in the market and if any whisky is sold by the defendant in the meantime, that shall be withdrawn
by it. This order will enure till the disposal of the suit only.
Any opinion expressed in this judgment will not be construed to be the opinion of the Court on the merits of the controversy raised in the suit
which is subjudice before the Court. The observations made hereinabove are without prejudice to the rights of the defendants and shall not confer
any benefit on the plaintiff in the suit.
The preliminary issue is decided against the defendants and in favour of the plaintiffs.