R. Gopalakrishnan vs M/s. Venkateshwara Camphor Works

The appellant was manufacturing camphor tablets under the name and style of ""Gopal Camphor Tablets"". When he came across the

respondent''s product ""Muruga Camphor"", he filed a suit to restrain the respondent from marketing his product, which was dismissed and hence

this appeal.

According to the appellant, he is the registered owner of the trademark carton with the distinctive figure of ""Lord Krishna"". The carton''s get-up,

colour scheme and layout had been specifically designed. He had obtained registration on All-India basis. The registration number is 316466 in

Class 3 Part (A). It was first registered in the year 1967, and with a slight difference again registered in 1980. The registration has been renewed

till date. He has been in the camphor business for over forty years with a very good reputation. The appellant had also incurred heavy expenditure

in advertising and marketing the products. One day, his agent saw a camphor carton very similar to the appellant''s carton. In fact, in some respects

it was virtually identical. So, he issued a legal notice. Since the said notice proved ineffective, O.S.No.142 of 1995 was filed before the District

Judge, Coimbatore for permanent injunction and for delivery of cartons, laminations etc.

The respondent resisted the suit. The registration obtained by the appellant was denied and the suit was attacked as not being maintainable.

According to the respondent, the suit was an attempt to stifle competition. The allegation regarding the deceptive similarity was denied and

attributed to the fact that most of the labels were printed at Sivakasi. The suit, according to the respondent had to be dismissed.

Four issues were framed by the Trial Court. The plaintiff examined two witnesses on his side and marked five documents. The defendant did not

adduce any oral evidence, but marked three documents on their side. The trial Court held that the suit was maintainable, but dismissed it on the

ground that there was neither infringement of trademark nor passing-off.

The question that has to be decided in this appeal is whether there has been any infringement of the appellant''s rights. Mr. K. Raja, learned

counsel for the appellant took great pains to refer to the relevant provisions of the Trade and Merchandise Marks Act 1958 (hereinafter referred

to as ""the Act"") and also the relevant decisions. Learned Counsel urged that unless there is blatant and undisguised imitation, comparison of the two

trade-marks side by side and dissection of the same feature by feature, will make it very difficult to establish infringement in any case. Side by side

comparison is really not the proper approach in any infringement action. The question whether one mark is likely to cause confusion with another is

for the Judge alone to decide and this duty cannot be abdicated by him. The learned counsel referred to the following decisions.

Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, ; 2. Page Products (P) Ltd.. v. J.P. & Co.. Mysore, AIR 1979

Mad. 1359; 3. National Match Works, Sivakasi Vs. S.T. Karuppanna Nadar (Died) and Others, ; 4. Hiralal Parbhudas Vs. Ganesh Trading

Company and Others, ; 5. P.L. Anwar Basha Vs. M. Natarajan, and most importantly, he referred to the Judgment in 6. Tavenar Rut ledge Ld. v.

Specters Ld., 1959 RPC 355

which is a judgment by the Court of Appeal confirming a judgment rendered on the Chancery Division. According to the learned Counsel, this

decision would settle the issue.

Mr. V. Venkataswami, learned counsel for the respondent, on the other hand submitted that there was absolutely no infringement of trade-mark

warranting issue of function since, as rightly held by the trial Court, no one was likely to be deceived or confused by any similarity between the two

cartons. The learned counsel for the respondent also cited the three decisions reported in Parle Products Limited v. Bakemans Industries Limited.,

1998 (3) L.W. 294. Wander Limited and another v. Antox India (P.) Ltd., 1990 (1) L.W. 495, Indo-pharma Pharmaceutical Works Ltd.. Vs

Citadel Fine Pharmaceuticals Ltd., 1998 (2) L.W. 646.

I have seen both the cartons. The central figure of the God is different in both the cartons. The appellant''s carton is with the figure ""Lord

Krishna"" while the respondent''s carton is of ""Lord Muruga"". The positioning of the figure on a lotus flower with water in the background against an

orange Circle is very similar. The manner in which the different colours are used are also almost identical. Ofcourse, the wording in the front of the

appellant carton is in English, while that on the respondent''s carton is in Tamil. On the reverse of the carton, the positioning of the words, the

colour scheme against which they are set against are almost identical, where the appellant carton''s words the respondent''s carton is and where the

appellant''s carton has the words the respondent''s carton has the words and where the appellant''s carton says the respondent''s carton says, and

there again there are the words on the appellant''s carton "" you have in them the luster of a diamond with the grace of divinity"", on the respondent''s

carton ""you have in them the lustre of the sun with the grace of divinity"".

It is apparent without dissection of the separate features of the two cartons, to arrive at the conclsion, that the respondent while designing the

carton, its colour, its get-up and while choosing the words that are inscribed on it, could not have done so, without keeping the appellant''s carton

before him. The similarities are too great to be a mere co-incidence or for us to assume that two persons separated in time and place were inspired

in the same manner. The respondent does not deny in the written statement that the appellant has been in the business long before him. The trial

Court had observed that the colour scheme is not registered by the plaintiff and importance should be given to the name of the brand and not the

colour scheme. The colour scheme is very nearly identical, both as regards the front of the carton and the rear of the carton. There are blue and

yellow bands identically designed on the sides of the carton, in both the figure of the God set-against a orange-circle, with a similar yellow circle

super-imposed and the letterings in white with red border set-against dark blue background is very nearly similar. In any event when a trade-mark

is registered, it is registered for all colours.

Section 10 of the Act is as follows:

... . If and so far as a trademark is registered without limitation of colour, it shall be deemed to be registered for all colours.

The registration certificate given to the appellant has no limitation regarding colour and therefore, it should be deemed to be for all colours.

The learned trial Judge held that there is no room for confusion with regard to the name and colour scheme of the appellant and the respondent,

and that the respondents trade mark is not deceptively similar to that of the plaintiff. The learned Judge also held that the purchaser would not be

deceived since he knows the difference between Lord Krishna and Lord Muruga and that if importance is given to the name and not the colour

scheme nobody will be misled. But in trademark cases as the Court has to see the broad and essential features of the two marks, and when the

whole carton has to be registered it is the whole carton which has to be borne in mind.

The nature of deception or confusion may arise in several ways.

In the book. Law of Trade Marks and Passing Off by Narayanan (4th Edition) at page 258 it is stated that the deception or confusion may arise in

three ways, deception of confusion as to goods or it might be deception or confusion as to trade origin or it might be deception or confusion as to

trade connection. Whether the person buying goods seeing one mark thinking it as one brand which it is not or if he thinks it is corning from the

same source as some other goods bearing a similar mark which he is familiar with or whether he believes that the two are in some way or other

connected with each other there is the deception or confusion.

In Parker-knoll case, 1962 RPC 265 Lord Denning observed,

Looking to the natural meaning of the words, I would make two observations: first, the offending mark must ""so nearly resemble the registered

mark as to be ""likely'' to deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion. You

do not have to look into the* mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No

doubt if you find that he did intend to deceive or cause Confusion, you will give him credit for success in his intentions. You will not hesitate to hold

that his use of it is likely to deceive or cause confusion. But if he had no such intention, and was completely honest, then you will look carefully to

see whether it is likely to deceive or cause confusion before you find him guilty of infringement.

and again in Slazenger v. Feltham, 1889 (6) RPC 531 Lindlev. LJ observed thus:

One must exercise one''s own common sense, and if you are driven to the conclusion that what is intended to be done is to deceive if possible, I

do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to

say that he cannot succeed in doing that which he is straining every nerve to do?"" ""Where an intention to deceive is found, it is not difficult for the

Court to infer that the intention has been, or in all probability will be, effective.

These two observations definitely help in deciding this case.

Section 29 of the Act is as follows:

Infringement of trade marks. (1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a

registered user thereof using by way of permitted use, uses in the course of trade a 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 and in such manner as to render the use of the mark likely to be

taken as being used as a trade mark.

(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if

the defendant establishes to the satisfaction of the Court 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 persons having the right, either as registered proprietor or as registered user, to use the trade mark.

So we see that when the mark is registered in part (B) alone, the defendant can plead the special defence provided in the aforesaid Section to

escape from the consequences of infringement.

Now, we look at the decisions cited by the learned counsel for the appellant. They are cases are those, where the Courts have accepted that

there has been a deception.

One of the leading cases, which was decided by the Supreme Court reported in K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co.,

Madras and Another, , though the respondent pointed out that there were differences in the marks and also that the figures of two Goddesses are

not identical and there is no scope of confusion, this Court held that even though there is no visual resemblance between the two marks related to

Ambal snuff and Sri Andal snuff, the close affinity of sound would establish deception and the majority of customers were not capable of

understanding the meanings of the two words.

In the decision reported in National Match Works, Sivakasi Vs. S.T. Karuppanna Nadar (Died) and Others, , the test and proof of deceptive

similarity was considered and the Court held,

... In order to come to the conclusion whether one mark is deceptively similar to another the broad and essential features of the two are to be

considered. They should not be placed side by side to find out if there are any differences in the design and, if so, whether they are of such a

character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to

the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. Proof of actual

deception is not necessary.

That was a case where National Match Works, who had a registered trade marks for his matches was aggrieved by the deceptively similar mark

used by S.T. Karuppanna Nadar for his matches.

In the decision reported in Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, again the question of deceptive similarity was considered. In that

case the trial Court had meticulously examined the features found on the two wrappers of the biscuit packets and took the view that there were

greater points of dissimilarity than similarity. This was confirmed by the High Court which held that the similarity was not such as to deceive an

ordinary purchaser of biscuits. The Supreme Court set aside this finding though it was a concurrent finding of fact and said,

It is therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of

the two are to be considered, They should not be placed side by side to find out if there are any differences in the design and if so, whether they

are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall

similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we

find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not

identical bears such a close resemblance that one can easily be mistaken for the other.

Then again in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, , the Supreme Court while holding that the

resemblance could be phonetic, visual or in the basic idea. But the object of the enquiry in ultimate analysis is whether the mark used by the

defendant on the whole is deceptively similar to that of the registered mark of the plaintiff. The Supreme Court held as follows:

In an action for infringement, the plaintiff must, no doubt, make but that the use of the defendant''s mark is likely to deceive, but where the

similarity between the plaintiff''s and the defendant''s mark is so close either visually, phonetically otherwise and the Court reaches the the

conclusion that there is in imitation, no further evidence is required to establish that the plaintiff''s rights are violated. Expressed in another way, if

the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or

marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different

from that of the registered proprietor of the mark would be immaterial.

In Hiralal Parbhudas Vs. Ganesh Trading Company and Others, , the Division Bench of the Bombay High Court said that the test to be

applied is what a first impression of a person of average intelligence and imperfect recollection would be and if such a person is likely to be

confused then there would be deceptive similarity.

In the decision reported in Tavener Rut ledge Ld. v. Specters Ld. 1959 RPC 355, which is a judgment given by the Court of Appeal, the

plaintiff was a sweet manufacturer and though there were certain differences in the mark of the defendant, the Chancery Division, whose decision

1969 RPC 83 the Court of Appeal confirmed held, that,

I think they wanted to get something equally striking and perhaps as near to that as they felt they could go without as they thought breaking the

law and they cannot complain of being held to have done the Act deliberately if the course adopted by them terms out to be the wrong side of the

line"".

In the judgment of the Chancery division, the xerox copy which was produced before me, the two marks have been reproduced and it is clear

that the defendant had designed a get-up which was very similar to that of the plaintiff as it is in the instant case.

There is also a decision of this Court reported in P.L. Anwar Basha Vs. M. Natarajan, , where again the learned Judge dealing with beedi

wrappers held that the broad and essential factors of the two marks have to be considered and the question has to be approached from the point

of a man of average intelligence and imperfect recollection, which is extracted below:

In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be

considered. They should not be placed side by side to find out if there are any differences in the design and if so whether they are of such a

character as to prevent one design from being mistaken for the other, it would be enough if the impugned mark bears such an overall similarity to

the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. The question has to be

approached from the point of a man of average intelligence and imperfect recollection. When the two marks are held to be deceptively similar even

an intention to deceive need not be proved. Held that the overall similarity between the labels of the plaintiff with the label of the defendant and the

identical name ""Meen Mark beedi'' used by both the plaintiff and the defendant are likely to cause deception or confusion within the meaning of

Section 2(d) of the Trade and Merchandise Marks Act, 1958 and therefore, the mark used by the defendant is deceptively similar to the trade

mark of the plaintiff.

We shall consider the decisions cited by the learned counsel for the respondent. In the decision reported Parle Products Limited v. Bakemans

Industries Limited., 1998 (3) L.W. 294, the learned Judge found that the packets were so dissimilar and no one will get cheated either visually or

phonetically. That case was connected to biscuit wrappers so that decision will not apply to this case.

In the case reported in Indo-pharma Pharmaceutical Works Ltd.. v. Citadel Fine Pharmaceutical Ltd,. 1998 (2) L.W. 646, the plaintiff''s

products was in the form of syrup packed in bottles and the defendant''s was in the form of capsules packed in cardboard boxes. The only

grievance was in use of the trademark ''ENERJASE'' as aganist the plaintiffs trademark ''ENERJEX''. Since the common feature ''ENERJ'' was

held to publici juris, this Court refused to grant injunction.

But in all these cages, the question of infringement is for the Judge to decide and the eye of the Judge is the final umpire. I have already referred

in the paras above as to how even the collocation of words and infact the actual words used are almost identical in both the cartons. In a similar

case reported in Munday v. Carey, 1905 (22) R.P.C. 273, Chancery division, the learned Judge had to consider whether ""Hub-black Enamel

containing device of a ace of spades was an infringement of the trademark of the makers of ""Club-black Enamel"" which bore the device of ace of

clubs. The learned Judge granted injunction though clubs and spades were dissimilar on the ground of similarity in collocation of the words and the

same is reproduced here:

Kekewich.J. at pp.275-276: ""But then I find that on the centre part of the plaintiffs'' label is this:""Most Brilliant and Durable;dries quickly"". The

defendant had: ""Brilliant and durable; dries quickly''. Now, of course, the defendant is entitled to say that his enamel is brilliant and durable and

dries quickly; but one cannot help being struck by the exact collocation of words in both cases, and it is strange that the defendant, desiring to

advertise his goods in this way, should not only have thought of the adjectives brilliant and durable, and of the statement that it ""dries quickly"", but

he should have put ''brilliant'' first and ""durable"" afterwards, and ""dries quickly"" after both. The Suggestions is that that is accidental. I do not

believe it. Then on the right hand of that centre part, there is on the plaintiffs ""Equals stoved enamel in hardness, durability and appearance"". On the

other there is ""Equals stoved enamel in hardness, durability and appearance"", the very words following each other in the same order, I am told that

is accidental. Again I do not believe it I believe that it is a rank case of dishonesty, and where you see dishonesty, then even though the similarity

were less than it is here, you ought, I think to pay great attention to the items of similarity, and less to the items of dissimilarity.

This is identical to the instant case. The defendant''s choice of the words etc., ....... or ""you have in them the lustre of the sun with the grace of

divinity"", and the get-up and the collocation of the words and colour are not purely accidental. Infact as in Enamel case the sequence in which these

words occur and the placement are identical. As Lindlev. J observes, why should this Court not say he has succeeded in doing what he is straining

every nerve to do. I think the dishonesty speaks for itself. Perhaps, this is why the defendant did not chose to get on to the box. The learned Judge

erred in dismissing the suit.

I therefore, set aside the judgment of the trial court. The appeal is allowed, with costs. Counsel''s fee is fixed ar Rs 1500