D.Y. Chandrachud, J.
1. In a suit founded on an action for passing off and infringement, Mr. Justice S.A. Bobde, by an interim order dated 28th April 2003, granted the reliefs prayed for in the Plaintiffs Notice of Motion. The First Defendant is in appeal.
2. Aimed Oomerbhoy was a partnership firm which carried on the business of manufacturing and selling edible oil. The firm owned and used trade marks in the course of its trade including the two which formed the subject matter of dispute before the learned Single Judge: 'MASTAAN' AND 'POSTMAN'. Since 1958, the firm manufactured and sold mustard oil under the brand name MASTAAN with and the label, device or logo of what is described as a 'turbaned rustic man with a moustache'. On 15th November 1966, the trade mark 'MASTAAN' together with the label and device was registered in Class 29 of the Rules under the Trade and Merchandise Marks Act, 1958. The annual sale of mustard oil of this trade mark increased from Rs. 1.43 crores in 1990-91 to Rs. 9.45 crores in 1999-2000.
3. Since 1949, refined groundnut oil was manufactured and sold by the partnership firm also under the brand name 'POSTMAN' together with a label which bore the device or logo of a postman. The groundnut oil manufactured by the firm was sold in containers and bottles of a distinctive design, shape, colour scheme, lay-out and appearance. Between 1950 and 1985, the trade name 'POSTMAN' and several labels and devices containing a pictorial depiction of a Postman were registered with the Registrar of the Trademarks. The Court is informed that registrations have also been obtained from the Registrars of Trademarks in the United Arab Emirates and in the United Kingdom. The mark 'POSTMAN' together with the accompanying label, logo and device were continuously used by the partnership firm for several decades.The sale figures for Postman brand of groundnut oil between the years 1991-92 to 1999-2000 show that the firm had an extensive and thriving business. Extensive and flourishing enough to prima facie indicate the goodwill and reputation of the business of the firm based on the proprietary right in the trademark. In 1990-91, the annual sales of the firm of the Postman brand of refined groundnut oil were of the order of Rs. 55.59 crores. This increased to Rs. 76.19 crores in 1994-95 and to Rs. 91.84 crores in 1999-2000.
4. The course of human events shows that many a flourishing business encounters difficulties because of disputes between those who have associated together for the purpose of business. This case is no exception. The Second to Seventh Defendants were partners of the partnership firm. A suit for dissolution came to be instituted by the Second Defendant (the Second Respondent herein) against the Third to Seventh Defendants on the Original Side of this Court. In that suit, the Court Receiver was appointed as Receiver of the assets of the firm. There can be no dispute about the position that among the assets of the firm, were the trade marks in respect of which the firm had a proprietary right, title and interest. The order of this Court dated 30th July, 2001 recorded the express agreement between the partners to the effect that they shall desist from carrying on business utilising the trade marks of the partnership. The order of the Court was thus :
'It is also agreed that the partners of the suit firm shall not carry on any business on the basis of the trade marks of the suit firm. The Court Receiver shall however be entitled to take steps that may be necessary to safeguard the trade marks of the firm as also take action against the persons who may be unauthorisedly using the trade marks of the firm'.
5. Barely within a week of the passing off the order of this Court on 30th July, 2001, the appellant submitted an application for the registration of a trade mark called 'MASTAAN'. There is no dispute about the correctness of the averment in para 2 of the Plaint that the Appellant is 'owned and/or controlled by the Third Defendant and his family' and that the shareholding in the appellant 'is held by the 3rd Defendant and his wife.. his son.. and his daughter.
6. The case of the Plaintiff is that in August 2001, the Second Defendant discovered that the Appellant herein, the Original First Defendant, had commenced the manufacture, distribution and marketing of mustard oil under the trade mark 'MASTMAN' and that the trade name and device which had been adopted was identical or deceptively similar to the mark 'MASTAAN' owned by the partnership firm. Moreover, it has also been alleged that the label which was used by the Appellant was deceptively similar to the registered label, device or logo of the firm and that the MASTMAN brand of groundnut oil was being sold by the appellant in bottles and containers whose design, colour scheme, lay-out, get-up and general visual appearance were almost identical or deceptively similar to that of 'MASTAAN'.
7. On 8th November 2001, the Second Defendant took out a Notice of Motion praying inter alia for an order of restraint against the Appellant from using the trade mark 'MASTMAN' together with the accompanying labels, device and logo. In that Motion, Mr. Justice Rebello passed an order on 30th November 2001 by which the Receiver was directed to engage an Advocate for the purpose of instituting proceedings in respect of the infringement of the trade mark of the firm and for passing off against the Appellant. No sooner had the order been passed by this Court on 8th November 2001, than on 13th November 2001, an application was filed by the Appellant for the Registration of the trade mark 'POSTIANO'.
8. The admitted position thus, is that application for the registration of the mark 'MASTMAN' was submitted by the Appellant barely a week after the order of this Court dated 30th July 2001 which was passed with the consent of the partners of the firm that they would not carry on business on the basis of the trademarks of the firm. The application for registration of the mark 'POSTIANO' was filed barely five days after the subsequent order of the Court authorising the Receiver to engage an Advocate for instituting a suit for infringement and passing off. The Appellant has placed on record the figures of its sales of refined groundnut oil and of mustard oil under the trade marks 'POSTIANO' and 'MASTMAN'. Those figures show that between 1st August 2001 and 28th February 2003, the sales of groundnut oil under the POSTIANO mark were to the extent of Rs. 37.47 crores, while those under the mark MASTMAN were to the extent of Rs. 11.05 crores.
9. The action in the present case has been instituted by the Court Receiver as the Plaintiff. The contention of the Plaintiff is that the mark MASTMAN is deceptively similar to the mark MASTAAN and the mark POSTIANO with the mark POSTMAN. Apart from and visual and structural similarity of the marks with those of the firm, it was submitted that the products marketed under the two marks are sold in bottles and containers which are identical or almost identical. Both sets of trade marks depict the same design, lay-out, colour scheme and get-up as the registered trademarks MASTAAN and POSTMAN both the products use the same prominent distinctive shade of blue for the background, a distinctive shade of red for the word mark and a distinctive shade of yellow for the logo and the colour scheme reinforces the association of the partnership firm, its products and trade marks' and conveys an overwhelming sense of overall similarity. Besides this, the Plaintiff has relied on the circumstance that (i) the products sold under the trade mark are identical: (ii) the trade channels are identical: (iii) the persons who purchase the products are from the middle class or lower middle class and are housewives, (iv) the purchase of cooking oil in the market does not involve a great deal of scrutiny and often, either a domestic servant or child in the family is asked to buy it from the nearest store; (v) there is almost a total identity of the two marks, with an identical lay-out, get-up, and colour scheme; besides an identical shape and design of the bottle and containers. The case of the Plaintiff is that the adoption by the Appellant of the two marks is dishonest and this has been done deliberately with a desire to create confusion and deception and to trade on the reputation of the partnership firm. The adoption, it has been averred in the plaint, is neither honest, nor bona fide and the appellant is a Company whose shareholding is held by the Third Defendant, a partner in the erstwhile partnership and his immediate family. The Plaintiff has urged that the use of the offending trade marks is only an attempt to defeat the embargo placed by the order of this Court on 30th July 2001 and there is no plausible reason or explanation why the Appellant should have adopted these particular word marks and the same labels, logos and devices in conjunction with the same design, get-up, lay-out and colour scheme.
10. From the reply which was filed by the Appellant to the Notice of Motion before the learned Single Judge, certain salient features would need emphasis. The case of the Appellant is that the partnership firm discontinued the production and sale of its products since 2000 and those products are no longer available in the market. The defence, therefore, is that 'the alleged reputation of the marks or get-up died with the dissolution and consequent discontinuation of the user'. Thereafter, in paragraph 8 of the reply is the following averment:
'The nature of the goods being household articles of daily use, the reputation of the mark or get-up used in respect thereof does not survive the discontinuation of the user thereof particularly in view of the similar marks and get-ups being available after the discontinuation thereof by the dissolved firms of which the Plaintiff is appointed as Receiver.'
11. The Appellant has relied on the advertisements issued in respect of the mark POSTIANO. The Appellant has stated in paragraph 14 of its reply that 'despite having knowledge of other blatant infringements', Defendant No. 2 has not taken any steps against such persons. A similar averment in Ground (f)(iii) of the Memo of Appeal is that no action has been taken 'when there are other marks which closely resemble the said registered trade marks'. The case of the Appellant is that the colour scheme which has been adopted by it is 'common to the trade and there are several other products available in the market with the same colour scheme or trade dress.' Similarly, the case of the Appellant is that there are other products available in the market where the mark means postman in the local language and still others which are being used that are available in the market. The basic point that would need emphasis at this stage is that even according to the Appellant the allegedly similar marks and get-ups that are available in the market are after the discontinuation thereof by the dissolved partnership firm.
12. When the Notice of Motion was argued before the learned Single Judge, a preliminary objection was raised by the Appellant to the maintainability of the suit on the ground that an action for infringement could only be filed by the registered proprietor and in no case by the Receiver who had no proprietary right or interest in the registered marks. This contention has been rejected by the learned Single Judge. The learned Single Judge has also rejected the submission that an action for passing off or infringement cannot be maintained after the partnership firm had ceased to manufacture and sell the edible oil after December 2000 because of dissolution. The learned Judge has come to the conclusion that the two marks MASTMAN and POS-TIANO are deceptively similar to the trade marks of the partnership firm, and there are significant similarities in the design, colour scheme, layout, get-up and general visual appearance. Finally, having regard to the circumstances in which the use of the disputed trade marks came to be adopted by the Appellant which is a Company controlled by the Third Defendant and his family members coupled with the fact that the Third Defendant was a partner of the partnership firm prior to dissolution, the learned Single Judge held that the marks were adopted because they would resemble the marks of the firm. An order of injunction has been passed.
13. Learned Counsel appearing on behalf of the Appellant urges that the order of the learned Single Judge is erroneous because it fails to consider the basic submission of the Appellant that the word mark 'POST' together with the accompanying feature of the mark of the Appellant including the blue colour and the size and shape of the containers and bottles are common to the trade. Counsel urges that there are other products in the trade which use the prefix 'POST' and that this has not been denied by the Plaintiff. Moreover, it was sought to be urged, on the basis of decided cases to which a reference will be made while considering the submissions that there can be no monopoly in the use of the word 'POST' and that the judgments of various Courts which have been relied upon would demonstrate that the use of a word mark which utilises the word 'POST' is not contrary to law. Furthermore, it is urged that the learned Single Judge proceeded on the basis that the word 'POSTIANO' is pronounced differently from the word POSTMAN since it ends with an 'O'. That being the position, it was urged, the learned Judge erred in holding that the letter 'O' at the end of the work mark 'POSTIANO' is susceptible of being slurred over. Counsel urged that whether it would be slurred over is a matter of evidence and the learned Single Judge was not justified in granting an interim injunction.
14. Before proceeding ahead with the matter, it would be appropriate to record that at the hearing of the appeal, Counsel for the Appellant has confined the challenge to the order of the learned Single Judge only to the extent that an injunction has been granted in respect of the trade mark POSTIANO and the accompanying labels, colour scheme, layout, and getup and to bottles and containers which are deceptively similar. No submission has been urged in respect of the injunction which has been granted in respect of the use of the mark 'MASTMAN'. Counsel also reiterated the submission urged before the learned Single Judge that the suit which has been instituted by the Receiver is not maintainable because an action for infringement can only be instituted by the registered proprietor and not by the Receiver who has no proprietary interest.
15. In considering the correctness of the submissions which have been urged before the Court on behalf of the Appellant, it would be necessary to emphasise that the partnership firm in the present case had an extensive business in and goodwill emanating from the use of the trade mark 'POSTMAN'. The firm commenced manufacturing and selling refined groundnut oil under that brand name in 1949. The firm had extensive sales of its product and in 1999-2000 which was the last year before the institution of the suit for dissolution, the sales of the firm were to the extent of Rs. 98.84 crores. The distinctive and essential features of the mark consisted of the word 'POSTMAN' prominently printed in red letters on a blue background; and accompanied by the device or logo of a postman in the yellow colour. The word marks together with the logo were encircled by a prominent and thick blue circle. The Appellant is a Company admittedly owned and controlled by the Third Defendant and his family. The Third Defendant was a partner in the partnership firm now under dissolution. The shareholding of the Appellant is held by the Third Defendant and his immediate family consisting of his wife, son and daughter. These averments in paragraphs 1 and 11A of the Plaint are not denied in the corresponding paragraphs (paragraphs 6 and 14) of the reply filed by the Appellant.
16. The circumstances in which the Appellant came to adopt and trade in the marks 'MASTMAN' and 'POSTIANO' are significant because these facts would show a complete lack of honesty on the part of the Appellant and the Third Defendant who was a partner in the erstwhile partnership. In the suit for dissolution which was instituted before this Court, the Court Receiver came to be appointed as a Receiver of the assets of the firm. This Court in its order dated 30th July 2001 recorded that it was agreed that the partners of the firm shall not carry on any business on the basis of the trade marks of the firm. Barely had this order been passed on 30th July 2001, that on 8th August 2001, an application for the registration of the mark 'MASTMAN' was submitted by the Appellant on 8th August 2001. On 8th November 2001 Mr. Justice Rebello passed an order permitting the Receiver to engage an Advocate for instituting proceedings for the infringement of the trade mark of the erstwhile partnership. Five days thereafter, the Appellant filed an application for the registration of the mark 'POSTIANO'. The sales of the Appellant under the POSTIANO brand have been to the extent of Rs. 37.47 crores between 1st August 2001 and 28th February 2003. The sales under the 'MASTMAN' are Rs. 11.05 crores over the same period. There is a considerable degree of merit in the submission which has been urged on behalf of the Court Receiver and the Second Defendant that what has taken place is a brazen attempt by the Third Defendant through instrumentality of the Appellant which is a Company in which he and the members of his family hold the shareholding, to take the place of the erstwhile partnership. The sales figures which have been furnished by the Appellant are sufficient to indicate that the business which is being carried on by the Appellant under the marks 'MASTMAN' and 'POSTIANO' would result, if it is allowed to continue unimpeded by the order of the learned Single Judge in a total destruction of the value of the registered trade mark. Counsel for the Appellant conceded before the Court that the Appellant does not press the challenge to the order of injunction insofar as the use of mark 'MASTMAN' is concerned. Whether or not to press a challenge is entirely matter for the Appellant. Equally, this Court must affirmatively record its strong disapproval of the manner in which the Third Defendant has attempted to circumvent the order passed by this Court on 30th July 2001 by which all partners including the Third Defendant had agreed not to carry on any business on the basis of the trade marks of the partnership firm. This background of the matter leads this Court to hold that the learned Single Judge was justified in coming to the finding though prima facie at the interim stage, that the circumstances of the case are such as would indicate that the adoption of mark by the Appellant has been anything but bona fide and honest.
17. Insofar as the question of deceptive similarity is concerned, the following aspects are in our view, significant and need emphasis:
(i) The word mark POSTMAN had been used by the erstwhile partnership for a little over 50 years. The mark had conferred upon the business of the partnership a significant degree of reputation and goodwill. The essential feature of the mark consisted of the use of the mark POSTMAN which was printed in red colour on a blue background with the logo of a POSTMAN in yellow and with a thick blue circle around the mark and the logo. The word mark together with the accompanying device and logo had thus-a strong association with the products of the partnership firm. The get-up and the trade dress were essential aspects of the mark:
(ii) The use of the mark 'POSTIANO' by the Appellant has a striking visual and structural similarity with the mark 'POSTMAN' which was used by the partnership firm. In a matter such as this, it is a well settled principle of law that the duty and function of the Court is not to compare the two marks as it were, side by side with a view to find out if there are differences or dissimilarities. That is not the manner in which the ordinary purchaser goes about his daily routine in purchasing a commodity of day-to-day use. What is significant is whether the ordinary purchaser going about her normal chores would be liable to be deceived into believing that the product which she sees on the shelf of a grocery store-not under a microscope or upon a careful evaluation-is a product of the partnership. Apart from the use of the word 'POSTIANO', the Appellant has chosen, and if we may say so, carefully, various other, features which would lend a purchaser to associate the product of the Appellant with the POSTMAN brand of groundnut oil sold by the erstwhile partnership. These features are: (a) The shape of the containers and of the plastic bottles which bear a striking resemblance: (b) The prominent use of an almost identical shade of blue; (c) The use by the Appellant of the colour red to depict the word 'POSTIANO'- the same colour that was used to depict the word mark of the firm: (d) The use by the Appellant of a blue circle to encircle the mark 'POSTIANO' in a manner which is deceptively similar to what was done by the firm.
(iii) Apart from these features, what is significant is the advertisement of the Appellant. The Appellant has relied upon its advertisements in paragraph 11 of its reply. A copy of an advertisement which is produced before the Court is stated to have been published in the daily edition of the Mid-Day. The advertisement contains the prominent depiction of a postcard with a postal stamp. Besides the postcard, at the bottom right hand corner is a visual depiction of a plastic bottle containing the Appellant's mark with the label POSTIANO against a blue background encircled by a blue line. What is most significant is that peeping from the background next to the bottle is a postman dressed up in the customary brown uniform, wearing the postman's conventional cap and carrying a soling which postmen conventionally carry. Counsel appearing on behalf of the Appellant conceded that what was submitted before the Court was in fact, a genuine copy of the advertisement which has been published on behalf of the Appellant but, it was urged that it was done only on one occasion. Numbers do not necessarily make for a good or a bad case. In the present case, the advertisement of the Appellant places beyond doubt that the attempt on the part of the Appellant has been to pass of the goods manufactured and sold by the Appellant under the mark 'POSTIANO' as those of the erstwhile partnership which had acquired a considerable degree of reputation and goodwill in the market under the POSTMAN brand.
(iv) In view of the well settled position in law, the Court must have regard to all the surrounding circumstances. It would be most inappropriate for the Court to undertake a rigorous exercise of finding out the differences between the mark of the Appellant and its associated design, layout and colour scheme and the word mark used by the partnership together with its logo and device. The Court must have regard to the overall similarity between the two marks. The Court must have regard to the circumstance that t groundnut oil is a commodity of mass consumption. The trade channels in which the products of the Appellant is sold are the same. The product is purchased by the ordinary consumer - not a highly discerning consumer who goes to purchase a high value product but an ordinary housewife who purchases a commodity of normal consumption in the household with a degree of trust There can be no doubt whatsoever that the product of the Appellant prima facie is deceptively similar to that of the partnership firm and is likely to cause confusion and deception. The consumers is left in a state of wonderment, to use a phrase which has been adopted in decided cases.
18. The contention of the Appellant is that the use of the word mark 'POST' and of a layout or colour scheme utilising a blue coloured background has become common to the trade in the sale of groundnut oil. The submission has no merit. In the earlier part of this judgment, a reference has been made to the averment of the Appellant in paragraph 8 of its reply before the learned Single Judge which is that the allegedly similar marks with similar get-ups were available in the trade 'after the discontinuation thereof by the dissolved firm of which the Plaintiff is appointed as Receiver.' Then in paragraph 14, the Appellant relies on the existence of 'other blatant infringements'. If the case of the Appellant is that the use of a particular mark or of a specified layout or colour scheme has become common to the trade, the burden was on the Appellant to plead with a degree of particularity and precision the relevant circumstances in relation thereto. In a country as vast as India and as geographically far flung, it may conceivably happen that though a dominant share of the market is occupied by a few businesses there are isolated pockets in the country where there may be products which are sold as counterfeits with marks or colour schemes which are deceptively similar. That, however, is not sufficient to indicate that a particular mark has become common to the trade. In the present case, Counsel for the Appellant has relied upon the use of marks such as Postmaster, Sportsman, Tapali and Postline. No material has been produced on the record by the Appellant either as regards the market share of these products, the extent of the sales and whether these products are sold in the very areas in which the products of the partnership firm were being marketed. But, in any event, the Appellant proceeds on the basis that the competing products utilising the word 'POST' came up after the discontinuation of the business of the firm. In these circumstances, it would not be possible to conclude that the word 'POST' has either become common to the trade or is so common as to lead to a negation of the proprietary interest of the partnership in the mark 'POSTMAN'.
19. The principles of law which must guide the Court in a matter such as the present, are well settled. In Corn Products v. Shangrilla Food Products, : [1960]1SCR968 , a Bench of three learned Judges of the Supreme Court held that the question whether two marks are likely to give rise to confusion or not is a question of first impression and in deciding the question of similarity between the two marks, 'the marks to be considered as a whole'. The test which the Court applies is 'from the point of view of a man of average intelligence and of imperfect recollection'. To such a man, and if we may add a woman, what is of importance is the overall structural and phonetic similarity and the similarity of the idea in the two marks. In Amritdhara Pharmacy v. Satya Deo : [1963]2SCR484 , a Bench of three learned Judges of the Supreme Court relied upon the test formulated in the judgment of Parker, J. In Re Pianotist Co. & Application 1906 (23) RPC 774 and the dictum therein that the Court must have regard to the two words and must Judge them 'both by their look and by their sound.' The Court, it was held, must consider the goods to which they are applied; the nature and kind of customer who would be likely to buy the goods; all the surrounding circumstances and what is 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 owners of the marks. Applying the test, the Supreme Court held that where the trade related to goods which are largely sold to illiterate or to relatively less educated persons, it was no answer to say that a person would go by the etymological or ideological meaning of the word. In each case, the facts of the case must govern. Though a critical comparison may disclose some point of difference, the purchaser of average intelligence and imperfect recollection may be deceived. In K. Krishna Chettiar v. Ambal & Co. : [1970]1SCR290 a Bench three learned Judges of the Supreme Court found that there was a striking similarity and affinity of sound between the words 'Andal' and 'Ambal' and that consequently there was a danger of confusion between the two marks. The Court there held that the words in question had no direct reference to the character and quality of the product-snuff-and the customers who used the goods of the Respondent may well be confused upon seeing the product which was being marketed by the Appellant.
20. Counsel for the Appellant relied upon the judgment of the Supreme Court in F. Hoffimann-La Roche and Co. v. Geoffrey Manners and Co. Private Ltd., : [1970]2SCR213 . The Appellant in that case was granted registration of a trade mark by the name of PROTOVIT, while the Respondent had subsequently obtained registration of the trade made DROPOVIT. The Appellant applied for the rectification of the register by the removal of the Respondent's trade mark. That application was rejected. The Supreme Court dismissed the appeal. This judgment was sought to be relied upon by the Appellant to urge that in that case two marks containing a common suffix 'VIT' would permissibly co-exist on the register.Insofar as this decision of two learned Judge of the Supreme Court is concerned, it must be noted that in the subsequent judgment on three learned Judges in Cadila Health Care Ltd v. Cadila Pharmaceutical Ltd., : [2001]2SCR743 , it has been held (at page 1960) that on the facts of that case the Court had come to the conclusion that taking into account all the circumstances, the word 'Protovit' and 'Dropovit' were so dissimilar that there was no reasonable probability of confusion between the words either from a visual or phonetic point of view. What those differences are would find a references in paragraph 12 of the judgment of the Supreme Court in Roche (supra). The Supreme Court noted therein that the last three letters 'VIT' was a well known common abbreviation used in the pharmaceuticals trade to denote. Vitamin preparations. Moreover, it had come on the record before the Supreme Court in the form of affidavits that there were in existence on the Register of Trade Marks about 57 trade marks which had the common suffix 'VIT'. It was in that context that the Supreme Court held that the suffix 'VIT' was both descriptive and common to the trade.
21. In Cadila (supra) the tests which must guide the Court in an action for passing off and in deciding the question of deceptive similarity have been laid down by the Supreme Court and these are as follows:
'(a) The nature of the marks ... whether the marks are word marks or label marks 6r composite marks, i.e. both words and label marks;
(b) The degree of resemblance between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.'
22. Each of these tests has been applied by us while dealing with the facts of the present case. In our view, applying these tests, the learned Single Judge was not in error in granting an injunction as prayed. Counsel appearing on behalf of the Appellant has adverted to certain decisions in support of the case that the mark of the erstwhile partnership cannot confer a monopoly on the use of the word 'POST'. Counsel sought to rely upon the judgment of Waller, J. in Geigy A.G. v. Chelsea Drug & Chemical Co. Ltd. 1966 RPC 64, wherein it was held that between the words BUTAZONE and BUTAZOLIDIN the possibility of confusion was almost non-existent. Reliance was placed on a decision of the Trade Mark Registry in the case of the Primasport Trade Mark (1992 Fleet Street Reports 515), wherein it was held that the registration of the mark Primasport could not be rejected on the ground of the existence of a mark by the name of PRIMARK in the register. Reliance was also placed on the judgment of a learned Single Judge of the Calcutta High Court, Mrs. Justice Ruma Pal (as the learned Judge then was) in GTC Industries Ltd. v. ITC Limited 1995 IPLR 15 in which the High Court dismissed an appeal against an order rejecting an opposition to the registration of the word mark WINEX, holding that there was no deceptive similarity with the label mark WINNER under which a mark had already been registered on the register. Reliance was also placed on judgment of Mody, J. in Himalaya Drug Co. v. Warner-Lambert 72 BLR 528, where this Court held that reasonable probabilities were that there would be no confusion between two marks 'Nardyl' and 'Nardelzine' learned Counsel also adverted to the judgment of a learned Single Judge of this Court, in Chemical Industrial and Pharmaceutical Laboratories Ltd. v. A. Wolfing 1979 IPLR 193, in which it was held that the marks CIPLAMINA and COMPLAMINA were not deceptively similar and both could be maintained on the register of Trade Marks.
23. Before dealing with these cases, it would be necessary to emphasise, as did the Supreme Court in Corn Products and in Amritdhara Pharmacy (supra) that each case must be decided on its own facts. In Geigy A.G. (supra) Waller, J; in holding that there was no likely confusion between the words BUTAZONE arid BUTAZOLIDIN noted that the prefix BUTA was a distinctive part of the pharmaceutical drug phenyl-butazone. The Court there held that the drug was not on sale to the general public and the word in question would be used by medical professionals and pharmacists. In the Indian context, it must be emphasised that in Cadila, the Supreme Court held that though both the drugs in question were sold under prescription, this fact alone was not sufficient to prevent confusion which was otherwise likely to occur. The Supreme Court held that decisions of English Courts would be relevant in a country Where literacy is high and the marks used are in a language which the purchaser can understand. The Supreme Court emphasised that in a country such as ours, where a large percentage of the population is illiterate and a small fraction of people know English, to apply the principles of English law regarding dissimilarity of the mark or the customer knowing about the distinguishing characteristics of the plaintiffs goods would ignore the ground realities. The author of the judgment of the Registry in the Primasport case, Mr. J.M. Myall recognised the 'full awareness of the dictum that first syllables are more striking than those which follow.'
24. The judgment of Mrs. Justice Ruma Pal, as a learned Single Judge of the Calcutta High Court, is significant in the context of the discussion in the present case. In that case/the Respondent had moved an application to register the word mark WINEX for manufactured tobacco. The registration was opposed on the ground of deceptive similarity by the Appellant which had a registered mark, WINNER, for cigarettes. The objection was overruled and the learned Single Judge while dismissing the appeal held that it was difficult to draw parallels between phonetic similarities from one case to another and ultimately, each one would have to be decided on the basis of evidence adduced. The learned Single Judge then held that certain principles were deducible and these were : (i) ordinary reasonable use and ordinarily honest trade have only to be considered; possibilities based either upon stupidity or fraud ought not to be given any undue weight: (ii) the matter will have to be considered from the point of view of the goods in question and the probable customers: (iii) the actual audio-impact would have to be considered. Applying those principles, the learned Single Judge then held thus:
'Now there is no reason to hold that the word WINEX was dishonestly adopted. The appellant had no reputation at all in respect of the word 'WINNER' when the respondent No. 1 applied for registration of its mark. There could be no motive on the respondent No. 1 & part to cause any deception by using the mark WINEX.'
These observations, in our view, have a significant bearing on the facts of the present case. In that case, the learned Single Judge categorically held that the adoption of the mark WINEX was not dishonest and in fact the Appellant had no reputation at all in the mark WINNER when the mark WINEX came up for inspection. The facts in the present case, on the other hand would demonstrate a clear dishonesty on the part of the Appellant in using the mark POSTIANO. The circumstances on the basis of which the dishonesty of the Appellant is made out at this stage have already been dealt with in the earlier part of the judgment.
25. In the CIPLAMINA case Mr. Justice S.P. Bharucha, (as the learned Chief Justice then was), noted that the words CIPLAMINA and COMPLAMINA were not phonetically similar since 'C' in CIPLAMINA is pronounced as 'C'; whereas 'C' in COMPLAMINA is pronounced as 'K'. In those circumstances, it was held that the common suffix MINA would not matter. Each of these cases has been considered on the basis of the factual situation before the Court in that particular case. In our view, however, the facts of the present case show that the mark of the Appellant is deceptively similar to the mark of the partnership firm and the overall impression that is created by the mark together with the layout, colour scheme, trade dress and the nature of the Containers would be one of deceptive similarity. The absence of honesty in the adoption of the trade mark is a material circumstance, as held by the learned Single Judge of the Calcutta High Court and that is a circumstance which weighs against the Appellant. As Chagla, C.J. speaking for a Division Bench of this Court held in Ciba Ltd. v. M. Ramalingam, : AIR1958Bom56 , the explanation given by the litigating party in the position of the Appellant for the use of the word must be taken into consideration and when one looks at the explanation, it completely puts the Appellant out of Court.
26. On behalf of the Appellant it has been urged that the Appellant is willing to modify the colour scheme and get-up and that the Court may accordingly permit the Appellant to use the mark POSTIANO together with such modifications to the colour scheme and get-up which may be approved by the Court. Counsel for the Appellant submitted that the Appellant would be willing to carry out such modification as the Court may suggest. This submission cannot be accepted. We have arrived at the finding that the adoption of the mark POSTIANO by the Appellant was not honest but was a transparent attempt to trade in the goodwill and reputation of the partnership firm. The conduct of the Appellant divulges a complete lack of bona fides. The application for the registration of the mark MASTMAN was submitted by the Appellant within a week of the order passed by this Court on 31st July 2001 recording the agreement between the partners that they shall not carry on any business on the basis of the trademark of the firm. Thereafter, no sooner was a further order passed by the Court on 8th November 2001, than an application was filed by the Appellant for the registration of the trademark 'POSTIANO'. Before us, a statement has been made by Counsel for the Appellant that the Appellant does not press this appeal insofar the injunction against the use of the trademark 'MASTMAN' is concerned. Equally, the Court cannot be oblivious of the fact that even as regards the use of the mark 'MASTMAN', the Appellant did press its defence before the learned Single Judge and asserted that it was entitled to use the mark. In a matter such as the present, therefore, it would be most inappropriate for this Court to permit the Appellant to use the mark POSTIANO with a modification of the colour scheme, get-up or trade dress. Equally, it would be inappropriate for this Court to suggest such modifications. That the use of the mark by the Appellant was not honest or bona fide is also clear, as noted earlier from the advertisement of the Appellant containing a postcard with a postal stamp and a postman in the background. An assumption of good faith which underlies the request for a modification cannot be mode in this case, in view of the conduct of the appellant. A similar situation arose before the Court of Appeal in England in Wright, Layman & Umney Ltd. v. Wright 1949 (46) RPC 149. The Master of the Rolls, Lord Greene speaking for the Court of Appeal, put it succinctly thus:
'It has been said many times that it is no part of the function of this Court to examine imaginary cases of what the defendant could or could not do under this form of injunction. The best guide, if he is an honest man, is his own conscience; and it is certainly not the business of this Court to give him instructions or hints as to how near the wind he can sail. Honest men do not attempt to sail near the wind.'
We, therefore, reject this submission.
The preliminary objection:
27. Based on Section 28 of the Trade and Merchandise Marks Act, 1958, which confers on the registered proprietor of the Trade Mark, the exclusive right to use the mark in relation to the goods in respect of which the mark is registered and to obtain relief in respect of the infringement of the mark, it was alleged before the learned Single Judge that the suit which is instituted by the Court Receiver is not maintainable. The learned Single Judge has rejected this preliminary objection to the maintainability of the suit. Before us, the matter has been argued at length on merits and towards the conclusion of the submissions the question as regards the maintainability of the suit was also urged.
28. We now propose to deal with the preliminary objection and to indicate briefly, our reasons for not interfering with the findings of the learned Single Judge. The submission which is urged on behalf of the Appellant is premised on the foundation that the existence of the trade mark depends on the connection in the course of trade between the registered proprietor and the goods in respect of which the trade mark is used. So, the submission was, the receiver has no connection in the course of trade with the trade mark since the Receiver neither manufactures the goods, nor sells them in the market.
29. There is no merit in this contention. Section 94 of the Code of Civil Procedure, 1908 empowers the Court to appoint a Receiver of any property in order to prevent the ends of justice from being defeated. Then under the provisions of Clause (a) of Rule 1 of Order 40, the Court may, by order appoint a Receiver of any property where it appears to the Court to be just and convenient. The Court is empowered by Clause (d) of Rule 1 to confer upon the Receiver all such powers, as to bringing and defending suits and for the realisation, management, protection, preservation and improvement of the property. The Court Receiver who is appointed as Receiver of the assets of the partnership in a suit for dissolution is vested with the power of protecting and preserving the property of the partnership. The trade marks constitute assets of the partnership. By the order of this Court dated 30th July 2001 the Court Receiver was appointed as Receiver of the assets of the firm. The Receiver is in that capacity perfectly justified and in fact duty bound to take all necessary steps as would the registered proprietor of the trade marks for the protection and preservation of the trade marks. There is no infirmity in the conclusion of the learned Single Judge that the Receiver is competent to exercise the rights conferred by Section 28 including the right to obtain relief in respect of the infringement of the mark in the same manner as could be exercised by the registered proprietor. The Receiver stands in the shoes of the owner and would be entitled to bring an action for infringement of the trade mark which is in a sense an action in aid of preserving and protecting the property of the partnership.
30. The judgment of a learned Single Judge of this Court, M.F. Saldanha, J. In Ratansi Mulji v. Vinod Ratilal Gandhi AIR 1991 Bom 407, relied upon by the Appellant does not carry the case of the Appellant any further. That was in fact, a case where the learned Single Judge held that the owner of the trade mark was not divested of his property under the Textile Undertakings (Taking Over of Management) Act, 1983 and hence could not be prosecuted by the Custodian of the property.
31. On the other hand, it would be instructive to advert to the decision of the Supreme Court in K. Venkata Mallayya v. Thondepu Ramaswami : AIR1964SC818 , where the Supreme Court considered the scope of the power of the Receiver appointed under Order 40 of the Code of Civil Procedure, Justice S.R. Mudholkar speaking for a Bench of four learned Judges of the Supreme Court relied upon the judgment of a Division Bench of the Calcutta High Court in Jagat Tarini Dasi v. Naba Gopal Chaki ILR 34 Cal 305, where it was held that though in one sense the Receiver is the Custodian of the property of the person whom in certain respects he is made to supplant, there seems to be no reason why his power should not be held to be eligible with his functions. The Division Bench of the Calcutta High Court held that the Receiver cannot conveniently perform those functions, unless upon the theory that he has sufficient interest in the subject matter committed to him, to enable him to sue in respect thereof by virtue of his office, in his own name. The Calcutta High Court had further held that the Receiver is appointed for the benefit of all concerned; he is a representative of the Court and of all parties interested in the litigation. The Supreme Court held that 'if any property is in custodia legis the contesting parties cannot deal with it in any manner and, therefore, there must be some authority competent to deal with it, in the interest of the parties themselves. A receiver who is placed in charge of the property on behalf of a Court can be the only appropriate person who could do so.' A Division Bench of this Court in Chaturbhuj v. Damodar AIR 1960 Bom 424 has also held that a Receiver appointed by the Court in a suit for dissolution of partnership will have all the powers of the partnership itself subject to the superintendence of the Court. Having regard to this position in law, we do not find any merit in the preliminary objection. We are of the view that the learned Single Judge was correct in rejecting the submission.
32. Before the learned Single Judge, it has also been urged that since the partnership firm last manufactured and sold edible oil under the trade mark POSTMAN in December 2000 after which no manufacture or sale has taken place, no injunction should be granted. We would briefly indicate our reasons for agreeing with the learned Single Judge in rejecting the submission. Section 14 of the Partnership Act, 1932 provides that the property of the firm will include the goodwill of the business. Section 53 expressly provides that after a firm is dissolved every partner may in the absence of a contract to the contrary, restrain any other partner from carrying on a similar business in the name of the firm or from using any of the property of the firm for his own benefit. Sub-section (1) of Section 55 provides that in settling the accounts of a firm after dissolution, the goodwill shall, subject to contract between the partners, be included in the assets and it may be sold either separately or alongwith other property of the firm. The proprietary right, title and interest of the partnership firm in its trade marks is an intrinsic part of the goodwill. The essential foundation of an action for passing off is the protection of goodwill, the goodwill of the business that may be destroyed or prejudiced by a misrepresentation on the part of a competitor that the goods which he sells are those of the other. The object of an action for passing off is, therefore, to protect the goodwill of the business of the owner who complains that the goodwill would be seriously affected by a misrepresentation by another who sells goods of a deceptively similar nature. The goodwill of the business is something which has an important value in the sale of the assets of the firm upon dissolution. We are informed that this Court has in fact directed the Receiver to explore the possibility of the sale of the business of the firm as a going concern. That being the position, there can be no doubt about the principle that in such a situation, an action would lie. The mere cessation of the business does not destroy the goodwill of the firm or for that matter, the property in the trade mark which is an integral component of the goodwill of the business.
33. Having regard, therefore, to the circumstances, we are of the view that there is no merit in the appeal. The appeal is accordingly dismissed.
34. On the request of the learned Counsel appearing on behalf of the Appellant, the stay granted by the learned Single Judge is extended for a period of six weeks from day only in respect of the mark POSTIANO and the containers. Ad-interim stay in respect of MASTMAN stands vacated.