(1) This is a plaintiff's regular first appeal from the judgment and decree of the District Judge Delhi dated 1-6-1961 dismissing the plaintiff-appellant's suit for permanent injunction and rendition of accounts and toher consequential relief against the two defendants (respondents in this Court).
(2) According to the plaintiff, a company registered under the English Companies Act, with its registered office in Glassgow, Sctoland (U.K.), manufacturers and deals in sewing and embroidery threads of all kinds. The goods manufactured by the plaintiff are sold throughout the world under various Trade Marks. Its selling agents in India are Messrs. The Central Agency Ltd., with their principal office at Bombay and deptos in toher big towns including Delhi, where it is situated at Garstin Bastion Road. The plaintiff claims to be the registered owner of the Trade Mark 'Anchor Handicraft Box Top', among toher Trade Marks registered in its name under Class 28 in respect of threads of all kinds. For many years, the plaintiff has manufactured and sold skeins of stranded ctoton contained in small card board boxes and the box top is duly registered as per registration certificate No. 127250. The registration certificate in respect of this trade mark was filed with the plaint and marked `C'. The plaintiff's registered users of the aforesaid Trade Mark under Section 41 of the Trade Marks Act, 1940 are stated to be M/s. Jumma Thread Mills (Private) Ltd., Bombay and Mr. John Thomson is stated to be the duly constituted attorney of the plaintiff company authorised to institute the suit. According to the plaintiff's plea, the box mentioned above containing the plaintiff's goods is well known in the market and has been associated with the plaintiff-company: the goods contained therein are also synonymous with the name of the plaintiff-company. Sometime prior to the institution of the suit, the plaintiff came to learn that the defendants had begun manufacturing stranded ctoton skeins and selling the same in boxes in which the plaintiff-company sells its goods. ' The defendant concern:, according to the plaintiff's plea,
'has been passing off its goods contained in the said infringing Boxes as goods of plaintiffs with the ulterior mtoive of duping the Public and the trade and creating the impression in the minds of the purchasers of the defendant's goods that while purchasing the defendants' 'Tiffan' Brands goods, they are acquiring goods of the famous brand of the plaintiff.'
The main points of similarity, 13 in number, in the box top of the plaintiff and the defendants are stated in paragraph 7 of the plaint. It is then added that the box top as used by the defendants has so many features in common with the plaintiff's box top that the slight differences carry no sense and cannto be normally appreciated by an ordinary and unwary customer. The shape, size and get-up, design, lettering and colour scheme of the defendants' box is so deceptively similar to the plaintiff's box top that it is likely to deceive the customer into buying the defendants' goods as if they were the plaintiff's goods. It is mainly on these averments that the suit was instituted in the Court below in December, 1959.
(3) The defendants resisted the suit denying that their box was a colourable imitation of the plaintiff's box and asserting that nto the slightest confusion could arise between the two boxes. It was also controverter that the defendants were passing of their goods as those of the plaintiff, it being further pleaded as incorrect and false that any one in the public had ever been confused or duped, as alleged by the plaintiff, or had ever purchased the defendants' goods considering them to be those of the plaintiff. The points of similarity, 13 in number, pleaded by the plaintiff, were described to be incorrect and wrong, it being added that:
(i) the plaintiffs were using the device of 'Anchor' as a trade mark, while the defendants were using the device of a 'dog'. These devices being quite different, could nto be confused;
(ii) the plaintiffs were using the word 'Anchor' in the centre of their carton, whereas the defendants' carton contained the word 'Tiffan'. These two words were so much different from each toher that there could be no possibility of a confusion;
(iii) at the top of their carton, the plaintiff was using the word 'Clark's' while the defendants were using their own trading style. 'Chada's'. These were surnames and every dealer had a right to use his own name on the articles sold by him. Moreover, they were quite different words nto capable of creating confusion.
(iv) the plaintiff was using the words 'Clarks and Company Paisley' on the side panel of their cartons, while the defendants were using the words, 'Chada and Company (India)'. Even in these expressions, there could be no chance of a confusion, the words being quite different, and
(v) the rest of the words like 'Fast Colour' 'Stranded Ctoton' and 'Nos. Of Skeins' etc., were common words used by all trades and for which no one could claim any monopoly.
In the points of similarity alleged by the plaintiff , according to the written statement, there was no distinctiveness and, thereforee, there could be no confusion. The existence of any distinctive feature in the top of the plaintiff 's box, which could be said to have been copied by the defendants was denied and so was the averment of confusion arising there from. The sizes of the boxes and colours thereof were pleaded to be common to the trade and nobody could claim a monopoly of the size and colour of boxes. Existence any special get-up of the plaintiff's box was also denied. It being added that the plaintiff had nto acquired exclusive right to the use of the get-up, if any, in all its boxes. The defendants also averred in their written statement that there was a great disparity of prices between the two goods, the plaintiff 's box being sold at Rs. 4/4 and the defendants ' at Rs. 1/12/- per box.
(4) The pleadings of the parties gave rise to the following four issues:
1. Whether Mr. John Thomson is duly constituted attorney of the plaintiff-company and is authorised to institute this suit?
2. Whether the plaintiffs are the registered proprietors of the trade mark 'Anchor Handicraft Box Top', as mentioned in the plaint?
3. Are the defendants selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiffs goods?
4. To what relief are the plaintiffs entitled, in case issues Nos. 2 and 3 are decided in their favor?
The learned District Judge decided the first two issues in the plaintiff 's favor and issue No. 3 against it, with the result that the suit was dismissed, the parties bearing their own costs. In the opinion of the learned District Judge, in spite of some similarities in the boxes of the plaintiff and of the defendants, it could nto be said that of resemblance which may suffice to deceive or cause confusion. Decided cases are accordingly useful only in so far as they lay down principles of law and act upon them in deciding the controversy facing the Court. Facts in two cases being seldom completely identical, the decisions on different facts and in different settings, serve but merely to show how the judicial mind worked in given circumstances; toher decided cases, thus render but feeble aid to the future Courts in deciding disputes on different facts and in different settings. This would be particularly so in trade mark cases. The broad principles of law applicable to cases of passing off an infringement of trade marks appear to us to be fairly well settled and the difficulty arises only in coming to the conclusions of fact in the background of the recognised rule of law.
(5) Adverting first to the broad principles of law applicable to such cases, we consider it desirable to refer to a recent Supreme Court decision in Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories : [1965]1SCR737 . Thus said the Court:
'We have already pointed out that the suit by the respondent complained buth of an invasion of a statutory right under S.21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favor of the appellant to which the learned counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and toher features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by antoher of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of antoher, that is nto the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of `the exclusive right to the use of the trade mark in relation to those goods' (Vide S 21 of the Act). The use by the defendant of the trade mark of the plaintiff is nto essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of buth the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out 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 or toherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in antoher 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 toher writing or marks on the goods or on the packets to 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; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be 'in the course of trade', the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are nto identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S 21). A point has sometimes been raised as to whether the words `or cause confusion' introduce any element which is nto already covered by the words 'likely to deceive' and it has sometimes been answered by saying that it is merely an extension of the earlier test and does nto add very materially to the concept indicated by the earlier words 'likely to deceive'. But this apart as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception nto being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff 's trade mark are to be found in that used by the defendants. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.'
We have somewhat extensively reproduced the observations of the Supreme Court which explain the legal position in very clear terms. The question of similarity of two competing marks, which may be likely to deceive or cause confusion was considered in an earlier decision of the Supreme Court in Corn Products Refining Co. V. Shangrila Food Products Ltd., : [1960]1SCR968 and it was observed as follows:
'It is well known that the question whether the two marks are likely to give rise to confusion or nto is a question of first impression. It is for the Court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen which it may be stated is nto always the same, may nto be of much assistance in our country in deciding questions of phonetic similarity. It cannto be overlooked that the word is an English word which to the mass of the Indian People is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole' . In this very judgment while dealing with the question of reputation, it has also been observed that a trade mark may acquire a reputation in connection with the goods in respect of which it is used though a buyer may nto know who the manufacturer of the goods is. It is desirable to point out at this stage that for considering the question of likelihood of deception or causing confusion one has to see as to how a purchaser who must be looked upon as an average man of ordinary intelligence would react to a particular trade mark, what association he would form by looking at the particular mark and in what respect he would connect the trade mark with the goods which he would be purchasing. The kind and class of people normally purchasing the goods in controversy is also an important factor to be kept in view while considering this question. It may further be added the onus in a passing off action rests on the plaintiff to prove whether there is likelihood of the defendant's goods being passed off at goods of the plaintiff.
(6) It is in the background of the legal position just stated that we have to turn to the plaintiff's trade mark and the card-board box used by the plaintiff and the card-board box used by the defendants. We have seen the plaintiff's registered trade mark Exhibit P 5 dated 24-11-1959, whereby the registration was renewed for a period of 15 years from 10-1-1954. This trade mark contains the word 'Anchor' in very bold letters and on one side of it are four figures of an anchor, the central one being very prominent. Above the word 'Anchor' is the word 'Clark's' in slightly smaller letters. Above and below are the words 'Clark and Co. Paisley'. It is quite clear that by selling their goods in their own containers bearing the words:
'CHADA'S TIFFAN'
with the figure of a dog on its left (Exhibit P. 1), the defendants are nto committing any breach of the plaintiff's trade mark as such. Considering the shape, get-up and the general look of the two containers, we do nto find any reason for disagreeing with the conclusions of the learned District Judge that the defendants' box Exhibit P. 1 cannto pass off as that of the plaintiff. The learned counsel for the appellant has attempted to seek support for his challenge to the conclusions of the Court below from the plaintiff's witnesses P.W 1 to P.W. 5. Shri Shyam Kishore Khanna, P.W. 1, who is the plaintiff's District Sales Manager in Delhi, has proved Exhibit P. 5, the plaintiff's certificate of registration and Exhibit P 2., the box top of the container. Exhibit P 3 used by the plaintiff. In the certificate Exhibit P 5 is contained the representation of box top Exhibit P 2 and the witness adds that the plaintiff has a separate registration for the word and device of 'Anchor'. According to him, stranded ctoton with trade mark 'Anchor' is being sold in India for the last fifty or sixty years, the ttoal sale of the stranded ctoton with this trade mark being of the value of about Rs. 40,00,000/- or Rupees 50,00,000/- per annum. He has added that stranded ctoton skeins trade mark 'Anchor' ask by stating that they want `langer kee guchhi ka baksha' (Box of skeins with Anchor mark). A large number of customers for these skeins according to this witness, are illiterate people and women. The evidence of this witness is of little assistance to the plaintiff-appellant in establishing that the defendants' box top can pass off as that of the plaintiff.
P.W. 2 Hazari Lal has deposed that women customers ask for 'langar marka gucchi' and they identify the goods by looking at the representation of 'Anchor' on the box top and by looking at its colour. The instance cited by this witness about the confusion caused to some customer, whose details and particulars have nto been disclosed by him, is too vague and unimpressive to require serious consideration. Kasturi Lal, tailor P.W. 3 has tried to prove the possibility of confusion by means of a purchase evidenced by P.W. 3/1, a cash memo in respect of sale of Tiffan thread ctoton skeins worth Rs. 4/-. The cross-examination of this witness brings out the worthlessness of his testimony . Needless to point out that Exhibit P.W. 3/1 also does nto seem to us to possess any evidentiary value. Om Parkash, P.W. 4 a trade tailor, has nto stated anything relevant to establish the probability of confusion. Harish Chand Khanna, P.W. 5 an employee of the plaintiff has given the instance of the proprietor of concern called Bedi Tailors, who had told the witness of having purchased a carbon of thread skeins in containers like Exhibit P 1, on a representation that they were the products of the plaintiff-company. The witness does nto remember the name of the said proprietor of Bedi Tailors, though he knows him for 15 years and the said dealer is the plaintiff's regular customer. No comment is needed for discrediting this testimony and we have little hesitations in rejecting his evidence. This is all the oral evidence produced by the plaintiff and we find it wholly insufficient to make out a case of passing off.
(7) The two rival box tops have been closely examined by us by keeping them, side by side and we are unable to find any such similarity between them as would cause an average purchaser, however, illiterate, to mistake the figure of 'dog' for that of `anchor'. We are fully conscious of the fact that the two marks, when placed side by side, may exhibit many and various differences and yet the main idea left on the mind by buth may be the same, and a person acquainted with one mark, and nto having two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with the goods which bore the same mark as that with which he was acquainted. Marks, it must never be forgtoten, are remembered, rather by general impression or by any phtoographic recollection of the whole. Keeping in view the main idea, the essential feature or the leading characteristic represented by each one of the two rival marks, we feel that those who use the thread may well be expected to distinguish between the two figures of 'dog' and 'anchor' and if they happen to be literate, then they can easily distinguish one from the toher. It is no doubt true that the colour of the boxes is very much similar, but then that is nto conclusive, nor is that the dominating or the leading characteristic. It may be pointed out that the defendants have produced witnesses who have deposed that the defendant's skeins in their boxes are known as 'Kutta Marka or' or 'Tiffan Marka' and that they are unaware of any complaint, regarding confusion between the two marks. Even ignoring the negative evidence of this type, we are clearly of the view that the two rival box tops contained distinct marks which do nto give rise to any reasonable probability of deception or confusion. As is clear on the evidence, including the essential feature or the main idea represented by the two box tops, the plaintiff's markhas the 'Anchor' as distinguishing feature and his goods are associated with or known as 'Langer Marks' whereas the defendants top box has figure of 'dog' as its essential feature or main idea and their goods are known as 'Kutta Marka'. The result of the foregoing discussion, thereforee, is that we are unable to persuade ourselves to find any cogent ground for disagreeing with the conclusions of the Court below.
(8) As observed earlier, the learned counsel at the bar have cited a number of decided cases in support of their respective contentions, but as it is nto possible to discover from them any standard as to the amount of resemblance which may suffice to deceive or cause confusion, and the question of degree of resemblance necessary for such confusion being, from the very nature of things, incapable of definition a priori we have nto dealt with the cases cited at great length. In fairness to the counsel, however we consider it desirable to ntoe some of the important cases cited:
(9) J and J Colman Ltd. V. Farrow and Co. (1897) 15 R 198, Bryant and May Ltd. V. United Match Industries Ltd. (1933), 50 Rcp 12, Wright Grossley and Co. V. Blexard (1910) 27 Rpc 299., Parker Knoll ltd. V. Knoll International Ltd. (1962) Rpc 265 Lever v. Goodwin (1887) 4 R P C 492, J.B. Williams Co. V. H. Bronnley and Co. Ltd. (1909) 26 Rpc 765, Paylona and Co. Ltd. V. Snelling. Lampard and Co Ltd. (1900) 17 Rpc 628, Scheweppes Ltd. V. Gibbens (1905) 22 Rpc 601. Jones Bros. Ltd. V. Anglo American Optical Co. (1912) 29 Rpc 361 and Amritdhara Pharmacy v. Satya Deo Gupta, : [1963]2SCR484 .
(10) In view of the foregoing discussion, this appeal fails, but keeping in view the circumstances of the case, like the Court below, we leave the parties to bear their own costs in this Court.
(11) Appeal dismissed.