PARRY AND CO Vs. PERRY AND CO

JUDGEMENT

(1.) THIS appeal arises out of an action instituted by the appellant in the District court, Madurai for infringement of their trade mark. Messrs Parry and Co. Ltd. the appellant herein is a company with limited liability engaged on several lines of business activity. They are interested in a sugar factory at Nellikuppam in South arcot District. They have also been manufacturing confectionery. For marketing their confectionery products they are using two trade marks which have been registered under Class 30 of the Trade Marks Act, 1940, the registered numbers being 92, 251 and 1,24634. The first of the two marks is in the name "parry's" in block letters and the second is a design which contains the word Parry's written in script form. Both the marks were by virtue of the original registration to enure for a period of 7 years the former being in respect of sugar and all kinds of confectionary, while the latter was confined to all kinds of confectionery. The said trade marks have been subsequently renewed for a further period of fifteen years from 5-2-1951 and 30-2-1953 respectively. The respondents, messsrs. Perry and Co. is a firm consisting of two partners by name K. K. Palanikumar Nadar and K. K. P. T. Periasami Nadar who are engaged in the manufacture and sale of biscuits at Usilampatti in Madurai District. Evidence shows that they have been trading under the name of Perry and Company since at least the year 1934. In respect of biscuits manufactured by them, they have been using labels containing the words Perry and Co. In the year 1950, the respondent applied to the Registrar of Trade Marks, Bombay for registration of their trade marks in regard to biscuits manufactured by them. Their applications were registered as Nos. 106242, 106244 and 121221 the trade mark being the name perry's written in script form and also written in block letters. The appellant protested against the use of the words Ferry as according to them they would amount to a colourable imitation of their mark. Correspondence followed between the parties with a view to explore possibilities of settlement. The respondents assured the appellant company that as they were going to use the labels only in respect of biscuit manufactured by them and that they would give an undertaking not to use the mark in respect of the pepermints or other confectionery even if they were to manufacture them in future. The appellants were not satisfied with that assurance, as they thought that as both confectionary and biscuits come under the same category, in class 30 for purposes of registration of trade marks it was necessary to protect their property rights in their trade mark with respect to the word Parry's in script form. The parties ultimately entered into an agreement on 4th of May, 1951 under which they, proceeding on the assumption that Parry's were manufacturers of confectionary. while Perry's were manufacturers of biscuits, agreed that the respondents might use or adopt as their trade mark Perry's or labels containing that word if they were to use block letters. If, however, the script form were to be adopted, the agreement, specified the form of the script in which the name Perry could be used. The respondents further agreed to amend the application for registration of their trade marks in accordance with the terms of the agreement. After doing so they obtained registration for their trade mark 'perry' in regard to biscuits manufactured by them. They subsequently obtained renewal of registration for their trade mark for a period of 15 years from 19th February, 1952.

(2.) IN the year 1956 the respondents extended their business activity to manufacturing and putting into the market confectionery. For the sale of their manufactured products they began to use wrappers containing their registered trade mark. The appellants complained that the user by the respondents of their trade mark in connection with confectionery manufactured by them amounted to an infringement of their own trade mark and asked the respondents to desist from infringing their rights. Not finding a satisfactory response they instituted the suit out of which this appeal arises for an injunction restraining the respondents from using the name of Perry's for their confectionery products and for other allied reliefs. The suit claim was put on an alternative basis. The first ground was that they had acquired a proprietary right by virtue of their having become entitled to the user of the word "parry's" in relation to their products and secondly on the ground that the user of the labels with the name Perry's by the respondents on the products manufactured by them amounted to a passing off of their goods as those of the appellants. The respondents contested the suit denying the infringement and contending that by virtue of the agreement referred to above, they had acquiured an exclusive right to the use of the trade mark Perry's in connection with all the goods manufactured by them whether it be merely biscuits or confectionary as well. The suit was also resisted on the ground that the word Perry was the contraction of the proper name of Periaswami one of the partners of the firm and that as such, they would be entitled to protection offered Section 26 of the Indian trade Marks Act,

(3.) THE Learned District Judge while he did not accept the case of the respondents that the word 'perry' is an abbreviation of the name Periasami held that there was no infringement, as the agreement entered into between the parties did not stand in the way of the respondents using the name Perry in connection with all the products manufactured by them. The Learned District Judge also held that the appellant's action could not be sustained as a passing off action, as there was no possibility of the labels used for the sale of the respondent's products creating any deception in the customers. The suit was accordingly dismissed and hence this appeal.