BROOKE BOND INDIA LTD Vs. NALINI COFFEE TRADERS

JUDGEMENT

(1.) This appeal has been filed by the plaintiff under the Trade and Merchandise Marks Act, 1958. The facts of the case, briefly stated, are as under. The Brooke Bond India Limited, the plaintiff, has been dealing in coffee under registered trade marks. They found that the defendant. Nalint traders, had been using the offending labels and packing materials and offering under them for ssle coffee to the members of the public. They therefore filed the present suit for a permanent injunction restraining the defendant from infringing their registered trade marks and also for restraining them from passing off their goods as if they were plaintiff's. They also sought accounts from the defendants of the business which they had carried on under those offending labels and packing materials. The learned 1st Additional District Judge, Guntur who tried the suit found that there was neither infringement of the plaintiff's registered trade marks by the defendants nor was there any passing off of their goods to the members of the public as if they were the plaintiff's goods. He therefore dismissed the suit. It is that decree which is challenged by the plaintiff in this appeal. The action is based upon section 29 of the Trade and Merchandise Marks Act, 1958. Sub-section (1) of Section 29 of Trade & Merchandise Marks Act, 1958 provides that ''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". It is not necessary to reproduce sub section (2) in this case. There are two tests which sub-section (1) of section 29 lays down in order to determine whether the plaintiff's rights to the registered trade mark have ber:n violated. The first test is this. Is the mark which the defendants have been using identical with the registered trade mark of the plaintiff? Or is deceptively similar to it? There are a few decisions of the Supreme Court and some High Courts which throw light upon the question. Before I refer to them it is necessary to note that the expression ''deceptively similar" used in sub-section (1) of section 29 has been defined by clause (d) of sub section (1) of Section 2 of the said Act. This is what clause (d) provides; "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be tikely to deceive or cause confusion." In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmacheutical Laboratories] the Supreme Court has laid down two principles which it is necessary to note. The Supreme Court has observed as follows: |

(2.) The Supreme Court has further observed that the court takes into account while arriving at this conclusion get-up, packing and other writing or marks on the goods or on the packets in which goods are offered for sale. When once the us: 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 his been an infringement is to be decided by comparison of the two marks. But if the two marks are identical no further question arises for then the infringement is made out. But when the two marks are not identical the plaintiff will 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 in relation to goods in relation to goods in respect of which it is registered. In Ruston & Hornsby Ltd. Vs. The Zamindara Engineering Co.] the distinction between infringement and passing off has been pointed out by the Supreme Court. It has been observed that an infringement action is quite distinguishable for passing off action while they ace similar in some respects. What is necessary to prove in a passing off action is whether the defendant is selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods. while in an infringement action what is required to be proved is whether the defendant is using a" mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark. The visual and phonetic similarity is also taken into account in a passing off action. The court in such a case takes into account the get-up of the goods, the description of them and the probability of confusion between the goods of the plaintiff and the goods of the defendant. In other words the test is whether there is any likelihood of confusion or deception arising from similarity of marks. This test is common to both infringement and passing off actions.

(3.) In Parle products (P) Ltd., Vs. J.P. & Co Mysore] it has been observed that to decide the question as to whether the plaintiff's right to trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. In order to come to the conclusion whether one mark was deceptively similar to another, the broad and essential features 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 charactet as to pfevent one design from being mistaken for the other. It would be enough if the impugned mark bears such on 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. It is no use noting how many points are similar and how many points are dissimilar. While deciding this question the court indeed takes into account the colours, the general get-up and the entire sequence of words. Whether the defendant could commit fraud on customer also could be taken into account. Pointing out the distinction between infringement and passing off, it has been observed by the Supreme Court that the use by the defendant of the plaintiff's trade mark in an action for passing off is not essential but it is the sine que non for the infringement. The likelihood of committing deceit upon the purchaser arising out of close visual and phonetical similarity is one of the factors which the court has to take into account. In Kimberly Clark Corporation vs. Bay's Chemicals] a Bench of the Madras High Court has laid down that the likelihood of deceit in practice or confusion by phonetic or orthographic similarity is a factor which would be taken into account. Whether the purchaser would accept goods of one ^ brand for the other under the impression that th y are identical is also one of the tests. In Premnath Mayer vs. Registrar of Trade Marks] relying upon a Bombay decision it has been observed by the Calcutta High Court that what was important to find out was the distinguishing or essential features of the trade mark already registered and the main features underlying the trade mark whose registration was sought. In other words the real question is as to how the 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 trade mark and in what respect he would connect the trade mark with the goods he will be purchasing. A person who looks on a trade mark does not take into account every single feature thereof. The question is what would be normally retain in his mind after looking at the trade mark? What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark?