ABDULLA KHAN Vs. B MISKIN SAHEB

JUDGEMENT

(1.) This appeal is directed against the judgment and order of the District Judge, Kurnool in I. A. No. 299 of 1957 in O. S. No. 4 of 1957 on the file of the District Court. Kurnool, refusing to grant an injunction restraining the defendants from continuing to make use of the label on their beedies which they have been all along using. The learned District judge held that the grant of a temporary injunction would result in giving the plaintiff undue advantage over the defendants and that if ultimately the plaintiff had to succeed in the suit, he would be compensated by damages. This is a most extraordinary conclusion to come to on an application for an injunction to restrain the defendants from taking use of a trade mark which was likely to deceive the public into thinking that that trade mark was that of the plaintiff. If the reasoning of the learned District Judge were to he accepted, then there could be no injunction at all in any case of violation of a trade mark. The simple point that requires to be considered in this case in deciding whether or not a temporary injunction should issue pending the disposal of the suit is. whether the ring label with which the beedies of the defendants are wrapped is likely to deceive an ordinary person who is in the habit of smoking beedies. Once the court is satisfied that the label put forward by the defendants is a colorable imitation or is substantially similar so as to give an impression that the wrapper on the defendants beedies is the same or similar to that of the plaintiffs and consequently an ordinary member of the public using the beedies in the annual course is likely to mistake the one for the other, then there is sufficient justification for re-straining the defendants from continuing to make use of that label.`

(2.) The learned District Judge made much of the fact that the mark of the elephant appears on both the labels. But so far as the elephant was concerned, the plaintiff had disclaimed it in registering his trade mark. This is a very common thing to do. The design of an animal which design has no particular significance would not really be regarded as covered by the registration of the trade mark as excluding similar other animals being used by others. Nobody can claim a social prerogative to make use of the design of an animal in creation, as particularly an animal which is so common as the elephant. But that is not the point to be considered. Forgetting the elephant part of it, if the general design taken with the elephant in it is likely to create an impression in the minds of the public using the beedies that the beedies put forward by the defendants are beedies put forward V the plaintiff, that would be enough.

(3.) In this case the facts are that the plaintiff had registered his trade mark with the Chamber of Commerce, Madras in 1936. Subsequently, after the Trade Marks Act (Trade Marks Act V of 1940) came into operation, he got his trade mark registered under the said Act. The respondents do not appear to have registered their trade mark at all either with the Chamber of Commerce, Madras or under the Trade Marks Act. There is also no indication that the respondents are regular manufacturers and traders in beedies, as no specific averments are made to the effect that they maintain accounts or that they pay income-tax or sales-tax or excise duty as is being done by the plaintiff. It is true that these circumstances by themselves are not material. what is important to be considered is whether the defendants have been using a design on the beedies put forward by them for sale in the market, similar to that of the plaintiff and whether that design is likely to deceive the public into thinking that the beedies produced by the defendants are the beedies produced by the plaintiff. A series of these marks have been produced for my inspection, and on a careful comparison of the two, which course is not a correct method of determining the issue in the case, I find there are many points of resemblance e. g., the size of the design, and the shape of the design. It is contended by the learned counsel for the respondents that there are marked variations between the two designs. The elephant is differently shaped and faces a different direction. In the plaintiffs design the elephant faces the right side whereas in the design of the defendants it faces the left side. Also it is pointed out that the letters used in the plaintiffs emblem are in English having the letters "E. C. J. B." whereas the defendants emblem contains the writing in Telugu words " " (Fighting beedi"). Also the elephant is facing to the leftwards in the design. As correctly pointed out in Kerlys Law of Trade Marks at page 616, the issue is not to be determined by a comparison of the emblems in dispute. The relevant passage at pages 616 to 618 in the Text Book "Law of Trade Marks and Trade Names" by Kerly, may be usefully extracted, hereunder;" Two important questions are suggested by the sections concerned with deceptive resemblance : A. Who are the persons whom the resemblance must be likely to deceive or confuse? and B. What rules of comparison are to be adopted in judging whether such resemblance exists? A. What persons are to be considered. In accordance with the cases decided in suits and actions for the infringement of trade marks before the Registration Act, it is held that the persons to be considered in estimating whether the resemblance between the marks in question is likely to deceive are all of those who are likely to become purchasers of the goods upon which the marks are used, provided that such persons use ordinary care and intelligence. It is clearly not enough to show the retail dealers buying goods for resale would not be deceived, since they might themselves fraudulently or carelessly make use of the ambiguous character of the trade mark to deceive their customers the ultimate purchasers. In fact, dealers who buy from the manufacturers in order to sell by retail are often aware of attempted infringements, and are parties to the fraud. Nor is the enquiry to be confined to England, or to persons acquainted with the English language in cases where the goods in question have a foreign market. It must not be assumed that a very careful or intelligent examination of the mark will be made, and if it were shown that the class of persons who bought the goods were illiterate, that would be a material fact in cases where printing entered into the marks; but. on the other hand, it can hardly be a bar to the admission of a mark that unusually stupid people, "fools or idiots", may be deceived. Where the trade relates to goods largely sold to illiterate or badly educated persons plaintiff has often established his case although it has been proved that well educated persons have not been deceived." A person who purchases a certain type of beedi does not wait to see if there is any other emblem and then take the two types of beedies in his hand, compare and then decide for himself which to buy. Normally when an article is purchased it is only that article which is offered for sale that will be seen by the purchaser and this is more so in the case of the purchase of beedies when the article is small and of such trivial value. Therefore, the correct method of resolving the issue is to independently study the design, bear in mind the registered trade mark, try and ascertain whether that design would create in the mind of an ordinary citizen the impression, that what he was buying, is a beedi bearing the registered trade mark. In approaching the issue, it is also to be borne in mind what type of people handle these goods. knowing as we do that beedies are smoked mostly by the poorer classes, many of whom in this country are unfortunately illiterate, the question whether the letters are in English or in Telugu would not ordinarily matter, as it certainly would in the case of purchasers who are literate. If it was not the object of the defendants to make a design similar to that of the registered trade mark of the plaintiff, there are many ways open to the defendants to have prevented possible mistakes by either increasing the size of their own emblem appreciably, or altering the shape of the emblem so as to be dissimilar to that of the plaintiff. As I can only decide the matters prima facie and not on the merits, I am satisfied that prima facie, the emblem put forward by the defendants is capable of and is likely to he mistaken or taken for the emblem of the plaintiff. Hence the plaintiffs emblem having been registered, the defendants emblem not having been so registered, the only proper order to make is to restrain the defendants from putting forward the beedies bearing the emblem or a ring label which they are now making use of.