P VENKATACHALAM, A BUSINESS CONCERN IN CONDIMENTS, BY MR CPATTABHIRAMA AIYANGAR, ONE OF THE JOINT RECEIVERS OF THE SAID BUSINESS Vs. RAJAGOPAL NAIDU

JUDGEMENT

(1.) The suit under appeal was brought by the receivers of P. Venkatachalam's condiment business to restrain the defendants from selling the curry powder manufactured by them called the "Madras Curry Powder" in packages designed and labelled so as to resemble those of the plaintiffs. The 2nd defendant in the suit is the minor son of the late P. Section Loganatham, a grandson of the original P. Venkatachalam, who died about a year ago. It is conceded that the defendants did not sell or offer for sale any of their curry powder in Madras. The acts complained of were committed in England where, it must be observed, there is an action pending against a firm called Colinson & Co. claiming the same reliefs as here and for the same alleged reasons. Waller, J., did not decide the case on the merits but held on the admitted facts that he had no jurisdiction to try the suit. That point was not raised in the written statement nor was there any issue taken upon it. Waller, J., found that the passing off complained of, if done, was not done by the defendants in Madras but by their agents in England and that the passing off, the passers off and the evidence were all in England. He accordingly dismissed the suit with costs. From his judgment it seems that he has found that the passers off in England were the agents of the defendants and also that the defendants did not give their agents any authority to sell the curry powder got up in the manner complained of by the plaintiffs.

(2.) I do not propose to say anything with regard to the question of jurisdiction or the findings with regard to the agency or the want of authority in the agents because it seems tome quite clear that this case must fail upon another point. It is sufficient to say with regard to jurisdiction that, whilst it is true that a Court can issue an injunction against persons within its jurisdiction restraining them from doing acts outside the jurisdiction, it will not do so unless that remedy is likely to be an effective one. In this case it is argued by the respondents that, as the defendants have no property here, the remedy could not be an effective one. Upon this point it is not necessary to give an opinion. In my view, the appellants case fails because the evidence falls far short of proving that they had in England the exclusive right to sell the "Madras Curry Powder". It may well be that the "Madras Curry Powder" manufactured by them had obtained considerable reputation in England. But it does not follow, therefore, that other manufacturers of Madra's curry powder had not obtained for themselves a similar reputation. What is claimed by the appellants is that they have acquired a right to the exclusive use of the name "Madras Curry Powder" with regard to the goods manufactured in their business. That is what is claimed in the plaint and that is the first issue framed; and that the appellants must succeed in proving before the question of the passing off can be considered. It was strenuously contended on behalf of the appellants that all the Court had to consider was the question of the alleged passing off. That is not so because the first issue must, first of all, be found in favour of the plaintiffs. In S. Chivers & Sons V/s. S. Chivers & Co., Ltd (1900) 17 R.P.C. 420 Farwell, J., as he then was, stated that there were two questions which had to be answered, viz., whether the plaintiffs had established that "Chivers Jellies" or "Chivers Table Jellies" had acquired a secondary meaning and had come to mean jellies made by the plaintiffs and whether the defendants had so described their jellies as to be likely to mislead the purchaser into believing that the jellies were the jellies of the plaintiffs. These questions Farwell, J., took from the questions left to the jury by Collins, L.J., in Reddaway V/s. Bankam (1896) A.C. 199 : 13 R.P.C. 218. The plaintiffs in that case sought to restrain the defendants from selling Chivers Table Jellies, a description under which the plaintiffs sold jellies manufactured by themselves. The plaintiffs suit failed. Farwell, J., in discussing the evidence refers particularly to the evidence of two witnesses. One of them said: If a customer asked me for Chivers jellies I should sell what I had in stock; if I had both I should ask him which he required. The other witness said: If asked for Chivers jellies I should give the defendants ; if I had both, I should ask which was wanted.

(3.) I refer to this evidence because of the answers given by the plaintiffs first witness in this case whose evidence I will deal with later on. On the authority of this case, it is necessary for the appellants to prove that the Madras curry powder which is merely descriptive of the kind of powder and the place of its manufacture has acquired a secondary meaning and has come to mean curry powder manufactured by themselves and not by other manufacturers. Another case upon this point is Havana Cigar Tobacco Factories, Ltd. V/s. Oddenino (1924) 1 Ch.179 For many years the brand name "La Corona" or "Corona" had been used by the plaintiffs and their predecessors. It was not disputed that when used as a brand those words indicated cigars of the plaintiffs manufacture. Many years before, the plaintiffs introduced a new size name "Coronas". Cigars of the Corona brand and Coronas, or Corona size were known as "La Corona Coronas" or "Corona Coronas". This size name was adopted by other manufacturers and had for many years been used as a size name. The defendant in complying with a request for "some Cigars - Coronas" supplied cigars of the Partagas brand and Coronas size. The defendant claimed the right in response to a request for a "Corona Cigar" or any similar request so phrased as not to indicate whether the word "Corona" was used to refer to brand or to size, to supply a cigar of any brand provided it was of the Corona size. In an action brought by the plaintiffs claiming an injunction to restrain the defendant from selling, or supplying, or offering or exposing for sale, or passing off, or inducing or enabling others to pass off, cigars not of the plaintiffs manufacture as or for the plaintiffs "La Corona" brand of cigars by the use of any words consisting of or containing the word "Corona" as a brand name, and from selling or supplying, in response to orders for "Corona" cigars, cigars not of the plaintiff's manufacture, it was held that the words "a Corona cigar" being on the evidence proved to be ambiguous in meaning, the defendant, if he exercised the right which he claimed, would, in the majority of cases of a request for "a Corona cigar," be passing off goods not manufactured by the plaintiffs as goods of their manufacture. It was argued on behalf of the defendant in the action, who was the appellant in the Court of Appeal, that the respondents, the plaintiffs, had to prove that the word "Corona" in the trade denoted exclusively goods of their manufacture. At page 195 Warrington, L.J., says: As to the authorities I have little to say, for, as I have already stated, they are not directly in point. In Reddaway V/s. Banham (1896) A.C. 199 and in Cellular Clothing Co. V/s. Maxton and Murray (1899) A.C. 326 : 15 R.P.C. 581 the question was whether a name originally descriptive had obtained a secondary meaning as denoting exclusively the plaintiffs goods. This question does not arise in the present case, for it is not disputed that the word Corona used as a brand name denotes exclusively the plaintiffs goods.