1970 (8) TMI 99 - HC - Indian Laws

Summary

Issues Involved:
1. Passing off and deceptive similarity between the trademarks "MOTI" and "SACHA MOTI".
2. Proprietary rights and distinctiveness of the plaintiff's trademark.
3. Likelihood of confusion or deception among consumers.
4. Defendant's defense against the claim of passing off.
5. Legal principles applicable to passing off and trademark infringement.

Detailed Analysis:

1. Passing off and Deceptive Similarity:
The plaintiff sought an injunction to restrain the defendant from passing off Ganjies not manufactured by the plaintiff under the trade name "SACHA MOTI," which was alleged to be a deceptive imitation of the plaintiff's trademark "MOTI." The plaintiff argued that the mark "SACHA MOTI" was phonetically and visually similar to "MOTI," likely to deceive purchasers into believing the goods were those of the plaintiff.

2. Proprietary Rights and Distinctiveness:
The plaintiff, a manufacturer of hosiery goods including Ganjies, had been using the trademark "MOTI" since 1956. The mark "MOTI" was embroidered in a particular style on neck labels and packing boxes, acquiring significant market popularity. The sales of Ganjies under this mark rose from Rs. 97,000 in 1960 to Rs. 8,50,000 in 1968, with advertisement expenses increasing correspondingly. The plaintiff claimed proprietary rights in the mark due to its distinctiveness and association with their products.

3. Likelihood of Confusion or Deception:
The court considered whether the defendant's use of "SACHA MOTI" was likely to deceive or cause confusion among consumers. The Supreme Court's observations in Amritdhara Pharmacy v. Satyadeo Gupta were cited, emphasizing that each case depends on its peculiar facts and that the resemblance must be judged by look, sound, and the nature of the goods. The court noted that confusion could arise in the minds of average consumers with imperfect recollection, considering the overall structural and phonetic similarity between "MOTI" and "SACHA MOTI."

4. Defendant's Defense:
The defendant argued that "MOTI" was not a registered trademark and that the plaintiff had no exclusive right to it. They claimed that "SACHA MOTI" had been used since 1966 and had acquired its own market reputation. The defendant also contended that the marks were not deceptively similar and that their goods were sold by different dealers. They further argued that "SACHA MOTI" was derived from the name of a partner's father, Moti Ram Gupta, a well-known merchant.

5. Legal Principles:
The court reiterated that in passing off actions, the plaintiff must prove that their mark has become distinctive and that the defendant's use of a similar mark is likely to deceive or cause confusion. Actual fraudulent intention is not necessary, but its presence can influence the decision. The court highlighted that the resemblance must be considered as a whole, and the likelihood of deception must be assessed from the perspective of the average consumer.

Conclusion:
The court found that the plaintiff had established a prima facie case for passing off. The distinctiveness of the "MOTI" mark was evidenced by the significant increase in sales and market recognition. The defendant's use of "SACHA MOTI" was likely to cause confusion among consumers, especially given the phonetic and visual similarities. The court granted an injunction restraining the defendant from using "SACHA MOTI" without sufficiently distinguishing it from the plaintiff's products and awarded costs to be determined in the cause. The decision emphasized the importance of protecting established trademarks from deceptive imitations to prevent consumer confusion and protect business goodwill.