9911796707
TMI Blog2003 (4) TMI 409X X X X Extracts X X X X X X X X Extracts X X X X ..... appellant s goods as and for respondent s goods. The respondent is plaintiff. The appellant and respondent are brothers. They along with their mother Maniben Thakkar were carrying on business of manufacturing, selling and dealing in different qualities of compounded Asafoetida and Asafoetida in the name and style of M/s. V.N. Thakkar Hingwala and Co. The partnership firm manufactured, sold and dealt in 18 different, qualities of compounded Asafoetida and was registered proprietor of 3 trade marks, namely, ( i ) Vandevi (name) ( ii ) Vandevi 2001 (lable) and ( iii ) Vandevi (device). After the death of Maniben Thakkar in June 1990, the appellant and respondent continued and the business in partnership each having 50 per cent share. 2. In or about 1991, the brothers decided to dissolve the firm of V.N. Thakkar Hingwala Co. and to start separate businesses by dividing qualities under the trade mark "Vandevi" and to manufacture and trade in 9 distinct qualities each, so as not to tread or infringe upon the qualities and business of each other. Pursuant to the said decision and in order to obtain permission of the Registrar of Trade Marks as required under section 39 of the Trad ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 1991, the Registrar of Trade Marks, approved the Deed of Dissolution subject to condition that the registered proprietor shall use the mark only in relation to the goods mentioned in the First Schedule/Second Schedule of the draft Deed of Dissolution submitted. On 9th September, 1991 a formal Deed of Dissolution between the appellant and the respondent containing clauses as mentioned above and consequently dividing the qualities with reference to the trade mark "Vandevi" was executed. The firm of V.N. Thakkar Hingwala Co. was dissolved. The Dissolution Deed contained specimen labels signed by both the parties on the reverse thereof. Thereafter the parties filed their respective affidavits before the Registrar of Trade Marks. In the affidavit which was filed on behalf of the appellant, he specifically agreed to incorporate distinguishing feature to the mark in respect of the qualities that have been allotted to him. In para 10 of the affidavit, the appellant stated as follows : "10. That I agree to use only the mark in relation to the 9 qualities mentioned in the first schedule of the draft Deed of Dissolution and also in the first schedule hereunder written. I also agree to a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... selling quality of Vandevi Powder, (Yellow) with all ingredients of Vandevi Powder (Yellow) under the guise of Vandevi Superfine Powder. The fact that the appellant has changed the ingredients of his product Vandevi Superfine Powder and product which is sold under the name "Vandevi Superfine Powder" is similar, if not identical, to the respondent s product Vandevi Powder (Yellow) is not disputed by the appellant. We may mention at this stage that the ingredients of Vandevi Powder (Yellow) which the partnership from inception was manufacturing and selling it, and on dissolution of the partnership it was allotted to the respondent are approximately 73 per cent rice flour, edible gum and Asafoetida. The ingredients of Vandevi Superfine Powder, which the said partnership from inception was manufacturing and selling and which product on dissolution of the said partnership was allotted to the appellant consists of wheat flour approximately 31 per cent, edible gum and Asafoetida. Thus, the main ingredient of Vandevi Powder (Yellow) is rice flour whereas the main ingredient of Vandevi Superfine Powder is wheat flour. The respective lables used for the said qualities mention the said ingred ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ts that substance of the respondent s case is clearly within the established principles of reverse passing-off. He relied upon a series of cases; Samuelson v. Producers Distributing [1931] 48 R.P.C. 580; Plomien Fuel Economiser Co. Ltd. v. National School of Salesmanship Ltd. [1943] 60 R.P.C. 209; Bristol Conservatories Ltd. v. Conservatories Custom Built Ltd. [1989] 15 R.P.C. 455 and Gloag Son Ltd. v. Welsh Distilleries Ltd. Fleet Street Reports [1998] 718. 8. On the other hand, Mr. Doctor, learned counsel appearing for the appellant submitted that tort of passing-off is limited to that tort in its classic form i.e., to say that the defendant passed-off his goods as the plaintiff s goods. According to Mr. Doctor, even assuming that the averments made in the plaint are correct, the case would not fall within the established concept of passing-off and, therefore, the respondent is not entitled to any interlocutory reliefs. He submitted that in any event the mere use of falsehood by a defendant about his own goods or attributes would not form the basis of a passing-off action. He further submitted that the claim in passing-off is clearly ruled out because it ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mpt to deceive by putting forward their economiser as being the same as the plaintiffs . . . they represented that certain tests which had been made were tests in connection with the defendants economiser, whereas in fact they were tests in connection with the plaintiffs economiser. They represented that certain economisers which had been fitted for a number of purchasers and which were in fact the plaintiffs economiser, were the defendants economiser ." The court explained the principle of reverse passing-off as follows : "It is perfectly true that there is no evidence that a single person who purchased an economiser from the defendants and ever heard the plaintiffs; but in passing-off there is no necessity that the person who is deceived should have known the name of the person who complains of the passing-off. In many cases the name is not known at all. It is quite sufficient, in my opinion, to constitute passing-off in fact, if a person being minded to obtain goods which are identified in his mind with a definite commercial source is led by false statements to accept goods coming from a different commercial source. Now in the present case what was it that these defendan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d to decide whether there is a form of the tort to be known as reverse passing-off. It is sufficient, I think, to hold that the facts alleged can properly be regarded as within the tort of passing-off. The claim in passing-off is not.....ruled out because it is not alleged that any member of the public, looking at any of the photographs, would associate any conservatory with the plaintiffs. No person affected by the misrepresentation in Samuelson s case, or in the Plomien case, or in the Henderson case would have known who the plaintiff in any of those cases was. That did not stop the plaintiff being injured in his property rights in the business or goodwill. Nor would it matter if there was nothing in any photograph to link the conservatory there depicted with the plaintiffs in any way. Next, it would not matter that there was no allegation that there would be any confusion in the minds of the public. The concept of confusion, in my views is irrelevant when the misrepresentation leaves no room for confusion. The prospective customer here is not left to perceive the difference between the two allegedly similar products, he is told simply and untruthfully that Custom Built d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... uct of the respondent. Mr. Doctor, however, argued that it is not even alleged that any member of public would associate the product sold by the appellant with the respondent. Therefore, the question of confusion would not arise. In our view, as held by Ralph Gibsons L.J. concept of confusion is irrelevant when the misrepresentation leaves no room for confusion. Prospective customer here is not left to perceive the difference between the two products. He is persuaded to buy a product under the name Vandevi Superfine Powder which is in fact a different product i.e., Vandevi Powder (Yellow) which belongs to the respondent. This action on the part of the appellant clearly falls within the ambit of tort of passing off. The concept of tortuous passing off would include the case like the present one where the appellant is really misrepresenting the qualities which belong exclusively to the respondent as his own qualities. All the benefits of the qualities which belong to the respondent are being wrongfully appropriated by the appellant who is using the same to build up a false reputation of the appellant s Vandevi Superfine Powder. Such a wrongful action on the part of the appellant wo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s and that it seems to me, is what has happened here. The falsehood is a little more subtle, the injury a little more indirect, than in ordinary cases of unfair trade, but I think that the principle that condemns the one condemns the other." 15. In the light of the foregoing discussion, we have no hesitation to hold that the ground of passing-off has been fully established. Infringement of Registered Trade Mark 16. Mr. Doctor streneously contended that registration of trade mark (Vandevi) in favour of the appellant has no nexus with the quality of goods manufactured and sold by the appellant. What was registered in favour of the appellant is the trade mark "Vandevi" which the appellant is entitled to apply to the goods manufactured and sold by him without infringing the trade mark registered in favour of the respondent. The submission of Mr. Doctor is that it was not agreed between the parties that the particular ingredients only would be used in the quality of Asafoetida and compounded Asafoetida. In his submission, what was agreed upon was the use of mark to certain particular qualities and, therefore, mere change of some ingredients in the quality "Vandevi Superfi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nnection the Division Bench of Madras High Court has observed thus : " 82. With reference to user of a mark with addition and alteration, our attention is drawn to a passage in Kerly s Law of Trade Marks and Trade Names, 12th Edition at page 310, paras 15-41 which reads as follows : It is sometimes urged on behalf of the defendant, as an objection to the plaintiffs case, that the plaintiff in actual practice uses his mark in a form different from that for which he has obtained registration. But the variation of his registered mark by the plaintiff, provided it is not an infringement of any other person s mark, or a breach of any agreement binding upon him, is perfectly lawful, although, so far as the mark actually used differs substantially from his registered mark, it is an unregistered mark. It is well-settled that the use of a varied mark by the plaintiff does not in any way stop him from proceeding against infringers ." It is seen from the passage itself that insofar as the mark actually used differs substantially from the registered mark, it is an unregistered mark in the eye of law. Hence, the mark now used by the respondents must be considered to be only an unregis ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... flour and matching quality of 551 Khada of the appellant. However, it has been pointed out by the respon- dent that there was a printing error on their label which was rectified at the earliest opportunity and even the product was discontinued there-after. We may also mention that on behalf of the appellant affidavit of Smt. Sheela Thakkar was filed alleging that though the respondent was allotted Vandevi 751 Dana under the Deed of Dissolution he is selling the product in the name of Vandevi 751 Khada and has thus introduced a new quality and committed a breach of negative covenant. The respondent, has, however, demonstrated that right from inception brand Vandevi 751 Dana was also known as Vandevi 751 Khada. Even under the Deed of Dissolution the product was described as Vandevi 751 Dana. However, the erstwhile firm was having the label of Vandevi 751 Khada and, therefore, the registration certificate of the respondent was granted in respect of Vandevi 751 Khada. Thus, there is no substance in the grievance that the respondent himself has committed breach of covenant. 21. For these reasons, we find no force in this appeal. It fails and is dismissed with costs. - - TaxTMI - ..... X X X X Extracts X X X X X X X X Extracts X X X X
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