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TMI Blog1984 (11) TMI 352X X X X Extracts X X X X X X X X Extracts X X X X ..... s, B. K. Engineer ing Co. of Delhi, have brought a passing-off action against the defendants, the present respondents, Ubhi Enterprises of Ludhiana. The plaintiffs claim permanent injunction, accounts and damages. The plaintiffs and the defendants are in the same line of business. Both firms are engaged in the manufacture of cycle bells. The plaintiffs started manufacturing bells as early as 1971. They adopted "B.K." as their house mark they, manufacture cycle bells under the trade mark Crown and Venus. The house mark "B.K." is used, prominently and in conspicuous manner, on the cartons as a circular logo device in this form "B.K.-81". On the stand of the bell and the carton the name of the manufacture "B.K. Engineering Co." is stamped. (4) The defendants are marketing cycle bells under the trade mark "B.K.-81". They entered the manufacturing line in 1981. The mark "B.K.-81" is embossed on the dome-shaped cover as well as on the push handle. "UBHI Enterprises Regd " is engraved on the dome-shaped cover alone; with words ''B.K. 81". On the stand of the bell and carton their manufacturing name Ubhi ap ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er the trade mark "B.K.". It is asserted that the plaintiffs .trade marks are Crown and Venus and not "B.K." Modem character of the tort: An expanded Passing-off. (11) The passing-off action arose in the nineteenth century and depends upon the simple principle that "no body has any right to represent his goods as the goods of somebody else"( Red away v. Banham per Lord Halsbury). In other words, a man is not to sell his goods or his services under the pretence that they are those of another man (Perry v. Truefitt per Lord Langdale (M.R.) This is the classic form of passing-off. Now this tort has been extended in the leading case of Erven Warnik vs Townend and Sons .Lord Diplok said that "what the law protects by a passing-off action is a trader's property in his business or goodwill" (p. 932). Following Lord Parker in A.G. Spalding v. AW Gamage Ltd. he said that the right the invasion of which is the subject of passing-off actions is "the property in the business or goodwill likely to be injured by the misrepresentation" The false suggestion by the defendant that his business is connected with the plaintiff's would damage t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that his goods are the goods of the plaintiff. (Parkar Knoll Ltd. v. Knoll International Ltd. The defendants say that they are entitled to use "B.K.-81" as B.K. is an abbreviation of their deceased mother's name. Balwant. Kaur. I cannot accept this argument. That the defendants use their mother's name with no intention to deceive anybody does not mean that such likelihood has not been created. [Parker Knoll (supra) at p. 290 per Lord Devlin]. (17) It was than said that the defendants are using 81 in addition to letters "B.K." to distinguish (heir product from the plaintiffs' product. This is merely "garnishing", as the expression goes, merely altering the name by the addition of 81. Even the altered name is likely to mislead. The defendants product will deceive people into thinking that their goods .are the goods of the plaintiffs. Unfair competition (18) The setting of the law of passing'-off is competition between traders. There is a real risk of injury to the reputation of the plaintiffs if the defendants are nut prevented from selling cycle bells under the name "B.K.-81". This is a misappropriation of plaintiffs' na ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ount to the false representation that its goods were the plaintiff's goods. Varieties of Passing-off (23) Passing off may take many forms. With the changes in the technology of the trade infinite varieties of passing off will spring up. Radio, television and newspaper advertisement have added a new dimension to this tort. The crux of the matter is not the intention of the defendant in taking a certain name, but the probable affect of such action on the minds of the public. However innocent may be his intentions, he will be restrained from trading under name so much like that under which the plaintiff who was first in the field trades, that the public are very likely to be deceived into systematic, and not merely occasional, confusion. (Hendriks v. Montagu :Society of Motor Manufacturers v. Motor Manufacturers' Ins. Co. This is the essence vf passing off. (24) Take this very case. "B.K." is the house name of the plaintiffs, the producers of the article. Crown bell that has won popular favor. The defendants have attached this name to the article they produce, "B.K. 81" bell. The probability of deception and confusion is certainly there. "B.K.-81&quo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... class of goods will assist the judge. But his decision does not depend solely or even primarily on the evaluation of such evidence. The Court must in the end trust to its own perception into the mind of the reasonable man. This is in accordance with the dictum of Lord Parker in Spalding v. Gamage [Parker Knoll pp. 291-292 (15) per Lord Devlin]. (28) It is clear to me that there is a prospect of injury to the plaintiffs' goodwill. If the defendants appropriate it without permission they limit the plaintiffs' capacity in respect of their other products. There was some debate before us whether the plaintiffs are manufacturing bells under the trade mark "B.K" Whether they are or they are not, is a matter which remains to be established at the trial. But one thing is certain. The defendants have pre-empted commercial exploitation of plaintiffs personality. They have pre-empted plaintiffs' capacity to extend their business under their name "B.K." (See Sheraton Corp. of America v. Sheraton Motels Ltd. (1964) Rpc 202x16). The question whether the plaintiffs manufacture, cycle bells under the trade mark "B.K." is not a pertinent question; the reall ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ;.........We must take the current when it serves, or lose our ventures": Julius Ceaser, Act Iv, Sc III. (31) In some Canadian cases the courts spoke not of passing off but of "wrongful appropriation of the plaintiff's personality", he having a "proprietary right in the exclusive marketing for gain of his personality" (See Alhens v. Canadian Adventure Camps Ltd. and Frazer "Appropriation of Personality" in (1983) 99 Law Quarterly Review 281).Salmends editor has opined that "it may be that misappropriation of personality is on the verge of recognition as a distinct tort". (Salmond and Houston on Law of torts 18th ed. p. 379). (32) The plaintiffs, in my opinion, have prima facie shown that they are likely to sustain injury by defendants' misuse of their "goodwill". The crux of the case is that "B.K." is a word or device which is distinctive of plaintiffs' goods. It is a distinctive indicium of the plaintiffs' bells. The defendants have misappropriated this indicium which is distinctive of the goods manufactured by the plaintiffs. It is not essential that the plain- tiff be identified by name, provided ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nest trading. They are badges of common law fraud. Examples of injurious falsehood. Deception of the public is an important component of this tort. If there is no deception, there is no liability for taking advantage of a market created by another [Cadbury (supra) at p. 218]. (36) Appropriation without consent of the plaintiffs reputation is sufficient to ground a claim to relief. In the Australian case Handerson v. Radio Corpn. Evatt Cj and Myers J. put it as follows: "THE wrongful appropriation of another's professional or business reputation is an injury in itself, no less, in our opinion, than the appropriation of his goods or money." Defendants' Case (37) It was argued that the plaintiffs are guilty of delay and acquiescence . I cannot accept the argument. There is nothing to show that the plaintiffs encouraged the defendants to go ahead with "B.K.-81" bells. They sued as soon as they learnt of the defendants' activities. The defendants started business in '1981. The plaintiffs brought the suit in February 1984. The defendants have to show that knowingly the plaintiffs kept quiet and thereby encouraged them. go ahead with their business. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 81 while the plaintiffs started their business in 1971. We were shown advertisement in trade journal of 1974 and 1979. It is true that evidence remains to be led by both parties. Of actual damage to the plaintiffs there may or may not be much evidence. The improbability of their proving much is not the same thing as the legal certainty that they can prove nothing. The balance, on the whole, in my opinion, tilts in favor of the plaintiffs. Mainly for the reason that the defendants are a new comer as compared to an established trader. On balance I am inclined to grant injection. (42) Counsel contended that there should be no injection till the plaintiffs establish at the trial upon evidence that the word "B.K." is calculated to deceive the ultimate customer I do not agree. It is well to remember what Ford Parker said in Spalding v. Gamage (supra) at 286, 287. There may, of course be cases of so doubtful a nature that a judge cannot properly come to a conclusion without evidence being led on the point; but in a passing off action the matter complained of is calculated to deceive, in other words, whether it amounts to misrepresentation is a matter for the judge who, looking ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ully" examines the products one can distinguish the defendants' bells from the plaintiffs' bells as the name of U.B.H.T. Enterprises is engraved on the defendants' bell. I do not agree. It is no answer to a complaint of misrepresentation to say that an observant person who made a careful examination would not be misled. The test is the impression likely to be produced on the casual and unwary customer, (per Lord Selborne in Senger Manufacturing Co. v. Loog (46) It is not necessary to prove that any members of the public were deceived. An action will lie where it is to be expected that in due course the act of the defendant would be calculated to cause confusion in the minds of the purchasing public (Draper v. Trist Restatement of the Law: A Summary (47) Lord Parker in A.G. Spalding (supra) she wed that in a passing off action the right in question is a right of poverty. A plaintiff complains of the invasion of this right to property. The property is in business or goodwill likely to be injured by misrepresentation. If the mark is distinctive of the plaintiff's goods in the eyes of the public or a class of the public any misrepresentation is likely to deceive ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... system of law ought to provide a remedy to other traders whose business or goodwill is injured by it".(Warnink p. 931). Lord fraser took a broad policy approach: "BUSINESS normality seems to to require that they should be entitled to protect their goodwill. The name of the tort committed by the party making the misrepresentation is not important." (p.944). (52) The modernisation of the tort of passing off lies in this that what was previously a misrepresentation of goods has now become a misappropriation of another man's property in the business or goodwill, or misappropriation of another's personality. You cannot make use of the plaintiff's expensive labour and effort. You cannot deliberately reap where you have not sown. You cannot filch a rival's trade. Passing off is thus a remedy for injury to goodwill. (53) The question at issue is whether in selling wares the defendants so to refuse and deceive the market that they pass their products as the product of the plaintiffs. The association of the defendants' goods sold under the name of "B.K.-81" bells with the plaintiffs' manufactory B.K. Engineering Co. and their house mark &qu ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the defendants he will be restrained. Pears' soap is the stock example of this. A man name William Joban Pears cannot set up a soap business and call his soap "Pears Soap" He is not entitled to abbreviate his own name so as to lead to deception. [Parker Knoll (supra) at p. 276 per Lord Denning]. Another example I gave in the course of arguments was of Haman soap. On the cake it is stamped "A Tata Product". Is it open to a rival trader to call his soap. "Tata Soap" simply because Tatas do not make "Tata Soap" as such by name ? The fundamental question is whether there is a likelihood of deception of the public by the use of a particular name. If there is likelihood the complainant can bring an action against the deceiver, the maker of the representation. As Lord Parker said that the case of action is complete with the representation. It is no longer true that the cause of action is complete only upon sale. It was true to say this in 1896 when Lord Halsbury decided the leading case of Reddaway v. Banham. It is true after 1915 when the leading cases of Parker-Knoll and Warnink were decided. The roots of passing off tort lay in deceit, yet th ..... X X X X Extracts X X X X X X X X Extracts X X X X
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