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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 ..... 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 appears. (5) Now the plaintiffs' case is that the defendants 'mark ''B.K.-81 is deceptively similar to th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 the reputation and thus the goodwill of the plaintiff's business. (12) The modern tort of passing-off has five elements: (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate con ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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' name. B.K.-81 is strongly suggestive of association with the plaintiffs, or some license or endorsement from them. This is called misappropriation of business reputation . This is a conduct which will come into the new, generalised, idea of unfair competition . (19) In cases of unfair competition Lord Scar man has emphasise ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 conveys A false impression, has something of a faculty ring about it.-, it is not sterling coin; it has no right to the genuine, stamp and impress of truth. (Reddaway v. Banham (supra) per Lord Macnaghten. (25) In principle and in substance I can see no difference between the present case and the cases of unauthorised use of name I have just referred to. Only the badge is different. The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... #39; 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 really pertinent question is whether the name B.K. adopted by the defendants as the trade mark of their product is likely to mislead the purchasing public into thinking that it is a produce of B.K. Engineering Co. It seems to me that the public or the section of the cycle using public is likely to be deceived and confused. That the plaintiff's are not manufacturing bells under the trade mark B.K. is neither here nor there. The central question is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ppropriation 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 the mark is recognised as indicating the origin of the goods or services and the plaintiff is in fact that source. (Powell v. Birmingham Vinegar Brewery Co. Ltd. . A message is conveyed by a memorable word or name to the purchasing public that the goods are of the plaintiff. So the potential purchaser is misled and deceived if there is misappropriation of name, symbol or slogan by a competitor. (33) An unauthorised use of name can lead to injury in various waya. It is not necessary that the defendant directly takes business from the plaintiff, for it seems ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ppropriation 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. There is no such suggestion (38) Counsel for the defendants submitted that the plaintiffs carry on business in Delhi and the defendants at Ludhiana and there is no change of confusion. This argument does not appeal to me. Goodwill does not necessarily stop at a frontier (C Modes vs C A Waterford Ltd. (39) We were referred to telephone directory to show that B.K. is a business name used by hundreds of people. I am not impressed by this argument. It must be remembered that here we are concerned with a case where both firms are engaged in a common field of activity . The question arises whether the defendants ar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... laintiffs 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 at the documents and evidence before him, comes to his own conclusion, and to use the words of Lord Macnaghten in Payton Co. Ltd. v. Snelling Lampard Co., must not surrender his own independent judgment to any witness whatever . (43) The question at this stage is only of a temporary injunction. For that purpose the misrepresentation complained of is certainly of such a nature as to give rise to a strong probability of confusion in the minds of the purchasing public. I refrain from amplifying this point so as not to prejudice any question which may arise as to damages or permanent injunction. It is sufficient to say that the misrepresentation bein ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 the ultimate customer, Property is not in the mark, name or get up improperly used by the defendant. But the property is in business or goodwill likely to be injured by misrepresentation. The foundation of the modern tort of passing off is the infringement of right to, property. A plaintiff can say that the defendant is infringing his name which is distinctive of his goods. A misuse of that name is hardly consistent with fair or honest trading, as Lord Parker said. The same emphasis was laid by Lord Diplosk when he spoke of commercial honesty [Wamick v. Townend (supra) at p. 933] and Lord Fraser of business morality'' (at p. 944). - (48) The general rule is that any misrepresenta ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n. 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 B.K. is an injurious association . The modern character of the, tort of passing off was clearly brought out in Cadbury (supra). At p. 218 Lord Searman said : THE tort is no longer anchored, as in its early nineteenth century formulation, to the name or trade-mark of a product or business. It is wide enough to encompass other descriptive material, such as slogans or visual images which radio, television or newspaper advertising campaigns can lead the market to associate with the plaintiff's product, provided always such descriptive material has become part of the goodwill of the product. And the test is whether the product has derived from the advertising a distinctive character which the market recognizes (54) Applying this recent reformulation ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tation. 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 the fraud was practiced not upon the plaintiff but upon the customers of the defendant who purchased the goods believing them to be of the plaintiff's manufacture. (56) If there is a real prospect of injury to the plaintiff's goodwill he is entitled to injunction. Applying this principle it seems to me that B.K. is the most valuable single asset of the plaintiffs. Prima facie they possess a substantial reputation in this. The adoption of B.K.-81 by the defendants would lead persons to think that B.K.-81 is the product of a business associate or an affiliate of B.K. Engineering Co. There is a real risk that a substantial number of members among the public would in fact believe that there is a business connection between the plaintiffs and the defendants. The defendants cannot be allowed to cash in on the popularity of the plaintiffs' product in which ..... X X X X Extracts X X X X X X X X Extracts X X X X
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