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TMI Blog1972 (4) TMI 104X X X X Extracts X X X X X X X X Extracts X X X X ..... hip concern carrying on business at that time at Lahore, began to import bicycles into India under the Trade Mark EASTERN STAR , that in course of time the said bicycles acquired a reputation in the trade and with the public, and that the trade mark EASTERN STAR became associated in the minds of the public with the goods of the said firm Messrs Janki Dass Co. It was stated in the plaint that the said Messrs Janki Dass Co. applied for and obtained, in or about 1943, registration of the design of the monogram used by them as No. 12052 as of the date 15th February, 1943, in respect of cycles and their accessories in Class 12 (vide Exhibit P.1), that the said Messrs Janki Dass Co. also applied and obtained registration of their trade mark comprised of the words EASTERN STAR as No. 11426 as of the date 5th February, 1943 (vide Exhibit P.2), and that from the said respective dates, the said trade marks were renewed for a period of 15 years in favor of the firm Messrs Janki Dass Co. (4) Upon the incorporation of the appellant-company, the said firm Messrs Janki Dass Co. assigned all their rights in the aforesaid trade marks in favor of the appellant and, as from 12th Jul ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... STERN STAR and for the purpose of passing off its goods as the goods of the appellant (plaintiff). The appellant further alleged that the trade mark ROYAL STAR so nearly resembled the appellant's trade mark EASTERN STAR as to be likely to cause confusion or deception, and was an infringement of the appellant's registered trade mark EASTERN STAR , and that it had already suffered damage and was likely to suffer damage unless respondent 1 (defendant 1) was restrained by an injunction as pecuniary compensation would not be an adequate relief. With those allegations, the appellant (plaintiff) filed the suit out of which this appeal has arisen praying as follows:- (A)That the 1st defendant, their agents and servants be restrained by a perpetual injunction from using the mark ROYAL STAR in relation to Cycles or their accessories or any other Mark which is in infringement of the plaintiff's registered trade mark EASTERN STAR . (b) That the 1st defendant, their agents and servants be restrained by a perpetual injunction from manufacturing or offering for sale cycles or their parts under the mark ROYAL STAR so as to pass off or enable others to pass off their good ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Respondent 1 further stated that it had for a number of years used the device of HIND and STAR as a trade mark on its cycles, though it has adopted the trade mark ROYAL STAR on its cycles since the year 1957 and has been advertising extensively the said trade mark for its cycles and selling the cycles under the said mark. It denied that it ever had any intention of trading on the reputation of the appellant's trade mark EASTERN STAR in any manner, and submitted that the trade mark ROYAL STAR was entirely different in name and getup from the trade mark EASTERN STAR . It also pleaded that the use of the trade mark was in no way fraudulent, that the word STAR in the monogram fixed to the front portion of the frames of its cycles is commonly used, that there were several trade marks registered with the Authority and also pending for registration using the word STAR , that the appellant's registered trade mark being EASTERN STAR , such registration could not possibly give to the appellant any exclusive statutory right to the use of the word STAR apart from the mark as a whole, as the trade mark of the appellant did not consist of the word STAR only but consis ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... pondent 1 (defendant 1) were not identical with the marks of the appellant (plaintiff); that it could not be said that the two monograms of the appellant (plaintiff) and respondent 1 (defendant 1) were so similar as to likely to deceive or cause a confusion; that the use of the words ROYAL STAR for the cycles of respondent 1 (defendant 1) did not constitute an infringement of the trade mark EASTERN STAR of the appellant (plaintiff), as the names EASTERN STAR and ROYAL STAR were substantially different even though the word STAR was common to both the names, and there was no likelihood of deception or confusion; that the case of the appellant (plaintiff) that its cycles were known in the market as STAR cycles could not be accepted as the evidence about the same was not very convincing; that so far as the allegation of the appellant (plaintiff) that the respondent 1 (defendant 1) had passed off its goods as those of the appellant (plaintiff) was concerned, there was no evidence of any actual deception; that the cycles manufactured by respondent 1 (defendant 1) had distinctive marks in the monograms, and it was not likely that respondent 1 (defendant 1) would introduce thos ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... se of a registered trade mark, the registered proprietor thereof has a statutory and exclusive right to the use of that mark in relation to his goods and has a statutory remedy conferred upon him by way of an action for infringement in the event of use of an identical mark or a mark which is deceptively similar to the registered mark by another (vide section 29 of Trade Marks Act, 1958). In such an action, the plaintiff has to show (a) that his mark has been registered and he is the registered proprietor thereof, and (b) that an identical mark or a mark which is deceptively similar to the registered mark has been used by the defendant. The expression deceptively similar has been defined in section 2(d) of the Trade and Merchandise Marks Act, 1958, as follows- Amark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as to bs likely to deceive or cause confusion. (12) Therefore, the aforesaid requirement in may be made out by the plaintiff by showing that the defendant's mark is identical with or so nearly resembles the plaintiff's mark either visually, phonetically or otherwise that it is likely to deceive or cause co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ark which is in use in Canada by any other person and which is registered pursuant to the provisions of that Act as a trade mark for the same or similar wares. (16) The word similar was defined in section 2(k) of the said Act as under:- SIMILAR,in relation to trade marks. . .describes marks. . so resembling each other or so clearly suggesting the idea conveyed by each other that the contemporaneous use of both in the same area in association with wares of the same kind would be likely to cause dealers in and or users of such wares to infer that the same person assumed responsibility for their character or quality, for the conditions under which or the class of persons by whom they were produced or for their place of origin. (17) After referring to the above definition, Lord Russell of Killowen, who delivered the judgment of the Board, pointed out that no evidence of confusion, either actual or probable, was adduced in that case, and then observed that in the circumstances the question for determination must be answered by the Court, unaided by outside evidence, after a comparision of the defendant's trade mark as used with the plaintiff's registered mark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e test laid down by Niamat Ullah J. in Thomas Bear and Sons (India) Ltd. v. Pravag Narain, Air 1935 Allahabad 7, observed that in the judging of the probability of deception, the test is not whether the ignorant, the thoughtless, or the incautious purchaser is likely to be misled, but we have to consider the average purchaser buying with ordinary caution . (19) In James Chadwick Bros. Ltd. v. The National Sewing Thread Co. Ltd; , Chagia Cj and Bhagwati; referring to the words likely to deceive or cause confusion in section 10 of the Trade Marks Act, 1940, observed at page 152 as follows :- NOWin deciding whether a particular trade mark is likely to deceive or cause confusion, it is not sufficient merely to compare it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out what is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying that trade mark, and if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or convey ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ark as used is similar to the plaintiff's mark as it would be remembered by persons possessed of an average memory with its usual imperfections , and it has then to be determined whether the defendant's mark is likely to deceive or cause confusion. For such determination, the distinguishing or essential features (and not every detail) of the two marks and the main idea, if any, underlying the two marks which a purchaser of average intelligence and imperfect memory would retain in his mind after seeing the marks, have to be noticed. It has then to be seen whether they are broadly the same or there is an overall similarity or resemblence, and whether the resemblence or similarity is such that there is a reasonable probability of deception or confusion. In doing so, the approach has to be from the point of view of purchaser of average intelligence and imperfect memory or recollection, and not an ignorant, thoughtless and incautious purchaser. In an action for passing off, the test for deceptive similarity, i.e. as to the likelihood of confusion or deception arising from similarity of the marks or the get up, packing, etc. is practically the same as in an action for infringemen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eferred to the observations on page 657 of Kerlay on Trade Marks, 7th Edition, which go to show that it was held in a case that Night Cap was not too near Red Cap or Mother Red Cap as to cause confusion; the decision in Messrs Modi Sugar Mills Ltd. (supra) that the word mark Kotogem did not constitute an infringement of the word mark Coccogem ; the observation in Schweppes Ltd. v. Gibbons, 22 R.P.C.607 that a label has to be taken as a whole and too much stress cannot be laid on slight similarity in one small part of it; and the decision of the Privy Council in Coca-Cola Company of Canada Ltd. (supra) that the use of the name of Pepsi Cola was not an infringement of the trade mark Coca Cola ; and then merely observed that he was of the view the the use of the name ROYAL STAR by respondent 1 (defendant 1) for its cycles did not infringe the appellant's (plaintiff's) trade mark EASTERN STAR . We find it difficult to agree with the said view. (24) It is true that the words EASTERN STAR and ROYAL STAR have to be taken as a whole. But, the learned District Judge, in our opinion, failed to note that the view taken by a Court on the facts in any particular ca ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 6) In applying the said test in the present case, it has to be noted that the meaning of either the word EASTERN or the word STAR has no relation at all to cycles. Similarly, the words ROYAL and STAR have, in their meaning, no relation at all to cycles. They are thus not descriptive or suggestive of the goods, namely cycles, to which they are applied. A more important thing to be noticed is that both the names, when uttered, end in the same sound. Therefore, a person of average intelligence and imperfect memory is very likely to remember only the sound of the end word STAR , and is thus likely to be deceived or confused between the two names or marks. We are, therefore, of the opinion, that the said two marks have an overall structural and phonetic similarity, and consequently their use in respect of the same kind of goods, viz. cycles, is likely to cause deception or confusion within the meaning of section 29 of the Trade and Merchandise Marks Act, 1958. (27) In this connection, it is also necessary to consider the case of the appellant (plaintiff) that its cycles under the trade mark EASTERN STAR had acquired a reputation and came to be referred to by the public as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e. He also admitted in cross-examination that he appeared without summons from the Court, and that he had come from Ambala to Delhi to appear as witness at the asking of a representative of respondent 1 (defendant 1) . Inder Chand Garg stated that no purchaser asked for a cycle as STAR cycle, but admitted that purchasers mostly looked to the stamp of EASTERN STAR Prem Sagar stated that mostly the Babu section of the public generally purchase EASTERN STAR cycles, but added that it was only the villagers who seldom demand for STAR bicycle of Sonepat. There is thus an admission by him to the extent that villagers who want to purchase EASTERN STAR cycles refer to them as STAR bicycles of Sonepat. He also admitted that the premanent feature of the ROYAL STAR and the EASTERN STAR cycles is the representation of a STAR but added that both were individually known by their respective manufacturers. Jai Shanker Tandon also stated that no purchaser asked for a cycle in the name of STAR cycle only, and that purchasers in general referred to EASTERN STAR cycles as EASTER STAR cycles. Pratap Chand, Attar Gopal Nigam and Umesh Chand Rastogi made statements to the same ef ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... witness examined on behalf of respondent 1 (defendant 1), had to admit that villagers who purchase EASTERN STAR cycles demand for them as STAR bicycles of Sonepat. In view of all these circumstances, we prefer the statements of the witnesses examined on behalf of the appellant plaintiff, and hold that its cycles under the trade mark EASTERN STAR acquired a reputation and came to be popularly referred to as STAR cycles. The cycles of respondent 1 (defendant1) were sought to be introduced under the name ROYAL STAR only from 1956. In view of our finding that the EASTERN STAR cycles came to be popularly referred to as STAR cycles, the same has to be taken as another circumstance from which it has to be held that the use of the name ROYAL STAR for the cycles of respondent 1 (defendant 1) is very likely to deceive and confuse a purchaser of average intelligence and imperfect memory. Consequently, it has to be held that the word mark of respondent 1 (defendant 1) in question constitutes an infringement of the registered trade mark No.11246 of the appellant (plaintiff). (30) Shri Anoop Singh, learned counsel for the appellant (plaintiff), referred to the case of the appe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , from using a trade-mark ARABIAN STAR which contained a representation of a star resembling the star on the trade mark of the appellant (plaintiff). Ex.P-7 is a copy of an order, dated 16-5-1959, in suit No.7 of 1959 filed by the appellant (plaintiff) in the court of the District Judge, Delhi against M/s. Road Marshall Cycle Industries, Delhi, for an injunction and accounts. The suit was decreed by the aforesaid order on a consent statement made by the defendant in the suit. But, it is not clear from Ex.P-7 what trade mark was sought to be used by the defendant in the. suit. Thus, Exs.P-3 to P-7 are of no assistance as they only show that in some cases other cycle manufacturers withdraw or abandoned their applications for registration of certain trade marks, and in some cases orders for injunction were passed by compromise or consent, and not after contest. (31) Vishnu Narain Tandon (P.W.5) stated in his evidence that the appellant (plaintiff) filed a suit against Guru Nanak Engineering Works of Ludhiana in the High Court of Bombay for alleged infringement of its trade mark EASTERN STAR by the use of the words LUCKY STAR , that the said suit was dismissed by a Single Judge ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (plaintiff), P. N. Khanna J. came to the same conclusion as those of Srinivasan J. in the GOLDEN STAR case, and held that the use of the trade mark SHOOTING STAR in respect of cycles was likely to cause confusion and deceive customers by its resemblance to the mark EASTERN STAR of the appellant (plaintiff) and would thus amount to an infringement of the said mark of the appellant (plaintiff). (33) We may, however, point out that the above decisions have to be regarded only as instances of successful opposition by the appellant (plaintiff) to the registration of certain trade marks, and can not be relied upon by the appellant (plaintiff) as conclusive in the present case. As pointed out by the Supreme Court in the case of Amritdhara Pharmacy (Supra), every case must depend upon its own particular facts and the evidence therein, and the vaule of other judgments lies not so much in the actual decision in those cases as in the tests applied for determination as to what is likely to deceive or cause confusion. (34) Coming now to the other registered trade-mark of the appellant (plaintiff) consisting of a device (monogram) registered as No. 12052, it has to be seen in the fi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ram of the plaintiffi is circular with a crown at the top and a projection at the bottom, while the monogram of the defendant is oblong. There are lines shooting from the star towards the circumference of the circle in the monogram of the plaintiff, while there are no such lines in the monogram of the defendant. The name of the cycle EASTERN STAR is written between the circumference of the two circles in a circular manner while the words ROYAL STAR in the defendants monogram are both written almost horizontally. It is no doubt true that it is not the proper test in a case like the present to compare the two marks by placing them side by side. There are, however, plain and visible differences in the monograms of the two cycles and I have referred to them only with a view to show whether there is any likelihood of deception or confusion. A look at the two monograms, in my opinion, rules out such a likelihood. (38) Shri Anoop Singh argued that the learned District Judge set out the correct principle of law, but committed an error in applying the same by taking note of the various differences in detail in the two monograms in arriving at the conclusion that there was no likeli ..... X X X X Extracts X X X X X X X X Extracts X X X X
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