A. Shanmugha Mudaliar vs A. Abdul Kareem

Ramaprasada Rao, J.—The Defendant is the appellant. The plaintiff, a trader and manufacturer of beedies, whose mark is admittedly known

as ""No. 4 Jadi Beedi"" filed this action against the defendant contending that the defendant several years after the plaintiff started manufacturing and

marketing of such beedies has designed a mark which is deceptively similar to and resembling in every material particular to his mark of ""No. 4

Jadi Beedi"". The defendant has adopted a mark known as ""No. 4 AG Beedies,"" but the plaintiff''s case is that in order to cut at his trade the

defendant has designed the mark and was using it on the labels attached to the beedies as also on the wrappers and even a casual comparison of

the beedi packets and bundles would disclose a close resemblance as between the two marks and designs, that the Plaintiff is entitled to an

automatic decree of permanent injunction restraining the defendant from passing off or attempting to pass off the beedies now sold by him under

No. 4 AG"" mark with the wrappers, designs and labels containing such mark. The plaintiff also would allege that the defendant is under selling his

beedies and is thus cutting into the volume of the plaintiff''s business as well.

The defendant, in his written statement, denied any such resemblance and much less deceptive similarity between the two marks. He traced the

history of his business and as to how he designed for himself the literature over the wrappers and invented on his own the mark ""No. 4 AG"" and his

contention is that ""AG'' consists of a mixture of the first letter in ""Anna Beedies"" and the first letter in ""Gem Beedies"" which he started and that

therefore he had a right to use this invented mark of his on the products manufactured by him and the plaintiff is not entitled to a permanent

injunction as prayed for. It may be noted that the plaintiff came to Court for the grant of permanent injunction on the foot that the Defendant was

passing off his beedies as if they were of the manufacture of the plaintiff by adopting a mark which is so near and so much deceptively similar to his

mark of ""No. 4"" beedies. It appears that the defendant raised an objection in the course of the trial that as the mark was not a registered mark

under the provisions of the Trade and Merchandies Marks Act, 1958, the plaintiff was not entitled to any relief. The plaintiff, during the pendency

of the suit, got his mark ""No. 4 beedies"" registered, under the provisions of the above Act and we are informed that the plaint was amended after

the plaintiff secured such a registration of his mark. But it is curious that an additional issue was not raised in the pleadings as to the nature of

entitlement of the plaintiff after he secured such a statutory right under the Trade and Merchandise Marks Act. 1958. On the pleadings as they

stood but in the above circumstances the following issues were raised.

Whether the plaintiff had acquired a proprietary title to ""No. 4 Mark Beedies"" ?

Whether the defendant''s AG mark beedies are identical with or deceptively similar to the plaintiff''s A-4 mark bee-dies ?

Whether the defendant is passing his beedies as those of plaintiffs No. 4 mark beedies ?

Whether the plaintiff is estopped from filing this Suit ?

Whether there was inordinate delay in filing the suit and is it liable to be dismissed on that ground ?

Whether the plaintiff is not entitled to the exclusive right to the ''No. 4 mark Beedies'' on account of the non-registration under the Trade Marks

Act ?

To what relief is the plaintiff entitled ?

The learned Judge came to the conclusion that on a fair comparison of the two marks they are so deceptively similar that they are likely to cause

utter confusion in the minds of the unwary purchasers who in the instant case, belong to a peculiar class, not being the normal purchasing members

of the public. He also found that by reason of the trade mark having been registered in the course of the trial the plaintiff was entitled to use the

same as registered proprietor thereof. He found that there was no delay in the plaintiff coming to Court for the issue of a permanent injunction as,

according to the evidence let in in the case, the learned Judge was of the view that only a few months prior to the institution of the suit the

defendant began using his trade mark. Having found all the issues in favour of the plaintiff, he decreed the suit. It is as against this decree the

defendant has come up in appeal.

We have taken for comparison Exs. A-3 and A-7. Ex. A-3 is a wrapper used by the plaintiff over bundles of 500 beedies in the course of his

trade in which he adopted his mark ''No 4 beedies''. Ex A-7 is a wrapper used by the Defendant over bundles of 500 beedies which contains the

mark ''No. 4 AG''. Though the test of comparing such wrappers by keeping them side by side is discouraged, in the instant case we made a

comparison of the exhibits as above to find out whether there, could possibly be any dissimilarity at all between the two. Though we were at pains

to make such a microscopic examination of the two labels, we could not discover any dissimilarity. For example, we find that in Ex. A-3 the

literature adopted by the plaintiff has a special signification and the manner in which he has prepared the wrapper including the lettering therein and

the pattern and placing of such literature has a peculiarity of its own. If the defendant was the creator or designer of the mark under Ex. A-7, he

could have thought of a different design and a different methodology to imprint the letter scheme in his wrapper. On the other hand, we find that he

has adopted the same method and the same design in his wrapper: that it is impossible for any reasonable man to conclude that Exs. A-3 and A-7

are in any material particular dissimilar. The learned trial Judge has very carefully compared the wrappers and has given a graphic description of

both the wrappers only to find that the defendant''s wrapper has exactly all the prominent features displayed in the same manner and practically

having the same colour as disclosed and displayed by the plaintiff in his wrapper. According to the learned Judge, with which we also agree, there

are slight differences which would be imperceptible to even an intelligent purchaser. The class of purchasers of beedies is always understood as

unwary purchasers. A fortiori it follows that it would be impossible for them to decipher an imperceptible difference which would not have been

even found by a reasonable intelligent buyer. We have made a comparison of the wrappers and the learned Judge has dealt with the other exhibits

filed by both sides. He has compared Exs. A-4 and A-8 and Exs. A-5 and A-9 Exs. A-4 and A-5 belonging to the plaintiff and Exs. A-8 and A-9

adopted by the defendant, and found such deceptive similarities as are easily perceivable and discernible when a comparison is undertaken of the

wrappers Exs. A-3 and A-7. We have no hesitation at all to hold in the instant case that the plaintiff is entitled to a permanent injunction on the

ground that the defendant has designed a label with the intention of imitating that of the plaintiff which was also in vogue in the market, for the sole

purpose of committing wrongful loss to the plaintiff.

One other contention raised by the defendant was that he was using his mark for a considerable length of time and the plaintiff acquiesced for

such user. His case was that he started originally beedies with the mark of ""Anna Beedies"" and later on he traded in ""Gem Beedies"" and he made a

harmonious combination of these two and adopted ultimately ""AG Beedies"" and the period during which he was trading in the above marks and

also in the mark complained against when cumulatively taken into consideration would lead to the inference that the plaintiff acquiesced in the trade

of the defendant with the alleged infringing marks. We are unable to accept this contention. We are here concerned with the mark ""No. 4 AG"".

The learned Judge rightly found on the evidence that the defendant began to use this mark only a few months before the plaintiff came to Court for

the grant of a permanent injunction on the ground that the offending articles were infringing his mark and cutting into his trade. No record has been

shown to us by Mr. Balasubramaniam appearing for the appellant, which would in any way disturb the finding arrived at by the learned trial Judge.

We agree with the learned trial Judge that there was no delay in the matter of the institution of this suit for passing off and the plaintiff came to

Court with as much expedition as possible to vindicate his rights.

The learned Judge was also right, in the light of the supervening statutory right obtained by the plaintiff under the Trade and Merchandise Marks

Act, 1958, in finding that the plaintiff has become the registered proprietor of the mark ""No. 4 Jadi Beedies"". Though, as we said, it was curious

that an independent issue has not been framed notwithstanding the fact that the plaint was amended, yet it is necessary to observe that having

regard to the facts of this case in which there was an infringement at the inception in the sense that when the suit was filed the defendant was guilty

of passing off and after the plaintiff obtained the right as registered proprietor of the trade mark in question under the Trade and Merchandise

Marks Act. 1958 there was also an infringement of the said registered trade mark. It is unnecessary, however, to go into this deeper since no

specific issue has been framed.

We accept the findings of the learned trial Judge on all the issues. This appeal is dismissed with costs.