Amar Suitings Ltd. vs Amar Syntex Pvt. Ltd.

V.K. Jhanji, J.—This appeal is directed against the order of the Additional District Judge whereby application filed by the plaintiff (Appellant herein) under Order 39, Rules 1 and 2 read with Section 151 of the C.P.C. for grant of interim injunction restraining the defendant to use mark "AMTEX SUITINGS" or to sell their goods under the name and style of any other name similar to the plaintiff''s trade mark "AMARTEX SUITINGS" with logo of galloping horse, has been dismissed.

It is the case of the plaintiff that it is manufacturing quality suiting and is proprietor of trade mark "AMARTEX SUITINGS" with logo of galloping horse. The same is registered in cloth at No. 520868 under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act. It is alleged that the plaintiff had been using the trade mark "AMARTEX SUITINGS" with logo of galloping horse since 1989-90. It is claimed that the defendant seeing the sales of the plaintiff-company, started business in the trade name of AMTEX TEXTILE SUITINGS and started marketing cloth/suitings in the trade name of AMARTEX SUITINGS by copying the design and label of AMARTEX SUITINGS. Plaintiff alleged that on the packing used by the defendant, AMARTEX SUITINGS with logo of galloping horse is printed and the colour and shade of the same is similar to AMARTEX SUITINGS i.e., the registered trade mark of plaintiff.

Upon notice, defendant in its written statement, denied the allegations made by the plaintiff in its suit. Defendant has denied that the plaintiff is the exclusive owner of label and design or the goods of the plaintiff have come to be associated with the trade mark AMARTEX SUITINGS with logo of galloping horse. According to the defendant, from its inception, it started the business in the name and style of AMARTEX SUITINGS. It is alleged that the trade mark AMARTEX SUITINGS is phonetically different and colour, shade and design are also different. It is also alleged that the defendant has no intention of copying the trade mark of the plaintiff or to pass off its goods as that of the plaintiff company. Along with the suit, plaintiff filed an application under Order 39, Rules 1 and 2 of the C.P.C. for grant of temporary injunction.

Learned Additional District Judge vide impugned order dismissed the application as he was of the opinion that the trade mark used by the defendant is quite different from the trade mark of the plaintiff.

I have heard the learned counsel for the parties at length and records have been perused.

As per Section 2 of the Act, "mark" includes a device, brand, heading, label, ticket, name, signature word, letter or numeral or any combination thereof and "registered trade mark" means a trade mark which is actually on the register kept at the Head Office of the Trade Mark Registrary. According to Clause (d) of Section 2 of the Act, "deceptively similar" means a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

Section 106 of the Act provides the various forms of relief which the plaintiff can ask for infringement or passing off and is entitled to obtain. It reads as under :

"106. Reliefs in suits for infringement or for passing off :

(1) The relief which a Court may grant in any suit for infringement or for passing off referred to in Section 105 includes an injunction (Subject to such terms, if any, as the Court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.

(2) Notwithstanding anything contained in sub-section (1), the Court shall not grant relief by way of damages (other than nominal damages) or an account of profits in any case -

(a) Where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark; or

(b) Where in a suit for infringement the defendant satisfies the Court :

(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and

(ii) that when he became aware of the existence and, nature of the plaintiff''s right in the trade mark, he forthwith ceased to use the trade mark in relation to goods in respect of which it was registered; or

(c) Where in a suit for passing off the defendant satisfies the Court :

(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and

(ii) that when he become aware of the existence and nature of the plaintiff''s trade mark, he forthwith ceased to use the trade mark complained of.

The fundamental principle in an action of infringement of trade mark or for passing off is mat a person shall not trade under a name so closely resembling that of the plaintiff or pass off its goods as to be mistaken to be that of the plaintiff. The question to be determined in cases of this description is whether there is such similarity between the two names that in the ordinary course of human affairs, one is likely to be confused with the other. It is not necessary to prove that the defendant in taking the name complained of by the plaintiff and any fraudulent intent. It is enough if the plaintiff proves that the act of the defendant in assuming the name complained of is an injury to the plaintiff''s right.

In K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co., Madras and Another, , the appellant therein was the sole proprietor of a concern known as Radha & Co. The respondents Ambal & Co. were a partnership concern. The respondents as also the appellant were manufactures and dealers in snuff, carrying on business at Madras and having business activities inside and outside the State of Madras. In 1958, the appellant sought registration of a trade mark consisting of a label with a picture of the goddess Sri Andal and the legend ''Sri Andal'' in the central panel and the words Sri Andal Madras Snuff in various language in the upper and lower panels. The appellant''s application was objected to by the respondents on the ground that it was deceptively similar to their registered trade marks. One of these consisted of a label containing a device of goddess Sri Ambal in the centre with the legend ''Sri Ambal Parimala Snuff'' at the top of the label and the name ''Sri Ambal & Co., Madras'' at the bottom. The other trade mark consisted of the expression ''Sri Ambal''. The Registrar of Trade Marks held that the sound of ''Ambal'' did not so nearly resemble the sound of ''Andal'' in spite of certain letters being common to both the marks as to be likely to cause confusion or deception among a substantial number of persons. A single Judge of the High Court and the Division Bench, however, took the view that the two names are deceptively similar and are likely to cause confusion. Their Lordships of the Supreme Court upheld the judgment of the High Court and held that ocular comparison is not always the decisive test. Resemblance between the two marks must be considered with reference to the ear as well as to the eye.

In F. Hoffmann-la Roche and Co. Ltd. Vs. Geoffrey Manner and Co. Pvt. Ltd., , the Supreme Court has laid down the tests for determining whether one mark is deceptively similar to another. It has been held that in order to find out that the trade mark may be found deceptively similar to another it is not necessary that it should be intended to deceive or intended to cause confusion. It is its probable effect on the ordinary kind of customers that one has to consider. For this purpose, it is necessary to apply both the visual and phonetic tests. It is also important that the marks should be compared as a whole. It is not right to take a portion of the work and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the persons accustomed to the existing trade mark.

In another case on the issue of deceptive similarity, Supreme Court in Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, , held that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. The Supreme Court further observed that two marks when placed side by side, may exhibit various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. For example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football.

In Tubes Investments of India Ltd. v. Trade Industries, (1997) 6 SCC 35, , appellant therein were well known manufactures of bicycle and bicycle parts holding registered trade mark for goods in Class 12 bearing initials "T.I." with two concentric circles. The respondent, a small manufacturer of bicycle saddle covers started using mark T.I. in a since circle for his goods. The mark used by the respondent was prima facie found to be similar to that used by the appellant. Supreme Court observed that the mere difference that the respondent used only one circle instead of two, does not make much impact on the obvious similarity between the two marks. The visual similarity between two marks coupled with the fact that the respondent''s mark is used on ''bicycle saddle covers'' prima facie posed real danger that the respondent''s product can be passed off as a product of the appellants. The respondents were restrained from using the mark by grant of interim injunction.

In the present case, the two marks AMARTEX SUITINGS and AMTEX SUITINGS are phonetically similar. Both the marks are in respect of cloth/suiting and, therefore, the nature of goods are the same. All classes of people purchase the same and the mode of purchase is similar, namely, ordinarily by cash and across the counter. It is true that there is difference in spellings as regards the words AMARTEX and AMTEX but the overall result and totality of impression remains the same. The plaintiff has been using the mark AMARTEX SUITINGS with logo of galloping horse from the year 1990. It has sales turnover to the tune of Rs. 218.80 lakhs, Rs. 312.68 lakhs and Rs. 538.65 lakhs during the years 1994-95,1995-96 and 19996-97 respectively and has incurred expenses of Rs. 2,24,938 during the year 1996-97 towards advertisement. It is also worth noticing that the two of the directors of the defendant-company viz. Amar Lal Gawari and Nirdosh Gawri were also the promoter-directors of the plaintiff-company and continued to remain as directors even after the defendant-company was incorporated. It is on account of the complaints made by the plaintiff''s dealers and agents complaining about sale strategy adopted by the defendant company in using deceptively similar mark i.e., AMTEX SUITINGS with logo of horse that they were removed as directors in terms of Section 283(i)(g)(h) of the Companies Act, 1956 (for short the 1956 Act hereinafter) vide resolution dated 12-2-1997.

Learned counsel appearing on behalf of the defendant questioned the validity of assignment deed dated 2-5-1997 vide which the Amartex Weaving Industrial Co-operative Societies Limited acknowledge the assignment of trade mark to the plaintiff along with goodwill since 1990. Learned counsel contended that u/s 44 of the Act, before a person becomes entitled by assignment to a registered trade mark, he has to apply to the Registrar to register his title but in this case the plaintiff till date has not applied for assignment of trade mark. At the motion for temporary injunction, it is not necessary for me to go into this submission of the learned counsel because in this case the material placed on record shows that the plaintiff prima facie has been able to satisfy that it adopted mark of AMARTEX SUITINGS with logo of galloping horse in 1990 and since then is continuing to use the same. The mark used by the defendant, namely, AMTEX SUITINGS being similar to the mark of the plaintiff in respect of design, lay out, get-up and colour scheme, the possibility of deception cannot be rued out. Learned counsel also contended that the logo used by the defendant is not a galloping horse but a running horse and, therefore, the same cannot be said to be similar to the logo of galloping horse used by the plaintiff. It is true that there is slight different in the logo of horse used by the plaintiff but overall visual impression in the same.

Accordingly, I am of the view that the order of the Additional District Judge is not sustainable in the eye of law as on the basis of material brought on record. I find that in case the defendant is allowed to pass off its goods as that of the plaintiff by using deceptively similar trade mark, the plaintiff will suffer irreparable loss. The balance of convenience is in plaintiff''s favour.

For the reasons recorded above, this appeal is allowed and order of Additional District Judge is set aside. The defendant, its servants, agents, stockists dealers and other persons acting on its behalf are restrained from using trade mark AMTEX SUITINGS with logo of horse in respect of cloth/suitings or any other trade mark similar thereto till the decision of the suit. They are also restrained from using the impugned packing or any other identical or deceptively similar packing during the pendency of the suit.

It is, however, made clear that any observation made here-inabove shall not be construed to be an expression of opinion on the merits of the suit.

Appeal allowed.