Amrutanjan Limited vs Amarchand Sobachand

Sengottuvelan, J.—The Plaintiffs Messrs. Amrutanjan Limited rare a limited company, incorporated under the Companies Act, 1956, and

having their registered Office at No. 14/15, Luz Church Road, Mylapore, Madras-4. The defendant are a partnership firm. The plaintiffs state that

for about 80 years they have been regularly and in the course of trade using in connection with their pain balm a distinctive trade mark; called

''AMRUTANJAN''. The trade mark of the plaintiffs has a distinctive get-up and arrangement.

The Plaintiffs have duly registered their aforesaid ''AMRUTANJAN'' trade mark under the Trade Marks Act, 1940 (corresponding to the

Trade and Merchandise Marks Act 1958) and the Trade and Merchandise Marks Act 1958. The particulars relating to such registration are set

out in the registration certificate which is produced. The plaintiffs'' aforesaid registration of their ''AMRUTANJAN'' trade mark has been duly

renewed from time to time and is now in current force. A specimen packing of the plaintiff''s pain balm having the registered trade mark No.

198004 is also filed along with the plaint.

The aforesaid marks have been popularised by the plaintiffs by costly, extensive and wide advertisements, through newspapers, cinema, All

India Radio, etc. The plaintiffs have been investing considerable sums of money in advertisements of their goods from 1967-68 onwards. As a

result of plaintiffs'' vast investment in advertisements and the superior quality of the plaintiff''s product, the plaintiffs have been the unquestioned

leader in the market as far as the pain balm is concerned. The product is being sold by the plaintiffs throughout India and other foreign countries

and it has established a name and reputation in the market. The plaintiffs have been periodically publishing the Trade Mark caution advertisements

in newspapers in. different languages informing the merchants and public of the statutory right vested in the plaintiffs and warning against using any

carton which is similar to or which is a colourable imitation of the Registered Trade Mark of the plaintiffs.

The plaintiffs came to know the Defendant''s illegal business through his, representative at Warangal, Andhra Pradesh in respect of original offer

for sale of ""Amar''s Pain Balm"" dated 24-12-1976 to one of his dealers Messrs. Vajirapalli Govindagarinarayanan, General Merchant, Main Road,

Warangal, which has been brought to notice by the plaintiffs'' representative who intimated the same to the plaintiffs'' office on 11-3-77. The

aforesaid offer for sale of ""Amar''s Pain Balm"" along with other cold rub has been signed on the face of the offer by one of the partners of

Amarchand Sobachand. The defendants have been recently carrying on their spurious business and passing off their products as the product of the

plaintiffs. A specimen photocopy packing of the defendants'' infringing carton is also filed along with the plaint. Even a superficial examination will

show that both the cartons are similar or the defendants carton is a colourable imitation of the plaintiffs'' registered Trade Mark carton produced

along with the plaint. Apart from the; visual imitation the ear-catching name Amar''s pain balm is having phonetic similarity with the plaintiffs'' trade

mark name ""AMRUTANJAN"" pain balm. Further the size, get-up and colour scheme to the infringing carton are identically similar to those of the

plaintiffs. The majority of the public using pain balm buy the product by its outward appearance. Because of the deceptive and phonetic similarity

of the impugned product the buying public are deceived and are put into a state of confusion. The defendants through their carton are misleading

the public into believing that the defendants'' goods are the same as the plaintiffs'' goods. The conduct of the defendants in projecting into the

market their pain balm with the above said infringing carton amounts to a piracy of the plain tiffs'' rights under the Trade and Merchandise Marks

Act, 1958.

The distinctive features of the plaintiffs'' registered Trade Mark No. 198004 in class V--the ""AMRUTANJAN"" carton of the plaintiff--bear a

distinctive get-up of yellow and green colour. The four sides of the carton have square borders in green arid yellow. On one side of the carton, the

trade mark ""AMRUTANJAN"" is imprinted in bold white letters on a green background, below that the word pain balm are imprinted in green

colour on a yellow background within a semi-circular device, below that in a rectangular area the name of the company appears in green letters.

On the remaining three sides of the AMRUTANJAN carton the following matters appear : (1) The composition of the products; (2) The word

AMRUTANJAN"" rendered in vernacular scripts; and (3), the indications and other discriptive matters. The opening and closing flaps of the

''Amrutanjan'' carton are of yellow colour on which a device of concentric circles appears : two of them in green colour and within it on a white

background which is surrounded by a distinctive curved oblonged shaped border the words ""AMRUTANJAN, BOMBAY"" appear crosswise.

On the upper and lower left and right portion, the word ""AMRUTANJAN"" is depicted in vernacular scripts. The plaintiffs paste a label on the

bottle containing their balm in distinctive get up and layout bearing their Trade Mark ""AMRUTANJAN"" in a semicircular manner and the words

pain balm below it in a distinctive shaped device. Amrutanjan small carton has been registered under No. 198004 in Class 5 together with the said

label which is pasted on the plaintiffs'' bottle. The defendants have also adopted the same arrangement and have also copied almost all the essential

features of the registered trade mark with very slight modification. The colour scheme adopted by the defendants is very similar to that of the

plaintiffs. The rest of the arrangements and the distribution of the words in the infringing carton is over all similar to that of the plaintiffs. For all

practical purposes the infringing carton is apt to be mistaken by the majority of the consuming public for that of the plaintiffs. Any small differences

between the two are bound to be missed by the unwary purchasers having an imperfect recollection of the trade mark of the plaintiffs and thus

those who intend and want to buy the goods of the plaintiffs will end up in buying the goods of the defendants.

The plaintiffs further stated that the introduction of the defendants'' goods with the offending trade mark carton has created confusion among the

consumers as well as merchants arid the defendants'' goods are easily taken to be the plaintiffs'' goods in this connection. The pain balm

manufactured by the defendants is inferior in quality and lesser priced than the plaintiffs'' goods. The defendants have adopted the infringing carton

solely with the object of passing off their goods as the manufacture of the plaintiffs'' goods. The defendants have no right to do so and their action

in law is an infringement of the plaintiffs'' right under the Trade and Merchandise Marks Act, 1958. The introduction of the defendants'' goods with

the infringing mark has adversely affected the plaintiffs'' business and is likely to spoil the fabulous goodwill which has been attached to the

plaintiffs'' ""AMRUTANJAN"" trade mark unless prevented by means of a permanent injunction.

The plaintiffs pray for a permanent injunction restraining the defendants by themselves, their servants, agents or anyone claiming through them

from manufacturing and selling and offering for sale the offending Amar''s pain balm or pain balm with any other trade mark which is in any way

deceptively similar to or a colourable imitation of the plaintiffs'' registered trade mark ""AMRUTANJAN"". The plaintiffs also pray for the relief of

accounting, directing the defendants to render a true and faithful account of the profits earned by them through the manufacture and sale of the

offending Amar''s pain balm and directing such profits to be paid to the plaintiffs by way of damages for the infringement and passing off committed

by the defendants. The plaintiffs also pray for a decree directing the defendants to surrender to the plaintiffs all the cartons, labels and any other

printed matters containing or consisting of the offending Amar''s Trade Mark together with the blocks used for the purpose of printing the same, for

destruction. The plaintiffs also pray for the costs of the suit.

The defendants have filed a written statement denying the allegations made by the plaintiffs in the plaint. The defendants, Amarchand Sobachand

are a partnership firm. The present partners of the said firm are (1) Seshmal Pandia; (2) Ramniklal; and (3) Lalith Raj, all brothers, being sons of

Sobachand. The said Amarchand Sobachand started the business of Chemists and Druggists in the year 1900 and was carrying on the same under

his own name. He retired from business in the year 1942 and since then his sons have been carrying on the said business in partnership under the

name of ""Amarchand Sobachand"" manufacturing various kinds of drugs under licences duly granted by the Controller of drugs. In the year 1976,

the defendants applied to the Controller of Drugs for a licence to manufacture a medicinal preparation called ''''Amar''s Pain balm"" and after due

investigation, the said licence was given to them. In pursuance of the said licence, the defendants started manufacturing ""Amar''s Pain Balm"" and the

first batch of the product was ready only in February 1977. However, even the said batch of ""Amar''s Pain Balm"" has not yet been released for

sale in the market. In the meanwhile, the notice of the interim injunction granted in this suit was served on the defendants. Hence the defendants

have not taken any steps to release the goods for sale. It would appear that the plaintiffs are basing their suit on a letter dated 24-12-1976 written

by the defendants to a dealer at Warangal namely Messrs. Vajirapalli Govindagari-narayanan. This letter only refers to a proposal to introduce in

the market some new products of which ""Amar''s Pain Balm"" is one. The inference drawn by the plaintiffs on the strength of the said letter that the

defendants have been carrying on illegal and spurious business and passing off their products as the products of the plaintiffs is absolutely wrong

and unwarranted.

The allegation that the carton used by the defendants is a colour- able imitation of the plaintiffs'' registered trade mark and that there is ear

catching and phonetic similarity between the defendants'' name ""Amar''s Pain Balm"" and the plaintiffs'' trade mark ""Amrutanjan"" are all false,

unwarranted and unjustified. The defendants also denied that the size, getup and colour scheme of the alleged infringing carton are identically similar

to those of the plaintiffs and that the buying public are deceived and are put into a state of confusion. The defendants submit that the carton under

which they propose to eventually market their ''Amar''s Pain Balm'' is sufficiently distinguishable from the plaintiffs'' Trade Mark and the public

cannot be deceived or misled thereby. As for the name of ""Amar''s, the defendants submit that neither visually nor phonetically is there any

similarity between it and ""Amrutanjan"" and therefore there is no likelihood of the buying public being deceived or misled. In fact, the ""Amar

consists of the first four letters in the first word of defendants'' firm name. The word ""Amar"" is being used by the defendants for their other products

as well. The defendants submit that there cannot be any exclusive right for the use of the words ""Pain Balm"" as it merely describes the quality and

nature of the product and are being freely used by other manufacturers.

As the defendants have not yet released their aforesaid product for sale, the allegations that the introduction of the defendants'' goods with the

offending Trade Mark, carton had created confusion among the consumers as well as merchants and the defendants goods are easily taken to be

the plaintiffs'' goods are false and have been invented for purposes of the suit. The allegation that the defendants Pain Balm is inferior in quality is

also denied. The defendants also deny the allegation that the introduction of the defendants'' goods in the market has adversely affected the

plaintiffs'' business and is likely to spoil the fabulous goodwill attached to the plaintiffs goods. The defendants also deny that the plaintiffs have

popularized their marks by costly, extensive and wide advertisements through newspapers, cinema, All India Radio, etc., and that the plaintiffs

have invested considerable amounts in advertisements. The details of the amounts spent in the advertisement by the plaintiffs from 1967-68 to

1975-76 are given in paragraph 5 of the plaint. It is the plaintiff''s case that as a result of the vast investment in advertisements and the superior

quality of the plaintiff''s product, the plaintiffs have been the unquestioned leader in the market as far as the pain balm is concerned and that the

product has been sold by the plaintiffs throughout India and other foreign countries and it has established a name and reputation in the market. The

carton in which the plaintiffs are marketing their product ""Amrutanjan"" is marked as Ex. P-1.

The defendants who are a partnership firm carrying on the business in the name of ""Amarchand Sobachand"" made an attempt to manufacture

pain balm of the same composition and market the same in the name and style of ""Amar''s Pain Balm"", The defendants offered for sale their pro

duct ""Amar''s Pain Balm"" to one Vajirapalli Govindagarinarayanan by means of a letter, the photostat copy of which is marked as Ex. P-2 The

details about Ex. P-3 had been brought to the notice of the plaintiffs by the plaintiffs'' representatives on 11-4-1977. Ex. P-2 is the carton in which

the defendants attempted to market their product in the name of ""Amar''s Pain Balm"", The carton in which the plaintiffs are marketing their product

Amrutanjan"" which is marked as Ex. P-1 is again marked as Ex. D-8 on behalf of the defendants. Exs. D-9 to D-12 are the cartons produced by

the defendants in which they proposed to market their products.

The defendants are a partnership firm who are dealing in the manufacture and, sale of drugs in Tamil Nadu. Ex. D-1 is a letter from the

Registrar of Trade Marks with reference to an application made by the defendants for registration of Trade Mark ""Glucomax Powder"". Ex D-2

dated 28-10-1964 is the licence issued by the Drugs Controller, Madras. State for manufacturing drugs, Ex. D-3, dated 15-6-1976 is the

certificate issued regarding the renewal of licence for the manufacture of drugs. Ex.D-4 is the list attached, to Ex. D-3 showing the items which the

defendants are licenced to manufacture. The defendants also obtained licence for repacking of drugs and the same is marked as Ex. D-5, dated

15-6-1976. Ex. D-6 is the licence issued by the Joint State Drugs Controller, Madras permitting the defendants to manufacture ""Amar''s Pain

Balm and ASO Rub"". It is specifically stated in Ex. D-6 that the defendants should ensure that their products do not in any way contravene the

provisions of Section 17 of the Drugs and Cosmetics Act, 1940 and also the provisions of the Trade and Merchandise Marks Act, 1958. Again it

is stated in the licence Ex. D-6 that the labels, cartons, etc., of the defendants'' product should comply with the provisions of the Drugs and Magic

Remedies (OA). Act; 1954 and the defendants should not make any advertisement which contravenes the provisions of the said order. Ex. D-7 is

a copy of the proforma for the determination of value u/s 4 of the Central Excises and Salt Act, 1944 with reference to the defendants product

Amar''s Pain Balm"" and also ""ASO rub"".

It is the case of the plaintiffs that the attempt on the part of the defendants to market their pain balm in the carton which is marked as Ex. P-2

amounts to an infringement of trade mark of the plaintiffs which is marked as Ex. P-1 and which is duly registered by the plaintiffs as per Ex. P-5.

The carton in which the plaintiffs market their products bearing registered Trade Mark No. 198004 and which is marked as Ex. P-1 has a

distinctive get up of yellow and green colour. The four sides of the carton have square borders in green and yellow. On one side of the carton, the

trade mark ""Amrutanjan"" is imprinted on a green background and below that the words ''pain balm'' are printed in green colour oil a yellow

background within a semi-circular device; below that in a rectangular area the name of the company appears in green letters. On the remaining

three sides of the ''Amrutanjan'' carton the following matters appear : (1) the composition of the products; (2) the word ''Amrutanjan'' rendered in

vernacular scripts; and (3) the indications and other descriptive matters. The opening, and closing flaps of the ''Amrutanjan'' carton are of yellow

colour on which a device of concentric circles appears, two of them in green colour and within it on a white background the word ""Amrutanjan

appears. The carton in which the defendants proposed to market their goods viz., Ex. P-2 has similar features. This carton is coloured yellow on

which letters are printed on a green background as in the case of Ex. P-1. The colour scheme adopted by the defendants is that of the plaintiffs''

carton Ex. P-1. On the side of the defendants'' carton the word ""Amar''s"" is printed in white letters on green background in the same fashion as

''Amrutanjan'' is printed in Ex. P-1. Similarly below that the words ''Pain Balm'' are printed within the semi-circle on a background of yellow colour

as that of carton Ex. P-1. Below that the name of the manufacturer is mentioned as in Ex. P-1. The only difference, as far as this side of the carton

is concerned between Exs. P-1 and P-2, is that the square in the case of Ex: P-1 is having sharp edges whereas in Ex. P-2 the square are having

blunt edges. On another side of the carton the indications are mentioned. The pattern of the carton-in which the indications are mentioned in Ex. P-

2 is more or less similar to the indications in Ex. P-1 except the act that the square is having sharp edges in Ex. P-1 and blunt edges in Ex P-2.

Another side of the carton containing the composition is also shaped similarly except the difference of edges of the square and the same

composition is mentioned in the same order in both the Exs. P-1 and P-2. On another side of the carton the word ''Amrutanjan'' is written in six

languages in Ex. P-1 and in the same way the word ''Amar''s'' is mentioned in five languages in Ex. P-2. In Ex. P-1 the words ''Amrutanjan''

''Bombay'' are printed in the top of the carton within the concentric circle whereas in Ex. P-2 the word ''Amar''s'' is mentioned in a square design.

In order to decide whether the carton Ex. P-2 is an infringement of the registered trade mark of the plaintiffs'' carton Ex. P-1 we will have to

decide with reference to the relevant provisions of the Trade and Merchandise Marks Act, 1958 and the reported decisions of this court and the

Supreme Court under the above said Act.

Section 2(d) of the Trade and Merchandise Marks Act, 1958 defines the phrase ""deceptively similar"". It runs as follows :-

!""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 28 of the above said Act deals with the rights conferred by registration of the Trade Mark. Section 28 reads as follows :-

(1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered

proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered

and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under Sub-section (1) shall be subject to any conditions and limitations to which the

registration is subject.

(3) Where two or more, persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive

right to the use of any of those trade marks shall not (except so far as their respective rights are subjects to any conditions or limitation entered on

the register) be deemed to have been acquired by any one of these persons as against any other of those persons merely by registration of the

trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted

use) as he would have if he were the sole registered proprietor.

Section 29 deals with the infringement of Trade Marks. Section 29 reads as follows :-

(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by

way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to the trade mark, in relation to any goods in

respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if

the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complaints is not likely to deceive or cause

confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and

some person having the right, either as registered proprietor or as registered user, to use the trade mark"".

Section 10 of the aforesaid Act deals with the Limitation as to colour. Section 10 reads as follows :

(1) A trade mark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by the

tribunal having to decide on the distinctive character of the trade mark.

(2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours"".

With reference to the above said provisions of the Trade and Merchandise Marks Act, 1958, we will have to decide whether the defendants

carton Ex. P-2 is identical with or deceptively similar to the registered trade mark of the plaintiffs'' carton Ex. P-1. The general lay out of the two

cartons in the colour scheme is exactly similar. The appearance on the one side of the carton announcing the name of the pain balm is also similar

and is done in a similar background. The design adopted in Ex. P-1 viz., the word ""Amrutanjan"" printed in the green background is also adopted in

Ex. P-2. The semicircular design containing the word pain balm is also copied in Ex. P-2. So also the indications and the contents of the

preparation on two sides of the carton are printed in the similar fashion and similar colours. On one side the name of the product is mentioned in

Ex. P-1 in six languages whereas in Ex. P-2 it is mentioned only in five languages in the same fashion. On the top of the carton the words

Amrutanjan, Bombay"" are mentioned in a square design within the concenteric circles in Ex. P-1 whereas in Ex. P-2 the word ''Amar''s'' is

mentioned in a square design. On behalf of the defendants it is contended that the word ""Amar''s"" is only a short form of the defendants'' firm

Amarchand Sobachand"" and they are entitled to use that name and the square design with sharp end is not adopted in Ex, P-2 and the squart end

in Ex. P-2 is flattened. There is no label in the bottom of Ex. P-2. It is the contention of the defendants that the words pain balm will have to be

stated along with the indications, to be expressed in several languages, and the design is not exactly the same and hence there is no infringement of

the plaintiffs'' trade mark. Further the Drugs Control rules require the names of the contents of the drugs to be mentioned in all languages and all the

drugs will have to carry the indications. The defendants also contended that there is no registration as to colour.

We will have to examine the lay-out of the contents of Ex. P-1 and P-2 to find out whether both are identical or deceptively similar. No doubt

there are minor differences in the lay out of all the four sides of the cartons Exs. P-1 and P-2 and it. cannot be said to be exactly similar.

Eventhough there are differences between the cartons Exs. P-1 and P-2, if Ex. P-2 very nearly resembles Ex. P-1 in such a way that it is likely to

deceive the intending buyer or cause confusion then it amounts to an infringement of the plaintiffs'' trade mark. In deciding whether the carton Ex.

P-2 nearly resembles Ex, P-1 or it is likely to cause confusion in the minds of the consumer we will have to take into consideration the principles

laid down in several reported decision''s on this aspect. The earliest case on this point is reported in Subbiah v. Kumaraval AIR 1946 P.C. 109. In

this case the plaintiff Beedi manufacturer was a proprietor of certain trade mark consisting of the device of his portrait in Marathi dress and head

dress surrounded by rays of light and other distinctive features. His trade mark consisted of the portrait of himself in a Marathi dress and head-

dress similar to the dress and head-dress in the plaintiff''s photo and surrounded by a series of almost identical features and word ''Ram Salt

Beedie"" printed in the carton. The defendant''s carton contained the same design with a portrait of E. P. Kumaraval Nadar, the proprietor of the

defendant''s concern, in the same north-Indian dress with the name ""Original Said"" printed on the carton. . Their Lordships of the Privy Council

after a detailed examinations of the two cartons and the surrounding circumstances came to the following conclusion :

Their Lordships have no hesitation in holding that the general effect on the mind of anybody dealing in beedies would be to confuse the beedies

sold under the marks and labels of the defendants with those sold under the plaintiff''s trade mark and both courts in Ceylon appear to have been

of that view. In their Lordships'' opinion the marks are plainly calculated to lead to confusion and deception and the similarities are so close as to

make it impossible to suppose that such marks were devised independently of each other. In the absence of any evidence of a common origin, the

conclusion must be that one party copied the mark of the other"".

In a decision reported in Tavener Ruiledge Ltd. v. Specters Ld. (Reports of Patent, Design and Trade Mark Cases 1959 page 83), the

Chancery Division in comparing two tins of flavored drops, the photos of which are printed in the aforesaid reports, made the following

observations :

It seems to me that one has to take into consideration people who have what is called imperfect recollection, as was pointed out in the case of

Saville Perfumery Ld. V. June Perfect Ld (1941) 58 R.P.C. 147. and one has to allow for cases where the person who has not got the two tins

side by side perhaps does not remember the plaintiffs'' name accurately or does not know that there are two different traders in the same line of

business, or many others for that matter, and takes a casual glance at the tin and imagines that it is the kind of fruit drops that he wants, not entirely

casually, but looking at it in the ordinary way that such a customer would go into a shop and see a pile of tins or something of that sort. Afterwards

of course he may discover that they were not the ones he expected to get and he may raise objection, but it seems to me that it is a case of

confusion if customers are induced to buy by a recollection of the general get-up of the plaintiffs'' tin so that they purchase a tin of the defendants''

sweets by mistake, and I am bound to say that I have come to the conclusion that such confusion is not only possible but is likely.

We can usefully borrow the phrase given by the Chancery Division that in order to constitute infringement the similarity must be such as to leap

to the eye.

In a decision reported in Bryant & May, Ld. V. United Watch Industries. Ld. (Vol. L Reports of Patent, Design, and Trade Mark cases at

page 12) the Chancery Division considering the similarity between the two brands of safety matches, the photos of which are exhibited in the

reports, observed as follows :

In my opinion, studying the two boxes, giving such consideration as I can to what one would expect in the case of such a class of customer, giving

the best consideration that I can to the evidence that I have had, which included a certain amount of evidence of what was said to be actual

confusion occasioned, I have come to the conclusion that not only is confusion possible, but indeed probable.

In a decision reported in Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, The Supreme Court had an occasion to deal with a similar

question while dealing with the question of infringement in respect of the cartons used for the manufacture of Biscuits. In this case the registered

trade mark consists the words ""Parle''s Gluco Biscuits"" printed on the wrapper. The wrapper is of buff colour and depicts a farm yard with a girl in

the centre carrying a pail of water and cows and hens around her on the background of a farmyard house and trees. The offending trade mark

contained the picture of a girl supporting with one hand a bundle of hay on her head and carrying a sickle and a bundle of food in the other, the

cows and hens being unlike those of the plaintiffs'' wrappers. There was also said to be difference in the design of the buildings on the two

wrappers and the words printed on the two wrappers were distinct and separate. In coining to the conclusion that there is an infringement of the

trade mark already registered Mitter J., observed as follows :

To decide the question as to whether the plaintiffs'' right to a trade mark has been infringed in a particular case, the approach must not be that in

an action for passing off goods of the defendant as and for those of the plaintiff. According to this court in Kaviraj Pandit Durga Dutt Sharma Vs.

Navaratna Pharmaceutical Laboratories, ""While an action for passing off is a common Law remedy being in substance an action for deceit, that is,

a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a

statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to use of the trade mark

in relation to those goods (vide Section 31 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for

passing off, but is the sine qua non in the case of an action for infringement.

In the above ease the court further pointed out :

In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant''s mark is likely to deceive, but where the

similarity between the plaintiff''s and the defendant''s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion

that there is an imitation, no further evidence is required to establish that the plaintiff''s rights are violated. Expressed in another way, if the essential

features of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the

packets in which he offers his goods for sale show marked differences or indicate clearly a trade origin different from that of the registered

proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added

matter is sufficient to distinguish his goods from those of the plaintiff"". According to ""Kerly''s law of Trade Marks and Trade Names"", it is observed

as follows :-

Two marks, when placed side by side, may exhibit many and 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.

Thus 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. It would be too much to expect that persons dealing with trade-marked

goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they

are in -the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic

recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark

they are already acquainted with for reasons of their own.

In the ruling reported in ""re Worthington & Co.''s Trade Mark"" (Vol. XIV Chancery Division page 8) where two trade marks of ale similarly

placed in a triangle fashion, which is exhibited in the reports, came up for consideration as to whether there is an infringement of the trade mark, the

following observations are made by the Chancery Division :

''It is the constant practice of persons registering new marks to get as near as they can to an old mark which has acquired a great reputation. At

first I thought there might be some want of invention on the part of the owners of business who required new marks; but the attempts are so

constant and so similar, that the conviction has forced itself upon my mind rather reluctantly that there is a general desire on the part of new traders,

or of persons requiring new marks, to run as near as the law will allow them to the old marks.

Applying these principles with the facts of this case we can easily come to the conclusion that the defendants, though an old firm, in its new

venture to the manufacture of pain balm, has only made an attempt to run as near as possible to the registered trade mark of the plaintiffs. On a

comparison of the two cartons Exs. P-1 and P-2 in the light of the observations cited above the following conclusions emerged :

(1) Though there are differences, when faced side by side, between the cartons Exs. P-1 and P-2 yet the main idea left on the mind is the same;

(2) A customer who is already acquainted with the trade mark of the plaintiffs is liable to mistake as the carton of the defendants. Ex. P-2 as the

carton: of the Plaintiffs.

(3) The carton Ex. P-2 is deceptively similar to that of the plaintiffs in view of the designs and the colour scheme adopted.

We will have to look into the whole thing from the point of view of he ordinary purchaser who is not gifted with the powers of observation. In

this view I have no hesitation in coming to the conclusion that the carton Ex. P-2 is an infringement of plaintiffs'' carton Ex. P-1 which is a registered

trade mark.

Reliance was placed on behalf of the defendant on a ruling reported in Nestle''s Products Limited and Another Vs. Milkmade Corporation and

Another, where the plaintiffs--Nestle''s Products Limited--who were the manufacturers of condensed milk under the trade mark consisting of the

words ""Milkmaid brand"" brought an action for infringement against the defendants who had adopted the trade name of ""milkmade Corporation

and put in the market biscuits and toffees under the trade name ""Milkmade"". Interim injunction was refused to the plaintiffs in that case and against

the refusal of the interim injunction an appeal was filed in the Delhi High Court. The court came to the conclusion that the product marketed by the

plaintiffs viz., the condensed milk belongs to a different category from that of the toffee marketed by the defendants and on this ground the interim

injunction was refused. Holding the view that the registration of trade mark can only be with reference to the articles belonging to a particular class

and two products viz., condensed milk and toffee cannot be said to belong to the same class and in that view rejected the claim for a permanent

injunction. Hence the facts of that case cannot be applied to the facts of the present case.

Reliance was placed on behalf of the defendants on a ruling reported in Govindlal Maneklal v. Ichha Vagha and Ors. AIR 1920 Bombay 15

wherein it was observed that in a suit for an injunction the plaintiff must show that the opposite party has done something towards infringing his

rights, or that he is on the point of doing something which will infringe these rights, and that there is a prospect of irremediable injury being suffered

by the plaintiff unless he takes proceedings to stop the defendant''s action. In this case the documentary evidence Ex. P-3 shows that the

defendants are about to release the pain balm for sale in the market with the infringed trade mark. Since the prospect of the defendants doing

something which is likely to cause damage to the plaintiffs is proved, the plaintiffs are entitled to the relief of permanent injunction.

ISSUE NO. 1 :

The plaintiffs'' case is that the phrase ""Amrutanjan Pain Balm"" and ""Amar''s Pain Balm"" are phonetically and visually similar. In the two cartons

Exs. P-1 and P-2 the printed letters of ""Amrutanjan'''' and ""Amar''s"" are exhibited in the same fashion. The words pain balm are also found inside a

semicircular design of similar nature. In addition to exhibiting these phrases in a similar pattern we will have to examine whether the two phrases are

phonetically similar so as to cause confusion in the minds of the buyer. The phonetic similarity can be arrived at by scrutinising each syllable and

comparing one with the other. The first syllable of ""Amrutanjan"" is ""Amrut"". The first syllable of ""Amar''s Pain Balm"" is ""Amar''s"". The syllable

Amar''s"" is phonetically similar to the syllable ""Amrut"". The next syllable in the plaintiffs trade mark viz., ""Anjan"" did not exist in the defendants''

offending trade mark. The rest of the words Pain Balm is common to both the trade marks. Since the first syllable in both the names is phonetically

similar, a buyer, because of the phonetic similarity, is likely to be confused and misled. A consideration of earlier judicial pronouncements regarding

the phonetic similarity may be useful. In the ruling reported in K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co., Madras and Another, the

words ""Sri Andal"" is found to be phonetically similar to ''Sri Ambal"". In the ruling reported in N. Arumugam Pillai Vs. K.S. Syed Abbas and

Another, the words ""Thanga Baspam"" is held to be phonetically similar to the words ""Thanga Pavun"". In the ruling reported in Amritdhara

Pharmacy Vs. Satyadeo Gupta, the word ""Lakshmandhas had been held phonetically similar to ""Amritdhara"". In the ruling reported in Bengal

Immunity Co. Ltd. Vs. Denver Chemical Manufacturing Co. and Others, the pharase ""B.I. Phalogiston"" is held to be phonetically similar to

Antiphologistine"". Taking into consideration the above decisions and the other circumstances of the case I have no hesitation in coming to the

conclusion that the pharse ""Amar''s Pain Balm"" is phonetically similar to ""Amrutanjan Pain Balm"",

The learned counsel for the defendant brought to my notice a ruling reported in Mount Mettur Pharmaceuticals Ltd. Vs. Ortha Pharmaceuticals

Corporation, where a bench of this court came to the conclusion that the phrases ""Orthogynol"" and ""Utogynol"" are not phonetically similar. After

coming to the conclusion that there cannot be any exclusive proprietory right with reference to the English word ""Gynol'''' a division bench of this

Court held that the first syllable in the two trade names ""Ortho"" and ""Uto"" are strikingly dissmilar. The word ""Ortho"" is not an invented word and is

found in the dictionary and is derived from a Greek word. The meaning of this word is straight, rectangular, upright, right, correct etc. On the other

hand, the word ''Uto'' is an invention derived from the word ""Uterus"". The principles laid down in the above said case cannot be applied to the

facts of the present case.

It is also contended on behalf of the defendants that the firm ""Amarchand Sobachand"" is a trading firm for the past 60 years and that they are

entitled to use the first part of their firm name. The defendants had never before used their firm name as a trade mark in the manufacture and sale of

Pain Balm"". Hence the plaintiffs cannot now seek to adopt a part of their firm name which is phonetically similar to that of ""Amrutanjan"" pain balm

so as to infringe the registered trade mark of the plaintiffs. Hence on this issue I come to the conclusion that the above said two phrases are

phonetically and visually similar.

ISSUE NO. 3 :

This issue relates to the question whether the plaintiffs have any cause of action for infringement or for passing off. On issue Nos. 1 and 2 I

have already found that the plaintiffs have got cause of action for infringement of their trade mark. There is no evidence in this case that the

defendants had passed off their goods as that of the plaintiffs. Ex. P-3 shows only an attempt on the part of the defendants to market their ""Pain

Balm"". No passing off action on the part of the defendants had been pleaded or proved. Hence I find on this issue that the plaintiffs have a cause of

action with reference to the infringement and that the plaintiffs have no cause of action with reference to the passing off of goods.

ISSUE NO. 5:

This issue relates to the accounts and the damages. In as much as no passing off action on the part of the defendants is proved the plaintiffs''

are not entitled to the relief of accounting or for the damages.

ISSUE NO. 4 :

In view of my findings on issue Nos. 1 and 2 I hold that the plaintiffs are entitled to a permanent injunction as prayed for in para 13 of the

plaint. The pleas put forth on behalf of the defendants are that the pain balm is a composition of several chemicals as per British Pharmacopia and

there cannot be any proprietorship with reference to the composition. No doubt there cannot be any proprietorship with reference to the

composition of several chemicals used in the preparation of the pain balm but the manner in which the pain balm manufactured is packed and sold

should not amount to an infringement of an already registered trade mark. Another argument advanced is that the composition of the pain balm will

have to be exhibited on the carton according to the Packing of the Commodities Act. The complaint of the plaintiffs in this regard is not regarding

the exhibition of the materials contained in the pain balm but that the manner of exhibition is strikingly similar to that of the plaintiffs. Another

argument advanced on behalf of the defendants is that they proposed to manufacture cartons in different colours as evidenced by Exs. D-9 to D-

12 (such cartons are in different colours) and there cannot be any objection for manufacturing the cartons in colours different from the colour

adopted by the plaintiffs in Ex. P-1. The registration of the plaintiffs'' trade mark is without limitation of colour. Such registration as per Section

10(2) of the Trade and Merchandise Marks Act, 1958 will be deemed to be a registration for all the colours. Hence the adoption of the trade

mark Ex. P-2 in any colour will amount to an infringement of the plaintiffs'' trade mark.

In the result the plaintiffs are entitled to a permanent injunction restraining the defendants by themselves, their servants, agents or any one

claiming through them from manufacturing, selling and offering for sale goods in the name and style of ""Amar''s Pain Balm"" as in Ex. P-2 and in any

of the colours which is in any way deceptively similar to or colourable inmitation of the plaintiffs'' trade mark ""Amrutanjan"" which is marked as Ex.

P-1 in this case.

The relief prayed for regarding the accounting or for the damages is negatived. There will be no order as to costs.