Chhotu Sao and Another vs Bansi Lal and Others

Manohar Lall, J.—This is an appeal by the plaintiffs and arises out of a passing off action. The plaintiffs carry on a joint family business, a soap factory, under the style of ''Saraswati Soap Factory.'' Their case is that they have been manufacturing a washing soap known as kaiehi soap from a long time. The cake of the soap has a flat circular base 3" to 4" in diameter, and as the learned Judge describes it when standing on the base the cake of soap appears tomb shaped about 1�" to 2" high. Upon this cake appears the mark of a scissor with open blades and towards the bottom the word ''kaiehi'' is written in Nagri script. The plaintiffs on 15th February 1936, registered their soap with its size and trade mark ''kaiehi'' through the firm of H. V. Williams and Co. Patent and Trade Mark Agents at Calcutta. Accordingly their case is that since that date nobody can put kaiehi mark with or without any addition or alteration as its trade mark on any soap manufactured in India as long as the plaintiff''s manufacturing business goes on.

The defendants are carrying on a soap business under the style of Sri Krishna Soap Factory and have started to manufacture similar soap with the mark of a scissor with open blades with the nominal difference that two marks like a star have been put on the two sides of the kaiehi and the word ''tara'' has been added after the word ''kaiehi'' in Nagri script. The plaintiffs allege that if the two cakes are compared it would be palpably clear that the points of similarity are far more numerous and predominant than the points of difference which are so slight that they are calculated to mislead uneautious and unwary purchasers especially those among whom the soap has great sale and reputation into an easy belief that they are purchasing the plaintiffs'' soap and the two star marks and the word tara after the word kaichi have been purposefully and designedly placed in such a position that the soap of the defendants can be easily foisted upon purchasers as a genuine product of the plaintiffs. The plaintiffs on these allegations instituted the suit giving rise to this appeal on 4th February 1939, asking that the defendants be restrained by perpetual injunction from manufacturing, selling or exposing for sale any soap under mark of ''kaichi'' and under any get up, size, shape and colour similar to or by way of colourable imitation of plaintiffs'' kaichi mark soap. Some other incidental reliefs were also asked for.

The defence to the action was that the plaintiffs have not established any reputation with respect to washing soaps with kaichi trade marks thereon and that the people of the locality amongst whom the soaps are sold do not by the term kaichi soap alone mean or understand the plaintiffs'' soap only, that soaps with kaichi marks are manufactured by various other persons from before 1936 and after and are being sold in the town of Bihar and neighbouring places where the soaps in dispute are being sold. It was also alleged that the defendants'' soap bears the device of kaichi and a tara and therefore it could not deceive even uncautious and illiterate people into believing that they were purchasing the plaintiffs'' soap. The defendants further allege that they have also got their trade mark duly registered in or about 1938. On these allegations a number of issues were framed the most important issues being "Have the plaintiffs acquired any right or property in the trade mark ''kainchi'' on washing soaps"? The other issues are whether the trade mark kaichi was symbolical only of the plaintiffs'' washing soap and whether the plaintiffs'' washing soaps with the trade mark kaichi have acquired a wide reputation in the market and whether the defendants have infringed that trade mark of the plaintiffs.

The learned Subordinate Judge came to the conclusion that the defendants have not infringed the trade mark of the plaintiffs or made any colourable imitation of the same and that there is no reasonable probability of purchasers being deceived by defendants'' user of Kainchi Tara trade marks on their washing soaps into the belief that they are purchasing the washing soaps of plaintiffs'' manufacture. He also held that by Kainchi soap people do not mean or understand plaintiffs'' soaps only, that is to say, the Kainchi trade mark is not a symbolical only of the plaintiff''s manufacture of washing soaps and that the plaintiffs'' washing soaps have not acquired any reputation as Kainchi soaps. Accordingly he dismissed the suit.

The learned Additional District Judge in appeal on examining all the evidence came to the conclusion that various soaps have been selling in Bihar with the mark of an open pair of scissors from some time before the plaintiffs started making soaps, that the plaintiffs have failed to prove any exclusive right to the mark of an open pair of scissors in respect of soaps and that the addition of the word Kainchi, the Hindi word for scissors, cannot be sufficient to give them any exclusive right in the design of a pair of scissors with the word Kainchi. The learned Judge then proceeded to consider the question whether the defendants have imitated or infringed any design or get up of the plaintiffs'' kainchi soap. On examining the cakes of soap and after considering the oral evidence on the record he held that the shape was evidently so common that it cannot be claimed as an exclusive design; that none of the soaps in question appear to be deliberately coloured though there are naturally variations in tint which depends presumably on the quality of soap to some extent. Accordingly he came to the conclusion that the plaintiffs have failed to establish that they have any exclusive design or get up of their soap except for the name ''Saraswati'' in respect of which no infringement is alleged. In the result he dismissed the appeal.

In second appeal Dr. Mitter, who appears on behalf of the plaintiffs, has referred to a very large number of cases decided in England and in India in order to demonstrate how such questions should be approached by the Courts. In my opinion it is needless to refer to the numerous cases which have been cited. It is enough to refer to two decisions of their Lordships of the Judicial Com-mittee. In Juggi Lal Kamalapat v. Swadeshi Mills Co. Ltd. AIR 1929 P.C. 11, Lord Dunedin who delivered the judgment of their Lordships in a passing off action observed:

that there may be deception by sound as well as by sight was nowhere more forcibly insisted on than in the well-known case in Johnston v. Orr-Ewing (1882) 7 A.C. 219.

In that case a lotus flower was put on the cloths which were exposed for sale so that the cloths of the plaintiffs came to be known as lotus cloths. Their Lordships observed at p. 4 that the evidence was quite satisfactory to show that the plaintiffs'' cloth was associated with the name of ''lotus'' and that any lotus device would lead to cloth being able to be palmed off as their cloth which was the cloth of another manufacturer. They also observed that there was perhaps a little difficulty as to one of the emblems if looked at properly was not a lotus but a rose but there was a garter like enclosure with a straight line beneath and the whole get-up of the one was so like the whole get-up of the other that their Lordships had no doubt to agree with the decision of the Court below. In AIR 1940 86 (Privy Council) , the judgment of their Lordships was delivered by Viscount Maugham. I am quoting a very important observation from p. 216 which is quite apposite to the present case:

There is no statutory law in British India relating to trade marks, and the law which is applied there on the subject is substantially the same as that applied in England before the Trade Marks Act, 1905. It is, however, plain that conditions peculiar to India must be borne in mind in applying any doctrine of English law, and that English decisions which turn or partly turn on questions of fact as do most cases of common law trade marks and passing off--can only be applied with care and circumspection. The general principle, founded as it is on justice and equity, is the same in both countries. ''No man,'' as James L.J. said in Singer Manufacturing Co. v. Loog (1880) 18 Ch. D. 395 ''is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or means, whereby, without making a direct false representation himself to a purchaser who purchases from him he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer.''

It is clear that the right of property that may be acquired in such a trade mark is based on the proved association in the market of the device, name, sign, symbol or other means; in question, with the goods of the plaintiff, so that the use by the defendant on such goods of the trade mark will amount--whether the defendant intends it or knows it or not--to the false representation that the goods are manufactured or put on the market by the plaintiff. There can obviously be no monopoly in the use of the trade mark.... It is, however, very important to observe that each of these questions; will be a question of fact to be decided on the evidence adduced. The vital element in such a case is the probability of deception. This may depend on a number of matters as well as the question of similarity of the marks or of the get up. Witnesses can be called to prove the circumstances and the places in which the articles are sold, the classes of persons who buy them, and whether they include persons who arc illiterate or ignorant or the reverse, the manner in which the public are accustomed to ask for the articles, and any other matters which will assist the Court to decide whether deception is probable. Evidence of actual deception may be available, and if available may be very valuable. There is no such person as an expert in human nature, and it is now well settled that a witness cannot be called to say that it is likely that purchasers of the goods will be deceived. This can only be a matter of opinion formed after the dispute has arisen and too often without any judicial consideration of the opposing contentions. On the other hand, a person who is accustomed to buy the articles in question may be called to say that he would himself be deceived, and cross-examination will often show what weight should be attached to such a statement.

His Lordship also observed at p. 218 that

the test of comparison of the marks side by side is not a sound one, since a purchaser will seldom have the two marks actually before him when he makes his purchase and marks with many differences may J yet have an element of similarity which will cause deception, more especially if the goods are in practice asked for by a name which denotes the mark or the device on it

and refers to the case in Seixo v. Provezende (1865) 1 Ch. 192 where Lord Cranworth, L.C., made some very relevant remarks including this that the adoption by a rival trader of a mark which would cause his goods to bear the same name in the market, may be as much a violation of the rights of the first owner as the actual copy of his device and that it is not an answer to the claim of a trader who has established a right to a trade mark, e.g., a device or a fancy word, to say ( that, apart from the device or the word, the labels or containers of the rival trade are very different from those of the trade mark owner.

I am also quoting from p. 220 which deals with the argument advanced by Dr. Mitter that it was for the Judge to decide whether the use of the trade mark on the soap would be likely to deceive, and he actually invited us to make a comparison for ourselves to answer the question whether the use of the trade mark "kaichi" on the goods similar in. character to the plaintiffs'' goods would be likely to deceive. Their Lordships observed as to this mode of deciding a case:

Some of the learned Judges in India seem to have taken the view that it was for the Court to decide as to the area of trade protected by the appellants'' trade mark, that is, to answer the question whether the use of the trade mark on goods not closely similar in character to the appellants'' goods would be likely to deceive. A number of well-known authorities were cited, which it was thought would throw light on the correct answer to this question. Their Lordships must repeat that this question is one of fact on which evidence is essential. The question differs from the question whether a particular mark or name is an imitation or a colourable imitation of a mark or name used by the plaintiff. There the Judge has before his eyes the materials for a decision; and in some cases it cannot be doubted that the Judge can himself decide on the degree of resemblance or on the materiality of alleged differences of the marks or words: North Chesire & Manchester Brewery Co. v. Manchester Brewery Co. (1899) A.C. 83, Payton & Co. Ltd. v. Snelling Lampard & Co. Ltd. (1901) A.C. 308, per Lord Macnaghton, Payton & Co. Ltd. v. Snelling Lampard & Co. Ltd. (1901) A.C. 308 . If the decision of the Court of Appeal in London General Omnibus Co. v. Lavell (1901) 1 Ch. 135, or some of the dieta in that case are contrary to these decisions, it cannot be relied upon. On the other hand, there are many trade mark and passing off cases which cannot be decided by a visual comparison of the rival marks or names and must depend on the evidence of witnesses. That, indeed, is nearly always the case when there are factors involved other than the mere resemblance of the marks or words. In the present case, a Judge may be entitled to form his own view as to the resemblance of the elephants in shape and colour, or on the differences between them; but their Lordships are of opinion that a Judge cannot properly decide, except upon evidence, as to the classes or kinds of goods which are protected by the appellants'' mark etc. etc.

Applying the observations of their Lordships to the facts of this case I am of opinion that the appeal is concluded by findings of fact. In the first place, the Courts below have held on the evidence that the plaintiffs have failed to prove any exclusive right to the mark of an open pair of scissors in respect of soaps. It will be remembered that the plaintiffs are not protected by the Trade Marks Act which came into force in 1940, and therefore, the plaintiffs have to prove that they have obtained a right of property in the kainchi trade mark on association in the market of the device or symbol with the goods of the plaintiff so that the use by the defendant on such goods of the kainchi marks will amount--whether the defendant intends it or knows it or not--to the false representation that the goods are manufactured or put on the market by the plaintiff. This is eminently a question of fact as observed by their Lordships at p. 217 and as repeated by them at p. 220. There can be no monopoly in the use of the trade mark of kainchi.

Again, there are clear findings of fact that the defendant has not been proved on the evidence to have either imitated or infringed the design or get-up of the plaintiff and that when the plaintiff came on the scene by manufacturing cakes of soap similar soaps bearing similar colour though varying in tint, depending on the quality of the soap, were in the market with the mark "Kainchi" thereon from at least 1926. I would dismiss this appeal with costs.

Reuben J.

I agree.