M.A. Rahim vs M/s Arvind Laboratories

Mishra, J.—The instant appeal under Clause 15 of the Letters Patent of this court has arisen in a proceeding in Applications No. 1255 and

1256 of 1985 in C.S. No. 130 of 1985, a suit based on a claim, a registered trade mark, which, according to the plaintiff-respondent, was being

violated by the defendant-appellant. A learned single Judge of this court, on being satisfied that there has been such infringement by the defendant-

appellant herein, has granted temporary injunction and allowed I.A. No. 1255 of 1985 and also ordered in Application No. 1256 of 1985 the

defendant-appellant to furnish information, as sought for by the plaintiff-respondent.

Plaintiff-respondent has been manufacturing, according to it, 24 different types of products and marketing the same under its trade mark

''Eyetex''. One P. K. Vasudevan, in fact, had got the said trade mark registered as early as in 1946. The plaintiff got assignment of the said mark

and thus came to trade in the mercantile of 24 different types with the trade mark ""Eyetex"". According to the plaintiff-respondent the mark was/is

not confined to the words ""Eyetex"", but it had/has pervasive extent on the entire circular plastic capsule, black in colour, on the face of which

Eyetex"" is embossed and the wrapper upon the capsule, on which directions for the use are recorded. The mark also has a distinctive colour

combination and ""Eyetex"" thus, as a product of the plaintiff-respondent, has prevailed in the market. Some time in the middle of 1980, according to

the plaintiff-respondent, it learnt that the appellant had obtained registration of a trade mark ""Eyetex"" under No. 3515/75 in class 3 for cosmetic

toilet preparations, (filed on 19.7.1979 the mark, for which registration was obtained, consisted of the stylized name of ""Eyeris"" and the drawing of

an eye). Although this mark had been advertised in the Trade Mark Journal, the plaintiff-respondent did not notice it and thus the defendant-

appellant got the registration of the mark, which is almost an exact copy of the plaintiff-respondent''s mark of ""Eyetex"" phonetically, visually and

structurally. The defendant-appellant''s case, in response to the application before the court below, was that he was/is the proprietor of the mark

''Eyeris'' which is a registered trade mark, he has committed no violation of any law in marketing his products with the trade mark ''Eyeris''. In short

thus in the case before the learned single Judge as well as before us, there is no controversy as to the registration of the trade mark of the plaintiff-

respondent, and the shape, size, colour combination, etc., of the mark upon the products of the plaintiff-respondent. The defendant-appellant

had/has got the registration of the trade mark and thus he has asserted before the learned single Judge and has asserted before us as well that he

had/has every right to trade with the mark ''Eyeris''.

We took notice at the first instance, when we took up the appeal for hearing, that in C.M.P. No. 16412 of 1985, a Bench, which admitted the

instant appeal to hearing, ordered a stay of the operation of the impugned judgment/order in Application No. 1255 of 1985 only and accordingly

gave option to the parties to come to an amicable settlement, so that the dispute may come to an end by some adjustment in the colour

combination and the drawings around the words of the mark, that is; Eyeris'' of the defendant-appellant. We have not, however been able to make

the plaintiff-respondent, to agree to any adjustment to end the dispute. Respondent moved for removal from the register of trade marks the mark

''Eyeris'' of the appellant and we are informed that the Registrar''s order has gone against the respondent. Respondent, however, has taken the

matter as to the validity of the registration of the trade mark ''Eyeris'' of the appellant herein in a separate appeal which is proceeding separately.

We are faced in the instant case, thus, with the plaintiff-respondent''s ''Eyetex and the defendant-appellant''s ''Eyeris'' : both are for selling

cosmetic preparations of the plaintiff-respondent and the defendant-appellant. According to the plaintiff-respondent their ''Eyetex'' is a mark not

confined to the words only, but is for the entire drawing on the cover or wrapper with which their products are sold. Defendant-appellant''s

Eyeris"", according to the plaintiff respondent is confined to the letters constituting the word and not beyond that. The case of the plaintiff-

respondent has been accordingly, that the defendant-appellant has violated their trade mark phonetically by using ''Eyeris'' to resemble the sound in

pronouncing ''Eyetex'' and has done so to deceive the consumers, who are all common folk. The phonetic expressions of the words ''Eyetex'' and

''Eyeris'' according to the respondent, are in any event likely to confuse any person as to the identity of the goods produced by the defendant-

appellant with that of the plaintiff-respondent. In any case, there is a clear visual and structural violation (Structural violation is something brought,

according to the learned counsel for the plaintiff-respondent, in the structure of the drawing and the combination of the colours) of the plaintiff

respondent''s trade-mark ''Eyetex'' by adoption of a similar design by the defendant-appellant on the cover and the wrapper under which the

goods are sold by them.

Learned Single Judge has, however, dealt with the application for temporary injunction in these words :

I persued the carton of the plaintiff and that of the defendants. I am of the opinion that an ordinary purchaser of the plaintiff''s goods will not be

able to distinguish between the mark used by the defendants and that of the plaintiff. The fact that the defendants have also registered their marks is

not a bar to this court to entertain the suit and give a temporary relief"".

Section 111 of the Trade and Merchandise Act, 1958 makes it clear. Section 111 of the Act reads as follows :

Stay of proceedings where the validity of registration of the trade mark is questioned, etc.

(1) Where is any suit for the infringement of a trade mark -

(a) The defendant pleads that the registration of the trade mark is invailid; or

(b) The defendant raises a defence under Clause (d) of Sub-section (1) of Section 30 and the Plaintiff pleads the invalidity of the registration of the

defendant''s trade mark :

the court trying the Suit (here under referred to as the court) shall

(i) If any proceedings for rectification of the register in relation to the plaintiff''s or defendant''s trade mark are pending before the Registrar or the

High Court, stay the suit pending the final disposal of such proceedings :

(ii) If no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff''s or

defendant''s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of

the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.

(2) if the party concerned proves to the court that he has made any such application as is referred to in Clause (b)(ii) of sub-section (1) within the

time specified therein or within such extended time as the court may, for sufficient cause allow, the trial of the suit shall stand stayed untill the final

disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as

to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in

regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties arid the

court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order

(including any other order granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property) during the period

of the stay of the Suit"".

The trail court has noted the case of the parties and Section 111 of the Trade and Merchandise Marks Acts, 1958 (hereinafter referred to as

''The Act'') and the fact that the plaintiff-respondents have pleaded the invalidity of the registration of the defendant-appellant''s mark and applied

for rectification of the register and then said, ""I find that the applicant had made out a prima facie case for injunction as well as for direction."" Since

we have not found any detailed consideration in the judgment how, for the purpose of injunction, the trial court has found that defendant-

appellant''s trade-mark has infringed the trade-mark rights of the plaintiff-respondent except the statement - ""I perused the cartons of the plaintiff

and that of the defendants. I am of the opinion that an ordinary purchaser of the plaintiff''s goods will not be able to distinguish between the marks

used by the defendants and that of the plaintiff. The fact that the defendants have also registered their marks is not a bar to this court to entertain

the suit and give a temporary relief."" We have heard learned counsel for the parties in details as to the various principles of law to be applied and,

particularly, for the purpose of injunction, about the refrains in matters relating to trade marks. We had the opportunity to take notice of the

common law practices in the courts before the 1940 Act as regards trade-mark violations for injunction, damages or accounts of profits in the case

of Arvind Laboratories v. V. A. Samy Chemical Works (1994-1-174), in which we have considered judgments of the courts on the subjects such

as Juggi Lal Kamalpat v. Swadeshi Mills Company Limited AIR 1929 PC 11 , and quoted from the judgment in the case of The Gujarat Ginning

and Manufacturing Company, Limited Vs. The Swadeshi Mills Company Limited, , with approval the observation - ""and injunction may be granted

and nominal damages awarded merely on proof of infringement of a trade-mark and reasonable probability of damages to the plaintiff''s trade and

sub-stantial damages can only be awarded on proof of actual damages"". A bench of this court, of which one of us (Mishra, J) was a member. In

the case of Wockhardt Ltd. v. Mayo (India) Ltd. (Judgment dated 2-12-1991 in O.S.A. No. 190 and 191 of 1991) however, has, particularly,

addressed itself to the principles of rules of injunction as found in the statutes as well as under common law principles and noted as follows :

Temporary or interim injunction is a rule of equity recognised by Statutes like the provisions of Order 39 CPC and/or special provisions made in

this behalf and if there are no special provisions the courts'' inherent power or a special jurisdiction in the constitution of the court. In cases of

interlocutory injunctions the court unusually has to consider whether the case is so clear and free from objection on equitable ground that it ought to

interfere to preserve property without waiting for the right to be finally established. This depends upon a variety of circumstances and it is

impossible to lay down any general rule on the subject by which the discretion of the court ought in all cases to be regulated but in no case does the

court grant an interlocutory injunction as of course. Courts in England follow the rules of avoiding trying the same question on two occasions one

for the purpose of interlocutory injunction and the other for the purpose of final determination unless they find that the right to relief is clear, that

there is no doubt as to legal rights. (See Halsbury''s Laws of England, 3rd Edn., Vol. 21 p. 364 Para 763). It is not necessary that the court should

find a case which would entitled the plaintiff to relief at all events; it is sufficient if the court finds a case which shows that there is a substantial

question to be investigated and that matters ought to be preserved in stautus quo until that question can be finally disposed of ............... where the

plaintiff Is asserting a right he should show a strong prima facie case atleast in support of the right which he asserts but the mere fact that there is a

doubt as to the existence of such a right is not sufficient to prevent the court from granting - an interlocutory injunction although it is a matter for

serious attention .................. where any doubt exists as to the plaintiff''s right, or if his right is not disputed but its violation is denied the court in

determining whether an interlocutory injunction should be granted takes into consideration the balance of convenience to the parties and the nature

of the injury which the defendant, on the one hand, would suffer if the injunction was granted and he should ultimately turn out to be right and that

which the plaintiff on the other hand might sustain if the injunction was refused and he should ultimately turn out to be right. The burden of proof

that the incovenience which the plaintiff will suffer by the refusal of the injunction is greater than that which the defendant will suffer, if it is granted

lies on the plaintiff ........................ In considering whether an interlocutory injunction should be granted the court has regard to the conduct and

dealings of the parties before application was made to be court by the plaintiff to preserve and protect his right since the jurisdiction to interfere

being purely equitable, is governed by equitable principles.

The said judgment also carriers an extract from Kerly''s Law of Trade Marks and Trade Names, 10th Edn. page 337, Paragraphs 15-64, which

reads as follows :

The plaintiff in an infringement or passing off action may move, as soon as the action is commenced for an interim injunction to restrain the

defendant until the hearing of the action or further order from continuing or committing the infringement or deceptive conduct of which he

complains. Quite apart from the advantage of stopping the infringements without delay, experience shows that a successful motion for interlocutory

injunction normally puts an end to the litigation and the infringement with a great saving in expense compared with a full trial. Accordingly, such a

motion should be considered in every case; and, accordingly proprietors of trade marks should make it a rule to take action upon every instance of

infringement with the necessary speed to enable such a motion to be launched. In extremely urgent cases where the right is very clear an ex parte

injunction may be obtained before the full hearing of the motion.

15-65. Balance of convenience : where the fact of infringement is doubtful or misrepresentation amounting to a bar to the action or some other

defence is plausibly alleged upon the interlocutory motion, the court in granting or refusing the interim injunction is guided principally by the balance

of convenience, that is by the relative amounts of damages which seem likely to result if the injunction is granted and the plaintiff ultimately falls or if

it is refused and he ultimately succeeds. The plaintiff must in any event show that if the defendant is allowed to continue infringing until the trial there

is some reasonable apprehension that some irreparable damages will be caused to him that is to say he would not be fully compensated by an

order for damages made after trial. The balance of convenience is not substantially affected by the offer or an inadequate undertaking by the

defendant.

If the defendant shows a prima facie case of concurrent right the court ordinarily will not interfere by interlocutory injunction. But it is not the

practice to consider the validity of the registration of the mark on a motion for interlocutory injunction : whilst a mark remains on the register (even

wrongly) it is not desirable that others should imitate it.

In case where the defendant claimed a right to the mark in question, and had applied to register it himself, an interlocutory motion for an injunction

by the plaintiff was ordered to stand over pending the result of the application.

where there is a substantial case to be tried the application for an interim injunction may be ordered to stand over to the hearing upon the defendant

undertaking to keep an account of his sales under the mark objected to ............

The interim injunction being intended only to preserve the plaintiff''s right from serious detriment until the hearing, is at any rate in cases in which

the right appears to be doubtful or honestly disputed, limited as closely as possible to what is sufficient to attain that end. The plaintiff must give a

cross-undertaking to abide by any order of the court as to damages for the loss (if any) occasioned by it to the defendant should it turn out at the

hearing that it ought not to have been granted. If an undertaking to the court is given in lieu of an interlocutory injunction there is similarly inserted in

the order a cross-undertaking in damages. Where the plaintiff is a foreign corporation it and its British subsidiary may give the cross-undertaking.

The best guidance however, the Bench, deciding the case of Wockhardt Limited (Cited Supra) found in a Bench decision of this court in the case

of Mount Mettur Pharmaceuticals (P.) Ltd. Vs. A. Wander, , and has extracted from the said judgment as follows :

The main ground on which the Assistant Registrar whose opinion was accepted by the learned judge refused to register the trade mark is that

there is phonetical similarity. The drugs are ''Asthmix'' and ''Asmac''. At the first blush or on the first impression there could be no difficulty in

coming to the conclusion that there is no similarity. But we have been taken through a number of decisions by both sides each supporting its own

stand. It may be frankly stated that it is difficult to deduce any principle of law from these decisions. The decisions have been rendered on the facts

of the case and some times appear to be irreconcilable. In the circumstances, we would follow the principles laid down in Halsbury''s Laws of

England Vol. 38 Simonds Edn. and by Lord Parker in Pianotist Co. Ltd., application 1906 23 RPC 774. In Halsbury''s laws of England Vol. 38 at

page 586 it is stated - ""Thus in the case of applications for registration of trade marks and in opposition thereto the onus is on the applicant to

satisfy the registrar that the trade mark applied for is not likely to deceive or cause confusion."" As regards resemblance it is stated that it is a

question of fact. The author observes - ""Whether or not any degree of resemblance likely to deceive or cause confusion exists is a question of fact

for the tribunal or court to decide upon the evidence in each case and is not a matter for witnesses. What degree of resemblance is likely to

deceive or cause confusion in any instance is incapable of definition a priori and the observations of judges upon other and quite different facts are

usually of little help

In the of quoted decisions in Pianotist Co. Ltd.''s application (1906) 23 RPC 774, Lord Parker has laid down the tests as follows :

You must take the two words. You must judge of them both by their look and by their sound. You must consider the goods to which they are to

be applied. You must consider the nature and kind of customers who would be likely to buy those goods. In fact, you must consider all the

surrounding, circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade

mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion, that there will be a

confusion that is to say not necessarily that one man will be injured and the other will gain illcit benefits but that there will be a confusion in the mind

of the public which will lead to confusion in the goods then you may refuse the registration or rather you must refuse the registration in that case.

The primary tests are that the words should be judged by their look and by their sound. There is no similarity in the words by their look in the

present case. ''Asthmix'' and ''Asmac'' in our view are not similar in sound and are not likely to confuse any person.

We do not accept these as proper tests. These medicines are schedule H drugs and can only be dispensed on the prescription of the medical

practitioner.

Before the Assistant Registrar and the learned Judge the appellant stated that he would be satisfied if the registration of the word ''Asthmix'' is

confined to the drugs which contained any of the drugs mentioned in Schedule H. The question of an innocent and unwary purchaser walking to the

shop and purchasing the medicine without a prescription does not arise. The medicine has to be dispensed on the counter on the prescription of the

doctor. One can expect a compounder to dispense the medicine properly unless he is grossly negligent for which contigency the trade mark law

cannot give any protection. When a person authorised under the act, namely doctor, nurse or a compounder deputed by the hospital or similar

institutions goes to a pharmacy for buying the medicine, it is presumed that he is sufficiently informed as not to mistake one medicine for the other

when there Is no similarity between the two drugs. It is far-fetched to say that these persons are defective in the pronounciation of the English

words, making it possible that they would mix up between ''Asthmix'' and ''Asmac''. We are aware of the fact that in the case of pharmaceutical

drugs the court should be careful not to permit any room for confusion. The possibility of confusion is for a normal buyer of even an unwary

purchaser and not for fools and idiots.

After referring to the judgments in Anglo-French Drug Co. (Eastern) Ltd. Vs. Belco Pharma, , F. Hoffmann-la Roche and Co. Ltd. Vs. Geoffrey

Manner and Co. Pvt. Ltd., , Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Pvt. Ltd., , the Bench, in its judgment in the case of

Whockhardt Ltd. has said, ""the above authorities thus delineate the ambit of enquiry at the stage of grant of interlocutory injunction"" and

pronounced in a case of passing off as follows :

It is not a case where the plaintiff''s right to trade under the name ''Penlox'' is not disputed by the defendants. They have pleaded that their trade

name ''Pelox'' held the market since 1980, then stopped only to be revived again in 1991. Since the burden is upon the plaintiffs they must show

that the defendants had given up their trade name and that when they started manufacturing their medicine in the name of ''Penlox'' the defendants

were not in the market at all. The dispute as to whether the plaintiffs are entitled to registration of their trade mark by name ''Penlox'' Is pending

before the registrar. According to the defendants they had filed their objection within the stipulated period of four months before the registrar :

according to the plaintiffs no such objection was filed on behalf of the defendants and thus the plaintiffs were entitled to get their trade name

registered; a controversy which is yet to be finally decided by the registering/competent authority. The learned trial judge has rightly proceeded to

consider where the balance of convenience lies. But then it seems his attention was not drawn to the principles that even in a case of passing off

there are certain rights of equity which have to be borne in mind and that it is not the injury to the plaintiff alone that would entitle him to the interim

injunction but a combination of the effect of the grant of the order of injunction or refusal thereof upon both the plaintiff and the defendant and as

indicated above to find out who of the two would suffer irreparable injury and grant injunction only if it is found that the inconvenience which the

plaintiff will suffer by the refusal of the injunction is greater than that which the defendant will suffer, if it is granted. The court as indicated above has

also to see whether any cross-undertaking to abide by any order of the court would be necessary and how far it is necessary to restrain, that it to

say the extent to which the parties should be put to restraint. It is a case in our opinion in which on the facts of this case it may not be wholly

unjustified to hold that since the main controversy as to who is entitled to the trade mark is pending before the Registrar, the adjudication in court

should wait the adjudication before the Registrar. It is a case, we are of the opinion, that a conclusion to grant interim injunction has been recorded

without above principles of equity having been adverted to. It is a fit case in our opinion in which this court should interfere with the order of

injunction. We have already noticed and we reiterate that no hard and fast rule can be laid down and whether temporary injunction should be

granted must be determined on the facts of each case. The court is duty bound thus; to take notice of each relevant fact and the rules of equity in

deciding whether to grant temporary/interim injunction or not. In our considered opinion it is a case in which the rules of equity as aforementioned

have not been adverted to and the case has not been examined in all its aspects. It is a fit case for interference with the order of interim injunction.

Before we refer to the facts of the instant case, we furnish for the consideration how the courts should decide whether to grant injunction or not

a judgment of the Supreme Court in the case of Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, , which has been cited at the Bar by learned

counsel for the plaintiff-respondent. The Supreme Court in the said judgment has refereed to its earlier judgment in the case of Kaviraj Pandit

Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, , and pointed out, ""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 the use of the trade mark in relation to those goods

(vide Section 21 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 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 their 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 trade mark 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."" In Parle

products case (cited Supra), the Supreme Court has said, ""It is therefore clear 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. In this case we find that the packets are practically of the same size, the colour scheme of the two

wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other.

The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens

or chickens in the foreground. In the background there is a farm house with a fence. The words ""Gluco Biscuits"" in one and ""Glucose Biscuits"" on

the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a took at

one the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not

careful enough to note peculiar features of the wrapper on the plaintiff''s goods, he might easily mistake the defendant''s wrapper for the plaintiffs'' if

shown to him some time after he had seen the plaintiffs''. After all an ordinary purchaser is not gifted with the powers of observation of a Sherlock

Holmes. We have therefore no doubt that the defendants'' wrapper is deceptively similar to the plaintiffs'' which has registered. We do not think it

necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no

use to note on how many points there was similarity and in how many others there was absence of it.

The rule of phonetic similarly, we think, should not be extended in such a way that words with same consonants of similar despatch should

always be treated as phonetically similar. If such an expansion is permitted, one can say that ''eye'' and ''ear'' are phonetically similar. Words

change their meanings some times by a prefix; some times by a suffix. They also change when they are combined with another word. In determining

phonetic similarity thus the phonetic sequence of the consonants and vowels in a word or a compound of words will also be significant. One can

gather phonetic similarity, however, with reference to the context of the trade in which the mark concerned is used as well as their circumstances.

Persons dealing tn gold will invariably select a trade mark which will signify the character of the ornaments/articles made of Gold and only because

someone has earlier got the word ''Kanchan'', ''Swam'' or ''Gold'' in combination with some other words or has created some absurd word with

the words which signify gold, he may not be allowed to say that all others who will come in future to trade in gold will infringe his trade-mark if they

use the words ''Kanchan'' or ''Swarna'' combination with any variation or combination whatsoever. When we take up, thus, plaintiff-respondent''s

product ''Eyetex'' and the defendant appellant''s product ''Eyeris'' to judge the phonetic similarity, we notice that the defendant-appellant has

combined the Tamil word for Eye treatment with the English word ''EYE'' and spelled the combined word to read ''EYERIS''. The plaintiff-

respondent has used the word ''Eye'' to combine with ''tex'' which does not appear to be an independent word in itself and if it is so, it does not

appear to convey any meaning. The word ''Eyetex'' is the compound of the word ''Eye'' with ''tex'' as suffix. It is difficult, on principles as

aforementioned to read in the two, that is, ''Eyetex'' and ''Eyeris'' such phonetic similarity as to lead to one infringing the other. We are supported in

our view, with the judgment in wockhardt Limited''s case, which in turn has placed reliance upon the judgment in M.M. Pharmaceuticals'' case

(Cited supra).

In the context, however, deception and/or confusion is not over only by eliminating the phonetic infringement. In trade mark violations visual is

equally important for the obvious reason that all commodities for sale are made for all sections of people and when they are made for sale to

people who are not literate at all or semi-literate, it is visual which causes the real impact. That person, for whom the traders create their marks, is

one who gives to a trader with a particular mark a market and to himself a thing which he believes carries the quality promised by the trader who

holds the trade-mark. It is he who is mislead if similar marks are used by more than one trader. We are conscious that we should not place side by

side the marks of the plaintiff-respondent and the defendant-appellant and then scrutinise how far they are similar and how far they are disimilar. It

would be enough, if we notice the overall similarity and that with such similarity in marks, if both the Plaintiff-respondent and defendant-appellant

trade, a person, who is accustomed to the marks is likely to be mislead or not. We have already noticed that the visual impact of similarity in the

marks of the Plaintiff-Respondent and the Defendant-Appellant is prominent, because the green border and the designs are similar to the covers

and wrappers used by the Plaintiff-Respondent and the Defendant-Appellant. Since the trade mark of the Defendant-Appellant is already

registered and the Plaintiff-Respondent has failed in his attempt to get the same removed from the registration and has appealed separately against

the order of the Registrar of Trade Marks, we do not propose to dilate any further into this controversy. It will be almost unusual for a court to

restrain a person from using a registered trade mark. The court still can restrain a party, if it has reason to think that by going beyond the mark

registered by the party concerned, it has infringed the mark of another or by an independent assessment of the facts, the Court has found that the

party concerned has got his mark registered by misrepresentation or otherwise by practicing some sort of fraud. We are spared, however, of any

further exercise to find out whether the visual similarity, as noticed by us earlier, is an act of infringement by the Defendant-Appellant falling within

the principles aforementioned. The Defendant-Appellant, has offered to put around each alphabet in the word ''Eyeris'' a red border and a sample

in this behalf as presented before us, is kept on the record.

A person trading with a particular mark is entitled to insist that no one else should use that mark for trading in the same or similar commodity. If

there is any infringement or the mark used by the other is deceptively similar to his mark in the sense that it so nearly resembles his mark that it is

likely to deceive or cause confusion, he, undoubtedly, can ask the court to restrain the other to trade with such deceptively similar mark. This,

however, cannot in our view, mean that a person having a registered trade mark or having traded with such trade mark for quite sometime has got

such a right that he will stop all others from trading with any mark, which has slightest similarity with his mark. While a complaint against any unfair

trade practice of another, including others indulging in trade with a deceptively similar mark is welcome, such complaint should not be resorted to

only to stop any competition in business. A fair and healthy competition in trade is always welcome. Only such a trader will be afraid of such a

competition, who is not ready to give to the consumer the best, which he can produce.

On the over all assessment of the facts of this case and, particularly, the fact that while admitting the instant appeal, in C.M.P. No. 16421 of

1985 a Bench of this court granted stay to the defendant-appellant and the defendant-appellant has continued to trade uninterrupted with the trade

mark ''Eyeris'' as above and the fact that, except the items already distributed for sale, the defendant-appellant is ready and willing to put around

each alphabet in the word ''Eyeris'' a red border, we hereby order as follows :

(a) The defendant-appellant shall forthwith introduce on every cover/wrapper red border to each alphabet of the word Eyeris, both in English and

in Tamil and release for trade all his products only after the red border is put around the each alphabet as above.

(b) There shall be no order of restraint against the defendant-appellant, except as (a) above and shall, accordingly, be free to trade until the

disposal of the suit, but shall abide by any order that may be made; as to the validity/legality of the registration of his trade mark Eyeris in any

collateral or independent proceeding.

In view of the above, the appeal is allowed to the extent indicated above. Parties shall bear their own costs.