M/s. Brooke Bond India Limited vs Nalini Coffee Traders

Honourable Mr. Justice S.H. Sheth

This appeal has been filed by the plaintiff under the Trade and Merchandise Marks Act, 1958. The facts of the case, briefly stated, are as under. The Brooke Bond India Limited, the plaintiff, has been dealing in coffee under registered trade marks. They found that the defendant. Nalint traders, had been using the offending labels and packing materials and offering under them for sale coffee to the members of the public. They therefore filed the present suit for a permanent injunction restraining the defendant from infringing their registered trade marks and also for restraining them from passing off their goods as if they were plaintiff''s. They also sought accounts from the defendants of the business which they had carried on under those offending labels and packing materials. The learned 1st Additional District Judge, Guntur who tried the suit found that there was neither infringement of the plaintiff''s registered trade marks by the defendants nor was there any passing off of their goods to the members of the public as if they were the plaintiff''s goods. He therefore dismissed the suit. It is that decree which is challenged by the plaintiff in this appeal. The action is based upon section 29 of the Trade and Merchandise Marks Act, 1958. Sub-section (1) of Section 29 of Trade & Merchandise Marks Act, 1958 provides that "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". It is not necessary to reproduce sub-section (2) in this case. There are two tests which sub-section (1) of section 29 lays down in order to determine whether the plaintiff''s rights to the registered trade mark have been violated. The first test is this. Is the mark which the defendants have been using identical with the registered trade mark of the plaintiff? Or is deceptively similar to it? There are a few decisions of the Supreme Court and some High Courts which throw light upon the question. Before I refer to them it is necessary to note that the expression "deceptively similar" used in sub-section (1) of section 29 has been defined by clause (d. of Sub-section (1) of Section 2 of the said Act. This is what clause (d) provides: "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."

In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmacheutical Laboratories AIR 1965 S. C. 980 the Supreme Court has laid down two principles which it is necessary to note. The Supreme Court has observed as follows:

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 registered trade mark for the vindication of ''the exclusive right to the use of the trade mark in relation to those goods''. 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 quo non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. 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.

The Supreme Court has further observed that the court takes into account while arriving at this conclusion get-up, packing and other writing or marks on the goods or on the packets in which goods are offered for sale. When once the use by the defendant of the mark which is claimed to infringe the plaintiff''s mark is shown to be "in the course of trade" the question whether there has been an infringement is to be decided by comparison of the two marks. But if the two marks are identical, no further question arises for then the infringement is made cut. But when the two marks are not identical, the plaintiff will have to establish that the mark used by the defendant so nearly resembles the plaintiff''s registered trade mark as is likely to deceive; or cause confusion in relation to goods in relation to goods in respect of which it is registered.

In Ruston & Hornsby Ltd. Vs. The Zamindara Engineering Co., 1969 (2) S.C. Cases, 727 the distinction between infringement and passing off has been pointed out by the Supreme Court. It has been observed that an infringement action is quite distinguishable for passing off action while they are similar in some respects. What is necessary to prove in a passing off action is whether the defendant is selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff''s goods, while in an infringement action what is required to be proved is whether the defendant is using a mark which is the same as or which is a colourable imitation of the plaintiff''s registered trade mark. The visual and phonetic similarity is also taken into account in a passing off action. The court in such a case takes into account the getup of the goods, the description of them and the probability of confusion between the goods of the plaintiff and the goods of the defendant. In other words the test is whether there is any likelihood of confusion or deception arising from similarity of marks. This test is common to both infringement and passing off actions.

In Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, it has been observed that to decide the question as to whether the plaintiff''s right to trade mark has ban 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. In order to come to the conclusion whether one mark was deceptively similar to another, the broad and essential features 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 on 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. It is no use noting how many points are similar and how many points are dissimilar. While deciding this question the court indeed takes into account the colours, the general get-up and the entire sequence of words. Whether the defendant could commit fraud on customer also could be taken into account. Pointing out the distinction between infringement and passing off, it has been observed by the Supreme Court that the use by the defendant of the plaintiff''s trade mark in an action for passing off is not essential but it is the sine que non for the infringement. The likelihood of committing deceit upon the purchaser arising out of close visual and phonetical similarity is one of the factors which the court has to take into account.

In Kimberly Clark Corporation vs. Bay''s Chemicals 1968 (II) M.L.J. 14 a Bench of the Madras High Court has laid down that the likelihood of deceit in practice or confusion by phonetic or orthographic similarity is a factor which would be taken into account Whether the purchaser would accept goods of one brand for the other under the impression that they are identical is also one of the tests.

In Prem Nath Mayer Vs. Registrar of Trade Marks and Another, relying upon a Bombay decision it has been observed by the Calcutta High Court that what was important to find out was the distinguishing or essential features of the trade mark already registered and the main features underlying the trade mark whose registration was sought. In other words the real question is as to how the purchaser who must be looked upon as an average man of ordinary intelligence would react to a particular trade mark, what association he would form by looking at the trade mark and in what respect he would connect the trade mark with the goods he will be purchasing. A person who locks on a trade mark does not take into account every single feature thereof. The question is what would be normally retain in his mind after looking at the trade mark? What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark?

In Khemraj Shrikrishandas Vs. Garg and Co. and Another, it has been pointed out by a learned single Judge of the Delhi High Court that an infringement action is a statutory remedy and the plaintiff must prove his title and exclusive right to use the trade mark in question and further establish that the defendant has infringed it by identical or deceptively similar or colourable imitation of it. The action for passing off is a common law remedy and its gist is deceit and not infringement of right to exclusive user. What is essential for the plaintiff to establish are. (1) distinctive features; (2) substantial use and (3) wide reputation. The law casts an obligation on the defendant not to pass off his own goods as if they had been produced by the plaintiff and the courts will enforce that obligation. It is not necessary to prove actual deception. It is enough if it is shown that there is a reasonable ground for apprehending deception.

The last decision is in Anglo-Dutch, Colour and Varnish Works Private Limited Vs. India Trading House, he tests for comparing the registered trade mark with the offending one are as follows. The Court should decide if on first impression the two marks are so similar as are likely to cause confusion or deceit. This question should be decided from the point of view of a man of average intelligence having imperfect recollection. If their overall visual and phonetic similarity is likely to deceive or confuse such a man that he may mistake the goods of the defendant for those of the plaintiff and lastly who are the persons likely to be deceived and what rules should govern the comparison in such resemblance.

Bearing these principles in mind, I roust proceed to examine the claim made by the plaintiff. The evidence produced by the plaintiff shows that its trade mark is limited to two colours as shown in the representation which is annexed. The evidence further shows that the registration of the trade mark in terms of the colours as shown the representation, has given no right to the exclusive use of the words green label. Exs. A.1, A. 1 and A. 3 which are certificates produced from the office of the Registrar of Trade Marks bear it out. What is clear therefore is that registered trade mark of the plaintiff is the colour scheme or design as shown in the representation, that is, yellow and green. At the top there is a thick yellow line which is followed by a thick green line which in its turn is followed by thick yellow line. Then there is the green background against which whole words have bean written. Than follows the yellow thick line which in its turn is followed by thick green line, which again in its turn is followed by yellow background in which there is some writing in green ink in a green bordered box and another writing which is not in a box but which is against the yellow background. It is this colour scheme and design which has been registered by the plaintiff with the Registrar of Trade Marks.

Let us now turn to the label which the defendant has been using and which the plaintiff calls "offending label." The yellow and the green lines are exactly similar to the registered colour scheme or design of the plaintiff''s. There is also a green bordered box in which there is a writing. I am not able to find any difference between the colour scheme of the plaintiff''s registered trade mark and the colour scheme of the defendants offending label. Exs A.8, A.9, B.9, B.10 and B.11 bear out what I have stated above. Indeed the defendant has produced Exs. B.12 and B.13, two tables of the plaintiff company which have a similar colour scheme but which have the mark of the globe on the green background in the label, it has been argued by Mr. A. Hanumantha Rao on behalf of the defendant that the colour scheme of the defendant''s offending marks are different from the colours and the colour scheme of the plaintiff''s registered trade marks. I have not been able to find between these two sets any difference except for the fact that the colour scheme of the plaintiff''s registered trade mark shows deep green colour wherever it is while the defendant''s offending mark shows a slightly light green colour wherever it has been used. That, in my opinion, cannot exonerate the defendant from the liability which it has incurred by using unauthorisedly the colour and the colour scheme of plaintiff''s registered trade mark. There is no doubt in my mind therefore that the colour scheme and design which the defendant has been using is identical which the colour scheme and design which the plaintiff has registered as its trade mark. This is therefore in my opinion a clear case of infringement of the plaintiff''s trade mark by the defendant.

It is now not strictly necessary for me to examine whether the defendant under the marks which it has been using is trying to pass off its goods as those of the plaintiff. However I may express my opinion on that aspect. I have no doubt in my mind that it is doing so. The two the identity of colour schemes and designs and the similarity of the branded material point to this conclusion. Indeed, Mr. Hanumantha Rao has tried to argue that on the plaintiff''s packing material the words ''Brooke Bond'' have been so boldly written that it is difficult to imagine that a man of average intelligence would commit any mistake in distinguishing them from the word ''Nalini'' used on the defendant''s packing material. He has also argued that the expression "Green label" used on the plaintiff''s packing material is not the registered trade mark. The second fact which he has pointed out to me is indeed true. It cannot therefore be gainsaid that it is open to every one to use the expression "green label" for his goods if he so desires. But that is not an answer to the contention which Mr. Srinivasa Murthy has raised on behalf of the plaintiff Nor can it be said that the two expression "Brooke Bond" used by the plaintiff and "Nalini" used by the defendant are such as to remove all probability of deceit and confusion in the minds of the members of the public It may be true that the goods which the plaintiff has been marketing under the registered trade mark are purchased by sophisticated class of persons. But no definite opinion can be ventured in that respect because coffee is a national drink end a common man''s drink more particularly in southern part of this country. Therefore a mere change of the expression here or there--all other things remaining the same cannot negative the plaintiff''s charge that the defendant has been using deceptively similar marks for marketing his goods. It may be noted that except for these expressions which are different, all other writings on the registered trade mark of the plaintiff and the defendant are quite similar and identical.

I am therefore of the opinion that the learned trial judge was in error in taking the view that the plaintiff has neither the cause of action for infringement of their trade mark nor have they any cause for a passing off action. The identity between the registered trade mark of the plaintiff and the offending mark of the defendant is so glaring and hold that it is difficult to come to any other conclusion than one which I have reached. In the result the appeal is allowed, the decree passed by the learned trial judge is set aside and the suit is decreed. A Permanent injunction in favour of the plaintiff is granted in terms of the plaintiff in that behalf. The plaintiff has also prayed for taking accounts of the business carried on by the defendants under their offending marks. Mr. Srinivasa Murty who appears on behalf of the plaintiff has expressly stated to me that the plaintiff will be satisfied if it is given a token amount for damages in lieu of their prayer for taking accounts. In view of this express concession made on behalf of the plaintiff, interests of justice, would be served by directing the defendant to pay to the plaintiff a token amount of Rs. 25/- for damages. The defendant shall pay to plaintiff the costs of the suit and the costs of this appeal.