The Dhanalakshmi Weaving Works vs Hajee Mohammad Abdul Azeez Sahib

Venkataramana Rao, J.—This appeal arises out of a suit filed by the plaintiff for restraining the defendants from using the trade name

Diamond"" or any other colourable imitation of that word in relation to cotton shirtings manufactured and sold by the second defendant. The

learned City Civil Judge decreed the suit in favour of the plaintiff and it is against this decision the second defendant has preferred this appeal.

The finding of the lower Court is that the word ''Diamond'' has become associated in the public mind with the cotton twill shirtings which the

plaintiff was dealing in since the last 13 years. This finding has been canvassed by Mr. Ramakrishna Aiyar on behalf of the appellant but the

evidence justifies the finding. The evidence of the plaintiff''s witnesses was believed by the learned Judge and I see no reason to differ from his

estimate of it. The main defence is that the plaintiff has no doubt been using the word ''Diamond'' with reference to twill shirtings but it is only with

reference to plain white mull; whereas the goods on which the second defendant imprinted the word ''Diamond'' are coloured striped shirtings and

therefore he does not infringe the trade name of the plaintiff. It seems to me that this defence is not a valid defence at law. Where a particular name

has become associated with goods manufactured or sold by the plaintiff, he is entitled to the protection of its name against persons who use that

name on goods which are so similar to that of the plaintiff that the purchaser might infer a common origin. There can be no doubt in this case that

the goods sold by the defendant are so similar to that of the plaintiff that the purchaser might infer a common origin. The goods sold by the second

defendant are certainly twill shirtings; only he says that his goods are coloured and striped. I would refer in this connection to the case of the

Dunlop Pneumatic Tyre Co., Ltd. v. The Dunlop Lubricant Co 16 Reports of Patent, Design and Trade Mark Cases 12. In that case the Dunlop

Pneumatic Tyre Co., used the word ''Dunlop'' in connection with the goods manufactured by them which goods consisted of pneumatic tyres for

cycles and other accessories such as pumps, inflators etc, but they never sold burning oil or lubricants. The defendant started a company as the

Dunlop Lubricant Company and used the word ''Dunlop'' in connection with the oils and lubricants sold by them. Romer, J., remarked that though

the plaintiff did not sell the same class of goods as the defendant, it would be wrong to allow the defendant company to use the word ''Dunlop''

because that would induce the public to believe that the goods are those of the plaintiff company. In meeting the argument that the goods were of a

different description the learned Judge remarked as follows : ,

They (the plaintiff company) themselves are sellers of cycle accessories, though as a matter of fact up to the present time they have not sold burning

oil or lubricants. But they may do so, and in the meantime it appears to me that they are entitled to come into Court and say that a name

substantially identical with theirs ought not to be allowed to be used by the defendant in the way in which he is using it.

The same learned Judge gave an injunction in a similar case reported in Eastman Photographic Materials Co., Ltd. v. (John) Griffiths Cycle

Corporation, Ltd and the Kodak Cycle Co., Ltd. 15 Reports of Patent, Design and Trade Mark Cases, 105, where the plaintiff company invented

the word ''Kodak'' and applied it to certain of its cameras sold by them and the Kodak cameras were especially available for use on cycles and

they were much used by cyclists. The defendant company began to use the word ''Kodak'' in connection with the sale of their cycles. It was found

by the learned Judge that the word ''Kodak'' had become associated in the public mind as the goods manufactured by the plaintiff company in

connection with the cycle trade though the plaintiff company were not selling cycles. In the course of the judgment the learned Judge observed thus:

Many shops sell and deal in both bicycles and photagraphic cameras and materials. To a certain extent the plaintiff company is identified with the

name ''Kodak'' as connected with cycles, and so great is the connection between the two classes of business, that in all probability, I may say, the

plaintiff company may wish hereafter to manufacture and sell cycles specially adapted to carry their Kodaks. That was the position of affairs when

the defendant began to do what I am going to call attention to.... In my opinion, it (the defendant company) wanted to use the word ""Kodak"" and

acquire a monopoly of it, as applied to cycles, in the hope and intention of, in some shape or other, identifying their company with the plaintiff

company whose ''Kodaks'' were so well known in the market to cause the public to suppose either that the defendant company, under its own

name or under the name of the Kodak Cycle Company Ltd., was the plaintiff company, or was, at any rate, connected with the plaintiff company,

or to lead the public to suppose that the goods which the defendant company was going to sell were the goods of the plaintiff company, and so to

obtain the benefit of the large reputation, and the benefit also of the expenditure of the plaintiff company.

He also remarked that:

No intelligible reason has been or can be suggested why the defendants took the term ''Kodak'' to be applied to their cycles.

The facts in this case are similar. The plaintiff has been using the word ''Diamond'' for the last 15 years and it was not until 1937 the 2nd

defendant mill conceived the idea of putting the word ''Diamond'' on their goods and from the evidence given by the 2nd defendant''s witness it is

clear that they chose the word ''Diamond'' with the deliberate object of inducing the public to believe that the goods they were selling were

connected with the goods of the plaintiff''s company. l am giving here an extract of his deposition which clearly shows what the object of the

defendant company was in using the word ''Diamond''.

Q. Did you make any enquiry in the markets what trade names or trade mark have a good reputation in ?

A. I made no enquiry.

Q. Is there any reason for your using the word ""Diamond""? A. No. I say I never saw the Diamond trade name or trade mark of the plaintiff. I say

also I never heard about it.

Q. If you remove the ''Diamond'' from the words ""Diamond Standard"" imprinted on your goods, your goods would not find a good market?

A. I cannot tell--how do I know.

He is unable to give any intelligible reason why he used the word ''Diamond'' and the inference is irresistible that he has done it for the purpose

of connecting himself with the plaintiff and his business. In Warwick Tyre Company, Limited v. New Motor and General Rubber Co. Ltd. (1910)

1 Ch.D. 248 the same principle was applied by Neville, J. In that case the plaintiffs manufactured and sold tyres for cycles and motor cycles under

the name of ''Warwick''. They never used that name in connection with motor tyres. The defendant company began to advertise the sale of motor

tyres under the name of ''Warwick''. The plaintiffs sought to restrain the defendant company from doing so. It was held that they were entitled to

the injunction. The learned Judge found that:

Having regard to the name ''Warwick'' upon the market, a motor tyre introduced as a Warwick motor tyre would lead to the supposition that the

persons who were dealing with it were the same persons as those who had for many years past been dealing with the Warwick cycle tyre.

In dealing with the argument that the plaintiff company never sold motor tyres, the learned Judge remarked as follows:

It is also said that since the plaintiffs are not dealing in the article which the defendants are putting upon the market in their name there can be no

damage for the loss of the sale of the goods, and therefore this action will not lie. Now I do not think that that argument is tenable. It seems to me

that the question is, are the defendants putting their goods upon the market in such a way as to lead to the supposition that they are the goods of

the plaintiffs? If so I think the plaintiffs are entitled to an injunction restraining the defendants from so acting....As I understand it, practically the sole

asset possessed by the plaintiffs is the goodwill which attaches to the name ''Warwick'' in the tyre market.

In my view the learned City Civil Judge has approached the decision of the case from a correct standpoint and it has not been shown that his

application of the principles of law to the facts of the case is in any way wrong.

I, therefore, confirm the decree of the learned City Civil Judge and dismiss the appeal with costs.