Aravind Laboratories v. V.A. Samy Chemical Works

1. One Aravind Laboratories, a registered firm represented by its Senior Partner A.V Srinivasan, has filed the above suit for (1) a permanent injunction restraining the defendant V.A Samy Chemical Works from manufacturing, selling and offering for sale “Kajal” with the offending trade mark Rani Eyevix; (2) accounting and for recovery of profits earned by the defendant by way of damages for the infringement; and (3) for directing the defendant to surrender all the cartons, labels and any other printed matters containing the offending Rani Eyevix trade mark together with the blocks.

2. The allegations in the plaint are briefly as follows:— The plaintiff and his predecessors in title have been dealers in cosmetics for about 50 years. Their main products are Kajal used for beautifying the eye and Kum Kum used by Indian ladies. In the year ending 31-3-1983 the Plaintiff's turnover amounted to Rs. 1,58,14,125/-. All their 24 different types of products are known in the market by their trade mark “EYETEX” registered as early as 1946 under the Trade Marks Act 1940. The name Eyetex has become the special distinctive trade mark identity for all their products. This is also reflected in the judgment of this Court reported in Aravind Laboratories v. V. Annamalai Chettiar, (1981) 1 Mad LJ 75 : (AIR 1981 NOC 13). Kajal (collyrium) produced by the plaintiff is marketed in a black circular plastic capsule, on the face of which is embossed the words EYETEX Registered. Along with the capsule an inch long plastic stick with handle is also supplied for applying the Kajal to the eye lashes so that the Kajal does not stain the fingers. The plastic capsule is wrapped by a sheet giving directions for use and along with the plastic stick it is packed in a square cardboard box.

3. The principal face of the square cardboard box contains the registered trade mark of the plaintiff bearing No. 124824 (Class 3) registered in the year 1946. It contains the profile of a face with prominent eye brow and eye lash. Words “Eyetex” written horizontally in bold, distinctively created letters and “Regd” are written at the bottom to indicate that the entire design and the legend are registered. The three colours, green, white and black are used in artistic combination to give an arresting effect even at the first glance. The reverse face of the carton contains a circle, in which the address of the plaintiff is printed. There is an artistic background with the design of several floating eyes in green. On top the weight of the contents viz. 1.5 grams and the price Rs. 1.25 are printed. On the remaining four rectangular sides, the address of the plaintiff, Eyetex Kanmai in Tamil, Kajal in Hindi, Katuka in Telugu are printed. In the background eye is printed in green. The picture of the eye is the dominating motif of the carton.

4. The Plaintiff and their predecessor in title have been using the above design and carton for about 40 years. The product of the plaintiff is associated in the minds of their consumers with the above distinctive design, get-up, colour combination and the style of writing. Along with the capsule the plaintiff keeps an instruction sheet which contains the details of the registration, direction for use and brief history of the product in six different languages, namely Tamil, Telugu, English, Malayalam, Kannada and Hindi.

5. In 1980 Kajal Collyrium with the address of the Defendant was found to be sold in a number of outlets in the city of Madras. It was filled in black plastic capsules exactly similar to that of the Plaintiff. The capsule was packed in a square cardboard box similar in design, colour combination, get up and size of the cardboard box of the plaintiff with the word ‘EYEVIX in the place of EYETEX. The combination of the three colours, black, white and green are identical to that of the plaintiff. On the reverse the address, the price, weight, etc. and in the background the design of many eyes in green are printed.

6. The plaintiff issued a notice on 10-4-1980 to the defendant stating that the manner in which the defendant's product was packed amounted to infringement of the Plaintiffs' registered trade mark as well as passing off of the Plaintiff's product. The defendant sent a reply dated 17-4-1980 denying the allegations made. Thereafter plaintiff did not notice the defendant's product in the retail outlets anywhere in the city of Madras and other places. Hence no action was taken.

7. Two months prior to the filing of the suit the Plaintiff noticed that the defendant's Kajal is very much in evidence in a large number of retail outlets. But in the manner of packing the following differences have been introduced. Firstly the lid of the plastic capsule contains a crown and the legend Rani Eyevix embossed in gold colour. Secondly, there is a circular cut-out face above the word EYEVIX with the word “Rani” printed in smell letters. In spite of these differences the defendant's product is so similar to the produced of the plaintiff. The conduct of the defendant amounts to infringement of the plaintiff's trade mark as well as passing off.

8. In the defendant's cartons there is a false representation stating that the trade mark is registered and its registration number is 19631. There is no such registration in reality and the conduct of the defendant is an offence under S. 81 of the Trade and Merchandise Marks Act, 1958 punishable with six months' imprisonment. As per Drug and Cosmetics Act the applicant for licence has to give a declaration that the applicant will not contravene Trade and Merchandise Marks Act, 1958. Further the licence stipulated forfeiture in the event of contravention, and the defendant has violated the condition.

9. The introduction of the defendant's product with the offending trade mark carton has created confusion among the consumers as well as merchants and the defendant's products with the Trade name Rani Eyevix is easily taken to be the Plaintiff's product Eyetex in this connection. The Kajal manufactured and sold by the defendant under the Trade name ‘Rani Eyevix’ is inferior in quality and lesser in price than the plaintiff's goods. The trade mark of the defendant is deceptively similar and has a colourable imitation of the Plaintiff. The cause of action arose at Madras within the jurisdiction of this Court. The Plaintiff, therefore, prays for a judgment and decree, for the reliefs mentioned above.

10. In answer to the plaintiff's claim the defendant filed a written statement raising the following contentions: The allegation that the Plaintiff is a registered firm of partnership is not admitted and the Plaintiff is bound to prove the same. The suit is barred under S. 69 of the Partnership Act since no suit could be instituted by a firm in the absence of a certificate of registration of the firm and disclosing the partners thereof. The suit is liable to be dismissed in the absence of the production of the valid certificate as contemplated under S. 69 of the Partnership Act.

11. Even according to the plaintiff's documents the registration of the trade mark Eyetex was made only in October, 1946 in the name of one P.K Vasudevan from whom the plaintiff was stated to have acquired the rights vested in the said trade mark along with other items under the document dated 6-3-1958 and the said document had not been filed along with the Plaint. There is no document filed along with Plaint to show that there was a renewal of the trade mark under the provisions of the Trade and Merchandise Marts Act, 1958 — The Defendant does not admit the allegation that the Plaintiff registered the trade mark Eyetex in 1946.

12. The alleged assignment in favour of the plaintiff will not in the eye of law constitute a valid assignment in favour of the Plaintiff. The renewal of the licence had been done in the name of 8 individuals and the licence appears to be renewed till the end of December, 1984. The truth and genuineness of the document dated 11th September 1946, is not admitted. There is no document in favour of the plaintiff regarding the registration of the trade mark or with reference to the transfer of the ownership of the trade mark Eyetex by Vasudevan in favour of the Plaintiff. No material had been placed before this Court along with the plaint to establish the ownership of Eyetex in favour of the plaintiff. None of the requirements as contemplated under S. 2(v) of the Trade and Merchandise Marks Act, 1958 defining the trade mark had been fulfilled or satisfied by the Plaintiff.

13. Shapes and patterns are not included in the definition of the word Mark. A perusal of paragraph 13 of the plaint would show that the plaintiff would admit the existence of the differences between the product stated to have been manufactured by the defendant and the product manufactured by the plaintiff. However, the plaintiff would urge that the product of the defendant was so similar to the product of the Plaintiff' so that it would be mistaken in the market as the product of the Plaintiff. The defendant setforth in the annexure the vital differences between the two products viz. Eyetex and Rani Eyevix. To a naked eye even the shape and pattern widely differ. The question of any infringement of the alleged plaintiff's trade mark as well as passing of the goods does not arise for consideration at all. There is no resemblance between the two product either phonetically or visually. There are no identical shapes of the products. There is no colourable imitation of the plaintiff's mark by the defendant. The get up, packing and other writings or marks on the goods or on the packets is which the defendants offer the goods for sale show marked differences, and indicate the fact that the defendant's trade mark is entirely different from that of the Plaintiff's mark. The unwary purchaser cannot be said to be in any way deceived by the product of the defendant. No question of deception or causing confusion is relation to the goods manufactured by the defendant will arise.

14. The plaintiff was fully aware that ever since April, 1980 the defendant has been using the trade mark ‘Rani Eyevix’ and the plaintiff did not demur the defendant's dealings with the goods manufactured by the defendant as Eyevix or Rani Eyevix. By their conduct, the plaintiff is estopped on the principles of equitable and promissory estoppel from urging that there had been an infringement of the trade mark in question. The suit is barred under S. 115 of the Evidence Act by estoppel and acquiescence on the part of the plaintiff. There is no legal injury caused to the plaintiff and the suit for damages is not maintainable.

15. There is no contravention of the provisions of Drugs and Cosmetics Act. The case of the defendant is that the defendant registered its name under the provisions of the Copyright Act with reference to the various products manufactured by the defendant. The trade mark Rani Eyevix will not in any way create confusion.

16. The plaintiff is not entitled to the damages in the absence of specific proof of the same. The defendant invested several lakhs of rupees for the manufacture of Rani Eyevix. The defendant has also entered into contracts with the dealers for the sale of its products. The defendant has also engaged workmen for the manufacture of the ‘Eyevix’. True and correct accounts were maintained with reference to the actual manufacture of Eyevix and the sale thereof to its constituents. No injunction can be granted to the plaintiff since if the plaintiff succeeds in the suit it can be adequately compensated monetarily. Even assuming without conceding that the plaintiff is a registered owner, the plaintiff must have obtained the registration fraudulently. The said registration of the trade mark is liable to be revoked under S. 45 of the Trade and Marchandise Marks Act, 1958. The plaintiff is not entitled to relief of injunction prayed for. Under the circumstance the defendant prays that the suit be dismissed with exemplary costs.

17. On these pleading the following issues were framed:—

1. Is the plaintiff a registered firm and whether the suit is barred under Section 69 of the Partnership Act?

2. Is the plaintiff's mark Eyetex registered under the Trade and Merchandise Marks Act, 1958, in their name?

3. Has the defendant infringed the plaintiff's trade mark?

4. Has the defendant committed passing off by using Rani Eyevix?

5. Is not the plaintiff entitled for the relief of injunction and accounting and other reliefs as prayed for in paragraph 19 of the plaint?

6. To what relief, if any, is the plaintiff entitled?

ISSUE NO. 1

Is the plaintiff registered firm and whether the suit is barred under Section 69 of the Partnership Act.

18. In the plaint it is stated that the plaintiff Aravind Laboratories is a registered firm represented by its Senior partner A.V Srinivasan. In the written statement it is stated that the defendant does not admit that the plaintiff firm is a registered firm of partnership. It is also contended that the suit is barred under S. 69 of the Partnership Act since no suit could be instituted by a firm in the absence of a certificate of registration of the firm and disclosing the partners thereof. The plaintiff was also called upon to disclose the names of other partners of the firm. On behalf of the plaintiff P.W 1 deposed that the plaintiff firm is a registered one and the same is registered with the Registrar of Firms. In cross-examination P.W 1 was asked as to who are the partners of the firm to which he replied that (1) A.V Srinivasan, (2) Mrs. Booma Devanathan, (3) Mrs. Shanti Rajagopal are the partners of the firm. He also stated that the Partnership was reconstituted subsequently somewhere in the year 1966 and recently about two years back. Ex. P-11, dated 29-4-1982, is the latest partnership deed. Ex. P.10 is the certificate of registration, dated 21-12-1965, issued by the Register of Firms, stating that Aravind Laboratories had been entered in the Register of Firms as No. 4114 of 1965. Ex. P-10 also contains the seal of the Registrar of Firms. P.W 1 says that the registration still continues. He also states that he applied for the copy of the latest registration certificate and the same has not been received. From Ex. P-10 it is seen that the plaintiff/firm had been registered by the Registrar of Firm. By means of Ex. D-11, the partnership had been reconstituted. The details of the reconstituted partnership had also been filed before the Registrar of Firms on 4-5-1982 as per S. 63 of the Partnership Act and the change in the constitution of the firm had been duly notified and registered. A certified copy of form ‘A’ filed regarding the reconstitution of the partnership had been filed. But by oversight the document had not been marked as an exhibit. Since the certified copy of a public document is admissible even without proof of the same is marked as Ex. P-11(a) D.W 1 who was examined on behalf of the defendant/firm does not dispute the registration certificate Ex. P-11. There is no evidence contra to that of the plaintiff that the registration exists till now. Hence in view of the abovesaid documents coupled with the evidence of P.W 1. I conclude that the plaintiff/firm is a registered firm under the provisions of the Partnership Act. I found on Issue No. 1 that the plaintiff is registered firm and the suit is not barred under S. 69 of the Partnership Act.

ISSUE NO. 2

Is the plaintiff's mark Eyetex registered under the Trade and Merchandise Marks Act, 1958, in their name?

19. In para 4 of the plaint it is stated that all the 24 types of products of the plaintiff are known in the market by their trade mark “EYETEX” registered as early as 1946 under the Trade Marks Act, 1940, renewed from time to time currently valid under the Trade and Merchandise Marks Act, 1958. The name ‘Eye Tex’ has become their special distinctive trade mark identity for all their products. This is also reflected in the judgment of this Court reported in Aravind Laboratories v. V. Annamalai Chettiar, (1981) 1 Mad LJ 75 : (AIR 1981 NOC 13). The abovesaid allegation is denied by the defendant in para 4 of the written statement. It is stated in the written statement that no matter has been placed to show that the plaintiff is currently holding the proprietorship of the trade mark EYETEX. P.W 1 has spoken to the fact that the trade mark EYETEX has been registered. Ex. P-1 is the original trade mark registration certificate issued in favour of P.K Vasudevan, trading as Pushpavanam Stores, 580 Pycrofts Road, Triplicane, Madras, stating that the trade mark “EYETEX” had been registered in his name and the registration number is given as 124824. Ex. P2 is the plaintiff's carton Eyetex, under which the plaintiff is trading. Ex. P-11 dated 29-4-1982, is the deed of partnership entered into between (1) A.V Srinivasan, (2) Smt. Bhooma Devanathan, (3) Smt. Shanti Rajgopal and (4) Aravind Laboratories Private Limited, whereby all the abovesaid persons have constituted themselves into a partnership to continue the business of the plaintiff viz. to manufacture and sell the products such as “Eyetex”, “Bindi” etc. Ex. P11 is signed by all the partners. Ex. P-12 is the certificate from the Registrar of Trade Marks, dated 11-9-1982, mentioning the plaintiff's trade mark number as 124824 and the same had been renewed for a period of 7 years in favour of the plaintiff from 11-9-1982. In Ex. P-12 it is also mentioned that the renewal was advertised in the Trade Mark Journal No. 838. Ex. P-13 is the certificate of registration No. 303087, dated 28-10-1978, showing the registration of the trade mark Eyetex in the names of A.V Srinivasan, Bhooma Devanathan and Shanti Rajgopal, trading as Aravind Laboratories at No. 3, Chakrapani Street, Madras 600033 in respect of perfumery; perfumery compounds; cosmetic preparations known as kajal or kanmai; bindi, bindi pencils; kumkum, etc. Ex. P-14, dated 19-2-1982, is the certificate issued by the Registrar of Trade Marks stating that the registration trade mark No. 303087 had been renewed for a period of 7 years from 19-2-1982, and the said renewal was advertised in the Trade Mark Journal No. 809. Ex. P-15, dated 26-3-1976 is the certificate issued by the Registrar of Trade Mark in respect of the registration of the Trade Mark “Eyetex” in Tamil. Ex. P.16, dated 26-3-1976, is the certificate of registration issued by the Registrar of Trade Marks is respect of the trade mark Eyetex in Malayalam. Ex. P-17, is the certificate issued by the Registrar of Trade Marks showing Registration of Trade Mark No. 296915 of the plaintiff which has been renewed for a period of seven years from 14-6-1981 and the same was advertised in the Trade Mark Journal No. 785. Ex. P-18 is the certificate issued by the Registrar of Trade Marks showing the Registration of Trade Mark No. 296914 of the plaintiff has been renewed for a period of seven years from 14-6-1981 and the same was advertised in the Trade Mark Journal No. 785. Ex. P-19, dated 26-3-1976, is the certificate of registration issued by the Registrar of Trade Marks for Registration of trade marks Eyetex in Telugu under 296913. Ex. P.20 is the certificate issued by the Registrar of Trade Marks showing that the Registration of Trade Mark No. 296913 has been renewed for a period of seven years from 14-6-1981, and the same was advertised in the Trade Mark Journal No. 785. Ex. P-22, dated 26-3-1976, is the certificate of registration issued by the Registrar of Trade Marks for registration of the trade mark Eyetex in Hindi under No. 296910. Ex. P-21 is the certificate issued by the Registrar of Trade Marks showing that to registration of trade mark No. 296610 has been renewed for a period of seven years from 14-6-1981 and the renewal was advertised in the Trade Mark Journal No. 785. Ex. P-23 is the certificate of registration issued by the Registrar of Trade Marks, dated 26-3-1976, showing the registration of trade mark Eyetex in Telugu as per registration No. 296909 Ex. P-24 is the renewal of certificate of registration issued by the Registrar of Trade Marks showing that the Registration of Trade Mark No. 296909 has been renewed for a period of seven years from 14-6-1981 and the same was advertised in the Trade Mark Journal No. 785. The abovesaid certificates of registration and the subsequent renewals in respect of the trade mark Eyetex are produced and spoken to by P.W 1. No evidence contra has been let in by the defendant. Hence the case of the plaintiff that the plaintiff is the proprietor of the trade mark Eyetex in the abovesaid languages and the carton marked as Ex. P-2 stands proved. Hence on Issue No. 2. I find that the trade mark Eyetex has been registered in the name of the plaintiff under the Trade and Merchandise Marks Act, 1958.

ISSUE NO. 3

Has the defendant infringed the Plaintiff's trade mark?

ISSUE NO. 5

Is not the plaintiff entitled for the relief of injunction and accounting and other reliefs as prayed for in paragraph 19 of the plaint?

20. The case of the plaintiff in the plaint as well as the evidence of P.W 1 is that the plaintiff and his predecessor in title were the dealers in cosmetics under the trade name Eyetex for the past many years. Their main products are Kajal used for beautifying the eye and Kum Kum used by Indian ladies. All the 24 types of products of the plaintiff are known in the market by the trade mark “Eyetex” and the same are registered. The plaintiff has been marketing Kajal under the trade mark Eyetex. The carton used by the plaintiff is marked as Ex. P-2. According to P.W 1 the defendant began to market the Kajal in the name of Eyevix in a carton which is deceptively similar to the carton used by the plaintiff. Ex. P-3 is the black and white carton in which the defendant marketed this product of Kajal. Ex. P-4 is the coloured version of the carton used by the defendant. On coming to know of the infringement of the plaintiff's registered trade mark, the plaintiff issued a registered notice Ex. P-6, dated 10-4-1980 to the defendant. In Ex. P-6 it is stated that the trade mark of the defendant's carton “Eyevix” has a striking resemblance to the plaintiff's Eyetex trade mark and the carton also virtually copied including the distinctive get-up, lay-out and colour scheme. Ex. P-7, dated 17-4-1980, is the reply notice issued by the defendant to the plaintiff wherein it is stated that the plaintiff cannot claim any monopoly right over such common features of eye for KANMAI trade which are descriptive and there is no question of infringement and passing off in respect of the said trade mark of the plaintiff. It is also stated that the trade mark EYEVIX for Kanmai has been adopted by the defendant openly and continuously for number of years and as such there is no infringement, colourable imitation and passing off under any sections of the Trade and Merchandise Marks Act, 1958. It is also stated that the plaintiff has misled the Trade Marks Tribunal and the defendant will take steps for rectifying the same in due course. Ex. P-8, dated 11-9-1982, is the licence issued by the State Drugs Controller, to the plaintiff for production of kajal. Ex. P-9 is the renewal of the licence issued under Ex. P-8. In Ex. P-8 in para 6 it is stated that the plaintiff should ensure that their cosmetics do not in any way contravene the provisions of S. 17-A of the Drugs and Cosmetics Act, 1940 and also the provisions of the Trade and Merchandise Marks Act, and the same is marked as Ex. P-8(a). The case of the plaintiff is that after the issue of notice Ex. P-6 the defendant's product which was sold as Eyevix went out of the market for some time and subsequently the defendant began marketing Kajal under the name of RANI EYEVIX in the carton deceptively similar to that of the carton used by the plaintiff. The infringing carton of the defendant is marked as Ex. R-7. According to D.W 1 Ex. R-3 is the certificate issued by the Registrar of Firms for the Registration of the defendant's firm. Ex. R-4 is the extracts from the Register of Copyrights. Ex. R-4 is certified by the Deputy Registrar of Copyrights, New Delhi on 8-8-1990. In Ex. R-4 it is stated that the defendant is the registered proprietor of Rani Kumkum Powder (Packet Cover). Ex. P-5 is the letter addressed to the defendant by L.R Swami Co., 222 South Masi Street, Madurai, dated 22-12-1983, asking for the block of label Rani Kumkum urgently. The defendant is not claiming to be the registered proprietor of the trade mark of Rani Eyevix. But his case is that the trade mark relating to Kajal refers to eye and the same is being adopted by all Kajal manufacturers and there cannot be any exclusive proprietorship in respect of the mark and that the plaintiff has misled the registering authority to register the trade mark Eyetex. The defendant has also produced Ex. R-1, the carton in which Kajal is marketed as EYERIS by some other firm. The defendant has also produced another carton under which another firm is marketing Kajal under the trade mark Eydas marked Ex. R-2. The case of the defendant is that the plaintiff cannot claim exclusive ownership of the trade mark since it refers to eye which all the manufacturers of Kajal are entitled to adopt.

21. We are concerned with the effect of registration of the plaintiff's trade mark EYETEX which has been amply proved. By the documents filed by the plaintiff. Section 28 of the Trade and Merchandise Marks Act, 1958 deals with the rights conferred by the registration and the same is as follows:—

“28. Rights conferred by registration.

(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 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 subject to any conditions and limitations entered on the register) be deemed to have been acquired by any one of those 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.”

On behalf of defendant it is contended that the rights conferred under S. 28 of the said Act accrues only when the registration is valid and in this case the registration of the plaintiff's trade mark is not valid. But as per S. 31 of the said Act the registration of a trade mark is prima facie evidence of validity and in all legal proceedings relating to a trade mark registered under the Act, the original registration of the trade mark and of all subsequent assignment and transmissions of the trade mark shall be the prima facie evidence of the validity thereof. According to S. 32 the registration is to be conclusive as to validity after seven years. After seven years the registration can be questioned only on the ground that the Original registration was obtained by fraud. Considering the above provisions of the Trade and Merchandise Marks Act, 1958, we have to take it that the registration in favour of the plaintiff which is more than 7 years old is valid unless the defendant takes step for rectification on the ground of fraud. Though in Ex. P-7 the notice the defendant has stated that he is taking steps for rectification no such proceedings had been started so far. The defendant having failed to institute rectification proceedings on the ground that the registration of the plaintiff's trade mark is not valid cannot raise the plea in this suit that the registration of the plaintiff's trade mark is invalid. Under the circumstances, on the documentary evidence produced, I have to hold that plaintiff is the registered proprietor of the trade mark Eyetex and the design of the carton marked as Ex. P2. The first contention of the defendant that the plaintiff is not entitled to the exclusive use of the trade mark Eyetex will have to be negatived since the plaintiff is entitled to market his product in the registered trade mark as long as he continues to be the registered proprietor of the said trade mark.

22. The second contention of the defendant is that in any event his trade mark Rani Eyevix and the carton in which it is marked has got several distinctive features and there is no possibility of anyone being misled to purchase the product of the plaintiff by the carton used by the defendant. The following differences between the plaintiff's trade mark and the defendant's trade mark are pointed out:—

EYETEX EYEVIX 1. EYE Drawing 1. Eye-Photo of 12 years girl 2. Eye Ball in the Centre 2. Eye Ball in the corner 3. *[x x x x x] 3. Natural Eye (i.e) [x x x x] 4. Eye brow - Drawing 4. Eye Brow Natural 5. Out line face-no-with nose. 5. Out line face-yes-with the nose. 6. Eyetex-Type difference 6. Eyevix-Type difference. 7. Eyetex-Big letters 7. Eyevix-Small letters 8. Only Eye tex 8. Rani Eyevix 9. Eye tex-Regd. 9. No. “Regd.” in Eyevix 10. Colour difference in packing, Dark in colour 10. Colour difference in packing, Light in colour. 11. Black side only “Aravind Lab” 11. There is a cutting on the back side. 12. No cutting 12. Cutting 13. No crown 13. Crown 14. No type 14. Type “Rani Eye Vix” 15. Rate Rs. 1.25 15. Rate Rs. 1.10 16. Local Taxes Extra 16. All taxes inclusive 17. Outer design difference 17. Outer design difference 18. Side's printing small letters 18. Side's printing big letters 19. Outer design difference 19. No designs in the outer 20. Box Big size 20. Box small size. 21. [x x x x] Main Side Regd. No. Given 21. [x x x x] Main Side MFG LIC No. Given 22. [x x x x] Cutting Difference. 22. [x x x x] Cutting Difference CONTAINER 23. Screw type 23. Ordinary type “Pressing” 24. Letters ordinary type 24. Letters Bold type 25. No crown 25. Crown 26. Model difference and in size 26. Model difference and in size. 27. Six cutting or line in the container 27. No cuttings or line in the container. 28. Address Difference on the back side of the container. 28. Address Difference in the address on the back side of the container. 29. No perfume 29. Perfumed. STICKS 30. White in colour 30. Black in colour 31. Square in nature head 31. Round type. INSTRUCTION SHEET 32. Six languages 32. Two languages 33. Big sheet 33. Small sheet 34. Blue ink 34. Black ink used 35. Printing notice nice 35. Printing notice thick. PACKING 36. 3 dozen 36. One dozen.

The above differences are also brought out in the cross examination of P.W 1 as well as in the deposition of D.W 1.

23. On behalf of the plaintiff it is contended that the similarity and dissimilarity are not to be decided from the deposition of witnesses in the case and the Court must come to its own conclusion whether one is liable to be misled by the marks adopted. It is for the Court to decide and no evidence of witness will be admissible in this regard. The Court must look into both the trade marks and come to a conclusion. Further the Judge must look at the matter not with his own eyes but with the eyes of the public. In the case reported in Amritdhara Pharmacy v. Satya Deo Gupta , AIR 1963 SC 449 the Supreme Court observed that what degree of resemblance is necessary to deceive or cause confusion must in the nature of things be incapable of definition a priori. For deceptive resemblance two important questions are (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who on seeing a mark thinks that it differs from the mark on goods which he was previously brought, but is doubtful whether that impression is not due to imperfect recollection. The Court held that the question will have to be considered from the point of view of a man of average intelligence and imperfect recollection. After laying down the above norms the Supreme Court held that in the two names Amritdhara and Lakshamandhara there is an overall similarity in respect of description of the goods which was likely to cause deception or confusion within the meaning of S. 10(1) of the Trade Marks Act, 1940. There are innumerable decisions as to the norms to be adopted in deciding the case of infringement. In the case reported in McCaw Stevenson and Ors. Ltd. v. Lee Bros 23 PTM 91 it has been held that the trade mark “Glazine” was an infringement of the trade mark “Glacier”. In the case reported in Bryant and May Ld. v. United Match Industries Ld., 50 RPC 12 it has been held that two labels having certain common features and certain other features which are differing, confusion is probable. In the case reported in Ravener Rutledge Ltd. v. Specters Ltd., 1959 RPC 83 the Chancery Division while considering the infringement in respect of two tins observed as follows:—

“If you take the two tins and put them side by side, you can, of course, at once see that they are not the same make of tin because the names are quite plain and it is quite simple to observe that one is “Specters” and one “Traveners”, that one has a mauve or purple ground and the other a black ground and that the shape of the panels is somewhat different and that therefore they are not exactly the same tin; but I do not think that is the right way in which to judge the matter. Nor again do I think, it is an answer to say that anybody who knows the name will now that the plaintiffs' name is different from that of the defendants' and that sweets are commonly ordered in the trade by name and in the case of retail customers are very after asked for by the name “so and so's” sweets. 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 RPC 174-5, and one has to allow for cases where the person who has not get 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 the 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.”

In the case reported in National Sewing Thread Company v. James Chadwick and Bros., ILR (1949) Mad 41 : (1948) 1 Mad LJ 303 : (AIR 1948 Mad 481) a Division Bench of this Court held that:—

“In a passing off action the plaintiff who alleges passing off must first establish that the public has grown accustomed to associate the particular name and label with him as the manufacturer or dealer in the articles. The resemblance between the articles complained of and his must be such as to induce an average man exercising ordinary caution to suppose that in buying the defendant's goods he is buying what has been manufactured by the plaintiff. In order to succeed in the action it is not enough for the plaintiff to show a mere possibility of deception. He must establish that there is a reasonable probability of purchasers being deceived. No general rule can be laid down as to what is or what is not a mere colourable variation. All that can be done is to ascertain in every case, as it occurs, whether there is such a resemblance as to induce an average man exercising ordinary caution to suppose that in buying the defendant's goods he is buying what has been manufactured by the plaintiff. While, on the one hand, it would be a mistake to suppose that the resemblance must be such as would deceive persons who could see the two marks side by side, it must, on the other hand, be remembered that the customer to whose views the Court will have regard must be one who, knowing what is fairly common to the trade, knows of the plaintiff's goods by reason of those distinguishing characteristics.”

In the case reported in Corn Products Refining Co. v. Shangrila Food Products Ltd (1960) 1 SCR 968 : (AIR 1960 SC 142) the Supreme Court held as follows:—

The question whether two competing marks are so similar as to be likely to deceive or cause confusion is one of the first impression and it is for the Court to decide it. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two marks Gluvita and Gulcovita is likely to deceive or to cause confusion. Apart from the syllable “co” in the appellant company's mark, the two marks are identical, and that syllable is not such as would enable buyers in this country to distinguish between them.”

24. As against these cases, defendant relied upon the following decisions in support of his case:—

In the case reported in Fitchetts Ld. v. Loubet and Co. Ld. (1919) 36 RPC 296 the Chancery Division considered the marks “Y-To” and “Lito” and came to the conclusion that there is no probability of deception. In the case reported in Application by Thomas A. Smith Ltd. to register a trade mark 1913 RPC 363 the Chancery Division considered the trade marks “Limit” and “Summit” and held that the words are in common use, each conveying a perfectly definite idea and there is no possibility of anyone being deceived by the two marks. In the case reported in Off. Cleaning Servs. v. Westminster Etc. Assoc. (1944 (2) All ER 269) the Court of Appeal considered the names of “Office Cleaning Service Ltd.” and “Westminster Office Cleaning Association” and held that the differentiation between the words “services” and “Association” was sufficient to distinguish the defendants' business from that of the plaintiffs. In the case reported in Mount Mettur Pharmaceuticals (P) Ltd. v. Dr. S.A Wander (1977) 90 Mad LW 386 : (AIR 1977 Mad 105) a Division Bench of this Court held that there was no similarity between the two trade marks ‘Asthmix’ and ‘Asmac’ and that ‘Asthmix’ cannot be said to be an imitation of the trade mark ‘Asmac’. In considering the above cases cited by the defendant it has to be noted that these cases arose at the time of registration of trade marks and objections were made by the interested parties at the time of registration of trade marks. Hence these cases cannot be applied to the present case because in the present case the plaintiff is the proprietor of the registered trade mark Eyetex when once registration had been effected the only remedy available to the defendant is to take proceedings for rectification under the provisions of the Act. The registration in favour of the plaintiff is prima facie valid till such proceedings are taken, and relief obtained. Hence I have no hesitation in holding that the cases relied on by the defendant, which are the cases that arose at the time of registration of trade marks, cannot be applied to the present case, where already there is a registered trade mark and which mark is prima facie valid till it is set aside by appropriate proceedings.

25. The principles to be applied to a case like this had been laid down by the Supreme Court in the case reported in F. Hoffamann-La Roche & Co. Ltd. v. Geoffery Manners and Co. Pvt. Ltd., (1969) 2 SCC 716 : AIR 1970 SC 2062 : (1970) 2 SCR 213. The Supreme Court while considering the two trade marks “Protovit” and “Dropovit” observed as follows:—

“In order that a trade mark may be found deceptively similar to another it is not necessary that it should be intended to deceive or intended to cause confusion. It is its probable effect on the ordinary kind of customers that one has to consider. For this purpose it is necessary to apply both the visual and phonetic tests. It is also important that the marks should be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the persons accustomed to the existing trade mark”.

In the case reported in Parle Products (P) Ltd. v. J.P and Co., Mysore, (1972) 1 SCC 618 : AIR 1972 SC 1359 : (1972) 3 SCR 289 the Supreme Court observed as follows:

“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 the case reported in Lakshmi Narayan Karva v. Satyanarayan Khubchand (1974) 2 Mad LJ 453 : (AIR 1975 Mad 112) a Division Bench of this Court observed as follows:—

“In judging whether a combination mark is distinctive or not it is wrong to dissect the mark and show that each of its component parts is not distinctive in itself and then as a result of this process to conclude that the mark as a whole is not distinctive.”

In view of the principles laid down in the above decisions we cannot place the registered trade mark Eyetex along with the defendant's mark “Rani Eyevix” and the figures adopted in the carton side by side and then proceed to ascertain the difference in features and come to the conclusion as to whether there is a possibility of deception. The contention of the defendant that such a procedure should be adopted in this case will have to be negatived in view of the principles laid down in the above decisions. What we have to consider is the overall aspects placing ourselves in the place of unwary purchaser. The prefix “Rani” to the defendant's mark is made in small letters which will not catch the eye of an unwary purchaser. So also the facial lines found in the defendant's mark on the carton will not readily catch the eye of an unwary purchaser. So far as the distinction in the cap by providing a crown will not attract the purchaser because it goes inside the carton. There is a phonetic similarity between “Eyetex” and “Eyevix”. The design of the carton and the colours adopted also show that a deception is possible. No doubt there is difference in size of letters and the purchaser is not likely to remember the size of the letters. So far as the difference in the eye browse there is a difference in marks which cannot be remembered by the purchaser. If we consider the overall aspects, as pointed out in the above decisions, it is clear that there is a phonetic similarity and other similarities which will likely deceive an unwary purchaser. The dissimiliarity pointed out are not likely to be remembered by an unwary purchaser. Under the circumstances I have no hesitation in coming to the conclusion that the defendant's carton “Rani Eyevix” is an infringement of the plaintiff's registered trade mark Eyetex.

26. The next contention to be considered in this regard is the plea raised by the defendant that he had been adopting the trade mark ever since the year 1978 and the plaintiff who issued the notice Ex. P.6 on 10-4-1980 had not taken any action to file a suit for a period of four years and as such the delay will amount to acquiescence and hence the plaintiff is not entitled to any relief. In support of this contention the following cases are relied upon:— In the case reported in B.M Kharwar v. A.A.M Motiwala Ltd., AIR 1939 Rangoon 98 it has been held that in a suit for infringement of trade mark if the defendants prove that the plaintiffs stood by knowingly and let them build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. The Court also observed that acquisence is one aspect of delay. Delay will in itself, quite apart from acquiescence, be a bar to a suit, but only if such delay has caused a change in the subject-matter of the action or brought about a state of things where justice cannot be done. In the case reported in Ciba Ltd. v. M. Ramalingam, AIR 1958 Bom 56 it has been held that the granting of relief under Section 46 of Trade Marks Act, 1940 is a discretionary relief and the Legislature has not laid down any period of limitation for making an application under Section 46. The question of delay in the making of the application must be approached from this point of view whether the applicant stood by and thereby caused substantial injury to the respondent and the injury was so substantial that, that injury would outweigh the interest of the public which the Court must consider where a trade mark is likely to deceive. In the case reported in Lalsons Machines Pvt. Ltd. v. Sachar Electric and Machine Store, 1986 PTC 41 a single Judge of the Delhi High Court observed as follows:—

“Keeping in view the facts that there is a valid trade mark registered in the name of the plaintiff, its rights therefore, are to be protected during the pendency of the proceedings particularly when it is a case of triple identity where the mark used by the defendant is the same, the goods are the same and also the trade area. As regards the delay is concerned it is held that where the exclusive right is granted by registration to the holder of registered trade mark, the statutory right cannot be lost by delay.”

The above principles can be applied to the facts of the present case since the notice Ex. P.6 was issued in respect of the carton used by the defendant with the mark “Eyevix” only. According to P.W 1 after the notice Ex. P.6 the defendant stopped marketing the product in the carton with the mark “Eyevix” but prefixed the mark with the syllable “Rani” and began to market his products with the mark “Rani Eyevix”. The case of P.W 1 is that after the issue of Ex. P.6 the defendant's product was not available in the market for some time and had reappearance only prior to the suit. Under the circumstances there is no proof adduced by the defendant that he had been adopting the marks for a considerable period. Further the defendant has not shown that by adopting the mark “Rani Eyevix” for considerable period he had made such progress in the business and that if he is prevented from using such mark he will be put to irreparable loss. Hence the contention based upon the delay also will have to be negatived. On issue No. 3 I hold that the defendant has infringed the plaintiff's trade mark and on issue No. 5, I hold that the plaintiff is entitled for the relief of injunction and accounting and other reliefs as prayed for in paragraph 19 of the plaint.

Issue No. 4:

Has the Defendant committed passing off by using Rani Eyevix?

27. I have already concluded that the defendant had infringed the trade mark of the plaintiff “Eyetex”. But the plaintiff has not let in any evidence regarding the extent of sales made by the defendant. Further the plaintiff has also not let in any evidence with reference to the damages though he prayed for such a relief in the plaint. In the absence of such evidence the plaintiff is not entitled to any relief in this regard. Hence I find Issue No. 4 against the plaintiff.

Issue No. 6:

To what relief, if any, is the plaintiff entitled?

28. In view of my findings on the above issues the plaintiff will be entitled to the injunction as prayed for.

29. In the result there will be an injunction restraining the defendant from marketing the product Kajal with the infringing trade mark “Rani Eyevix” in the carton marked as Ex. P.2 The defendant is also directed to surrender the cartons, labels and other printed materials containing the offending trade mark together with the blocks used for that purpose. The plaintiff is also entitled to the costs of the suit.

30. Order accordingly.