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Case Number

112 of 2005

Advocates

V.Raghavachari
A.Prabhakara Reddy

Judges

Mr. Justice M. Karpagavinayagam
Mr. Justice K. N. Basha

Acts

MERCHANDISE MARKS ACT
Indian Companies Act

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Smart Summary

Structured Summary of the Judgment

Factual and Procedural Background

The plaintiff, M/s. Bharat Arichandra Tex (a sole proprietary concern), filed O.S. No. 2 of 2001 in the Principal District Court, Pondicherry, seeking a permanent injunction restraining the defendants (M/s. Bala Arichandra Tex) from using the name "Arichandra". The plaint alleged that the plaintiff had used the trade name "Bharat Arichandra Tex" and the distinctive element "Arichandra" in relation to textiles and readymade garments for more than four years, had acquired reputation and goodwill, and had applied for registration of the trade name with the Registrar of Trade Marks on 17.09.2001 (registration pending). The plaintiff alleged that the defendants commenced a similar textile business in September 2001 in the same street and used the name "Bala Arichandra Tex" with an identical style/format, thereby causing deception and damage by selling inferior goods and passing them off as connected with the plaintiff.

The defendants denied any exclusive right in the name "Arichandra", argued the word was mythological (and commonly used), contended that their trade name was sufficiently distinct, and pointed to other users of the name in Pondicherry. The trial court framed six issues, heard evidence (the plaintiff’s power agent as P.W.1 and several exhibits; the defendants called D.W.1 but marked no documents), and decreed the suit in favour of the plaintiff granting a permanent injunction restraining the defendants from using "Arichandra" with the prefix "Bala" and suffix "Tex". The defendants appealed to the High Court against that decree.

Legal Issues Presented

Whether the plaintiff is the proprietrix of the trade mark 'Arichandra' ?
Whether this Court has jurisdiction to try the suit ?
Whether the defendant is using the trade mark of the plaintiff ?
Whether the plaintiff is entitled for permanent injunction, restraining the defendant from using the name 'Arichandra', prefixing 'Bala' and suffixing 'Tex' ?
Whether the plaintiff is entitled for the relief of mandatory injunction, as prayed for ?
To what relief, the plaintiff is entitled?

Arguments of the Parties

Appellants' (Defendants') Arguments

The defendants contended their firm name "Bala Arichandra Tex" is clearly different from "Bharat Arichandra Tex" and that there are several other users of the term "Arichandra" in and around Pondicherry.
They argued the word "Arichandra" is mythological and associated with general attributes (honesty, uprightness), and is therefore not an exclusively appropriable or coined word of the plaintiff.
The defendants submitted there are "innumerable differences" between the trade names and the Tamil and English renderings differ; therefore there is no possibility of deception and the trial court erred in finding a likelihood of confusion.
Counsel for the appellants cited a series of authorities in support of their submissions (a list of cases was provided to the Court by the appellants' counsel).

Respondent's (Plaintiff's) Arguments

The plaintiff submitted she adopted the distinctive trade mark "Arichandra" in 1991 in the textile business and has used it continuously since then, expanding operations under various "Arichandra" names and continuing proprietary rights after a family settlement and licences executed in June 2001 (Exs. A-5 to A-7 and Ex.A-2).
The plaintiff contended the defendants' use of "Bala Arichandra Tex" was subsequent (commencing September 2001), used similar style/font, was situated in the same street and was likely to cause confusion. The trial court's finding that the defendants' mark was sufficient to cause confusion was said to be correct and not to be interfered with.
Counsel for the respondent also cited several authorities in support of the right to injunction and passing off principles (a list of cases was provided to the Court by the respondent's counsel).

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
AIR 1939 Madras 555 (A.G.S.L. Assurance Co. Ltd. v. N.A. Insurance Co.)	The opinion records this authority as cited by the appellants; the judgment does not set out a specific principle from this authority in the text.	The Court noted it was cited by appellants; the judgment does not elaborate further on its application.
Kaviraj Pandit Durga Dutta Sharma v. Navaratna Pharmaceutical Laboratories (Supreme Court)	The Court quoted the authority: there is a difference between an action for passing off (a common law remedy resembling an action for deceit) and an action for infringement (a statutory remedy for registered proprietors).	The Court used this distinction to frame the dispute as an action for passing off (plaintiff alleged passing off, registration application pending) rather than an action for statutory infringement.
Ruston and Hornby Ltd. v. Zamindara Engineering Co. (Supreme Court)	The Court quoted that in infringement actions with identical marks the Court need not enquire into likelihood of deception; for passing off it is enough that the plaintiff's get-up is distinctive and there is a possibility of confusion; actual deception need not be proved.	The Court invoked this principle to emphasise that for passing off the key is distinctiveness and likelihood of confusion rather than proof of deliberate deception.
Parle Products (P) Ltd. v. J.P. & Co. (Supreme Court)	The Court quoted the test: broad and essential features of competing marks are to be considered as a whole; overall similarity likely to mislead a person usually dealing with one to accept the other.	The Court applied the "overall similarity" test to compare "Arichandra" as used by plaintiff and defendants and concluded they were sufficiently similar to cause confusion.
Reckitt & Colman Products Ltd. v. Borden Inc. and Ors. (1990 RPC 341, House of Lords)	The Court set out the three elements of passing off: (i) goodwill/reputation; (ii) misrepresentation by defendant leading to belief goods are plaintiff's; (iii) damage or likelihood of damage.	The Court applied these three elements and found the plaintiff had goodwill, the defendants' use amounted to misrepresentation likely to deceive, and therefore damage (or likelihood thereof) followed, satisfying passing off.
Gor-Ray v. Gilray [1952 (69) RPC 99] (House of Lords)	The Court noted that instances of actual deception need not be proved if probability of deception is established.	The Court relied on this principle to accept that proof of likelihood or probability of deception sufficed without requiring specific instances of actual deception.
A.C. Krishnan v. Nambisan's Dairy Pvt. Ltd. [1997 (1) KLT 163]	The Court cited that if evidence shows the public is likely to be deceived by a trade name, that is sufficient for passing off; the Court must form its own opinion on visual and phonetic basis and compare competing marks as a whole.	The Court applied this direction by comparing visual/phonetic features and concluding the competing marks were sufficiently similar to deceive buyers.
The North Cheshire and Manchester Brewery Co. Ltd v. The Manchester Brewery Co. Ltd (1899 AC 84)	The Court quoted that whether one mark so resembles another as to be likely to deceive is a question for the Court to decide.	The High Court exercised that evaluative function and decided the marks were likely to deceive.
Kali Aerated Water Works, Tiruchirapalli v. Rashid (Division Bench, Madras High Court)	The Court cited the principle that plaintiffs in a passing off action need not show exclusive right to a name; it is enough to show they are one of a definite class entitled to use it and that misuse causes damage.	The Court relied on this principle to reject the defendants' argument that other concurrent users of "Arichandra" defeated the plaintiff's claim; the Court held the plaintiff was one entitled to use the name and suffered damage from misuse.
Andhra Perfumery Works Joint Family Concerns v. Karupakula Suryanarayaniah (Division Bench, Madras High Court)	The Court quoted that common or deity names (e.g., 'Ganesh') may be used by multiple proprietors and monopoly on such a term is not necessarily appropriate; alternative names could be chosen.	The Court used this authority to note that even if a name has cultural/religious associations, defendants could have chosen other names rather than adopting the plaintiff's distinctive styling; Court applied it to reject the defendants' "mythological name" defence.
Teju Singh v. Shanta Devi	The opinion records this authority as cited by the appellants; the judgment text does not set out a specific principle from it.	The Court recorded it was cited by counsel; no separate application or elaboration in the judgment text is shown.
Sham Lal v. Interads Advertising (P) Ltd.	This authority is recorded as cited by the appellants; the opinion does not state a principle extracted from it.	Not separately discussed in the Court's reasoning beyond being listed among citations.
K.B. Hiralal & Sons v. Kumar Industries and Anr. (1985 Arb. LR 265 (Delhi))	Cited by appellants; the judgment does not state the particular principle relied upon.	Listed among authorities cited by appellants; no discrete application recorded in the opinion text.
Surya Agro-Oils Ltd. v. Surya Coconut Oil Industries	Cited by appellants; the opinion text does not specify the exact rule taken from this authority.	No separate discussion beyond noting it was cited by appellants.
Shanmugavel v. Associated Publishers (Madras) Ltd. Etc. [1995 -2- LW 458]	Cited by appellants; the judgment text does not set out a specific principle from it.	Included in the list of authorities cited by appellants; not separately applied in the reasoning.
Competition Review (P) Ltd. v. N.N. Ojha [1996 PTC (16)]	Cited by appellants; no specific principle extracted in the opinion text.	Mentioned among the appellants' citations; not separately discussed.
Harrods Limited v. Harrodian School Limited (1996 RPC 697)	Cited by appellants; the judgment text does not record the particular principle taken from this decision.	Listed as cited; the Court did not elaborate on its specific application in the text.
Tikam Chand v. Dy. Registrar of Trade Marks [1998 (Suppl.) Arb.LR 170]	Cited by appellants; no specific rule from it is stated in the opinion text.	Mentioned among the authorities cited by appellants; not separately applied in the judgment.
Rochem Separation Systems (I) Pvt. Ltd. v. Tas Engineering Co. Pvt. Ltd. [2001 (1) CTMR 477]	Cited by appellants; the opinion does not set out a specific principle from this authority.	Recorded as cited by appellants; not further discussed.
Vijay Kumar Ahuja v. Lalita Ahuja [2002 (1) CTMR 105]	Cited by appellants; the judgment text does not state the principle taken from this case.	Included among appellants' citations; not separately applied.
Amritdhara Pharmacy v. Satyadeo Gupta [AIR 1965 SC 449]	Cited by the respondent; the opinion lists it among respondent's authorities but does not reproduce the specific principle in the text.	Mentioned by respondent's counsel; the Court did not separately articulate its application beyond noting the citation.
K.R. Chinna Krishna Chettiar v. Shri Ambal and Co. (Madras)	Cited by the respondent; the opinion does not set out a specific extract or rule from it.	Recorded as cited by respondent; not separately discussed in the judgment text.
K.R.C. Chetty v. K.V. Mudaliar	Cited by the respondent; the text does not specify the principle drawn from it.	Listed among respondent's citations; not further elaborated in the judgment.
M/s. Kala Niketan v. Kala Niketan	Cited by the respondent; the opinion does not identify the particular rule referenced.	Not separately applied; recorded among respondent's authorities.
Bhagwan Dass Gupta v. Shiv Shankar Tirath Yatra Company Pvt. Ltd. [2001 PTC 676 (Delhi)]	Cited by the respondent; the opinion does not state the specific principle invoked.	Included among respondent's citations; not otherwise discussed in the reasoning.

Court's Reasoning and Analysis

The principal question for determination was whether the plaintiff was entitled to the permanent injunction granted by the trial court. The High Court proceeded stepwise:

Reference to legal principles: The Court first summarized relevant guidelines from authorities cited by both sides: the distinction between passing off and statutory infringement (Durga Dutt Sharma), the tests for deceptive similarity and overall resemblance (Parle Products), the three elements of passing off (Reckitt & Colman), the rule that actual deception need not be proved (Gor-Ray), and other observations emphasising the Court's role in assessing visual and phonetic similarity and the sufficiency of proof of likelihood of deception (A.C. Krishnan, North Cheshire).
Factual findings from the trial record: The Court relied on the plaint, documents (including Exs. A-1 to A-22) and oral evidence of P.W.1 (the plaintiff's power agent). It noted that the plaintiff had used the "Arichandra" trade name for several years, had obtained registration of a firm named "Arichandra" in 1998 (Ex.A-10), had a family settlement in June 2001 confirming the plaintiff's proprietorship of the trade mark (Ex.A-2), and had executed licence deeds to family members (Exs. A-5 to A-7). The plaintiff applied for registration under the Trade and Merchandise Marks Act and gave notice to the defendants on 19.09.2001; the defendants did not reply.
Comparison of the marks and surrounding circumstances: The Court examined visual and phonetic features and found that the word "Arichandra" used by the defendants was identical in spelling, phonetic rendering, font style and size to the plaintiff's trade name. The defendants had started the business in the same street, about half-a-kilometre from the plaintiff's premises. The Court noted the defendants' admission in cross-examination (D.W.1) that on comparison of the two names "there is no difference on the face of it".
Assessment of defendants' conduct and bona fides: The Court observed that the defendants did not reply to the legal notice nor cease using the name after public cautions placed by the plaintiff; the defendants' subsequent appellate allegation that they had changed the font size was treated by the Court as an admission that they had originally adopted the same style.
Application of passing off principles: Applying the three elements from Reckitt & Colman, and the test of overall similarity from Parle, the Court concluded the plaintiff had established goodwill/reputation, the defendants' adoption of the same distinctive name and style constituted a misrepresentation likely to lead the public to believe an association, and the plaintiff suffered (or was likely to suffer) damage. The Court held that proof of likelihood of deception sufficed and that exclusive monopolistic ownership was not required where a plaintiff is one of a definite class entitled to use the name (citing Kali Aerated Water Works).
Conclusion on entitlement to relief: On the basis of the foregoing factual findings and settled law, the Court found no error in the trial court's reasoning and held that the plaintiff had made out a case of passing off entitling her to a permanent injunction.

Holding and Implications

APPEAL DISMISSED; Decree of the trial court in favour of the plaintiff upheld.

Direct consequences recorded in the opinion:

The High Court dismissed the appeal with costs, thereby affirming the trial court's decree granting permanent injunction restraining the defendants from using the name "Arichandra" with the prefix "Bala" and suffix "Tex".
The connected miscellaneous petition (C.M.P. No.1277 of 2005) was also dismissed.

The Court applied established authorities and principles on passing off to the facts of this case; the opinion does not purport to lay down new precedent beyond applying existing principles to the facts at hand.

Show full summary ...

M/S. Bala Arichandra Tex, Represented By Its Partners Others v. M/S. Bharat Arichandra Tex, Represented By Its Proprietress Another

Page 1669

1. M/s. Bala Arichandra Tex, appellants herein, are the defendants in O.S.No.2 of 2001 on the file of Principal District Judge, Pondicherry. M/s. Bharat Arichandra Tex, respondent herein, is the plaintiff in the said suit, which was filed for a permanent injunction, restraining the defendants from using the name 'Arichandra'. The suit was decreed in favour of the plaintiff. Hence, this first appeal by the defendants.

2. For convenience, we refer the parties, as arrayed in the suit.

3. Case of the plaintiff, in short, is as follows:

(i) Plaintiff is the sole proprietary concern, carrying on business in textile goods and readymade garments under the trade name 'M/s.Bharat Arichandra Tex". She has been doing business under the above name for more than four years. She has gained reputation and goodwill in her business among the general public, only by using the trade name 'Arichandra'. The name 'Arichandra' is also written in a unique style and manner in Tamil. She acquired a right of propriety over the said trade name by wide and extensive use of the said name in the field of textiles. She has a sales turnover, running to several lakhs of rupees.

(ii) Defendants started a business in textiles, similar to that of the plaintiff, under the name and style 'Bala Arichandra Tex' in September,2001, in the same street at Pondicherry, in which the plaintiff's business premises is situated. The name used by the defendants, the style and manner of writing of the name 'Arichandra' in Tamil, the nature of business carried on etc. are identical to that of the plaintiff. Plaintiff came to know that defendants are fraudulently and deceitfully selling goods to retailers and purchasers, as if the said shop is a sister concern of the plaintiff.

(iii) Plaintiff is the first to use the trade name 'Bharat Arichandra Tex' in the field of textile business. She also applied to the Registrar of Trade Mark, Chennai, on 17.09.2001, for registration of the trade name 'Bharat Arichandra Tex' and the same is pending registration.

Page 1670

(iv) By the use of plaintiff's trade mark, the defendants have caused unliquidated damages to the trade name and fame so far earned by the plaintiff, by marketing textile goods much inferior to the qualify of goods sold by the plaintiff.

(v) Therefore, the plaintiff, on 19.09.2001, issued a legal notice to the defendants, calling upon them to refrain from using the trade name 'Arichandra' and also from using similar style in Tamil. Despite the receipt of notice, the defendants did not choose to give any reply.

(vi) Plaintiff also caused publications in leading dailies, warning the parties from using the trade name 'Arichandra'. Even then, the defendants continued to use the same name. Hence, the suit for action on passing off, through permanent injunction.

4. Case of the defendants is as follows:

(i) Plaintiff has no exclusive monopolistic right over the name 'Arichandra'. The plaintiff's trade mark is neither incorporated under the Indian Companies Act nor registered or approved by the competent authorities. The name 'Arichandra' refers to an Indian mythological hero. Moreover, the trade names adopted by the plaintiff and the defendants are dissimilar and are totally different from each other.

(ii) There are about half a dozen shops in Pondicherry, using the name 'Arichandra', for which the plaintiff has not raised any objection. As the defendants wanted to do business in truthful manner, they have chosen the name 'Arichandra' for their business. Further, there are innumerable differences between the trade names of the plaintiff and the defendants. The style in Tamil letters is entirely different from English letters. There is no possibility for any kind of deception. Therefore, the suit is liable to be dismissed.

5. Following are the issues, framed by the trial Court:

(1) Whether the plaintiff is the proprietrix of the trade mark 'Arichandra' ?

(2) Whether this Court has jurisdiction to try the suit ?

(3) Whether the defendant is using the trade mark of the plaintiff ?

(4) Whether the plaintiff is entitled for permanent injunction, restraining the defendant from using the name 'Arichandra', prefixing 'Bala' and suffixing 'Tex' ?

(5) Whether the plaintiff is entitled for the relief of mandatory injunction, as prayed for ?

(6) To what relief, the plaintiff is entitled?

6. During the course of trial, on behalf of plaintiff, her husband, who is the power agent, had been examined as P.W.1 and Exs.A-1 to A-22 were marked. On the side of defendants, one of the defendants was examined as D.W.1, but no document was marked.

7. The trial Court, holding that the suit was maintainable, decreed the suit in favour of the plaintiff and granted permanent injunction, restraining the defendants from using the name 'Arichandra', prefixing 'Bala' and suffixing 'Tex'. Aggrieved over the same, this fist appeal has been filed before this Court.

Page 1671

8. The submissions made by the learned Counsel for the appellants/defendants are as follows:

The defendants' partnership firm is having its trade name "Bala Arichandra Tex" and it is clearly different from "Bharat Arichandra Tex". There are several other persons in and around Pondicherry, using the term "Arichandra Tex". The word "Arichandra" is associated with honesty, uprightness and truthfulness. Similarly, the word "Tex" is associated with textiles. The word "Arichandra" is neither a coined word nor the one founded by the plaintiff. The trial Court has arrived at a wrong conclusion that the trade mark used by the defendants would create a confusion in the minds of the public and, as such, the said conclusion is required to be interfered with.

9. In support of his submissions, learned Counsel for the appellants would cite the following authorities:

(i) AIR 1939 Madras 555 (A.G.S.L.Assurance CO. LTD. v. N.A.Insurance CO.) ;

(ii) (Durga Dutt Sharma v. N.P.Laboratories);

(iii) (Teju Singh v. Shanta Devi) ;

(iv) (Sham Lal v. Interads Advertising (P) LTD.) ;

(v) 1985 Arb. LR 265 (Delhi) (K.B.Hiralal & Sons v. Kumar Industries and Anr.) ;

(vi) (Surya Agro-Oils Ltd. v. Surya Coconut Oil Industries) ;

(vii) 1995 -2- LW 458 (Shanmugavel v. Associated Publishers (Madras) Ltd. Etc.) ;

(viii) 1996 PTC (16) (Competition Review (P) LTD. v. N.N.Ojha) ;

(ix) 1996 RPC 697 (Harrods Limited v. Harrodian School Limited) ;

(x) 1998 (Suppl.) Arb.LR 170 (Tikam Chand v. DY. Registrar of Trade Marks) ;

(xi) 2001 (1) CTMR 477 (Rochem Separation Systems (I) Pvt.Ltd. v. Tas Engineering Co. Pvt. Ltd.) and

(xii) 2002 (1) CTMR 105 (Vijay Kumar Ahuja v. Lalita Ahuja).

10. In reply to the submissions made by the learned Counsel for the appellants, learned Counsel for the respondent would make the following contentions:

Plaintiff adopted the distinctive trade mark "Arichandra" in the year 1991 in respect of textile business and has been using the same since then. Her business was expanded, by operating new showrooms in the names and styles of "Arichandra Fashions, Arichandra Sarees, Arichandra Cut Pieces and Bhagavaan Arichandra Readymades. In the Page 1672 year 1998, a partnership business was started in the name of "Arichandra". After family settlement, she continued to be the proprietrix of the trade mark "Arichadnra". The use of prefixes and suffixes commenced only in the year 2000, in order to have individual identity for various businesses, carried on by the family members of the plaintiff. The trial Court has given a categorical finding that the trade mark used by the defendants is sufficient enough to cause great confusion with that of the plaintiff. Hence, there is no need to interfere with the decree passed by the trial Court.

11. In support of his contentions, learned Counsel for the respondent would cite the following decisions:

(i) AIR 1965 Supreme Court 449 (Amritdhara Pharmacy v. Satyadeo Gupta) ;

(ii) (K.R.Chinna Krishna Chettiar v. Shri Ambal and Co., Madras) ;

(iii) (Parle Products (P) Ltd. v. J.P.& CO., Mysore);

(iv) (K.R.C.Chetty v. K.V.Mudaliar) ;

(v) (M/S.Kala Niketan v. Kala Niketan) ;

(vi) (Kali Aerated Water Works, Tiruchirapalli v. Rashid);

(vii) 1997 (1) KLT 163 (A.C.Krishnan v. Nambisan's Dairy Pvt. Ltd.) and

(viii) 2001 PTC 676 (Delhi) (Bhagwan Dass Gupta v. Shiv Shankar Tirath Yatra Company Pvt. Ltd.).

12. We have heard the learned Counsel for the parties; considered their submissions and also gone through the records.

13. The point for determination is, whether the plaintiff is entitled to permanent injunction, as granted by the trial Court ?

14. Let us now first refer to the important guidelines laid down and the relevant observations made by this High Court and other High Courts, coupled with the Supreme Court and the House of Lords, cited by the counsel for the parties:

(i) In Kaviraj Pandit Durga Dutta Sharma v. Navaratna Pharmaceutical Laboratories , the Supreme Court has held as under :

There is a difference between action for passing off and infringement of trade mark right. An action for passing off is a common law remedy being in substance an action for deceit, a passing off by a person of Page 1673 his goods as those of another. The gist of an action for infringement is different. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark.

(ii) In Ruston and Hornby Ltd. v. Zamindara Engineering Co. , Supreme Court has observed as follows:

In an action for infringement, if the trade mark of the defendant is identical to that of the plaintiff, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. The gist of the action for passing off is that the defendant is not entitled to represent his goods as the goods of the plaintiff. It is not necessary for the plaintiff to prove that the defendant did it knowingly or with any intent to deceive. It is enough in a passing off action that the get-up of the plaintiff's goods has become distinctive and that there is a possibility of confusion between them and the goods of the defendant. No case of actual deception need be proved. Passing off action is maintainable only in case the trade mark/word has acquired a distinction or secondary meaning and adoption of such marks/words is likely to deceive the public.

(iii) In Parle Products (P) Ltd. v. J.P.& Co. Mysore , the Supreme Court would hold as under:

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 whether there are any differences in the design etc. It would be enough if the impugned mark bears such an overall similarity to the registered mark as it is likely to mislead a person usually dealing with one to accept the other if offered to him.

(iv) In Reckitt & Colman Products Ltd. v. Borden Inc. and Ors. (1990 RPC 341), the House of Lords observed as follows:

There are three elements to be proved in the law, relating to the action for passing off viz., (i) plaintiff must establish a goodwill or reputation attached to the goods; (ii) he must demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods are of the plaintiff and (iii) he must demonstrate that he suffers or is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation.

(v) In Gor-Ray v. Gilray [1952 (69) RPC 99], the House of Lords held as under:

The instances of actual deception need not be proved, if the Court is otherwise satisfied of the probability of deception.

Page 1674

(vi) In A.C.Krishnan v. Nambisan's Dairy Pvt. Ltd. [1997 (1) KLT 163], a Division Bench of the Kerala High Court would observe as follows:

If the evidence adduced would show that the public is likely to be deceived with the trade name, that would be sufficient for taking action for passing off.

The Court has got its obligation to make its own opinion on the visual and phonetic basis.

It is for the Court to decide the question on a comparison of the competing marks as a whole and the distinctive and essential features.

(vii) In The North Cheshire and Manchester Brewery Co.Ltd v. The Manchester Brewery Co.Ltd. (1899 AC 84), Earl Halsbury L.C. held as under:

The question whether one mark so resembles another as to be likely to deceive is the question for the Court to decide.

(viii) In Kali Aerated Water Works, Tiruchirapalli, v. Rashid , a Division Bench of this High Court has held as follows :

In respect of a passing off action, it is now well known that it is not necessary for the plaintiffs to show that they have no exclusive right to use that name.... The plaintiff, in a passing off action, need not show that the badge the defendant has taken denotes his goods or business exclusively if the defendant has no right to use it at all; it is enough for him to show that he is one of a definite and ascertainable class of those who are entitled to use it and who consequently suffers damage from its misuse.... Therefore, merely because the plaintiffs have not established an exclusive right to use the trade name or because of the fact that there is simultaneous and concurrent user of the same name by the other persons being the former partners, it cannot be stated that the public would not have associated the trade name of Kali Mark with the aerated waters manufactured by the plaintiffs....

(ix) In The Andhra Perfumery Works Joint Family Concerns v. Karupakula Suryanarayaniah , a Division Bench of this High Court would observe as under:

The word 'Ganesh' belongs to Lord Ganesh, who is the deity of auspicious commencement of all undertakings in Hinduism, and hence it was contended that it was wrong to create a monopoly in respect of such a term, for one particular proprietor. There is no valid reason against registering such name in other names, as there are several other names of the deity viz., Vigneswara, Vinayaka etc., which could be appropriately used by the persons, desiring to associate their goods with the favour of the deity.

15. In the light of the above principles, let us now look into the material available on record, to decide the issue in question.

Page 1675

16. According to the learned Counsel for the appellants, the trade name 'Bala Arichandra Tex' is distinctly different from 'Bharat Arichandra Tex'; there are several other persons in and around Pondicherry, using the term 'Arichandra Tex'; moreover, the word 'Arichandra' is a mythological name and associated with honesty, uprightness and truthfulness and, therefore, the plaintiff cannot be entitled for injunction, especially when she failed to prove that the adversary is misusing the trade name and delivering the goods, creating a misconception in the minds of the buyers, as if it belongs to the plaintiff.

17. In order to deal with the said contention, it would be better, in this context, to refer to the relevant statement made in the plaint:

The plaintiff further submits that she has been using the name and style "Bharat Arichandra Tex" and she has been doing business for the past more than four years and the general public at large in the market and the customers in particular, know the plaintiff and her shop only by her trade name "Arichandra". The plaintiff has gained reputation and goodwill in her business only by use of the trade name "Arichandra". The name 'Arichandra' is also written in a unique style and manner in Tamil with "Bharat" written before and "Tex" written after the name "Arichandra".... The plaintiff has a sales turnover running to several lakhs of rupees.... The plaintiff has also other sister concerns which are also carrying on various business under the prominent name and style "Arichandra". The defendant in middle September 2001 has started business in textiles similar to that of the plaintiff.... The name used by the defendant, style and manner of writing of the name 'Arichandra' in Tamil, the nature of business carried on etc., are all identical and similar to that of the plaintiff.... The defendants are fraudulently and deceitfully selling goods to retailers and purchasers, as if the said shop is a sister concern of the plaintiff.... The plaintiff is the first to use the trade name "Bharat Arichandra Tex" in the field of textile business for more than four years, which is much prior to the use of the name "Bala Arichandra Tex" by the defendant.... The plaintiff is therefore entitled under law to sue the defendant for their act of "passing off" the textile goods as that of the goods belonging to the plaintiff.

18. In consonance with the recitals in the plaint, evidence has been adduced by P.W.1, power agent of the plaintiff.

19. As stated above, there is no serious challenge in the cross-examination of P.W.1 with reference to the commencement of business by the plaintiff in the name "Arichandra Tex" and its reputation for the past four years.

20. As a matter of fact, the moment the plaintiff came to know that the word "Arichandra" with same font, size and similar features has been used by the defendant by starting another textile business in the same street, which is situated half-a-kilometre from the business premises of the plaintiff, the plaintiff sent a legal notice to the defendants, objecting to the use of the word 'Arichandra' and also asking them to refrain from adopting the said name. Page 1676 Admittedly, there is no reply. The plaintiff also caused publication in leading dailies, informing that the trade name 'Arichandra Tex' is adopted and used only by the plaintiff and her sister concerns and they have also applied for registration before the registry concerned. In spite of such legal notice and cautioning the public in leading dailies, the defendants did not respond to the same, either by giving reply or by stopping the use of the name, but, instead, continued to carry on the business, under the name and style "Bala Arichandra Tex".

21. According to the plaintiff in the plaint and the documents marked and also the oral evidence, the word 'Arichandra' has got a unique feature and distinctive trade mark, which has been used for long number of years in the textile business. In the year 1998, a partnership was started in the name of 'Arichandra' under Ex.A-10. From April 2000, it was converted into a proprietary concern. On 04.06.2001, there was a family settlement, dividing the business, which is evidenced as per Exhibit A-2. After Ex.A-2, it was consented by all the partners that the plaintiff shall continue to be the proprietrix of trade mark 'Arichandra' and, accordingly, on 06.06.2001, separate licence deeds were executed in favour of the family members to carry on the business in their respective names, using the name 'Arichandra'. The said licence deeds have been marked as Exs.A-5 to A-7. Ex.A-10 is the certificate of registration of the firm in the name of 'Arichandra', dated 23.04.1998. In September 2001, the defendants started business, using the identical name 'Arichandra' with prefix 'Bala' and suffix 'Tex'.

22. In the light of the above stand taken by the plaintiff, there is no point in saying by the defendants that there are other business concerns, using the name 'Arichandra', as their trade mark.

23. As correctly pointed out by the trial Court, in this case, the word 'Arichandra', adopted by the defendants, is identical in spelling, phonetic, font style and size, to that of the plaintiff's trade name. It cannot be stated that these two trade names of the plaintiff and the defendants are distinct. On the other hand, to our eyes, they are quite similar and sufficient enough to cause great confusion to the buyers.

24. In fact, D.W.1 himself would admit in the cross-examination, that on the face of it, on comparison of two names 'Arichandra', there is no difference. Therefore, the defendants cannot use the said trade name, which acquired reputation for the plaintiff, on the pretext that it is a mythological name.

25. As correctly pointed out by a Division Bench of this Court in The Andhra Perfumery Works Joint family Concerns v. Karupakula Suryanarayaniah and others, , the word 'Ganesh', indicating the deity, was objected; the reason for using the name 'Ganesh' is, its auspicious commencement of all undertakings in Hinduism and, as such, it is wrong to create a monopoly in respect of such a term for one particular proprietor. This Court had correctly observed that, in that event, there are several other Page 1677 names of the same deity such as Vigneswara, Vinayaka etc., which could be appropriately used by the persons, desiring to associate their goods with the favour of the deity.

26. In this case also, if the name 'Arichandra' is used for indicating honesty and uprightness, the defendants could very well choose some other names such as 'Rama', a mythological name, or 'Mahatma Gandhi', a historical name, for indicating the said attributes. Instead of adopting those names, the defendants have used the word 'Arichandra', with the same style and other unique features, exactly similar to that of the plaintiff's trade mark. Further, the defendants/appellants have pleaded, pending appeal, that they changed the font size of the word 'Arichandra'. This means that the defendants themselves admitted that they used the word 'Arichandra' with same style, font size etc.

27. In the light of the stand taken by the defendants pending appeal, the act of the defendants, in not having replied to the legal notice issued by the plaintiff and also in not responding to the notices issued in leading dailies, would clearly indicate that the stand of the defendants is not bona fide.

28. As indicated above, the plaint, exhibits and the oral evidence of P.W.1, who examined on behalf of the plaintiff, would clearly reveal that the plaintiff has acquired a reputation and the defendants have used the word 'Arichandra', which has been used by the plaintiff for several years prior to the filing of the suit, for which she has applied for registration under Trade and Merchandise Marks Act and, as such, the act of the defendants has been proved to be a passing off action.

29. As held by the Supreme Court, it is enough for the plaintiff to prove that the buyer is likely to be deceived and there is a likelihood of damage to his goods. In this case, in our view, the same has been established by the plaintiff.

30. As such, the trial Court has given clear reasonings, which, in our view, are valid, for grant of decree in favour of the plaintiff/respondent. Therefore, the Appeal is dismissed with costs. Consequently, the connected C.M.P.No.1277 of 2005 is also dismissed.

M/S. Bala Arichandra... v. M/S. Bharat Arichand...