M/S Atlas Cycle Industries Ltd. v. Hind Cycles Limited

T.V.R Tatachari, J.:— This Regular First Appeal has been filed by Messrs Atlas Cycle Industries Ltd., plaintiff in Regular Suit No. 18 of 1958, on the file of the Court of the District Judge, Delhi, against the judgment and decree of the said District Judge, dated 27th November, 1961, dismissing the suit. The defendants in the said suit were Hind Cycles Ltd. (respondent 1) and the Registrar of Trade Marks, Bombay (respondent 2).

The appellant (plaintiff) is a company incorporated in 1950 under the Indian Companies Act, 1913, and has its registered office at Sonepat (Punjab). Respondent (defendant 1) is also a limited Company incorporated under the Indian Companies Act, and it carries on business in the manufacture of cycles and cycle accessories at Bombay. Respondent 2 (defendant 2) is the Registrar of Trade Marks under the Trade Marks Act 1940.

The case of the appellant (plaintiff) was that in 1938, the firm of Messrs Janki Dass & Co., a partnership concern carrying on business at that time at Lahore, began to import bicycles into India under the Trade Mark “EASTERN STAR”, that in course of time the said bicycles acquired a reputation in the trade and with the public, and that the trade mark “EASTERN STAR” became associated in the minds of the public with the goods of the said firm Messrs Janki Dass & Co. It was stated in the plaint that the said Messrs Janki Dass & Co. applied for and obtained, in or about 1943, registration of the design of the monogram used by them as No. 12052 as of the date 15th February, 1943, in respect of cycles and their accessories in Class 12 (vide Exhibit P. 1), that the said Messrs Janki Dass & Co. also applied and obtained registration of their trade mark comprised of the words “EASTERN STAR” as No. 11426 as of the date 5th February, 1943 (vide Exhibit P.2), and that from the said respective dates, the said trade marks were renewed for a period of 15 years in favour of the firm Messrs Janki Dass & Co.

Upon the incorporation of the appellant-company, the said firm Messrs Janki Dass & Co. assigned all their rights in the aforesaid trade marks in favour of the appellant and, as from 12th July, 1955, the appellant was registered in the office of respondent 2 as subsequent proprietor of the said trade marks, and the appellant has since been using the said trade marks on the cycles and accessories manufactured and sold by them. According to the appellant (plaintiff), it manufactured and sold cycles and cycle parts on a large scale through out India and by 1956 its turn over was about a lakh of cycles per year. It was also the case of the appellant (plaintiff) that its cycles sold under the trade mark “EASTERN STAR” came to be referred to by the public shortly as “STAR CYCLES” or “TARA BRAND CYCLES”, and that because of the popularity of the appellant's cycles a number of persons began to infringe the appellant's trade mark by adopting trade marks containing the word “STAR” either by itself or in conjunction with another word. It was stated in the plaint that the appellant successfully took action against persons using, in respect of cycles, the trade marks “BLUE STAR”, “ROYAL STAR”, and “STAR BICYCLE”, and obtained temporary injunctions against persons using trade marks “ARABIAN STAR”, “WESTERN STAR”, and “EASTERN STAR TYPE”, and that Government of Uttar Pradesh had taken action, of their own accord, against users of trade marks “ROYAL STAR” and “RED STAR” as being infringement of the appellant's trade mark “EASTERN STAR”.

The appellant (plaintiff) alleged in the plaint that in or about February, 1959, it came to know that the agents of respondent 1 (defendant 1) were selling cycles under the trade mark “ROYAL STAR”, that it immediately took steps in the Trade Marks Registry at Bombay and found that respondent 1 (defendant 1) had applied for the registration of the trade mark “ROYAL STAR” by application No. 177777 and the same had been advertised, before acceptance, in the Trade Marks Journal, dated 16th July, 1957, and that the appellant immediately filed a notice of opposition on 17th April, 1959, along with an application for extension of time for filing the notice of opposition, and the same has been pending in the office of respondent 2 (defendant 2). The appellant also alleged that respondent 1 (defendant 1) had used for a number of years the device of “HIND” or “STAG” as a trade mark and has only recently adopted the trade mark “ROYAL STAR” for the purpose of trading on the reputation of the appellant's trade mark “EASTERN STAR” and for the purpose of passing off its goods as the goods of the appellant (plaintiff). The appellant further alleged that the trade mark “ROYAL STAR” so nearly resembled the appellant's trade mark “EASTERN STAR” as to be likely to cause confusion or deception, and was an infringement of the appellant's registered trade mark “EASTERN STAR”, and that it had already suffered damage and was likely to suffer damage unless respondent 1 (defendant 1) was restrained by an injunction as pecuniary compensation would not be an adequate relief. With those allegations, the appellant (plaintiff) filed the suit out of which this appeal has arisen praying as follows: —

“(a) That the 1st defendant, their agents and servants be restrained by a perpetual injunction from using the mark “ROYAL STAR” in relation to Cycles or their accessories or any other Mark which is in infringement of the plaintiff's registered trade mark “EASTERN STAR”.

(b) That the 1st defendant, their agents and servants be restrained by a perpetual injunction from manufacturing or offering for sale cycles or their parts under the mark “ROYAL STAR” so as to pass off or enable others to pass off their goods as the goods of the plaintiffs.

(c) That the 1st defendant be restrained by an order and injunction of this Hon'ble Court from proceeding further with their application No. 177777 in the Trade Marks Registry at Bombay.

(d) That the 2nd defendant be restrained by an order and injunction of this Hon'ble Court from proceeding further with and registering the application No. 177777 of the 1st defendant.

(e) That the 1st defendant be ordered to pay to the plaintiff as and by way of damages the sum of Rs. 200 or such other sum as this Hon'ble Court thinks fit or such sum as may be found due from the 1st defendant on the taking of accounts.

(f) For delivery up to the plaintiff of all offending goods, labels, dyes, Price Lists, stationery, advertising material bearing the mark “ROYAL STAR” and found in their possession or under their control.

(g) Costs of the suit.

(h) Such other relief as this Hon'ble Court may appear fit and proper.”

Respondent 1 (defendant 1) filed a written statement denying the allegation of the appellant (plaintiff) about the latter being the registered subsequent proprietor of the trade marks mentioned in the plaint, but admitting that the appellant (plaintiff) has been manufacturing and selling cycles and cycle parts under the trade mark “EASTERN STAR”. It was submitted that the appellant having admitted that the words “EASTERN STAR” were its trade mark, it could not be allowed to make a contrary allegation that it was entitled to the use of the word “STAR” which was only a part of the registered name, and the name did not consist of any particular part but consisted of the combination of the two words “EASTERN”, and “STAR”. As regards the allegation in the plaint about the various actions taken against persons using trade marks containing the trade mark “STAR”, the respondent 1 (defendant 1) pleaded that they were all compromise or consent decrees and as such were of no utility. Respondent 1 (defendant 1) admitted that it had applied for registration of the trade mark “ROYAL STAR” by application No. 177777 and the same had been advertised, before acceptance, in the Trade Mark Journal of 16th July, 1956, and that the appellant (plaintiff) had filed a notice of opposition on 17th April, 1959, along with an application for extension of time, and the same have been pending in the office of respondent 2 (defendant 2). Respondent 1 further stated that it had for a number of years used the device of “HIND” and “STAR” as a trade mark on its cycles, though it has adopted the trade mark “ROYAL STAR” on its cycles since the year 1957 and has been advertising extensively the said trade mark for its cycles and selling the cycles under the said mark. It denied that it ever had any intention of trading on the reputation of the appellant's trade mark “EASTERN STAR” in any manner, and submitted that the trade mark “ROYAL STAR” was entirely different in name and get-up from the trade mark “EASTERN STAR”. It also pleaded that the use of the trade mark was in no way fraudulent, that the word “STAR” in the monogram fixed to the front portion of the frames of its cycles is commonly used, that there were several trade marks registered with the Authority and also pending for registration using the word “STAR”, that the appellant's registered trade mark being “EASTERN STAR”, such registration could not possibly give to the appellant any exclusive statutory right to the use of the word “STAR” apart from the mark as a whole, as the trade mark of the appellant did not consist of the word “STAR” only but consisted of the combination of the two words “EASTERN” and “STAR”, and that the use of the words “ROYAL STAR” could not be considered as an infringement of the appellant's trade mark. The respondent 1 (defendant 1) submitted that the trade mark “ROYAL STAR” was not likely to cause confusion or deception or was an infringement of the appellant's trade mark “EASTERN STAR”, and that the word “STAR” was common to the trade and had been used for several years past by several cycle manufacturers and could not be objected to. Respondent 1 further stated that every cycle produced by a manufacturer for sale has always a monogram on the front portion of the cycle frame, that the monograms are either circular or vertically oblong in shape, that the height of the monogram is generally about 2”, that the use of the monogram by it could not be called an attempt to imitate or to cause confusion or deception, that the shape of the monogram of the “ROYAL STAR” was quite different from the monogram of the appellant “EASTERN STAR”, and that it could not be stated that the monogram “ROYAL STAR” had been designed by respondent 1 with a view to look like the monogram of the appellant in shape. Respondent 1 pleaded that it had been using the trade mark “ROYAL STAR” on its cycles bona fide, and that there was no ground for granting any of the injunctions prayed for in the plaint.

The appellant (plaintiff) filed its replication reiterating the allegations and contentions in the plaint and answering the allegations in the written statement. It is not necessary to refer to the statements in the replication in detail at this stage.

On the aforesaid pleadings, the trial court framed the following issues: —

“1. Whether the plaintiff was the proprietor of the registered trade marks 12052 and 11426, as alleged in the plaint ?

2. Whether defendant 1 has infringed the plaintiff's trade marks ?

3. Whether defendant 1 has sold goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods.

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

By his judgment, dated 27th November, 1961, the learned District Judge held on issue No. 1 that the appellant (plaintiff) was the proprietor of the registered trade marks 12052 and 11426. On issues Nos. 2 and 3, the learned District Judge held that the trade marks used by respondent 1 (defendant 1) were not identical with the marks of the appellant (plaintiff); that it could not be said that the two monograms of the appellant (plaintiff) and respondent 1 (defendant 1) were so similar as to likely to deceive or cause a confusion; that the use of the words “ROYAL STAR” for the cycles of respondent 1 (defendant 1) did not constitute an infringement of the trade mark “EASTERN STAR” of the appellant (plaintiff), as the names “EASTERN STAR” and “ROYAL STAR” were substantially different even though the word “STAR” was common to both the names, and there was no likelihood of deception or confusion; that the case of the appellant (plaintiff) that its cycles were known in the market as “STAR” cycles could not be accepted as the evidence about the same was not very convincing; that so far as the allegation of the appellant (plaintiff) that the respondent 1 (defendant 1) had passed off its goods as those of the appellant (plaintiff) was concerned, there was no evidence of any actual deception; that the cycles manufactured by respondent 1 (defendant 1) had distinctive marks in the monograms, and it was not likely that respondent 1 (defendant 1) would introduce those distinctive marks if its attempt was to pass off its cycles as those manufactured by the appellant (plaintiff); and that the appellant (plaintiff) had failed to prove that respondent 1 (defendant 1) had infringed its registered trade mark or passed off the cycles of the latter as those manufactured by the appellant (plaintiff). In the result, the learned District Judge dismissed the suit. It is against that judgment and decree that the present Regular First Appeal has been filed by the plaintiff, Messrs Atlas Cycle Industries Limited.

As stated earlier, Exhibits P.1 and P.2 are the certificates issued under the Trade Marks Act, 1940. Exhibit P.1 is the certificate regarding the registration of the trade mark (monogram) No. 12052, and it shows that the trade mark mentioned there in was originally registered on 15th February, 1943, in the name of Janki Dass and L. Bishan Dass trading as Janki Dass & Co. at Lahore, and that the appellant (plaintiff) company was registered as a subsequent proprietor of the said trade mark (monogram) as from 12th July, 1955. Exhibit P.2 is the certificate regarding the trade mark (the words “EASTERN STAR” per se) No. 11426, and it shows that the said trade mark was initially registered in the name of R.B Janki Dass and L. Bishan Dass trading as Janki Dass & Co. at Lahore, and that the appellant (plaintiff) company was the subsequent proprietor of the said trade mark with effect from 12th July, 1965. On the basis of the said certificates, the learned District Judge held on issue No. 1 that the appellant (plaintiff) was the proprietor of the aforesaid two registered trade marks 12052 and 11426. The said finding was not questioned before us by Shri Radhey Mohan Lal, learned counsel for respondent 1 (defendant 1).

Issues Nos. 2 and 3 are the material issues. The allegations in the plaint show that the suit filed by the appellant (plaintiff) was for infringement of the registered trade marks as well as for passing off, and issues Nos. 2 and 3 relate to the alleged infringement and passing off by the use of similar marks. As pointed out by the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, A.I.R 1965 Supreme Court 9801, there are basic differences between the causes of action and right to relief in suits for infringement and for passing off of a registered trade mark. In the case of a registered trade mark, the registered proprietor thereof has a statutory and exclusive right to the use of that mark in relation to his goods and has a statutory remedy conferred upon him by way of an action for infringement in the event of use of an identical mark or a mark which is deceptively similar to the registered mark by another (vide section 29 of Trade Marks Act, 1958). In such an action, the plaintiff has to show (a) that his mark has been registered and he is the registered proprietor thereof, and (b) that an identical mark or a mark which is deceptively similar to the registered mark has been used by the defendant. The expression “deceptively similar” has been defined in section 2 (d) of the Trade and Merchandise Marks Act, 1958, as follows: —

“A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as to be likely to deceive or cause confusion.”

Therefore, the aforesaid requirement in (b) may be made out by the plaintiff by showing that the defendant's mark is identical with or so nearly resembles the plaintiff's mark either visually, phonetically or otherwise that it is likely to deceive or cause confusion in relation to the goods in respect of which the plaintiff got his mark registered. In other words, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that there are some additional features in the defendant's mark which show marked differences is immaterial in an action for infringement. An action for passing off, on the other hand, is in substance an action in common law for actual or probable passing off by the defendant of his own goods as those of the plaintiff. In such an action, the use by the defendant of the trade mark of the plaintiff as such is not essential. The plaintiff has only to show that the similarity of the defendant's mark or goods is such that the defendant can pass off his goods as those of the plaintiff. The defendant may escape liability in an action for passing off if he can show that his mark or goods, besides the essential features of the plaintiff's mark adopted by him, has some additional features which are sufficient to distinguish the same from that of the plaintiff. Thus, while in an action for infringement of a registered trade mark the plaintiff has to establish either an use of his registered trade mark as such or of an identical mark or of a deceptively similar mark by the defendant, he has to establish in an action for passing off that the defendant's mark or goods are such that the defendant can pass off his goods as those of the plaintiff.

For answering the question whether the mark used by the defendant is deceptively similar, certain rules of comparison have been indicated for guidance in decisions of courts, as in the very nature of things, the matter is incapable of definition. Shri Annop Singh, learned counsel for the appellant (plaintiff), cited a large number of decisions. It is, however, sufficient to refer only to some of them.

In The Coca-Cola Company of Canada Ltd. v. Pepsi-Cola Company of Canada Ltd., A.I.R 1942 Privy Council 402, (2), the action was for alleged infringement of a registered trade mark viz. Coca-Cola, by using a mark, Pepsi-Cola. The respective rights of the parties were governed by the (Canada) Unfair Competition Act, 1932. Section 3 (c) of the said Act provided that —

“no person shall knowingly adopt for use in Canada in connection with any wares any trade mark which is similar to any trade mark which is in use in Canada by any other person and which is registered pursuant to the provisions of that Act as a trade mark for the same or similar wares.”

The word “similar” was defined in section 2 (k) of the said Act as under: —

“Similar,' in relation to trade marks . . . . . describes marks . . . . . so resembling each other or so clearly suggesting the idea conveyed by each other that the contemporaneous use of both in the same area in association with wares of the same kind would be likely to cause dealers in and or users of such wares to infer that the same person assumsd responsibility for their character or quality, for the conditions under which or the class of persons by whom they were produced or for their place of origin.”

After referring to the above definition, Lord Russell of Killowen, who delivered the judgment of the Board, pointed out that no evidence of confusion, either actual or probable, was adduced in that case, and then observed that in the circumstances “the question for determination must be answered by the Court, unaided by outside evidence, after a comparision of the defendant's trade mark as used with the plaintiff's registered mark, not placing them side by side, but by asking itself whether, having due regard to relevant surrounding circumstances, the defendant's mark as used is similar (as defined by the Act) to the plaintiff's registered mark as it would be remembered by persons possessed of an average momory with its usual imperfections”. In that case, the registered mark used by the plaintiff (Coca-Cola) consisted of the words “Coca” and “Cola” joined by a hypen and written, not in block letters, but in script form with flourishes. Similarly, the mark used by the defendant (Pepsi-Cola) consisted of the words “Pepsi” and “Cola” joined by a hyphen and written, not in block letters, but in script form with flourishes. The plaintiff claimed that its registered mark was both a word mark and a design mark. Dealing with it as a word mark, and applying the test mentioned above, Lord Russell pointed out that Cola is a tree whose seed or nut is largely used for beverages or “soft drinks”, that Cola was a word in common use in Canada in naming beverages, that it was thus plain that the distinctive feature in the hyphenated word “Coca-Cola” was the first word “Coca” and not “Cola”, and “Coca” rather than “Cola” was what would remain in the average memory, that similarly the distinctive feature in the word “Pepsi-Cola” was “Pepsi” and not “Cola”, and that it was difficult and indeed impossible to imagine that the mark “Pepsi-Cola”, as used by the defendant, would lead any one to confuse it with the registered mark, Coca-Cola, of the plaintiff. Then, dealing with it as a design word, Lord Russell observed that “The mark used by the defendant, viewed as a pattern or picture, would not lead a person with an average recollection of the plaintiff's registered mark to confuse it with the pattern or picture represented by that mark”, and in the result held that there was no infringement of the plaintiff's registered trade mark.

In Messrs Modi Sugar Mills Limited v. Tata Oil Mills Ltd.; Co. A.I.R 1943 Lahore 196, (3), Tek Chand and Sale JJ pointed out at page 202 that “what has to be seen is not that there is a possibility of confusion, but that the resemblance is such that there is a reasonable probability of deception”. The learned Judges, relying on the observation of the Privy Council in Thomas Bear and Sons (India) Ltd. v. Pravag Narain, A.I.R 1940 Privy Council 86 (4), approving the test laid down by Niamat Ullah J. in Thomas Bear and Sons (India) Ltd. v. Pravag Narain, A.I.R 1935 Allahabad 7 (5), observed that “in the judging of the probability of deception, the test is not whether the ignorant, the thoughtless, or the incautious purchaser is likely to be misled, but we have to consider the average purchaser buying with ordinary caution”.

In James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.; A.I.R 1951 Bombay 147 (6), Chagla CJ and Bhagwati; referring to the words “likely to deceive or cause confusion” in section 10 of the Trade Marks Act, 1940, observed at page 152 as follows: —

“Now in deciding whether a particular trade mark is likely to deceive or cause confusion, it is not sufficient merely to compare it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out what is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying that trade mark, and if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea, then ordinarily the Registrar would be right if he came to the conclusion that the trade mark should not be registered. The real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. It is impossible to accept that a man looking at a trade mark wculd take in every single feature of the trade mark. The question would be, what would he normally retain in his mind after looking at the trade mark ? What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark ?”

In Amritdhara Pharmacy v. Satya Deo Gupta , A.I.R 1963, Supreme Court 449 (7), the question was whether the trade name “Lakshmandhara” was likely to deceive the public or cause confusion to trade in view of the trade name “Amritdhara” which had already been registered, as a trade name. The Supreme Court referring to the earlier decision in Corn Products Refining Co. v. Shangrila Food Products Ltd ; A.I.R 1960 Supreme Court 142 (8), held that the overall similarity of the two composite words must be considered, that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection, and that to such a man the overall structural and phonetic similarity of the two names “Amritdhara” and “Lakshmandhara” was likely to deceive or cause confusion.

The principles which emerge from the above decisions may be stated as follows:

In an action for an alleged infringement of a registered trade mark, it has first to be seen whether the impugned mark of the defendant is identical with the registered mark of the plaintiff. If the mark is found to be identical, no further question arises, and it has to be held that there was infringement. If the mark of the defendent is not identical, it has to be seen whether the mark of the defendant is deceptively similar in the sense that it is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got his mark registered. For that purpose, the two marks have to be compared, “not by placing them side by side, but by asking itself whether having due regard to relevant surrounding circumstances, the defendant's mark as used is similar to the plaintiff's mark as it would be remembered by persons possessed of an average memory with its usual imperfections”, and it has then to be determined whether the defendant's mark is likely to deceive or cause confusion. For such determination, the distinguishing or essential features (and not every detail) of the two marks and the main idea, if any, underlying the two marks which a purchaser of average intelligence and imperfect memory would retain in his mind after seeing the marks, have to be noticed. It has then to be seen whether they are broadly the same or there is an overall similarity or resemblence, and whether the resemblence or similarity is such that there is a reasonable probability of deception or confusion. In doing so, the approach has to be from the point of view of purchaser of average intelligence and imperfect memory or recollection, and not an ignorant, thoughtless and incautious purchaser. In an action for passing off, the test for deceptive similarity, i.e as to the likelihood of confusion or deception arising from similarity of the marks or the get up, packing, etc. is practically the same as in an action for infringement (vide Edwards v. Dennis, (1885) 30 Ch.D 454 471 (9) Lambert and Butler Ltd. v. Goodbody, (1902) 19 R.P.C 377, 383 (10) Addley Bourne v. Swan & Edgar Ltd.; (1903) 20 R.P.C 105, 117 (11) and Tavener Rut ledge Ltd. v. Specters Ltd. (1959) R.P.C 355, 360), (12), except that it has also to be seen whether the defendant's mark or the get up, packing, etc. of his goods has basides the essential features of the plaintiff's mark or goods, any additional features which distinguish it from the plaintiff's mark or goods, and whether it is likely of reasonably probable that the defendant can pass off his goods as those of the plaintiff to a purchaser of average intelligence and imperfect memory or recollection.

In the present case, the appellant (plaintiff) alleged that the trade mark “ROYAL STAR” of respondent 1 (defendant 1) was an infringement of his registered trade mark “EASTERN STAR”, and in the alternative that respondent 1 (defendant 1) has been using its trade mark “ROYAL STAR” for the purpose of passing off and enabling others to pass off their cycles as the cycles of the appellant (plaintiff). We shall first consider the case of infringement. The registered trade marks of the appellent (plaintiff) are (1) a device (monogram) registered as No. 12052 and (2) the words “EASTERN STAR” registered as No. 11426.

So far as the word mark “EASTERN STAR” is concerned, the question for determination is whether the use of the words “ROYAL STAR” for the cycles of respondent 1 (defendant 1) constitutes an infringement of the appellant's (plaintiff's) trade mark “EASTERN STAR”. The learned District Judge took the view that though the word “STAR” is common to both the names, the names, taken as a whole i.e “EASTERN STAR” and “ROYAL STAR” are substantially different and there is no likelihood of deception or confusion. The learned District Judge referred to certain observations in the decisions in Pinto v. Badman, 8 R.P.C 181, (13) and The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (1955) 2, Supeme Court Reports 252, (14) to the effect that a label “does not consist of each particular part of it, but consists of the combination of them all,” and “where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole.” He next referred to the observations on page 657 of Kerlay on Trade Marks, 7th Edition, which go to show that it was held in a case that “Night Cap” was not too near “Red Cap” or “Mother Red Cap” as to cause confusion; the decision in Messrs Modi Sugar Mills Ltd. (supra) that the word mark “Kotogem” did not constitute an infringement of the word mark “Coccogem”; the observation in Schweppes Ltd. v. Gibbons, 22 R.P.C 607 (15) that a label “has to be taken as a whole and too much stress cannot be laid on slight similarity in one small part of it; and the decision of the Privy Council in Coca-Cola Company of Canada Ltd. (supra) (2) that the use of the name of “Pepsi Cola” was not an infringement of the trade mark “Coca Cola”; and then merely observed that he was of the view that the use of the name “ROYAL STAR” by respondent 1 (defendant 1) for its cycles did not infringe the appellant's (plaintiff's) trade mark “EASTERN STAR”. We find it difficult to agree with the said view. It is true that the words “EASTERN STAR” and “ROYAL STAR” have to be taken as a'whole. But, the learned District Judge, in our opinion, failed to note that the view taken by a Court on the facts in any particular case cannot afford any proper guidance. As observed by the Supreme Court in Amritdhara Pharmacy (supra), (7) “every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion”. Further, in considering whether a word mark is likely to deceive or cause confusion the test applicable was pointed out by the Supreme Court in Amritdhara Pharmacy case (supra) (7) in the following words: —

“As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd (A.I.R 1960 S.C 142) (8) 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 names ‘Amritdhara’ and ‘Lakshmandhara’ is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words ‘Amritdhara’ and ‘Lakshmandhara’. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as ‘current of nectar’ or ‘current of Lakshman’. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase . . . . We are aware that the admission of a mark is not to be refused, becuause usually stupid people, “fools or idiots”, may be deceived. A critical comparison of the two names may disclose some points of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name.”

Thus, the proper approach to the question is to consider the overall and phonetic similarity of the two namss “EASTERN STAR” and “ROYAL STAR”.

In applying the said test in the present case, it has to be noted that the meaning of either the word “EASTERN or the word “STAR” has no relation at all to cycles. Similarly, the words “ROYAL” and “STAR” have, in their meaning, no relation at all to cycles. They are thus not descriptive or suggestive of the goods, namely cycles, to which they are applied. A more important thing to be noticed is that both the names, when uttered, end in the same sound. Therefore, a person of average intelligence and imperfect memory is very likely to remember only the sound of the end word “STAR”, and is thus likely to be deceived or confused between the two names or marks. We are, therefore, of the opinion, that the said two marks have an overall structural and phonetic similarity, and consequently their use in respect of the same kind of goods, viz. cycles, is likely to cause deception or confusion within the meaning of section 29 of the Trade and Merchandise Marks Act, 1958.

In this connection, it is also necessary to consider the case of the appellant (plaintiff) that its cycles under the trade mark “EASTERN STAR” had acquired a reputation and came to be referred to by the public as “STAR” cycles or “TARA BRAND” cycles. In support of the said contention, the appellant (plaintiff) adduced oral evidence consisting of statements on oath by Sohan Lal Sharma, Rohtak Road, Delhi (P.W.1); Mulakh Raj, Model Town, Delhi (P.W.3); and Hari Nath Mithal, Ambala Cantonment (P.W.4); and the statements of Sadhu Ram, Lucknow; Muni Lal, Bombay, P. Krishna Rao, Ranebennure, Mysore; Puran Chand, Jamshedpur; and Ranchod Dass of Hyderabad, which were got recorded by interrogatories on commission. All of them are business-men dealing with cycles in various places and they all averred that their customers when making a demand for “EASTERN STAR” cycles refer to them as “STAR” cycles. Amrit Lal Khanna, Sonepat (P.W.2); Vir Chand, Madras; and Parma Nand, Nagpur, stated that their customers, while demanding for “EASTERN STAR” cycles, look for the “STAR” mark on the monogram. Salvaraj, Bangalore, stated that their customers while demanding “EASTERN STAR” cycles refer to them as “EASTER STAR” cycles. The learned District Judge declined to accept the statements of the aforesaid witnesses by merely observing that their evidence was not very convincing. He has not, however, given any reason for his view. As already stated, all the aforesaid witnesses are business-men belonging to various places. Nothing has been elicited either in their cross-examination or in their answers to cross-interrogatories served upon them by respondent 1 (defendant 1) to show that they were interested in supporting the appellant (plaintiff). There is nothing on the record which throws any doubt as regards their credibility, and we see no reason for not accepting their statements that their customers refer to the “EASTERN STAR” cycles as “STAR” cycles.

As against that evidence, respondent 1 (defendant 1) examined Virender Kumar, Ambala, as D.W 1; and got recorded the statements of Inder Chand Garg, Lucknow; Prem Sagar, Lucknow; Jai Shanker Tandon, Kanpur; Partap Chand, Lucknow; Atar Gopal Nigam, Jabbalpur; Harnam Dass, Lucknow and Umesh Chand Rastogi, Kanpur; by interrogatories on commission. Virender Kumar stated in examination-in-chief that no customer of his had ever described “EASTERN STAR” cycle as a “STAR” cycle, and that his customers had always demanded the cycle by describing it as “EASTERN STAR” cycle. He however, admitted that illiterate customers look at the monogram on the cycle. He also admitted in cross-examination that he appeared without summons from the Court, and that he had come from Ambala to Delhi to appear as witness at the asking of a representative of respondent 1 (defendant 1). Inder Chand Garg stated that no purchaser asked for a cycle as “STAR” cycle, but admitted that purchasers mostly looked to the stamp of “EASTERN STAR” Prem Sagar stated that mostly the “Babu” section of the public generally purchase “EASTERN STAR” cycles, but added that it was only the villagers who seldom demand for “STAR” bicycle of Sonepat. There is thus an admission by him to the extent that villagers who want to purchase “EASTERN STAR” cycles refer to them as “STAR” bicycles of Sonepat. He also admitted that the permanent feature of the “ROYAL STAR” and the “EASTERN STAR” cycles is the representation of a “STAR” but added that both were individually known by their respective manufacturers. Jai Shanker Tandon also stated that no purchaser asked for a cycle in the name of “STAR” cycle only, and that purchasers in general referred to “EASTERN STAR” cycles as “EASTER STAR” cycles. Pratap Chand, Attar Gopal Nigam and Umesh Chand Rastogi made statements to the same effect. These witnesses examined on behalf of respondent 1 (defendant 1) are also business-men belonging to various places and there is nothing on the record to discredit, their statements mentioned above.

There are thus the statements of some business-men dealing in cycles on one side as against the statements of dealing in cycles on the other business-men dealing in cycles on the other. There are however, certain circumstances in view of which we are inclined to prefer the statements of the witnesses examined on behalf of the appellant (plaintiff). Messrs Janki Dass & Co., the predecessor-in-interest of the appellant (plaintiff) began to import bicycles into India under the trade mark “EASTERN STAR” in 1938. In 1943, Messrs Janki dass & Co. got the two trade marks registered. After the incorporation of the appellant (plaintiff) company in 1950, Messrs Janki Dass & Co. assigned all their rights to the former with effect from 12th July, 1955. Respondent 1 (defendant 1) gave certain particulars in paragraph 13 of its written statement regarding trade marks containing the word “STAR” in respect of cycles. Even according to those particulars, barring one instance of a trade mark “RED STAR” registered on 26th June, 1942, all the other marks containing the word “STAR” were registered, according to the written-statement, in and after 1955. Thus for a period of about seventeen years there had been no cycles in the market other than those of Messrs Janki Das & Co. and the appellant (plaintiff) which were being sold with the trade mark containing the word “STAR”, and only the “EASTERN STAR” cycles were in the field. It is the case of the appellant (plaintiff) that it, over since its incorporation, sold “EASTERN STAR” cycles on a large scale throughout India, and by about 1956 its turn-over was about a Lakh of bicycles per year. Vishnu Narain Tandon, Law Officer of the appellant (plaintiff) Co; deposed that the appellant (plaintiff) has been manufacturing and selling by the date of his deposition (20th September, 1961) about 1,50,000 cycle annually. The volume of sales during the period 1938 to 1956 and even thereafter, and the fact that the “EASTERN STAR” cycles were the only cycles in the field in the earlier period render probable the contention of the appellant (plaintiff) that the “EASTERN STAR” cycles had become known as “STAR” cycles. As pointed out earlier, Prem Sagar, a witness examined on behalf of respondent 1 (defendant 1), had to admit that villagers who purchase “EASTERN STAR” cycles demand for them as “STAR” bicycles of Sonepat. In view of all these circumstances, we prefer the statements of the witnesses examined on behalf of the appellant plaintiff, and hold that its cycles under the trade mark “EASTERN STAR” acquired a reputation and came to be popularly referred to as “STAR” cycles. The cycles of respondent 1 (defendant 1) were sought to be introduced under the name “ROYAL STAR” only from 1956. In view of our finding that the “EASTERN STAR” cycles came to be popularly referred to as “STAR” cycles, the same has to be taken as another circumstance from which it has to be held that the use of the name “ROYAL STAR” for the cycles of respondent 1 (defendant 1) is very likely to deceive and confuse a purchaser of average intelligence and imperfect memory. Consequently, it has to be held that the word mark of respondent 1 (defendant 1) in question constitutes an infringement of the registered trade mark No. 11246 of the appellant (plaintiff).

Shri Anoop Singh, learned counsel for the appellant (plaintiff), referred to the case of the appellant (plaintiff) set out in paragraph 8 of the plaint. It was stated in that paragraph that the appellant (plaintiff) had successfully taken action against persons using, in respect of cycles, the trade-mark “BLUE STAR”, “ROYAL STAR” and “STAR BY-CYCLE”, and had also obtained temporary injunctions against persons using the trade marks “ARABIAN STAR”, “WESTERN STAR” and “EASTERN STAR TYPE”. It was also alleged that action had been taken by the Government of Uttar Pradesh, of its own accord, against use of the trade marks “ROYAL STAR” and “RED STAR” as being infringement of the appellant's (plaintiff's) trade mark “EASTERN STAR”. In support of the aforesaid allegations, the appellant (plaintiff) filed Exs. P-3 to P-7 in the trial Court. It appears from the evidence of Vishnu Narain Tandon (P.W 5) that M/s. Jawahar Kanta of Lucknow wanted to get the trade mark “ROYAL STAR” registered in respect of cycles, and that on the appellant (plaintiff) filing objections to the same, the party withdrew its application for registration, Ex. P-3 being the order of the Deputy Registrar of Trade Marks, dated 28-7-1959, recording the withdrawal. Ex. P-4 is a copy of an order of the District Judge, Rohtak, dated 28-8-1959, which shows that by compromise a decree for a permanent injunction was passed restraining M/s. Sun Flower Cycles, Ludhiana, from using a badge on bicycles corresponding to the badge “EASTERN STAR” of the appellant (plaintiff). But, it is not clear from Ex. P-4 what trade mark was sought to be used by M/s. Sun Flower Cycles. Ex. P-5 is a copy of an order of the Deputy Registrar of Trade Marks, dated 23-11-1959. It shows that one Ram Chand Batra applied for registration of a trade mark, that when the appellant (plaintiff) took proceedings opposing the registration, the applicant did not file a counter-statement, and that the application was therefore deemed to have been abandoned, and the aforesaid order was passed to that effect. It is not clear from Ex. P-5 what trade mark was sought to be got registered by Ram Chand Batra. But, it was stated by Vishnu Narain Tandon (P.W 5) that Ram Chand Batra applied for registration of a trade mark consisting of the words “FIVE STARS”. Ex. P-6 is again a copy of an order of the District Judge, Ferozepur, granting a permanent injunction in favour of the appellant (plaintiff) restraining M/s. Amar Nath and Sons, Ferozepur, from using a trade-mark “ARABIAN STAR” which contained a representation of a star resembling the star on the trade mark of the appellant (plaintiff). Ex.P-7 is a copy of an order, dated 16-5-1959, in suit No. 7 of 1959 filed by the appellant (plaintiff) in the court of the District Judge, Delhi against M/s. Road Marshall Cycle Industries, Delhi, for an injunction and accounts. The suit was decreed by the aforesaid order on a consent statement made by the defendant in the suit. But, it is not clear from Ex. P-7 what trade mark was sought to be used by the defendant in the suit. Thus, Exs. P-3 to P-7 are of no assistance as they only show that in some cases other cycle manufacturers withdraw or abandoned their applications for registration of certain trade marks, and in some cases orders for injunction were passed by compromise or consent, and not after contest.

Vishnu Narain Tandon (P.W 5) stated in his evidence that the appellant (plaintiff) filed a suit against Guru Nanak Engineering Works of Ludhiana in the High Court of Bombay for alleged infringement of its trade mark “EASTERN STAR” by the use of the words “LUCKY STAR”, that the said suit was dismissed by a Single Judge of the Bombay High Court on 10th August 1961, and that an appeal filed against that judgement by the appellant (plaintiff) was pending then in the Bombay High Court, Shri Anoop Singh, learned counsel for the Appellant (plaintiff), stated before us that the said appeal has since been compromised.

Shri Anoop Singh also referred to two decisions which were pronounced subsequent to the judgment of the learned District Judge against which the present appeal has been filed. One decision is that of a learned single Judge (Srinivasan J.) of the High Court of Madras, pronounced on 7th October, 1966. In that case, the Deccan Cycle and Allied Industries and Company, Hyderabad, got a trade-mark “GOLDEN STAR” registered in 1956. The appellant (plaintiff) filed an application before the Assistant Registrar of Trade Marks, Madras, for rectification of the Register of Trade Marks by cancellation of the entry relating to the trade mark “GOLDEN STAR” on the ground that the said trade mark infringed the registered trade mark “EASTERN STAR” of the appellant (plaintiff). The application was dismissed by the Assistant Registrar. On appeal by the appellant (plaintiff) Shrinivasan J. held that the cycles of the appellant (plaintiff) had acquired reputation as “STAR CYCLES”, that the word “STAR” used by itself or in association with any word had acquired reputation in the field of cycle manufacture as that of the appellant (plaintiff), that the pictorial representation of the star was the distinguishing feature of the trade-mark “EASTERN STAR” of the appellant (plaintiff) and that there was every likelihood of the mark “GOLDEN STAR” causing confusion if allowed to be used by the Deccan Cycle and Allied Industries Company. The learned Judge accordingly directed the rectification of the Register of Trade Marks. The other decision was that of a learned single Judge of this Court (P.N Khanna J.) pronounced on 28th April, 1971. In that case, Zenith Cycle Industries, Delhi, had applied in 1958 for registration of a trade-mark “SHOOTING STAR”. The appellant (plaintiff) objected to the registration on the ground that the propounded trade mark would be an infringement of its trade-mark “EASTERN STAR”. The Assistant Registrar of Trade Marks rejected the objection of the appellant (plaintiff) and directed the registration of the trade mark “SHOOTING STAR”. On appeal by the appellant (plaintiff), P.N Khanna J. came to the same conclusion as those of Srinivasan J. in the “GOLDEN STAR” case, and held that the use of the trade mark “SHOOTING STAR” in respect of cycles was likely to cause confusion and deceive customers by its resemblance to the mark “EASTERN STAR” of the appellant (plaintiff) and would thus amount to an infringement of the said mark of the appellant (plaintiff).

We may, however, point out that the above decisions have to be regarded only as instances of successful opposition by the appellant (plaintiff) to the registration of certain trade marks, and can not be relied upon by the appellant (plaintiff) as conclusive in the present case. As pointed out by the Supreme Court in the case of Amritdhara Pharmacy (Supra) (7), every case must depend upon its own particular facts and the evidence therein, and the value of other judgments lies not so much in the actual decision in those cases as in the tests applied for determination as to what is likely to deceive or cause confusion.

Coming now to the other registered trade-mark of the appellant (plaintiff) consisting of a device (monogram) registered as No. 12052, it has to be seen in the first instance as to whether the impugned mark of respondent 1 (defendant 1) is identical with the registered trade mark of the appellant (plaintiff). It can be stated immediately that mere look at the two marks shows that they are not identical. Therefore, it has next to be seen whether the mark used by respondent 1 (defendant 1) is deceptively similar to that of the appellant (plaintiff) in the sense that it is likely to deceive or cause confusion in relation to cycles. That is to say, it has to be seen whether, having due regard to relevant circumstances, the mark used by respondent 1 (defendant 1) is similar to the appellant's (plaintiff's) mark as remembered by persons of average intelligence and imperfect memory or recollection. For that purpose, the distinguishing or essential features (and not every detail of the two marks) which a purchaser of average intelligence and imperfect memory would retain in his mind after seeing the marks, have to be noticed.

As stated by the learned District Judge, the mark of appellant (plaintiff).

“Consists of a circular device with a star in the centre and a crown at the top. Within the circle, there is an inner circle and the circumference of the inner circle is connected to the star by a large number of lines. In between the circumference of the inner circle and that of the outer circle, there are written the words “THE EASTERN STAR”. At the bottom of the circle, there is an are like projection containing the words “ATLAS PRODUCT.”

The device used by respondent 1 (defendant 1), in the words of District Judge,

“is oblong and contains the representation of a star in a smaller circle in the middle. Above the small circle is written the word “ROYAL” and below it “STAR”. Beneath that are the words “MADE IN INDIA”.

After setting out the above descriptions of the two marks, the learned District Judge made a detailed comparison of the two marks, and expressed his view as under: —

“I have looked at the two monograms and, in my opinion, it cannot be said that they are so similar as to likely to deceive or cause a confusion. It is no doubt true that the two monograms contain a representation of “STAR”, but in all other respects they are so dissimilar that one can hardly confuse one for the other. There is no crown in the monogram used for the defendant's cycle. The monogram of the plaintiff is circular with a crown at the top and a projection at the bottom, while the monogram of the defendant is oblong. There are lines shooting from the star towards the circumference of the circle in the monogram of the plaintiff, while there are no such lines in the monogram of the defendant. The name of the cycle “EASTERN STAR” is written between the circumference of the two circles in a circular manner while the words “ROYAL STAR” in the defendants monogram are both written almost horizontally. It is no doubt true that it is not the proper test in a case like the present to compare the two marks by placing them side by side. There are, however, plain and visible differences in the monograms of the two cycles and I have referred to them only with a view to show whether there is any likelihood of deception or confusion. A look at the two monograms, in my opinion, rules out such a likelihood.”

Shri Anoop Singh argued that the learned District Judge set out the correct principle of law, but committed an error in applying the same by taking note of the various differences in detail in the two monograms in arriving at the conclusion that there was no likelihood of deception or confusion. The observations of the learned District Judge extracted above do justify the argument of the learned counsel. The learned District Judge ought to have taken into consideration only the distinguishing or essential features of the two marks. A look at the two marks of the appellant (plaintiff) and respondent 1 (defendant 1) shows that the essential feature in each of them is the representation of a star therein. It is true that as observed by the learned District Judge, the mark of the appellant (plaintiff) is circular with a crown at the top and a projection at the bottom, while the device of respondent 1 (defendant 1) is oblong. But, the said features depict only the general outline or shape of each of the marks. In our opinion, the general outlines or shapes of the marks would be noticeable by a purchaser only when the two marks are compared by him placing them side by side. But, the correct approach is to consider which feature of each of the marks would remain in the mind of purchaser of a average intelligence and imperfect memory. After having a look at the two marks, we are of the view that it is not the general outlines or shapes of the marks, but it is the representation of a star in the two marks which would remain in the mind of such a purchaser. In this connection, we have also to keep in mind the fact that the appellant's (plaintiff's) cycle had acquired a reputation and came to be referred to as “STAR CYCLES”. Consequently, the presence of the representation of a star in the mark of respondent 1 (defendant 1) is very likely to deceive or cause confusion in the mind of a purchaser who wants to purchase the cycle of the appellant (plaintiff) with the trade mark “EASTERN STAR”. As observed by the Privy Council in De Cordova and others v. Vick Chemical Company, 68 R.P.C 103, 106, (16).

“it has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark on part of the mark of another trader, for confusion is likely to result.”

It has, therefore, to be held that the mark of respondent 1 (defendant 1) in question constitutes an infringement of the registered trade mark No. 12052 of the appellant (plaintiff).

In the view taken by us that the mark “ROYAL STAR” of respondent 1 (defendant 1) constitutes an infringement of the two registered trade marks, Nos. 11246 and 12052, of the appellant (plaintiff), it is not necessary to consider the contention of Shri Anoop Singh that respondent 1 (defendant 1) has been passing off and or is likely to pass off its cycles as those of the appellant (plaintiff). No arguments were advanced before us by the learned counsel for the appellant (plaintiff) regarding the reliefs by way of damages and delivery of alleged offending goods etc. prayed for in clauses E and F of paragraph 20 of the plaint.

For the above reasons, the appeal is allowed, and the decree of the learned District Judge, dated 27-11-1961, is set-aside, and the suit No. 18 of 1959 filed by the appellant (plaintiff) is decreed by granting a permanent injunction restraining respondent 1 (defendant 1) from using the mark “ROYAL STAR” in relation to its cycles or cycle accessories, and from proceeding with its application No. 177777 in the Trade Marks Registry at Bombay. The appellant (plaintiff) is entitled to its costs throughout from respondent 1 (defendant 1).

Appeal accepted