S.N Sapra, J.:—Plaintiffs have filed the present suit for prepetual injunction, infringement of trade mark and copyright, passing off and rendition of accounts, against defendants.

2. Briefly, the facts of the case are as under:

Plaintiff No. 1 is the proprietor of the trade mark ‘KESH NIKHAR’ with a device of a woman under No. 216597 as of July 17, 1963, in Class 3 in respect of soap with the following disclaimer;

“Registration of this trade mark shall give no right to the exclusive use of device of woman except substantially shown in the representation annexed herewith”

3. The trade mark has been renewed from time to time and is still subsisting on the register of trade marks. Plaintiff No. 1 is also the proprietor of copyright No. A-30760/80 in respect of art work as depicted on the carton/box in which plaintiffs have been packing and selling their KESH NIKHAR soap. Plaintiff No. 2 was the original proprietor of the aforesaid trade mark and copyright. However, same were assigned along with other trade marks to plaintiff No. 1 vide assignment deed dated December 6, 1983. TM-24 in respect of change of name of proprietorship and recording of the assignment is under process.

4. Plaintiff No. 1 appointed plaintiff No. 2 as registered users and application for registration of registered users agreement is pending in the trade marks Registry. Copy of the legal proceedings certificate obtained earlier to the assignment, was also filed.

5. Plaintiffs have been continuously and extensively using the aforesaid trade mark KESH NIKHAR, in respect of soap since the year 1935. Plaintiffs' sale under the trade mark KESH NIKHAR runs into a crore of rupees annually. Plaintiffs have also advertised their trade mark extensively by various medias of advertisement. On account of long, continuous and extensive user, the trade mark KESH NIKHAR and the carton, plaintiffs' soap in a distinctive carton has achieved unique reputation and is associated in the minds of the public and the purchasers with soap manufactured by plaintiffs. It denotes and connotes the goods of plaintiffs and no one else.

6. The purchasers and the intending purchasers of the KESH NIKHAR soap of plaintiffs include illiterate persons, including women and children who recognise and ask for the plaintiffs' soap by the trade mark KESH NIKHAR.

7. In September, 1983, it came to the notice of plaintiffs that defendant no. 2, who is the proprietor of defendant no. 1, brought into the market soap under the trade mark BAL NIKHAR with the device of woman in carton like Annexure ‘X’. Then, plaintiffs filed a criminal complaint against defendants and their distributors, who were selling the soap in Patiala. It has further come to the notice of plaintiffs from the advertisement, appearing in Punjab Kesri, that defendants 1 and 2 had appointed defendant no. 3 as their distributor.

8. According to plaintiffs, defendants have fraudulently and intentionally adopted the trade mark BAL NIKHAR in respect of their soap. Defendants have adopted carton and wrapper, like annexure ‘X’, which is a deceptive and fraudulent copy of plaintiffs carton, registered under the Copyright Act Defendants have even copied the plaintiffs' wrapper and leaflet in all respects. Defendants' soap cake has the same size, get up and colour. Defendants have been selling their soap with malafide intention to mislead the persons to believe that defendants' soap is that of plaintiffs. It is further alleged in the plaint that the trade mark BAL NIKHAR with the device, is an infringement of plaintiffs' trade mark. The adoption of carton for soap by defendants is also infringement of plaintiffs' copyright. According to plaintiffs' their soap is superior in quality than that of defendants.

9. In their written statement, defendants have alleged that their trade mark is entirely different from the trade mark of plaintiffs. The words KESH NIKHAR in respect of bathing soap is purely descriptive and there is nothing distinctive in the trade mark. The words KESH NIKHAR mean cleaning of hair and the words are purely descriptive in respect of bathing soap. Defendants have been using the trade mark BAL NIKHAR in respect of hair washing soap since August/September, 1983. The packing cartons and the trade mark BAL NIKHAR of defendants are entirely different from the plaintiffs words and cartons.

Plaintiffs filed the replication.

10. On the pleadings of the parties, following issues were framed:

1. Whether the defendants have infringed the plaintiffs’ trade mark and copyright? OPP

2. Are the defendants selling goods so marked as to be designed or likely to lead purchasers to believe that they are plaintiffs' goods? OPP

3. Relief.

11. Parties have led evidence by means of affidavits.

12. Plaintiffs have filed affidavits or five persons by way of evidence. In addition, to supporting the allegations as made in the plaint, in his affidavit, Shri Anil Sabarwal, one of the Directors of plaintiff no. 1 and a partner of plaintiff no. 2, has stated that the main feature of the trade mark is KESH NIKHAR. Plaintiffs have been using the label and colours as represented in the trade mark and copyright from the very begining. Plaintiffs have been using the pure material in the manufacture of their soap and the same is free from animal facts. On account of purity of goods, sale promotion and long user, the trade mark KESH NIKHAR has become distinctive with the good of plaintiffs. It has achieved a very enviable reputation and is associated in the minds of public and purchasers that the soap is manufactured by plaintiffs. He has further stated that none could have designed defendants label unless plaintiffs' label was placed before the designer.

13. Sbri Ravinder Singh Sethi, in his affidavit, has stated that he was using Kesh Nikhar soap for the last 25 years. He is a conservative by nature and hate to use any soap in which there is animal fat. The soap KESH NIKHAR does not have animal fat. About 1½ years back he went to the market to purchase KESH NIKHAR soap and he asked the shopkeeper at Tripari Town for the same. Instead, the shopkeeper told him that Anil, who was one of the partners of plainttffs, had now separated from plaintiffs and he had started a business under the name and style of Anil Soap and Chemical Works at Kharak Pandoo. On the aforesaid plea, he purchased the Bal Nikhar soap but found that it was not upto the standard of KESH NIKHAR.

14. Shri L.C Tandon, in his affidavit, has stated that since the year 1935, he has been reguraly using KESH NIKHAR soap, manufactured by plaintiffs. He has also stated that the soap does not contain animal fat and it is a pure soap. Plaintiffs' soap is asked for by the trade mark KESH NIKHAR and is recognised by a colour scheme and get up. Two years back, he went to a shop in Patiala and asked for KESH NIKHAR, Instead, he was handed over BAL NIKHAR. He was confused. On looking thoroughly he learnt that BAL NIKHAR was a copy of KESH NIKHAR. He made complaint to piaitiffs at Patiala. Both the soaps have similar cartons having same colour arrangement. Even the soap has same size, colour and get up. Other affidavits are to the similar facts

15. Shri Anil Kumar, sole proprietor of M/s Anil Soap and Chemical Works, in his affidavit, has reiterated the facts, as alleged in the written statement.

Issue No. 1

16. Shri Anoop Singh, learned counsel for plaintiffs has urged that defendants' counsel, in his statement dated January 28, 1987, admitted that plaintiff No. 1 was the registered proprietor of trade mark No. 216597 and owner of copyright No. A 30760/80. After this admission, the only question before the Court is whether, defendants by manufacturing and selling the soap BAL NIKHAR in cartons and wrappers, as placed on record, have infringed the trade mark and copyright of plaintiffs. He has placed reliance upon Section 29 of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as the Act), by urging that the Section clearly states that a trade mark is infringed, if someone without the permission of the registered proprietor, in the course of trade uses a mark which is identical with or deceptively similar to the trade mark in relation to any goods in respect of which the trade mark is registered. His contention is that a comparison of the two cartons, clearly shows that defendants prepared their cartons by placing the carton of plaintiffs before them. The main feature of plaintiffs trade mark is KESH NIKHAR, defendants have used the words BAL NIKHAR. KESH and BAL convey the same meaning and same impression in the minds of purchasers. He has placed reliance upon the judgment in Hindustan Lever Ltd.… v. Poineer Soap Factory…., 1983 PTC, 211.

17. Shri Anoop Singh has contended that BAL NIKHAR is closed to infringement of KESH NIKHAR. The copyright action could be filed under Sections 51 and 55 of the Copyright Act. Shri Anoop Singh has also placed reliance upon a judgment in Peshawar Soap and Chemical Works v. Firm Patiala Soap & Oil Mills etc. Suit No. 11577 decided on August 8, 1980, where the suit of plaintiff was decreed when defendants in that case used the trade mark “MALTEX KESH NIKHAR”.

18. Reliance has also been placed upon a judgment in Mis B.N & Company v. Mis Peshawar Soap & Chemical Works, F.A.O No. 38/74 decided on April 23, 1974. Shri Anoop Singh has further contended that the sales figures, as filed by plaintiffs, show the popularity and the increasing sale of plaintiffs' soap Defendants have not given any sales or advertisement figures. Plaintiffs' advertisement runs into lakhs of rupees.

19. Shri M.L Mangla, learned counsel for defendants, contended that plaintiffs are not the registered proprietors of the words KESH NIKHAR as the trade mark of plaintiffs is a composite label consisting of the words PESCO and the words KESH NIKHAR with the disclaimer/description imposed by the Registrar of Trade Marks that the registration of this mark shall give no right to the exclusive use of the device of a woman, except substantially as shown in the representation on the form of application. Shri Mangla has further contended that Hindi words ‘Kesh Nikhar’ mean ‘hair shine’ are purely descriptive and that is why the words on the mark have been used in the registration. According to him, the trade mark of plaintiffs is PESCO and the device of a woman is substantially shown in the trade mark. The words KESH NIKHAR are purely descriptive of bathing soap and the words are being commonly used by all the consumers of bathing soaps. Thus, no monoply could be granted for such highly descriptive words. He has placed reliance upon Section 34 of the Act. He has also placed reliance upon the judgments in Horlicks Malted Milk Co. v. Summerskill, (1916) 86 L J.Ch 175 and The Shredded Wheat Company Ltd. v. Kellogg Co. of Great Britain Limited., (1940) 57 R.P.C 137.

20. Shri Mangla has contended that the words KESH NIKHAR have not been separately registered by plaintiffs in their favour and so, claims of their packing cartons that PESCO and KESH NIKHAR are the registered trade mark are absolutely wrong.

21. With regard to the infringement of copyright, Shri Mangla has urgrd that the copyright lies in the actual execution of the artistic work. In the present case, the idea is that of a woman shown on the packing carton regarding which there could not be any copyright. Even plaintiffs could not make out a case of passing off as plaintiffs trade mark is PESCO whereas defendants trade mark is BAL NIKHAR. Defendants, according to him, have been mentioning their complete name and address of every soap cake, being manufactured and sole by them. In this regard, he has placed reliance upon judgment in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 S.C 980.

22. In Kaviraj Pandit Durga Dutt Sharma (supra) their Lordships of Supreme Court have held:

“In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's right's are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff

When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be “in the course of trade”, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S. 21). A point has sometimes been raised as to whether the words “or cause confusion” introduce any element which is not already covered by the words “likely to deceive” and it has some times been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words “likely to deceive”. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks—the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.

It appears to us that the conclusion reached by the Courts below that the appellant's mark is deceptively similar to that of the respondents can not be stated to be erroneous. Besides, this question of deceptive similarity is a question of fact, unless the test employed for determining it suffers from error. In the present case, it was not suggested that the Courts below had committed any error in laying down the principles on which the comparision has to be made and deceptive similarity ascertained. (See per Lord Watson in Attorney-General for Ontario, 1897 As 199. As there are concurrent findings of fact on this matter, we do not propose to enter into a discussion of this question de novo, since we are satisfied that the conclusion reached is not unreasonable.”

23. In Kedar Nath v. Monga Perfumery & Flour Mills, A.I.R 1973 Delhi, 12, this Court has held:

“I have examined the plaintiff's cartons marked A and B and the defendant's cartons marked C and D. Prima facie there is great similarity between the two cartons. The colour scheme and the get up are similar. The word VIJAY which is used as a prefix is in a small size. On viewing the impugned label vis-a-vis the label of the plaintiff, I think, there is bound to be confusion in the mind of a purchaser who wants to purchase SUDERSHAN DHOOP. The words VIJAYA is not likely to catch the eye of the purchaser for it is inconspicuous and an unwary purchaser is likely to think that the defendant's VIJAY SUDERSHAN DHOOP is the same product as the plaintiff's SUDERSHAN DHOOP and he is not likely to find that it is different from the plaintiff's dhoop. I think that in this case the sale of the impugned article amounts to injury to the plaintiff and, therefore, it is necessary to prevent the mischief. Some temporary relief has to be granted to the plaintiff in order to safeguard his right against the irreparable injury which may result to him. The plaintiff has placed sufficient matetial on the record including the certificate of registration of copyright and trade mark. It appears that the plaintiff has certainly been carrying on business from 1960. No such material has been placed on the record. He has not filed any details of advertisements or expenses incurred by him on making advertisements though in his pleadings it is averred that the defendant's dhoop is also an established product and that he has spent considerable amount on the advertisements. I do not set down in detail the resemblances between the plaintiff's cartons and the defendant's cartons lest it should amount to an expression of final opinion. The Supreme Court in Parle Products (P) Ltd. v. J.P & Co. Mysore., AIR 1972 SC 1359 has laid down the test to determine the question when a trade mark is deceptively similar to another. Their Lordships observed at page 1362:

“It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.”

24. A little later it was observed:—

“After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes”.

25. In Peshawar Soap and Chemical Works (Suit No. 115/77 (supra), present plaintiff No. 1 filed a suit for permanent injunction against the firm Patiala Soap & Oil Mills etc. Defendants in that suit started manufacturing and selling the soap under the trade mark ‘Ranicca Kesh Nikhar’ with the carton containing the device of a woman, as done by plaintiff. Mr. Justice D.R Khanna, while decreeing the suit of plaintiff, held that defendants by using the words ‘Kesh Nikhar’ were infringing the plaintiff's trade mark.

26. The facts giving rise to F.A.O No. 38/1974, (supra) were that M/s Peshawar Soap and Chemical Works (Present plaintiff No. 1) were registered proprietors of trade mark PESCO KESH NIKHAR SOAP”. Defendants M/s B.N & Company started manufacturing soap with the mark “MARTEX KESH NIKHAR SOAP”.

27. Though the cartons used by defendants were of different colour and setting, than those of plaintiffs, Mr. Justice R.N Aggarwal observed that the words KESH NIKHAR appeared prominently in English, Hindi and Punjabi on the cartons used by defendants. The word PESCO on the plaintiffs’ carton appeared in small letters. On seeing the cartons used by plaintiffs and defendants, Mr. Justice R.N Aggarwal held that he had little doubt that the customer could be easily misled in purchasing the soap manufactured by defendants as that of the soap manufactured by plaintiffs.

28. Sections 2(d) and 29 of the Act read as under:

“2(d) “deceptively similar”:—A mark shall be deemed to be deceptively similar to another mark if it is so nearly resembles that other mark as to be likely to deceive or cause confusion.”

Section 29

“29. Infringement of trade marks:—(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) In an action for infringement of a trade mark registered in part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark”

29. It is an admitted fact that plaintiff No. 1 is the registered proprietor of the trade mark No. 216597 and owner of copyright No. A 30760/80 I have compared the two cartons and also examined the trade marks, being used by plaintiffs as well as defendants. The Legal Proceedings Certificate of trade mark No. 216597 is Ext. P.I There is no force in the contention of learned counsel for defendants that plaintiffs' registered trade mark is PESCO. The use of the word PESCO makes no difference to the words KESH NIKHAR. From the evidence it appears that in fact, the words KESH NIKHAR are associated with plaintiffs on account of the continuous and extensive use of these words with a device of a woman. Defendants have adopted the trade mark BAL NIKHAR. What the word BAL means. It means hair. KESH also means hair. The words KESH NIKHAR are not merely of the descriptive nature, as argued by learned counsel for defendants.

30. In Hindustan Lever Limited (supra), Mr. Justice Charanjit Talwar held that the mark ‘SURAJ’ being equivalent in English to the mark ‘SUN’ was to be considered deceptively similar and as such there was likelihood of defendants' products being passed off as that of plaintiff. The picture of woman on the carton of the defendants is no doubt different in style from tint of the device of a woman on the carton of plaintiffs. But one is to see the entire effect of the carton, including its design, size and colour scheme. This coupled with the trade mark KESH NIKHAR leaves no doubt in my mind that the adoption by defendants of the trade mark BAL NIKHAR soap along with the device of a woman and the carton are deceptively similar to that of plaintiffs

31. Ths purpose of comparison is for determining whether the essential features of the plaintiffs' trade mark have been used by defendants. This is purely a question of fact. I am of the view that the essential features of plaintiffs' trade mark as well as the copyright have been adopted by defendants in the impugned trade mark and the carton. Defendants soap has the same size, get-up and colour. Thus, I hold that defendants have infringed the trade mark and copyright of plaintiffs.

32. Issue No, 1 is decided in favour of plaintiffs and against defendants.

Issue No. 2

33. Shri Anoop Singh, learned counsel for plaintiffs, has contended that a look at the rival labels would clearly show that no one could have designed the label of defendants, unless plaintiffs, label was placed before the artist to design the label. Even the device of a woman has been substantially copied. In spite of the fact that there is a disclaimer on the device of the woman, a suit for passing off was maintainable. He has placed reliance upon the judgments in cases Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., A.I.R 1955 S.C 558; Mohamed Minhajuddin v. Ahmed Khan A.t.R 1959 Andhra Pradesh 168; Parle Products (P) Ltd. v. J.P& Co Mysore A.I.R 1972. S.C 1359; Kedar Nath v. Monga Perfumery & Flour Mills, A.I.R 1974 Delhi 12; and B.K Engineering Company, Delhi v. U.B.H.I Enterprises (Regd) Ludhiana, A.I.R 1985 Delhi 210.

34. In Parle Products (P) Ltd., (supra) it was held that two marks could not be compared by placing them side by side but has to be considered as to what is the impression left upon the mind of the purchaser who has once purchased the plaintiffs' good and next time go to the market to purchase the same.

35. After comparing the two cartons, wrappers and the cakes, I hold that defendants' goods have been so designed, which are likely to lead purchaser to believe that these goods are those of plaintiffs goods.

36. Plaintiffs have been using the trade mark and copyright from the very beginning. The trade mark KESH NIKHAR has become distinctive with the goods of plaintiffs. I am of the view that the trade mark is associated in the minds of the public and purchasers that soap is manufactured by plaintiffs. An ordinary purchaser is not gifted with the power of observations. Intending purchasers include illeterate persons, women and children. I have already held that the mark BAL NIKHAR with the impugned carton is deceptively similar to that of plaintiffs. It is likely to confuse the purchasers. Accordingly, 1 hold that the goods of plaintiffs so marked, are likely to lead purchasers to believe that same are plaintiffs' goods.

37. Issue No. 2 is decided in favour of plaintiffs and against defendants.

Issue No. 3

38. I decline the relief of rendition of accounts, taking into consideration the facts and circumstances of the case.

39. Under the facts and circumstances of the case, I grant a decree in favour of plaintiffs and against defendants to the following effects:

(a). For perpetual injunction restraining defendants themselves, their servants, agents, dealers and all other persons on their behalf from using the mark BAL NIKHAR in the impugned cartons in respect of soap or any other mark which is deceptively similar to and infringement of their registrered trade mark No. 216597;

(b). For perpetual injunction restraining defendants themselves, their servants, agents, dealers and all other persons on their behalf from using the impugned carton in respect of soap which is an infringement of plaintiff's registered copyright No. A-30760/80;

(c). For perpetual injunction restraining the defendants themselves, their servants, agents, dealers and all other persons on their behalf from using the impugned carton so as to pass off their soap and make others to pass off their soap as the soap of plaintiffs in impugned cartons including the mark BAL NIKHAR;

(d). For delivery upon affidavit by the defendants of all the impugned cartons blocks, dies, printed and advertising material bearing the mark BAL NLKHAR in their possession or power for purposes of destruction and/or obliteration as the case may be.

40. Plaintiffs are also entitled to the costs of the present suit

Suit decreed.