M. Jagannadha Rao, C.J:— This is an appeal arising out of an order partially refusing temporary injunction in favour of the appellant-plaintiff in a “passing-off action. The appellant manufactures and sells threads and their application for registration of trade mark “MOON” and device of a moon are admittedly pending before the Registrar of Trade Marks. The respondents-defendants also manufacture thread and are selling under the mark “moor”.

2. The learned Single Judge allowed the appellant's application for injunction partially in the following terms:—

“…I pass an ad interim order re-straining the defendant from using the word “MOOR” in the manner it has done till today and this, of course, would include the style of its lettering, “its colour scheme and general get-up”.

3. The appellant-plaintiff has come up in appeal contending (in para 2 of the memorandum) that while the learned Single Judge rightly granted the above relief, he “failed to grant relief in respect of use of the word “MOOR” and in respect of the device of a moon which is actually in use by the respondents. In effect, it is contended that no relief was granted in favour of the appellant, as the respondents could still continue using the offending carton with the trade mark “MOOR”, which formed the cause of action for the entire suit”. Circumstances changed after the appeal was filed. In their reply dated 20.5.1996 filed in this appeal, the respondents-defendants stated that

“the respondents have changed the style of lettering, the colour scheme and general get-up of the word “MOOR”, A copy of the same is annexed hereto.”

4. Now the get up is changed and the words are letters as “MOOR” in a slanting fashion and in brown colour.

5. The appeal was argued by the learned counsel on the basis of the altered circumstances.

6. At the outset, we may take care to say that of one views the case just on the basis of the appellant's contention regarding “MOON” and “MOOR”, one is apt to conclude that there is clear ‘passing off. But one has only to see the cartons, as they stand today broadly for an overall picture, particularly in the light of the altered style of lettering of the word “MOOR”, now written as “MOOR” slantingly and no brown colour. In the new carton of respondents' what is now more prominent is the word in capital letters “FARISHTA”, and below the same we have the baby angel inside a big moon. On the other hand, the appellant's carton contains the words “100% spun polyester” at the top above the moon at the place where the respondents have the word “FARISHTA”. The moon of the appellant below the said band is smaller in size with two clouds floating across it, while the moon of the respondents below the word “FARISHTA” is bigger in size with the picture of a baby angel, with wings, inscribed inside the moon. While below the appellant's moon, we have the words in Hindi - we have in the respondents' carton, the words written in a slanting fashion as “MOOR” in brown colour and below those words is the band “100% spun polyester”. There are no Hindi words in the respondents' carton. The sides of the respondents carton describe. Secure (ship) with rope” and respondents contend that the word “moor” in Hindi means a rope which is used for securing ships and that the idea is that their threads are as strong as these ropes.

7. Learned counsel for the parties have referred to various rulings in support of their submissions.

8. This is a passing-off action. For the purpose of this case we would like to point out the distinction between “passing-off” actions, and “infringement” actions. This distinction we are compelled to point out because the learned counsel for the plaintiff-appellant has relied upon several rulings of the Supreme Court and other courts which concern infringement actions and the element of “confusion” in the minds of the consumer.

9. The leading case in which the distinction between passing-off actions and the infringement actions was pointed out is the one decided by the Supreme Court in Durga Dutt Sharma v. N.P Laboratories (AIR 1965 SC 980). After stating that an action for passing off is a Common Law remedy while an infringement action is statutory, the court observed that evidence of “colourable use” which satisfies a passing off action would of course satisfy the colourable use for purposes of an infringement action. But the vice-versa is not true. In an infringement action if there is limitation, phonetically or otherwise, no further evidence of violation of plaintiff's statutory rights is necessary. But in a passing off action, the defendant may escape liability

“if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”

10. Thus, the Supreme Court said that in a passing off action, defendant might succeed because of the added matter. In other words, “if the essential features of the trade mark of the plaintiff has 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 difference, or indicate clearly a trade origin different from that of the registered proprietor of the mark”, then such differences though immaterial in an infringement action, would be material in a passing off action. The above distinction was reiterated in Ruston & Hornby Ltd. v. Zamindare Engineering Co. (AIR 1970 SC 1649). It was pointed out there that it very often happens that although the defendant was not using the trade mark of the plaintiff, the get-up of the defendant's goods might be so much like the plaintiff's that a clear case of passing off is proved. But,

“It is, on the contrary, conceivable that although the defendant may be using the plaintiff's mark, the get up of the defendant's goods may be so different from the get up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public.”

11. Their Lordships stated that issue in a passing off action is: “Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods?” The issue, on the other hand, in an infringement action, will be: “Is the defendant using a mark which is the same as or which is a colourable limitation of the plaintiff's registered trade mark?” Quoting the Master of Rolls in Saville Perfumery Ltd. v. June Perfect Ltd. (1941) 58 RPC 147 (161), it was stated by the Supreme Court that in an infringement action, “the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself, he has distinguished his goods from those of the registered proprietor.” Such a defence could be taken out in a passing-off action.

12. The above differences between an infringement action and a passing off action have been referred to by the Supreme Court recently in Wander Ltd. v. Antox India (P) Ltd. (1990 Supple. SCC 727).

13. In regard to the same trade mark or label, in a dispute between same companies, the passing-off action failed initially but a later action on the basis of infringement succeeded. Such an interesting situation arose in a dispute between the Company, James Chadwick & Bros which was selling thread under the name “Eagley” with a distinctive label and N.S Thread Co. which started selling thread with a label containing a representation of a bird and the name “Eagle Brand”. Between them first there was a passing-off action filed by James Chadwick & Bros in Madras which was dismissed in N.S Thread Co. v. Chadwick & Bros. (AIR 1948 Madras 481). But a little thereafter, in 1950, James Chadwick & Bros. approached the Bombay High Court in an appeal against orders of the Registrar in registration proceedings. The Registrar had upheld the opposition of James Chadwick & Bros. A learned Single Judge of the Bombay High Court had however allowed the appeal of N.S Thread Co. but on further appeal by James Chadwick & Bros., the Division Bench allowed the appeal and the opposition was upheld. The Supreme Court confirmed the Judgment of the Division Bench in N.S Thread Co. v. James Chadwick & Bros. (AIR 1953 SC 357). It was then argued before the Supreme Court that in the passing off action filed by James Chadwick & Bros. in Madras, the said company had failed and that the earlier Judgment of Madras High Court was relevant in the latter case in Bombay concerning registration of marks. The Supreme Court pointed out that both situations are different and that though in the passing off action which was decided earlier in point of time in Madras in 1948 M.S Thread Co. succeeded, that judgment was not relevant in the Bombay case which arose under the Trade Marks Act in registration proceedings. Mahajan, J (as he then was) pointed out (see para 24):

“The learned counsel for the appellants (i.e N.S Thread Co.) contended that the question whether his clients' trade mark was likely to deceive or cause confusion had been concluded by the earlier Judgment of the Madras High Court in the passing off action and already referred to in an early part of the Judgment, it is quite clear that the onus in a passing off action is on a plaintiff to prove whether there is likelihood of the defendants' goods being passed off as the goods of the plaintiffs. It was not denied that the general get up of the Appellants' trade mark is different from the general get up of the respondent's trade mark. That being so, it was held by the Madras High Court in the passing off action that on the meagre material placed on record by the plaintiffs, they had failed to prove that the Defendants' goods could be passed off as the goods of the plaintiff”.

14. Mahajan J. (as he then was) continued:

“The considerations relevant in a passing off action are somewhat different than they are on an application made for registration of a mark under the Trade Marks Act and that being so, the decision of the Madras High Court could not be considered relevant on the questions that the Registrar had to decide under the provisions of the Act.”

15. The above pronouncements of the Supreme Court show that on same facts a passing off action can fail while an infringement action may succeed.

16. The Delhi High Court had also occasion in several cases to point out the distinction in the two types of cases: J&P Coats Ltd. v. Chada & Co. (AIR 1967 Delhi 141): Khemraj v. Garg & Co. (AIR 1975 Delhi 130):

17. In “Intellectual Property: (Patents, Copyright, Trade Marks & Allied Rights) (2nd Ed) by W.R Cornish (1993), it is clearly stated (p. 404): “In the normal case of passing off, the plaintiff has to prove a reputation sufficient for members of the public to be misled by the defendant's conduct into thinking that they are securing the goods or services of the plaintiff. It is not sufficient for the public simply to be confused about whether it is getting the plaintiff's or the defendant's goods.” At the end of the day, the plaintiff must show that it is his reputation that is being misappropriated by the defendant.

18. In Halsbury's Laws of England, (Trade Marks, Trade Names and Designs, 1984) it is pointed out in the sub-chapter relating to “Passing off” that the “degree of similarity of the name, mark or other features concerned is important but necessarily decisive so that an action for infringement of a registered trade mark may succeed on the same facts where a passing off action fails”. (Vol. 48, para 166). (Saville Perfumery Ltd. v. June Perfect Ltd. and F.W Woolworth’ & Co. Ltd. (1941) 58 RPC 147 at 174 (HL). (This ruling quoted in Halsbury's was quoted by our Supreme Court in the same context in Ruston case (AIR 1970 SC 1649). Halsbury says further in the footnote (4) that this is because the question to be decided on infringement of registered trade marks is the rather narrower and more artificial question of whether the defendant's mark is confusingly similar to the registered trade mark. Some factors relevant to passing off action e.g, that the defendant is using the mark in conjunction with other matter which makes confusion either more or less likely, are not strictly relevant to infringement of registered trade marks. Having pointed out the distinction in approach infringement cases and passing-off cases and the advantage of added matter in a passing off action, the next question is whether in this appeal, having regard to the altered circumstances, the respondent can be said to be intending to pass off his goods as the goods of the appellant.

19. We shall once again revert back to the cartons. The appellant's carton is in black, with yellow band at the top and at the bottom. The yellow band at the roof of the front side is of about an inch with the words 100% spun polyster’, then below that about a rectangular sheet running down about 6″ in black. In that, - a little below the top yellow band - we have a small yellow moon with two small black clouds shown across, and below the moon, we have the words in yellow coats, and below that the words ‘moon’ (standing vertically) in yellow. Below that we have the words in Hindi. This is all in the black background running 6″ down the yellow band at the root. At the bottom, below the black one, we again have a yellow band with the words in Hindi 100%

20. Coming to the respondents, the carton is again a black one, but the yellow band at the top is not at the root but half inches below, and contains these words in black bold letter “FARISHTA” meaning a baby angel. Below the yellow band, we have a bigger yellow moon in size with the figure of a baby angel with wings, in black. Below that we have a small yellow rectangle containing the word “MOOR” written in brown colour. Below that, we have an yellow band (3/4″ away from the bottom of the front side) with the words 100% spun polyster in English. There are no Hindi words.

21. We have to consider the overall or broad picture presented by the two cartons and not examine minute differences. However much we strive in this behalf, it occurs to us that the respondents ‘carton’ - though it is in black background with one yellow band (away from the roof) on top, - still it prominently displays the words in English ‘FARISHTA’ in black inscribed in that band and then a big yellow moon with the figure of an baby angel with wings in black inside the moon and below that are the words “MOOR” written in brown in a slanting fashion in a small yellow rectangle. Then comes the yellow band lower down, away from the bottom, with the w6rds in English 100% spun polyster’.

22. Taking an overall view of the cartons, it is clear to us that the carton of the respondent is quite different as it prominently displays the words ‘FARISHTA’ and the yellow moon with child angel inside - as against an yellow band of the appellant with words ‘100% spun polyster. The appellants moon is smaller in size with two clouds in black lying across. Again the word “MOOR” of the respondent is in brown colour written in a slanting fashion as against appellants vertical letters ‘moon’ and other words in Hindi. The respondents' carton has no Hindi words.

23. Question is not whether kept side by side, there could be confusion? Question is whether in the absence of plaintiff's goods in the shop, a purchaser could mistake the defendants' goods for the plaintiff, going by his mental recollection of the plaintiff's goods? In our view, the totality of the features of the defendant's carton are such that they are not likely to create such confusion in the mind of the purchaser. As stated by Lord Halsbury in Schwapper Ltd. v. Gibbens (1905) 22 APC 609 (HC) the ‘whole question in these cases is whether the thing - taken in its entirety, looking at the whole thing - is such that in the ordinary course of tilings a person with reasonable as apprehension and with proper eyesight would be decided”.

24. Bearing these principles in mind, we are unable to hold that there is any scope for confusion. Surely, if the only difference was that the appellant was using the word ‘MOON’ and the respondent ‘MOOR’ without anything more, one could - without looking at other features of the cartons - rush to the conclusion that there is clear confusion. But as pointed above, there are so many differences between the carton clearly visible even in the broad general features and taken as a whole that a purchaser who goes in for the plaintiff's carton is not likely to treat the defendant's carton as that of the plaintiffs.

25. Respondents also seek to justify the use of the word ‘moor’ as meaning the rope which secures ships. The respondents' carton contains on its side, the words ‘Secure (ship) with rope’. Thus the intention was not to copy some words close to ‘moon’.

26. It is argued for the appellant that even if the get-up the device and words on the cartons are different, there is phonetic similarity between ‘moon’ and ‘moor’ which is likely to confuse unwary or illiterate purchasers. It is argued that the recollection of consumers is normally imperfect, and that when they ask for ‘moon’ variety thread, the shopkeeper could given them ‘moor’ thread and the purchaser could take it home. Sometimes, it is argued, orders could be placed on telephone also.

27. In other words accepting that there is distinction in several visual respects, the point sought to be made out by the appellants is that there is phonetic similarity and there is chance of confusion.

28. Are we dealing with incautious or thoughtless persons who cannot distinguish the carton of the respondents from the carton of the appellants merely because a retail seller hands them the wrong carton cross the counter? The view was at one time expressed that a person who is deceived or is likely to be deceived may be a ‘thoughtless’ or an ‘incautious purchaser’. Lord Kingsdown in Leather Cloth Co. Ltd. v. American Leather Co. Ltd. (1866) 11 HLC 523 posed the question for determination as to whether the trademarks used by the defendant is calculated to mislead incautious purchasers'. The same expression was used by Lord Blackburn in Johnston v. Orr Ewing (1882) 7 AC 219. In the same case, after referring to one class of customers Lord Solborne L.C goes on to refer to the ‘more ignorant class of consumers’ apparently describing them relatively to the other class which he previously dealt with. Similarly in Juggi Lal Kamalapet v. Swadeshi Mills Co. Ltd. (AIR 1929 PC 11) Viscount Dunedin after stating that a person of such literacy as to have critical powers of observation would not be confused with the defendant's trade mark’ proceeds to observe that the trade mark ‘would be apt to be confused by the illiterate.

29. In Payton & Co. v. Spenning Lamard & Co. (1899) 17 RPC 48, Lord Romer LJ observed in as well known passage: “It seems to be a sort of popular notions of some witnesses that in considering whether the customers are likely to be deceived, you are to consider the case of an ignorant customer who knows nothing about, or very little about, the subject of the action. That is a great mistake. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods on the market so far as relates to general characteristics. The customer must be one who, knowing what is fairly common to the trade, knows of the plaintiff's goods by reason of there distinguishing characteristics. If he does not know that he is not a customer whose views can properly or will be regarded by this Court”. In Thomas Bear Sons (I) Ltd. v. Prayag Narain (AIR 1940 PC 86), the Privy Council pointed out that the test is whether a person exercising ordinary cautious is likely to be deceived and not whether some ignorant and indiscriminating persons might not be so deceived. In Leather Cloth Co. Ltd. v. American Leather Cloth Co. Ltd. (1866) 11 HLC 523, Lord Cranworth stated that the question is whether there is such a resemblance as to deceive a purchaser who exercises ordinary cautions (See N.S Thread Co. v. Chadwick & Bros. AIR 1948 Mad 481 where the above summary is given).

30. The above rulings therefore lay stress on the fact whether confusion could still be created in the mind of a person who knows the distinguishing characteristics of the plaintiff's goods and whether a person exercising ordinary caution is likely to be deceived.

31. In POL-RAMA Trade Mark v. Registrar (1977) RPC 581, that the application of petitioners for registration of POL-RAMA sunglasses could not be validly opposed by a manufacturers of POLAROID sunglasses who had prior registration. The Court held that the two marks, when compared in their entirety were dissimilar and did not cause confusion. Attention should not be concentrated merely on the first syllable of either word. There was also a real differences taking ROID and RAMA into consideration. Even those who had imperfect recollection would not confuse POL-RAMA with POLAROID. Quoting Luxmoore L.J as approved on appeal in ARISTOC v. RYSTA 1945 RPC 65 at 84 the Court said that the said test was to be applied in regard to a person who was familiar with both words and see whether he would be confused or deceived.

32. Learned counsel for the appellant has placed reliance on certain judgments of the Supreme Court. In Corn Products Refining Co. v. Shangrila Food Products Ltd (AIR 1960 SC 142), which was an infringement action, the Supreme Court pointed out that the matter must be considered from the point of view of a man of average intelligence and of imperfect memory and that to such a man, the overall structural and phonetic similarity and the similarity of the idea in the two marks (as was the factual position in that case) is reasonably likely to cause confusion between them. They were there dealing with ‘Glucovita’ and ‘Gluvita’ biscuits.. The idea of the two marks was the same, i.e, of glucose and life giving properties or vitamins. There was phonetic similarity between the two words. Biscuits were sold in small containers of one pound and four ounces. In Amritdhara Pharmacy v. Satya Deo Gupta the respondent applied for registration of ‘Lakshwardha’ while appellant who had registered ‘Amritdhara’ much earlier opposed the said registration. The Supreme Court, quoted Parker J. in Re Pianotist Co's Application (1906) 23 RPC 774 which was a case of companion of two words. Parker, J. said: “You must consider the nature and kind of customer who would be likely to buy those goods. If yes, you must consider all the surrounding circumstances”. Their Lordships said that an unwary purchaser of average intelligence and imperfect recollection’ would go by the overall structural and phonetic similarity and the nature of the medicine previously purchased. The purchaser, in the case, could be illiterate or badly educated persons. The whole word was to be considered and there was possibility that the purchaser might think he had purchased Lakshwardha earlier and not ‘Amritdhara’.

33. In Durga Dutt Sharma v. N.P Laboratories AIR 1965 SC 980 which was also an infringement action, the Supreme Court observed (with reference to Section 21) that a point has sometimes been raised as to whether the words “or causes confusion” introduce any element which is not already covered by the words “likely to deceive”. Ayyangar, J. stressed the difference between infringement actions and passing off actions. His Lordship said that 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 the trade in the goods in respect of which his mark is registered, is deceptively similar. This has 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.”

34. Then the Court said:

“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 of respondent by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiffs trade marks 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 born in mind that the object of the inquiry is ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered trade mark of the plaintiff.”

35. We may point out incidentally the above cases relied upon for the appellant were cases of infringement actions and we have initially referred to the difference in the approach between an infringement action and passing off action. In the former slight evidence of similarity is sufficient whereas as in the latter the defendant could show that there are certain additions or other deviations from the plaintiffs' trade mark which differentiate his trade mark and goods from those of the plaintiff. It may be that we have to consider the case from the point of view of a man of average intelligence with imperfect memory. Halsbury (Vol. 48, para 139) (1984) says that the doctrine of imperfect recollection must not be pressed too far. Presence of English words in one (respondent) and Hindi (In appellant) may diminish the probabality of confusion. The overall impression - both oral and visual - is to be considered (Halsbury, ibid, para 137).

36. Therefore, an overall view of the entire trade mark and get up has to be considered. The Court has to see whether the defendant intended to pass off his goods as those of plaintiff. In the present case, we find that there are several distinguishing features of the defendants goods which are (as stated earlier), on the face of the carton, different. The words ‘FARISHTA’ is prominently displayed in bold letters, in big size, and the baby angel in the moon, coupled with the word “MOOR” written in a slanting fashion in brown colour on the defendants carton would, in our view, be sufficient to make even an unwary purchaser of average intelligence and imperfect memory of the plaintiff's carton, not to accept the respondent's goods for those of the plaintiff-appellant. If such a purchaser should ask for ‘MOON’ thread and he is given ‘FARISHTA’ with a baby angel inside a moon with the word “MOOR” written in a slanting fashion in brown colour, he would in our view, prima facie be able to say that this was not what he asked for.

37. The appeal is dismissed. As the registration of appellants trade mark is pending, we should not be understood as having decided anything relevant for purposes of the registration under the Trade Marks Act.