1. This appeal from order is filed by original plaintiff against the judgment and order passed by the learned City Civil Judge, Ahmedabad, dated January 7, 1993 whereby he has vacated the ad interim relief granted earlier in favour of the appellant-plaintiff and has dismissed the Notice of Motion taken out by the appellant-plaintiff.

2. It appears that the appellant-plaintiff instituted Civil Suit No. 5928 of 1992 in the City Civil Court for permanent injunction restraining the respondent-defendant from manufacturing, advertising and marketing his product "DHANANI DAL" under the name "MARUTI" and/or under the name which may be identical or deceptively similar to the name of the product of the appellant-plaintiff, namely, "MARUTI". It is pertinent to note that the respondent-defendant has prior thereto instituted Civil Suit No. 5330 of 1992 in the City Civil Court wherein he has prayed for mandatory injunction directing the present appellant-plaintiff not to make use of the word "R" indicating that his mark is registered while doing business of selling Dhanadal. He also prayed for declaration that the present appellant-plaintiff was not the owner of words "MARUTI" and for permanent injunction restraining the appellant-plaintiff from selling his product "Dhanadal" by making use of the word "MARUTI". Said suit was instituted on October 21, 1992.

3. It is pertinent to note that both the appellant-plaintiff and the respondent-defendant are manufacturing Dhanadal which is used as "MUKHVAS" in Gujarati it sort of bite after meal. Both are using the word "Maruti" to describe their product. Both have started selling their product in decorative pouches. The appellant-plaintiff is describing his product as "APPOLO MARUTI MUKHVAS". The pouch in which the appellant-plaintiff is selling his product also contains writing "BHAVANI GRIH UDYOG". On that very side of the pouch the letter "R" is mentioned in a circle suggesting Maruti mark to be a registered trade mark. On the other side of the pouch the words "Maruti Super Dhanadal" are mentioned. The colour scheme of the label is dark Blue and Yellow. The letters are written either in White or in Red colour. As against the description of the aforesaid pouch the respondent-defendant is selling his product as "MAJEDAR MARUTI DHANADAL". The aforesaid words are written in Hindi on one side of the pouch while those very words are written in English on the other side of the pouch. The colour scheme employed by the respondent-defendant is Orange-Red and White. The colour scheme employed by the appellant-plaintiff and the respondent-defendant in their respective plastic pouches, and the outward get up of both pouches is so strikingly different that the pouch of one is not likely to be understood as pouch of another. The words "Dhanadal" are the description of the product, or they can be said to be the name of the product. The appellant-plaintiff describes his product as "Maruti Super Dhanadal" while the respondent-defendant describes his product as "Majedar Maruti Dhanadal". The word "Super" employed by the appellant-plaintiff is simply a description of his product, and similarly the word "Majedar" employed by the respondent-defendant is also description of his product. On comparison of two respective pouches the trial Court has come to conclusion that the colour scheme employed, and the outward get up of both the pouches are so totally different that they are not likely to cause any deception or confusion in the mind of an average customer even though he is illiterate, and therefore, the trial Court recorded a finding that prima facie the respondent-defendant cannot be said to be guilty of passing off, and hence, the trial Court vacated the ad interim relief granted earlier in favour of appellant-plaintiff.

4. It is required to be noted that the appellant-plaintiff, according to him, has commenced his business of manufacturing "Dhanadal" since 1988, and he has made an application for registration of his trade mark on October 4, 1988. Admittedly, his application is yet not granted and his trade mark is not yet registered. According to him, he has started selling his product "Dhanadal" in small plastic pouches since March, 1992. He received notice, dated September 28, 1992 from respondent-defendant, and from such notice he came to know that the respondent-defendant was also manufacturing "Dhanadal" under the name "Maruti" since January 1, 1992. The appellant-plaintiff through his Advocate replied to the said notice by reply, dated October 12, 1992 wherein he asserted his right to use the word "Maruti" in respect of his product "Dhanadal" as he was using said mark since 1988 and since said word "Maruti" has achieved special significance amongst users and consumers of his "Dhanadal". He also in said reply asserted that the respondent-defendant was using the word "Maruti" with a view to passing off his goods as that of the goods of the appellant-plaintiff and he requested the respondent-defendant not to make use of word "Maruti" as it was the mark of the ownership of appellant-plaintiff which was employed by him prior in point of time. The appellant-plaintiff immediately thereafter filed Civil Suit No. 5928 of 1992 and applied for injunction so as to restrain the respondent-defendant from manufacturing, marketing and advertising his product Dhanadal under the name containing word "Maruti" and/or in the name which may be identical with and/or deceptively similar to the appellant-plaintiff's product namely, "Maruti". Initially, the trial Court granted injunction which is vacated by the interim order and hence, the appellant-plaintiff has preferred this appeal from order.

5. Mr. Y.J. Trivedi, learned Advocate for appellant-plaintiff has strenuously urged before this Court that the appellant-plaintiff has been manufacturing "Dhanadal" and has been marketing the same under the mark "Maruti" since 1988. He further submitted that admittedly the respondent-defendant started use of mark "Maruti" with respect to his product "Dhanadal" subsequently. Since the appellant-plaintiff has already adopted and used the device of word "Maruti" from 1988 he has acquired the right to use the word "Maruti" and the respondent-defendant cannot be and should not be permitted to use and adopt the very word "Maruti" for manufacturing and selling his product. He submitted that the appellant-plaintiff has acquired reputation and goodwill and the respondent-defendant wants to pass-off his goods by employing the very device by use of the word "Maruti". He further submitted that phonetically the mark used by respondent-defendant is same, as appellant is selling his goods as "APPOLO MARUTI MUKHVAS" or "MARUTI SUPER DHANADAL" while the respondent-defendant is selling his goods as "MAJEDR MARUTI DHANADAL". He submitted that the use of the word "Maruti" is common and it is this very word which was employed as trade name by the appellant-plaintiff, and therefore, the respondent-defendant should be restrained from making use of the word "Maruti". vis-a-vis, his product He submitted that there is thus deceptive similarity in the employment of the trade name "Maruti" inasmuch as the very name is employed by the respondent-defendant. He further submitted that though in the pouches used by the appellant-plaintiff on the one hand and the respondent-defendant on the other hand have marketing their respective product there is no visual similarity. There is undoubtedly phonetic similarity while employing the word "Maruti", and therefore, during pendency of suit respondent-defendant was required to be injuncted. Lastly, he submitted that since the appellant-plaintiff has first used the mark "Maruti", vis-a-vis, his product, he has better right or preferential right to that of respondent-defendant.

6. Mr. R.K. Shah, learned Advocate for respondent-defendant, on the other hand, submitted that the mark 'Maruti' is not a registered trade mark of the appellant-plaintiff. Admittedly, the appellant-plaintiff has simply applied for registration, but the Registrar of Trade Marks has till date not granted the registration. Therefore, the Court is required to consider as to whether the appellant-plaintiff can claim any proprietary right over the mark 'Maruti' till it is registered. He submitted that the action of the appellant-plaintiff is not for infringement of trade mark but it is an action for passing-off. He submitted that there is a clear distinction between action of infringement and action for passing-off, and In a 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's goods. He also invited attention of this Court to Section 27 of Trade & Merchandise Marks Act, 1958 as well as Section 2(d) and Section 29 of the said Act. He submitted that in view of the findings reached by the trial Court which were pre-eminently just no interference of this Court was called for in this appeal, and the respondent-defendant should be permitted to carry on his business.

7. Now it is not disputed before this Court that mark 'Maruti' is not a registered mark of the appellant-plaintiff. The plaintiff has applied for registration as back as 1988, but in the absence of any registration of the mark, he cannot claim any proprietary right with respect to mark 'Maruti'. It is, therefore, clear that the action of the appellant-plaintiff is not an infringement action, but it is an action of passing-off of the goods of the respondent-defendant as those of the appellant-plaintiff.

8. The distinction between an infringement action and passing-off action is very succinctly brought out by the Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, reported in AIR 1965 SC 980. The following observations of the Supreme Court are pertinent:

While an action for passing-off is a Common Law remedy being in substance an action for deceit, that is, a passing-off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing-off, but is the sine qua non in the case of an action for infringement.

The Court further pointed out:

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 plaintiffs and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiffs rights 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 offer 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.

9. From the aforesaid quotation it becomes clear that when the mark of the plaintiff and that of the defendant is very close either visually, phonetically or otherwise and when the mark of the plaintiff is a registered mark, on Court coming to conclusion that there is an imitation no further evidence is required to establish that the plaintiff's rights are violated. In substance, it can be said that in such a case defendant has adopted the trade mark of the plaintiff, and in such an eventuality the change or difference in get up, making or other writing on the goods or on the packets in which the defendant offers his goods for sale would not be material. However, in the case of passing-off when there is no right in the plaintiff, vis-a-vis, the mark 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. Applying the aforesaid principle to the facts of the case before this Court, prima facie, it appears that both the appellant-plaintiff and the respondent-defendant employed mark "MARUTI" with respect to their product "Dhanadal". The appellant-plaintiff described his product as "APPOLO MARUTI SUPER DHANADAL" while the respondent-defendant describes his product as "MAJEDAR MARUTI DHANADAL". The product is Dhanadal. The word "Super" is an adjective or it seeks to describe the quality of Dhanadal. Similarly, the word "Majedar" seeks to describe the taste of Dhanadal. While the appellant-plaintiff is describing his product as "Appolo Maruti Dhanadal" the respondent-defendant is describing his product as "Majedar Maruti Dhanadal". In fact, the product "Dhanadal" is of so common that the same is being sold not by any specific mark or trade name. In fact, it is the get up, packing and the plastic pouch which is decisive and according to respondent-defendant since the plastic pouches of appellant-plaintiff and the respondent-defendant are so drastically different that there is no apprehension of his goods being passed off as the goods of the appellant-plaintiff no injunction should be granted.

11. Mr. R.K. Shah learned Advocate for respondent-defendant has also referred to and relied upon the decision of the Supreme Court in the case of Parle Products (P) Ltd. v. J.P. & Co., Mysore, . He submitted that the approach of the Court in an action of passing off of goods of the defendant as and for those of the plaintiff is undoubtedly different from one in an action for infringement of trade mark. In an action for infringement of trade mark in order to come to conclusion that whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered, and for such purpose two marks are not required to be placed side by side. It would be enough if the impugned mark bears such an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. However, in an action of passing off the Court would be justified in placing two articles 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. He, therefore, submitted that since the action of plaintiff is action of passing-off and since plastic pouches which are used by the appellant-plaintiff and by the respondent-defendant are visibly, in every respect, different from each other, there is no possibility of the goods of respondent-defendant being passed off as the goods of the appellant-plaintiff. It is undoubtedly true that the plastic pouch which is being used to market their product by the respondent-defendant is strikingly different from the plastic pouch which is being used by the appellant-plaintiff. The two pouches are so strikingly different that there is no possibility, whatsoever, of respondent-defendant passing off his goods as those of appellant-plaintiff. Prima facie, therefore, as found by the trial Court, there does not appear to be any possibility of respondent-defendant passing off his goods as that of the appellant-plaintiff as in my opinion the plastic pouch/wrapper employed by both the parties are strikingly different so as not to leave any scope for deception or the consumer being misled.

12. Mr. Y.J. Trivedi, Learned Counsel appearing for the appellant-plaintiff has strenuously urged before this Court that though there is no visual or ocular similarity in the pouches used by the appellant and the respondent, there is phonetic similarity inasmuch as mark "Maruti" employed by the appellant is also employed by the respondent. He further pressed into service the fact that mark "Maruti" is employed by the appellant prior in point of time while the respondent has started using the word "Maruti" only in the recent past. He, therefore, submitted that the trial Court ought to have granted injunction restraining the respondent-defendant from using the word "Maruti" in any manner while marketing his product. The Learned Counsel invited the attention of this Court to the decision of the Supreme Court in the case of K.R. Chinna Krishna Chettiar v. Sri Ambal & Co.. . In the said case, the appellant applied for registration of a trade mark in respect of snuff manufactured in Madras. The respondent opposed such registration on the ground that the proposed mark was deceptively similar to their registered trade mark. The Court thus was not directly called upon to decide as to whether there was infringement of the registered trade mark of one by the other, or as to whether there was passing off of the goods by one party as that of the another. The decision though not directly on the point, is pressed into service by Mr. Trivedi, Learned Counsel for appellant to contend before this Court that the word "Maruti' employed by the appellant is the very word which is employed by the respondent-defendant and as the same is employed there is something more than a striking similarity and affinity of sound. He submitted that the resemblance between the two marks must be considered with reference to the ear as well as eye and ocular comparison is not always the decisive test. Therefore, even if there is no visual resemblance between the two pouches that should no! matter when there is a close affinity of sound between the words used in the mark. It cannot be disputed that the word "Maruti" is employed by both appellant and respondent for marketing their product, but the mode adopted by both of them for marketing their product is by plastic pouches and said plastic pouches are strikingly different and the appellant-plaintiff describes his product as "Maruti Dhanadal" while the respondent-defendant describes his product as "Majedar Maruti Dhanadal." It cannot, therefore, be said that by employing the word "Maruti" simplicitor respondent-defendant is passing off his goods as their product "Dhanadal" is, as such, known by its name and is perhaps sold more by outward appearance of the pouch. It is not possible for this Court at this stage to record any finding in the absence of any evidence but it is equally impossible to conclude that the goods of the appellant or the respondent are simply purchased or sold by the device of use of word "Maruti." As the action initiated by the appellant-plaintiff is passing off action and is not an infringement action the resemblance in visual appearance shall have to be kept in mind and therefore, the decision of the Supreme Court in the case of K.R. Chinna Krishna Chettiar (supra) will not be of much assistance to this Court.

13. Mr. Y.J. Trivedi also referred to and relied upon the decision of Supreme Court in the case of Ruston & Hornby Ltd. v. Zamindara Engineering Co., . In the said case the Supreme Court referred to the distinction between an "infringement action" and "passing off action." Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. The Court pointed out that in a passing off action the issue is as follows:

Is the defendant selling goods so marked as to be designed or calculated to lead purchaser to believe that they are the plaintiffs goods?

While in the infringement action the Court noticed that the issue is as follows:

Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiffs registered trade mark.

The Court, thereafter, made following pertinent observations:

It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiffs that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiffs mark the get up of the defendant's goods may be so different from the get up of the plaintiffs goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiffs mark.

While contrasting the infringement action from passing off action the Supreme Court observed that the gist of passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get up of the B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. The Supreme Court, thereafter referred to the observations of the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd., (1941) 58 RPC 147 at p. 161 and quoted following observations:

The Statute Law relating to infringement of the trade marks is based on the same fundamental idea as the law relating to passing off. But, it differs from that law in two particulars, namely (i) it is concerned only with one method of passing off, namely, the use of the trade mark, and (ii) 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.

14. It is, thus, clear that in an action of infringement the protection given to the 3.holder of a registered mark is absolute and the 0burden is on the person who is using the same or identical mark to establish that this mark is outside the actually registered mark. Secondly, the passing off action is wider in its compass and action for infringement is nothing but one method of passing off, namely, the use of a trade mark. In cases where the trade mark is not registered at all and the product is of common use and when the goods are being marketed in different pouches which are strikingly different from one another to hold that the respondent-defendant is passing off his goods as that of the plaintiff, at this stage would not be permissible. It is yet to be investigated into as to how the consumers demand the product. If the product is demanded as Dhanadal both are manufacturing Dhanadal. If product is demanded by description of the pouch, two pouches are strikingly different and there is no likelihood of any deception. It is not known and it is not easy for this Court at this stage to infer that the goods are demanded by the consumers as "Maruti Dhanadal". Ordinarily, the product of such nature is described by the consumers by its general name, namely, "Dhanadal". Therefore, whether the respondent-defendant is passing off his goods as that of the plaintiff despite striking dissimilarity in the pouches and whether the use of the word "Maruti" enables the respondent-defendant to pass off his goods as that of the appellant-plaintiff shall have to be determined at the trial finally. At this stage, I am of the opinion that the trial Court was pre-eminently just and right in recording its finding that it cannot be said that the respondent-defendant is passing off his goods as those of the appellant-plaintiff. It is pertinent to note that the appellant-plaintiff is selling his goods under the label containing device of Lord Hanuman and the words "Apollo Maruti Mukhavas" and is not using the words "Maruti" alone. He admittedly changed his label and started selling his product Dhanadal in the new pouch in March, 1992. Therefore, when there is striking dissimilarity in the pouch employed by the appellant-plaintiff and that used by the respondent-defendant there is no possibility of any deception or confusion in the minds of average consumers, and therefore, I do not see any reason to interfere with the order passed by the trial Court.

15. Before parting with the judgment, one another submission of the learned Advocate for appellant-plaintiff is required to be noted. He has submitted that since the appellant-plaintiff has started using the word "Maruti" in respect of his product, first in point of time, he has a preferential right. For this proposition, he has referred to and relied upon the unreported decision of the learned single Judge of this Court in Appeal From Order No. 84 of 1973 decided on November 18, 1974 as well as to the decision of the Bombay High Court in the case of Consolidated Food Corporation v. Brandon & Co. Pvt. Ltd., reported in AIR 1965 Bom. 35. The learned single Judge of this Court has, on facts, found that the products were not similar in appearance. However, the product before the learned single Judge was an Oil Engine and dissimilarity in appearance is not decisive because the product is marketed as an oil engine, and mainly by its name. Therefore, since the plaintiff has marketed his product by name Macwell earlier in point of time and since dissimilarity in appearance was not decisive the learned single Judge has taken the view that the appellant-plaintiff before him has a preferential right as he has marketed his product earlier in point of time. However, this decision cannot be used for a bald proposition that one who uses mark or name of product earlier in point of time always gets a right over that mark or name. In fact, so far as plastic pouches are concerned, in the case before me, it is not possible to hold that the appellant-plaintiff has started using plastic pouches prior in point of time. The use of the word "Maruti" by appellant-plaintiff precedes the use of the word "Maruti" by respondent-defendant but earlier the appellant-plaintiff was using the words "Apollo Maruti" and therefore it is difficult to hold that he has adopted the word "Maruti" as distinct mark of his product. To the similar effect are the observations made by the learned single Judge of the Bombay High Court in the case of Consolidated Foods Corporation (supra) which are as under:

A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the Statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced or obtained throughout the State and it established the record of rights affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords farther protection under the Statute. Common law rights are left wholly uneffected. Priority in adoption and use of a trade mark is superior to priority in registration.

16. In my opinion, though commencement of use of mark by one party prior in point of time may be a relevant factor in deciding the application for temporary injunction, is always not decisive and in the present case it should not assume any importance. This judgment is also of no use.

17. Aforesaid were the only submissions made before this Court and since I do not find any substance in any of the submissions made by the Learned Counsel for the appellant-plaintiff, appeal must fail. Appeal is, accordingly, dismissed. Ad interim relief granted on C.A. stands vacated. No costs.