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Factual and Procedural Background

The plaintiff (sole proprietor of Messrs Paragon Pictures) produced a talkie motion picture titled "Virginia" which was exhibited at the Minerva Theatre in Bombay around mid-March 1941. Defendant 1 (a United States incorporated company) imported and distributed an American motion picture also titled "Virginia", which was exhibited at the Eros Theatre in Bombay about mid-May 1941. The plaintiff sued defendant 1 for passing-off, seeking an injunction restraining distribution/exhibition of the defendants' picture under the title "Virginia" and, in the alternative, damages. Defendant 2 (an exhibitor/theatre owner) was initially a defendant but the suit against defendant 2 was dismissed on 11 July and the proceedings continued against defendant 1 only.

The plaintiff initially prayed only for an injunction but later sought to amend the plaint to include alternative damages; the amendment was opposed by defendants but was allowed by the trial judge on terms. A large number of issues were raised, but the core disputes were (a) whether the plaintiff had acquired any legal right or reputation in the title "Virginia" for his film, and (b) whether the defendants' use of the same title was calculated to mislead the public (i.e., constituted passing-off). B.J. Wadia, J. dismissed the plaintiff's suit with costs; the plaintiff appealed. Beaumont, C.J. (with Somjee, J. concurring) heard the appeal and dismissed it, affirming the learned judge's conclusion that the plaintiff failed to prove the requisite reputation or likelihood of deception.

Legal Issues Presented

  1. Whether the plaintiff had acquired a legal right or a protectable reputation in the title "Virginia" for his film such that he could prevent others using the same title.
  2. Whether the defendants' use of the title "Virginia" for their imported American film was calculated to mislead or deceive the cinema-going public into believing that the defendants' film was the plaintiff's film (i.e., whether there was a strong probability of confusion amounting to passing-off).
  3. Whether, if the court found infringement (passing-off), equitable relief by injunction was appropriate or whether the plaintiff should be confined to alternative relief in damages.

Arguments of the Parties

Plaintiff's Arguments

  • The plaintiff asserted that he was the producer of an Indian film titled "Virginia", that he had used and advertised the title, and that the defendants' adoption of the same title amounted to passing-off by inducing or likely inducing cinema-goers to see the defendants' picture under the impression that it was the plaintiff's picture.
  • He had registered the title with the Sub-Registrar of Assurances in Bombay (16 May 1940), and emphasized the importance of a film's title in attracting the public.
  • He sought an injunction to restrain exhibition/distribution, and in the alternative claimed damages (after seeking amendment to the plaint to add that relief).
  • The plaintiff called an expert witness (a critic) who opined that audiences attach some importance to titles even if a critic might not.
  • The plaintiff identified a particular section of the public (those who patronize both Indian and foreign films) as most likely to be misled by identical titles.

Defendants' Arguments

  • Defendants denied that their exhibition amounted to passing-off or was calculated to mislead; they stressed that their film and the plaintiff's film were wholly different except for the title (different plot, language, cast, production values and get-up).
  • They contended the title "Virginia" is a geographical/common name (a State and city in the USA) and not an original distinctive title conferring exclusivity.
  • They alleged prior use/registration of the title by them in America (title registered in December 1939) and that their film had been advertised in India before the plaintiff's exhibition in some instances (e.g., Paramount Service, Hitavada, other newspapers).
  • Defendants opposed amendment to the plaint to claim damages on the ground that no loss or damage had been alleged or proved; the trial court rejected that narrow reading and allowed amendment in the ordinary way for alternative relief.

Table of Precedents Cited

Precedent Rule or Principle Cited For Application by the Court
13 Bom. L.R 9051 at p. 909 That in a suit for injunction the Court can grant relief in the alternative by way of damages. Used to justify allowing the plaintiff to amend the plaint to claim damages in the alternative to an injunction.
23 Bom. 7862 Earlier authority referred to in support of the proposition that damages may be claimed in the alternative in injunction suits. Cited alongside 13 Bom. L.R to support the amendment permitting alternative relief.
(1863) 32 Reav. 2663 That a general prayer for further and other relief may be sufficient to cover a claim for damages even if not specifically pleaded. Relied on in discussing the scope for claiming damages where the plaint originally sought injunction only.
(1881) 17 Ch. D. 6384 Court will restrain registration of a projected new company whose name is so similar to that of an unregistered company as to be calculated to deceive the public. Adduced to illustrate that company registration can create a monopoly of a name and courts will restrain deceptive similarity in company names; used by way of analogy to name-use disputes.
(1917) 2 Ch. 15 Use of a plaintiff's trade name by defendants was restrained when it was calculated to divert custom or suggest defendants' business was a branch/agency of the plaintiff. Referred to as an example of passing-off where trading under another's name diverted custom.
(1912) 29 R.P.C 4336 An attempt to obtain benefit from the reputation of a well-known name (Lloyds) characterized as improper. Cited to illustrate that taking advantage of another's established reputation for gain can ground relief.
(1896) A.C 1997 Principle that mere proof of use of the same name by defendant does not entitle plaintiff to relief; plaintiff must further prove that defendant's use is under circumstances likely to pass off defendant's goods as plaintiff's. Quoted to emphasise that plaintiff must show use likely to "put off" goods/services as those of the plaintiff; applied in framing the necessary two-part inquiry in passing-off actions.
(1899) A.C 838 Where a name was calculated to deceive the public, an injunction was appropriate (Manchester Brewery example). Used to demonstrate that, on the facts, a name liable to deceive justified injunctive relief; court contrasted that fact situation with the present case.
(1940) A.C 112 Privy Council decision that there may be little or no possibility of deception by producing a film under the same name as a song; acknowledged that passing-off by identical titles for artistic works is difficult but not impossible. Applied to show the difficulty of establishing passing-off in relation to film titles; the court relied on it to support the conclusion that identical titles alone do not establish passing-off absent other circumstances.
(1888) 38 Ch. D. 13912 That short duration of use (e.g., a newspaper published for only a few days) is insufficient to acquire such reputation as to ground passing-off relief. Cited to underscore that reputation required for passing-off must be acquired by sufficient user and cannot be assumed from ephemeral use.
42 Bom. L.R 92411 Authority where plaintiffs had acquired an exclusive right to words ("Fruit Salt") and defendants could not use those words in any other language in connection with similar goods. Cited by counsel but the court observed that it did not apply to the present facts (the present case concerned film titles and different circumstances).
67 I.A 21210 Statement that the vital element in a passing-off action is the probability of deception; and caution that witnesses cannot be treated as "experts in human nature" to testify that purchasers would probably be deceived. Relied on to reject the efficacy of calling an expert to opine generally on the likelihood that cinema-goers would be misled by title identity.

Court's Reasoning and Analysis

The courts (trial judge B.J. Wadia, J., and on appeal Beaumont, C.J., with Somjee, J. concurring) proceeded by applying established principles of passing-off as explained in the cited authorities. The reasoning proceeded in these main steps:

  1. Definition and legal foundation: The judges reiterated the nature of passing-off — a species of unfair competition intended to prevent defendants from doing that which is calculated to mislead the public into thinking the defendant's goods/works are the plaintiff's. Passing-off does not require proof of actual fraud, deliberate intent, or that actual deception has already occurred; it requires a strong probability of confusion in the ordinary course of trade.
  2. Distinction between registration and reputation: The court noted that the plaintiff's registration of the title with the Sub-Registrar of Assurances in Bombay (16 May 1940) conferred no legal title in India. By contrast, company registration (English/Indian company law) can confer monopoly of a name for a registered company; this distinction was discussed using authority by way of analogy.
  3. Factual comparison of the two films and their promotion: The court examined in detail the films' language, plot, cast, technical features and advertising. The plaintiff's film was an Indian production (black-and-white, Hindustani/Urdu plot, Indian cast, advertised as an Indian spectacular), exhibited in Bombay for about two weeks from mid-March 1941. The defendants' film was an American production (Technicolour, English language, foreign cast, plot set in the State of Virginia, advertised in various papers and as a Paramount Picture; some advertisements in India pre-dated or coincided with the plaintiff's exhibition).
  4. Assessment of the significance of title alone: Both judges emphasized that the title of a film, by itself, is generally insufficient to warrant exclusive protection unless it has acquired a peculiar or distinct reputation in the public mind. The court held that title identity alone does not make out a prima facie case; surrounding circumstances matter materially (get-up, language, cast, advertising).
  5. Reputation and user: The plaintiff bore the burden of proving that his use had acquired such reputation in the relevant public that the public would, in going to see "Virginia", expect the plaintiff's film and none other. The judges found the plaintiff's user (a fortnight's exhibition in Bombay, some advertisements, a pamphlet and posters) insufficient to establish the level of reputation required for protection.
  6. Probability of deception: The court found no strong probability of deception. Reasons included the clear and material differences in subject-matter, get-up (Indian black-and-white versus American technicolour), language, cast, and advertising style. The court also noted the absence of evidence of actual deception or reliable evidence indicating likely deception (the expert called gave opinions partly based on guess-work, which the court found inadequate and unsatisfactory, relying on authority that one cannot call an "expert in human nature" to prove likelihood of deception).
  7. Conclusion on passing-off: Because the plaintiff failed to establish both (a) association of the title "Virginia" in the relevant public's mind with his film, and (b) that the defendants' use was likely to deceive, the courts concluded there was no actionable passing-off. The trial court's dismissal was therefore affirmed on appeal.
  8. Additional procedural observations: The trial judge allowed the amendment to plead damages in the alternative; the plaintiff was found not to have been guilty of laches (he filed promptly once he learned of the defendants' exhibition). The plaintiff's conflicting statements about his film's success and the limited showing outside Bombay were considered adverse to establishing reputation.

Holding and Implications

Holding:

The plaintiff's suit was dismissed; the appeal was dismissed.

Implications and direct consequences:

  • The plaintiff failed to establish a protectable exclusive right in the title "Virginia" by user and reputation sufficient to ground a passing-off action.
  • There was no finding of a strong probability of deception of the cinema-going public arising from the defendants' use of the same title; accordingly the plaintiff was not entitled to an injunction or to damages on the facts before the court.
  • The trial court's order dismissing the suit was affirmed and costs were awarded against the plaintiff (with the cost of the summons to be set off against the costs of the suit as ordered below by the trial judge).
  • The opinion does not purport to announce any novel legal principle for general application beyond the established tests for passing-off; the decision turned on the facts and the absence of sufficient reputation and a likelihood of deception in this case.

Disposition in the opinion: Appeal dismissed (Beaumont, C.J.); Somjee, J. concurred.

    K.M. Multani v. Paramount Talkies Of India, Ltd.

    B.J Wadia, J.:— This suit has been filed as a passing-off action in respect of a film produced by the plaintiff, named Virginia. Defendant 1 Company imported an American film into India also called Virginia, and the suit has been filed to restrain them from distributing or exhibiting their motion picture with the name and title of Virginia. In the alternative the plaintiff claims damages. Plaintiff is the sole proprietor of a firm called Messrs Paragon Pictures, and he claims to be the producer of the talkie motion picture called Virginia which was exhibited at the Minerva Theatre in Bombay some time about the middle of March, 1941. Defendant 1 company is a joint stock company incorporated in the United States of America, and carries on business in Bombay and other places of importing and distributing cinematographic motion pictures for the purpose of exhibition in the theatres of Bombay and elsewhere. Defendant 2 company is the owner of a theatre in Bombay called the Bros. Theatre, and carries on the business of exhibiting in that theatre cinematographic motion pictures. Defendant 1 company imported a talkie motion picture entitled Virginia, from America, and it was exhibited by defendant 2 company at the Eros Theatre about the middle of May last. The plaintiff's case is that the use of the name or title Virginia by defendant 1 company for their film is an infringement of his right to the use of the business name of his film, Virginia, and that its use by defendant 1 company amounts to passing-off defendant 1's film as that of the plaintiff, and has the effect of misleading and/or inducing the public or a section of it into going to see, and paying for, the performance of the picture imported by defendant 1 company under the impression that they are going to witness the plaintiff's picture. Defendant 1 company deny that the exhibition of their film amounts to passing off the plaintiff's film, or that it is calculated to mislead the public as alleged. They say that their film Virginia is a totally different production, and that barring the name there is no resemblance between the two films. The suit as against defendant 2 company was dismissed on 11th July last, and it has proceeded only as against defendant 1 company whom I will henceforth refer to as the defendants.

    2. Plaintiff originally prayed only for an injunction in the suit. That is prayer (a) of the plaint. He subsequently sought to amend the plaint by asking for damages in the alternative and by adding a prayer to that effect. Defendants opposed the amendment, and the plaintiff took out a chamber summons for amendment of the plaint. The summons was argued before me. Defendants' counsel contended that the plaintiff was not entitled to claim damages as there was no allegation of any loss or damage, and none had in fact been incurred. I think the defendants failed to appreciate that the damages claimed were not on account of any loss incurred but were only in the alternative to the relief for injunction in the event of the Court holding that though there was an infringement, the plaintiff was not entitled to the equitable relief of injunction but could be adequately compensated by payment of damages. It has been held before that in a suit for injunction the Court can grant relief in the alternative as and by way of damages: see, 13 Bom. L.R 9051 at p. 909 which follows an earlier decision in 23 Bom. 7862. In an old English case, (1863) 32 Reav. 2663, the Court went further and held that if there was no prayer for damages, the general prayer for further and other relief would still be sufficient to cover the claim for damages in the alternative. I have allowed the amendment on terms, and the amendment was made. The written statement was also consequentially amended. A large number of issues has been raised on the pleadings in the suit, but the substantial points in dispute are whether the plaintiff has acquired any legal right in respect of the name and title Virginia of his film, and whether the use of that name and title by the defendants for their film is calculated to mislead the cinema going public and the public in general into believing that the picture exhibited by the defendants at the Eros Theatre is the plaintiff's picture. Plaintiff alleges that there is a passing-off by the defendants of their film as the film of the plaintiff, and that he is therefore entitled to an injunction or in the alternative to damages. The wrong known to the law as passing-off is that species of unfair competition by which one person attempts to obtain by deceptive devices the benefit of the reputation which another has established for himself in any particular trade or business. The action is really intended to enforce the well-known equity, namely, to prevent a defendant from doing that which is calculated to mislead the public and to lead them to think that which belongs to the defendant is a thing which belongs to the plaintiff. The principle of the law is that no one has the right to represent his goods to be the goods of another. It is not necessary to prove that the defendant in a passing-off action has acted fraudulently or with intent to deceive or that the plaintiff has actually Buffered damages. It is also not necessary for the plaintiff to show that a confusion in the use of the name has Actually occurred, or that somebody has in fact been deceived. There must, however, be a strong probability of confusion occurring in the usual course of the trade or business, and the fact of the confusion having Actually occurred would be strong evidence of the probability of the recurrence of the confusion in the future.

    3. Plaintiff claims to be the producer of his film Virginia. He stated in the box that he wrote the plot about the end of 1939 in the Hindustani language. The shooting of the film began at the Bharatiya Studio some time in April 1940 and continued till about August 1940. It was advertised for exhibition from September 1940, and was actually exhibited at the Minerva Theatre in March 1941. Plaintiff had the title and the name registered with the Sub-Registrar of Assurances in Bombay on 16th May, 1940, by means of a declaration, but such registration is not compulsory and confers no title in law upon the plaintiff in India. Under the company law, both English and Indian, a company by registering its name gains a monopoly of the use of that name. Even if the company is not registered, it was held in (1881) 17 Ch. D. 6384 that the Court will restrain the registration under the Act of a projected new company which was intended to carry on the same business as the unregistered company and to bear a name so similar to that of the unregistered company as to be calculated to deceive the public. Defendant's counsel in not cross-examination of the Plaintiff alleged that the plot and the title of the plaintiff's film were not original but had been borrowed by him and that therefore the Plaintiff was not entitled to any relief. This has not been specifically alleged in the written statement. The Plaintiff in the box admitted that the plot was suggested to him by a friend who had seen a silent film on the Continent some years ago, but he said that the cast and the name had not been borrowed by him.

    4. Further, it must be remembered that this is not an action for infringement of a copyright. All that the defendants have alleged in para. 13 of their written statement is that the Plaintiff acquired no right in law and could have no right in law to the name “Virginia,” as it was a common geographical name of one of the States of the United States of America and also the name of a city in America. It is not an original or distinctive title, and the name could be used by anyone. The defendants say that their use of the title “Virginia” was prior in point of time to the use by the plaintiff, as the name of their film had been registered in America in December 1939. It was scheduled to be exhibited about April 1940, but was actually released in America in 1941. An advertisement of their film appeared in the Paramount Service in November 1940. It is a magazine which is widely circulated in India. This film has also been mentioned in the Hitavada of Nagpur in September 1940, and was also advertised in Bombay some time in December 1940. Further, it was released in Calcutta early in May 1941, and exhibited at the Eros Theatre in Bombay later in the same month. They had also a film called Virginian, and that was released in India as far back as 1935. The Plaintiff stated that he did not know of the exhibition of the defendants' picture till a week before it was actually exhibited in Bombay. That is a bit surprising for a man who said that he had been in the cinema line for some eight years. It is, however, by no means clear that the defendants have a prior title to the name Virginia as far as India is concerned. But even assuming that the Plaintiff has the prior title as alleged, that confers no right upon him in India. The only thing that can confer a right upon him is user and reputation. The important question, therefore, is, had the Plaintiff acquired such reputation in respect of his film Virginia as the Court would protect, and if so, was there an attempt on the part of the defendants at what is called in law a passing-off?

    5. The defendants say that there is no kind of resemblance whatsoever between the film produced by the Plaintiff and the film produced by the defendants except for the name. Plaintiff's film deals according to him with an incident in an imaginary war between the Greeks and the Romans about 4000 B.C It was also stated that the incident was taken from mythology. There could have been no war nor any mythology so far as the Greeks and Romans were concerned about 4000 B.C The incident is purely imaginary as it can well be for the purpose of a cinema picture. The story is written in Hindustani. The film is a black and white film and was advertised to be produced and actually produced with an Indian cast. The defendants' film deals with a story of modern times, a story which centers round the last member of an old Virginian family in the United States of America. It is an American film written in English, and was advertised and Actually produced with a foreign cast and against a foreign background. It was produced in techni-colour. In short, the plaintiff's film is an Indian production, and the defendants' film is a foreign production. Further, the plaintiff's film also appears to have been advertised as an Indian film. The photo of the advertisement which covered four blocks of the wall of the Hindu Burning Ground at Queen's Road gives the name Virginia both in English and in an Indian language, with the figure of a female member of the cast in the right hand comer. In the Cine News of September 1940, the two principal members of the cast are shown with their Indian names. In fact the whole devise was to make cinema-goers see a spectacular Indian picture in India. It was advertised in the Sunday Times of 9th March, 1941, a week before its exhibition, as a mighty motion picture “featuring Manjula, Pratap, W.M Khan, David, Jamila, and a Cast of thousands. A.E.M Multani Production.” It was also advertised in the Times of India of 15th March, 1941, as a E.M Multani Production and as the first Indian spectacular film. Further, the Plaintiff issued a pamphlet Virginia written partly in English and partly in two Indian languages, and he wrote a foreword to it in which he stated that his idea in producing the film was to get “the high-brow westernized Indians, who patronise the foreign pictures exclusively, to see in the Indian pictures something that they would not find in a Hollywood production even.”

    6. The pamphlet gives photos of the prominent members of the cast, male and female, who were all Indians. The defendants' film Virginia was advertised in many places in India, the advertising according to their rules being usually done by the exhibitors. It was mentioned as one of the advance items for 1941 in the Hitavada of Nagpur in September 1940. It was also mentioned in the Eathestar, an Anglo-Gujarati weekly of Bombay, and in the Morning Standard, in December 1940. It was advertised in the Statesman of Calcutta on 23rd April, 1941, shortly before its exhibition as “the magnificent love story of a beautiful rebel,” and some members of its cast were also represented in the advertisement. It was also advertised as a Paramount Picture. It was advertised in the Tiger Programme in April and early in May 1941, in Calcutta, and also in the Advanoe of Calcutta of 2nd May, 1941. In the Advance it is desoribed as “1941's Battle Field of Love,” Carolyn Lee, the eight years old girl actress, one of the cast, being represented. It was mentioned on 81st December 1940, as one of Paramount's 1941 Releases, and was described as the romantic story of America's most colorful cities. In this also there are representations of certain members of the cast. It was advertised in the Milap, an Urdu paper of Lahore of 25th May, 1941. That was after the suit. The word “Virginia” in that advertisement is in English, the rest is in Urdu. The Urdu portion states that the film contains beautiful scenes of Virginia. In the correspondence before suit the distinguishing features of the two films have been pointed out in some detail by the defendants' Calcutta solicitors. I have described the advertisements on either side in some detail in order to show that the plaintiff's film is and was advertised as an entirely Indian film with an Indian cast and the other is and was advertised as a foreign production with a foreign cast. In my opinion it was not necessary for an ordinary person to study the advertisements and posters in great detail in order to find out that the one was Indian and the other was foreign.

    7. The two films are also distinct in language, plot and cast. Plaintiff however lays great stress on the sameness of the title of both the films. According to him the name or title of a film plays the moat important part in the attraction a film has for the cinema-going public, and he said that it was quite probable that people who wanted to see the film Virginia might be misled by seeing the defendants' film Virginia at the Eros Theatre. His witness Mr. Patel, who was called as an expert, stated that as a critic he would not attach any importance to the title of a film, but an audience would attach some importance to it, at any rate more importance than he would. He added that he said this partly from experience and partly as guess-work. In this cross-examination he stated that titles of films like, for instance, Tukaram and Tulsidas would make a very strong appeal to the Hindu section of the public because of the associations of these two films and the folk-lore tales that surround the two names. He added that to one who had not heard of the story of a picture beforehand its title would mean nothing. He also said that the title usually occupied two-thirds space in advertisements and posters, but counsel for the defendants showed to him several instances of advertisements and posters in which the title did not occupy even half that space. The plaintiff himself at first stated that to an average Indian the name Virginia would convey nothing at all. Later on he stated that the name Virginia, ending in “a,” would suggest to the Indian mind the name of a female and some conception of the virtue of chastity. This to my mind is a bit farfetched. In fact, at one time the plaintiff hesitated as to whether he should call his film Virginia or Virginia City, and unless there were considerable changes in the subject-matter, it is not easy to see how the name of a female or the conception of chastity can be associated with Virginia City. Mr. Kennebeck, the general manager of the defendant company, on the other hand stated that the title does play an important part, though not in all pictures, so far as it indicates the story of the film, but not the important part as alleged by the plaintiff. The defendants, according to him, attached more importance to the cast and to the announcement that their picture was a Paramount Picture. In my opinion the name or title generally speaking is not a sufficiently substantial part of a film to justify a claim to the Court's protection, unless the name has acquired a peculiar or distinct reputation in the cinema world.

    8. In his cross-examination plaintiff admitted that there was no resemblance between his film and that of the defendants except in the name. There is no doubt that confusion might be caused by the fact that two businesses carried on by two different people are carried on under the same or closely similar name. For instance in (1917) 2 Ch. 15, the defendants were using the plaintiff's trade name, and were restrained from so doing, because it was held that such user was calculated to divert custom to the plaintiff and to suggest that the defendants' business was an extension, branch or agency of the plaintiff's business. In (1912) 29 R.P.C 4336 there was an attempt, which the Master of the Eolls characterised as an “impudent attempt,” to obtain some benefit from the reputation which the name Lloyds carried in the shipping world. It was pointed out by Lord Hersehell in (1896) A.C 1997 that (page 210):

    “…. in a case of this description the mere proof by the plaintiff that the defendant was using a name, word, or device which he had adopted to distinguish his-goods would not entitle him to any relief. He could only obtain it by proving further that the defendant was using it under such circumstances or in such manner as to put off his goods as the goods of the plaintiff.”

    9. The question therefore which arises in this case is whether the name Virginia has become associated to such a considerable extent with the plaintiff that the Court would allow him a monopoly of the name by declaring that no one else can use it as the title of his film. The word ‘Virginia, as I have said before, is a geographical name, and the tendency of the Courts at present is to restrict the monopoly of the use of geographical names as business or trade names. Apart from that the plaintiff must, in order to succeed, prove that by reason of the defendants' Action his business has suffered, or that there is a tangible risk or probability of its suffering damage. The probability must be a strong one. In (1899) A.C 838 the Manchester Brewery Co. Ltd., was carrying on business under that name for years. The appellants bought an old business called “The North Cheshire Brewery Co. Ltd.,” and then (without intending to deceive) got themselves incorporated and registered under the name “The North Cheshire and Manchester Brewery Co. Ltd.” It was held upon the evidence that as a matter of fact the name of the appellant company was calculated to deceive, and that therefore the appellants must be restrained by injunction in the usual way. In all these cases the question really, is not one of law but a question of fact to be decided upon the evidence in the case, if any. In deciding such question the Court has to consider not merely the similarity of name, but the similarity in the make-up, the similarity in the subject-matter and other surrounding circumstances. In (1940) A.C 1129 it was held that the respondents had not passed ofl the exhibition of their motion picture entitled “The Man Who Broke the Bank at Monte Carlo” as a performance of the appellants' song of the same name. The song and the motion picture were completely different and were incapable of comparison in a reasonable sense. But Lord Wright stated that (p. 125):

    “Their Lordships do not wish to be taken to say that in no circumstances can there be a ‘passing off’ by the use of the same title for a literary, artistic or musical work, though it is difficult to imagine such a case where there are no the circumstances, other than the mere title calculated to mislead.”

    10. In this particular case the surrounding circumstances, the difference in the get up, in the language, in the plot and cast, do not lead to the necessary result that there would be a strong probability of confusion of the two pictures in the mind of the public, and therefore a strong probability of deception, There is no doubt a similarity or rather sameness in the title. The fact that both films are motion pictures is not an additional circumstance calculated to lead to any confusion. The fact that both are films and the fact that both are called Virginia do not in my opinion make up a prima facie case for the plaintiff. It has not been proved but merely conjectured that the identity of the names might lead to confusion between the two films. As I have said before, the one is an Indian and the other a foreign film. The subject-matter of the two films and the get-up are different. The difference in the get-up does form an element in considering the question of the probability of the deception. Plaintiff has not led any evidence of actual deception as the alleged infringement was recent, nor has he led any evidence of members of the public that they themselves would be deceived. Such evidence, though not strictly necessary, is often useful as a guide to the Court in determining the question of the probability of the deception. The want of such evidence cannot be got over by calling an expert witness and asking him generally what effect the sameness in the names of the two films would have on the public. It was pointed out in 67 I.A 21210, that the vital element in a passing off action was the probability of deception which might depend on a number of matters as well as the question of similarity or the marks or of the get-up. Viscount Maugham observed at p. 217 that there was no such person as “an expert in human nature,” and it was now well settled that a witness could not be called to say that it was likely that purchasers of the goods would be deceived. It is equally futile in my opinion to call an expert and to ask him what percentage of the cinema-going public go merely by the title of the film, unless there is a basis for any calculation made by him, and there can be none in the case of a calculation which is based partly on experience and partly on guess-work. The Court, moreover, can draw its own inference, for the matter does not depend entirely upon any evidence of confusion by sameness or similarity in the names resulting in an injury.

    11. Plaintiff was at some pains to describe that section of the public who in his opinion were most likely to be misled by the sameness of the name of the two films. He said it was the section of the public consisting of those who patronize both English and Indian films; they were the persons who were most likely to be misled. He said that they were the majority of the cinema-goers, but on what basis he says so is not dear. He further stated that a large portion of that majority went only by title and never cared to read the advertisements or posters to find out whether it was a foreign or an Indian picture. Now the section of the public who patronize both foreign and Indian films would generally consist of educated or fairly educated persons, and it is not clear on what grounds it could be said that they would go only by reading the name of the film or on the recommendation of others without the slightest inquiry as to what the film was about or whether it was Indian or foreign. In the same case in (1940) A.C 112, it was stated at p. 126 that the member of the public, who is supposed to be likely to be deceived, must, to start with, be assumed to know what he was wanting to see or hear. If he was presumed to be wanting to know whether what he was about to hear or see was a song or a film, I see no reason why he should not also be presumed to know, which he can know without much effort, whether the film which he was about to see was a foreign or an Indian production. It is not sufficient to say that any thoughtless person might unwarrantably jump to the conclusion that the two films were the same. Anyone who took some trouble would certainly find out the difference between the two. Counsel referred to the recent judgment in 42 Bom. L.R 92411, but that case really does not apply. In that case the plaintiffs had acquired a right to the exclusive use of the words “Fruit Salt,” and it was held that the defendants had no right to use the words in any other language in connexion with similar goods.

    12. A plaintiff's title to a trade or business name is determined by proof of reputation, and reputation comes from user. Interference with trade or business reputation is sufficient ground for the Court's interference. There is no law laying down the particular length of time during which such reputation can be acquired, but it must be acquired by a user sufficiently long according to the circumstance of the case to warrant the reputation. The plaintiff said that his film ran only for two weeks in Bombay. He said he did not even know what the takings amounted to. He also admitted that his film was not a success, though in para. 5 of the plaint he alleged that it was displayed with a considerable amount of success. When the two statements which could not be reconciled were pointed out to him, he still maintained that they meant the same thing. He has further alleged in para. 5 that the picture was being shown in other towns and cities of the Province of Bombay, but there is no evidence that before the date of the filing of the suit, namely, 14th May, 1941, the picture was exhibited anywhere outside Bombay. If this be the user and the reputation, the Court must take care not to exercise its jurisdiction so as to confer upon the plaintiff a monopoly wider than that to which he would be entitled. A few advertisements and posters, and the plaintiff's own estimate of his own production as is given in his foreword to his magazine Virginia, cannot give that kind of reputation which the Court will protect. The name Virginia so far as the plaintiff is concerned is not in my opinion stamped with the peculiar value which he has sought to give it. He has failed to establish an exclusive right to the use of that name and has also failed to establish his allegation that the exhibition of the defendants' picture Virginia would have the effect of misleading the public as alleged in para. 11 of the plaint. In my opinion, therefore there has been no infringement, and consequently the plaintiff is neither entitled to an injunction nor damages. I should like to add that there was no laches on the part of the plaintiff in filing the suit, as he came to know of the exhibition of the defendants' film at the Eros only a week before the exhibition, and the suit was filed about the same time. In my opinion, the defendants have succeeded substantially, if not entirely, in the suit, and therefore the plaintiff's suit must be dismissed with costs. Costs of the summons to be set off against the costs of the suit.

    13. Beaumont, C.J:— This is an appeal by the plaintiff against a decision of B.J Wadia, J. The plaintiff carries on the business of producing and distributing for the purpose of exhibition in India and elsewhere cinematographic motion pictures under the name of Paragon Pictures. Defendants 1 who are the respondents, are a company registered in the United States of America, carrying on the business in Bombay and other places in India of importing and distributing cinematographic motion pictures for exhibition in various places in India. It appears from the evidence that during the year 1939, and in the early part of 1940, the plaintiff wrote, or procured the writing of, a story for a film, which was to bear the title of Virginia. The shooting of the film commenced in April 1940, and on 16th May the name of Virginia was registered with the Sub-Begistrar in Bombay, though admittedly such registration conferred no right whatever upon the plaintiff. The film was completed in August 1940; there was a certain amount of advertisement, commencing in September; the certificate of the Censors was obtained in November; and thereafter some agreements were entered into as to showing the film in other places than Bombay. On 16th March, 1941, the film was actually produced at a theatre in Bombay, and ran for two weeks. It is, of course, anticipated that it will be thereafter shown in other places in India.

    14. It appears from the evidence of Mr. Kennebeck, who was called on behalf of the respondents, that the respondents also conceived in the year 1939 the idea of producing a picture under the title of Virginia, and in December of that year the title Virginia was registered by the respondents in America. The preparation of the respondents' film proceeded in America more or less contemporaneously with the preparation of the plaintiff's film in India, and the respondents' film was released in America in February 1941, and was shown in Calcutta on 2nd May, 1941. Thereupon the plaintiff commenced this suit asking for an injunction to restrain the defendants from distributing or exhibiting the said motion picture imported by them with the name and title of Virginia. It being admitted that the plaintiff has not acquired any legal right to the title Virginia, the suit is what is known as a passing-off action, and there are a great many authorities in which the nature of such an action is discussed. The foundation of a passing-off action is always deception, or possibility of deception, but it is not an action of deceit. In an action of deceit the plaintiff has to prove that he has been deceived by the defendant, and has suffered damage thereby, and that the deceit on the part of the defendant was deliberate. In a passing-off action it is never the plaintiff's case that he has been himself deceived by the action of the defendant. His case is that other people, the public, have been deceived, or are likely to be deceived. But a private individual cannot sue for a wrong done to the public.

    15. The plaintiff must therefore prove that the action of the defendant has infringed some proprietary right of his own. It is not necessary to prove any fraudulent intention on the part of the defendant, although, if a fraudulent intention can be proved, that usually assists the plaintiff's case. It follows, in my judgment, that two issues must always arise in a passing-off action: First, has the name or description or make-up, or whatever it may be, of the wrongful user of which the plaintiff complains, come to be associated in the public mind with the goods, business, or works of the plaintiff; secondly, is the defendant so describing, or getting up, his goods or whatever it may be, as to be likely to mislead the public into believing that they are acquiring the plaintiff's goods, when in fact they are acquiring the defendants' goods. As Lord Halsbury put it in (1896) A.C 199 the foundation of a pas-sing-off action is that nobody is entitled to represent his goods as the goods of somebody else. There is, of course, a great variety in the nature of passing-off actions. Sometimes the plaintiff's goods are described by purely fancy names, sometimes by names which are descriptive or their nature, or they may be referred to merely by the name of the plaintiff, and sometimes the defendant may bear the same name. The issues in each case have to be framed with reference to the facts of that case, but, in my judgment, the plaintiff has always to succeed substantially on two issues of the nature above mentioned, the first founding the plaintiff's right to sue, the second the defendant's liability to be sued.

    16. The film industry is comparatively modern, and apparently the only case of a passing-off action relating in any way to a film is the recent decision of the Privy Council in (1940) A.C 112 where the complaint was that a film was being produced by the defendants under the same name as a song the copyright in which belonged to the plaintiffs. The Privy Council held that there could be no possibility of deception of the public by producing of film under the name of a well-known song. Courts frequently have to adapt old established principles to new conditions of life, and it is quite possible that in relation to the film industry some developments may take place in the law relating to passing-off. The evidence in this case is that the title of a film is very important; and another peculiarity of a film is that its life is comparatively short. It is not like a book which may be in circulation for years. It might be very difficult to establish the reputation of a film under a particular title, and its association in the public mind with the plaintiff, by evidence of the actual production of the film. I can imagine a case in which the advent of a film under a particular title had been very extensively advertised, and arrangements made for the booking of the film, and in which some other person produced a film under the same title shortly before the advertised film arrived. It is quite possible that in a case of that nature a passing-off action would succeed, although generally the plaintiff must establish the reputation of his property by actual results. See the case in (1888) 38 Ch. D. 13912 in which the plaintiffs sued to restrain the defendants from publishing a newspaper under the same title as the plaintiffs' newspaper and failed on the ground that the plaintiffs' newspaper had only been published for three days before the date of action, and the Court held that sufficient reputation could not be acquired is that time to found a passing-off action.

    17. In this case I am clearly of opinion that the plaintiff fails to prove either of the matters necessary to his success. On the first point, he has not established that the title “Virginia” is associated in the minds of the public interested in films, with his film. I do not think he has established that fact even in relation to the limited public of Bombay, and he has not attempted to establish it in relation to the public in any other part of the world, though he has claimed an injunction in general terms. There is no evidence of extensive advertisement, though, no doubt, he did advertise on the wall of the cremation ground at Queen's Road, which is a prominent place. But there is no evidence that he: spent large sums of money in advertisement. His film has been shown only for a fortnight in Bombay, though, no doubt, it may be shown hereafter elsewhere. His production in India is practically no more than the production of the defendants' picture, which has been shown for a week in Calcutta. In my opinion, it is essential for the plaintiff to go much further than he has gone to establish that when the public go to a film called Virginia, they expect to see the plaintiff's film, and none other. On the second matter which the plaintiff has to prove, he also fails. He has entirely failed to prove that the use by the defendants of the title Virginia in connection with their film is in any way calculated to deceive. The plaintiff's film is an Indian film in black and white, written in Urdu, depicting an imaginary story, as we are told, of the meeting, of Greeks and Romans in the year 4000 B.C The story does not purport to be historical. On the other hand, the defendants' film is a film in technicolour, and it depicts modern life in America. The plaintiff took the title Virginia as being the name of the heroine of his picture, whereas the defendants took the title because the setting of their picture is in Virginia, which is a State in America.

    18. In my opinion, there can be no possibility of deception between two things so essentially different. It is, no doubt, unfortunate that two films should have exactly the same title, and the fact may lead to some confusion and inconvenience in the booking and production of the films. But the inconvenience to the plaintiff is no greater than the inconvenience to the defendants. Both parties have without any intention to deceive taken the same title for their films, and the plaintiff has no right to restrain the defendants from using the title, unless he can show that it has become associated in the minds of the public with his film and nobody else's. He has called virtually no evidence at all.

    19. His only witnesses were himself and a gentleman concerned with newspapers relating to the film industry. There was no attempt to prove any actual deception, or any likelihood of deception by reason of the identity of these two titles. In my opinion, the learned Judge was quite right in dismissing the plaintiff's suit. The appeal, therefore, fails, and must be dismissed with costs.

    20. Somjee, J.:— I agree and have nothing to add.

    G.N/R.K

    21. Appeal dismissed.

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