1. The principal question in this case is whether it is permissible for the defendant to use the name of ‘Bismilla’ as the trade name in reference to his goods although the plaintiff-firm in reference to similar goods is already, using the trade mark ‘Bismi’. Parties to this appeal are a registered firm and a business man who does business mainly in ball point pens and fountain pens and allied articles. The court below has passed a decree prohibiting the defendant Page: 557from marketing any goods under the mark Bismilla or any other mark similar or deceptively similar to the plaintiff's trade mark Bismi. It also declared that the mark Bismilla used by the defendant is an offending mark deceptively similar to the plaintiff's registered trade mark Bismi. Further, the court declared that the plaintiff is entitled to realise damages from the defendant on account of his selling products manufactured in the name Bismilla. The court directed assessment of the quantum of damages to be made in the final decree proceedings. Defendant challenges this decree in this appeal.
These are the facts:
2. Plaintiff is the proprietor and owner of a registered trade mark Bismi. The trade mark was registered on 6th July, 1965. The number of the trade mark is 229921. Plaintiff got the trade mark transferred in his name under a certificate issued on 26-7-1975 by the Assistant Registrar of Trade Marks, Bombay. Plaintiff was/is marketing his goods, fountain pens, ball point pens and allied articles in the registered trade mark Bismi. Plaintiff claims that by virtue of the said registration as well as by long established user and wide publicity, plaintiff has acquired exclusive right to the use of the trade mark Bismi particularly in relation to the sale of fountain pens, ball point pens, pencils, writing inks and other similar materials.
3. Plaintiff's case is that the defendant is infringing plaintiff's trade mark by using the mark, the name Bismilla, which is a colourable imitation of plaintiff's trade mark ‘Bismi’, which is deceptively similar and/or confusingly similar to the plaintiff's trade mark both phonetically and visually. Defendant has deliberately used the mark ‘Bismilla’ in order to deceive the public and to give an impression to the public that the goods sold by him are goods marketed by the plaintiff in the trade mark Bismi. Certainly, this scheme of the defendant will injuriously affect the good will and reputation established by the plaintiff and it will cause loss to him. This, according to the plaintiff, is an infringement of plaintiff's trade mark within the meaning of section 28 of the Trade and Merchandise Marks Act, 1958. Plaintiff came to know that the defendant has been doing this clandestine business ever since 1979 and he has marketed a large number of fountain pens, ball point pens and refills. In these circumstances, plaintiff approached the court below for the reliefs claimed in the plaint.
4. Defendant contended that the plaintiff has no cause of action against him. He has got every right to sell his goods in the name Bismilla. This name is not deceptively similar or confusingly similar to the plaintiffs trade mark Bismi, both phonetically and visually. Defendant has also raised some ancillary contentions in his Written statement. Defendant submitted that the plaintiff is not entitled to any amount as damages and at any rate an Page: 558amount of Rs. 5,000/- as claimed in the plaint. He prayed that the suit may be dismissed with his costs. After a detailed consideration of the facts and circumstances and the law applicable to the case, the court below passed a decree, the substance of which I have referred to in paragraph 2 of the Judgment. Now, the defendant is aggrieved. He appeals.
5. I have given only a summary of the facts and a skeleton history of the case. From the sumary of the facts, the core of the principal question that has to be considered is whether the use of the word Bismilla by the defendant for marketing his goods would infringe the plaintiff's trade mark Bismi.
6. There was some dispute as regards the question of registration of the trade mark and the ownership of the same with the plaintiff. By the end of the hearing of the case, this question ceased to be a matter of controversy. The case has to be proceeded on the basis that the plaintiff is the proprietor of the trade mark Bismi. Similarly, there was an incidental question as to whether the defendant also had obtained a trade mark registered as Bismilla. This question also ceased to be a matter of controversy since there is clinching evidence in the case to show that the defendant has only applied for registration and he has not obtained the trade mark Bismilla registered in his name.
7. Infringement of the trade mark in this case depends upon the vital fact whether the mark Bismilla used by the defendant for his goods is deceptively similar or confusingly similar to the plaintiff's trade mark, both phonetically and visually. The court is faced with the problem how to decide this question. What effective and faultless parametre can be used to resolve the question?
8. Essentially this is a question of fact. Normally, a question of fact is decided by courts on a proper assessment of the evidence and circumstances involved in the case, after considering and applying the usual norms of legal inferences decoctable from the entire conspectus of evidence, circumstances, and other materials placed before the court. Certainly, the court will also bear in mind that a civil case has to be decided on the balance of probability.
9. On a question of infringement of trade mark, the material objects will be before the court. The trade mark as well as the main articles marketed under that trade mark will also be before the court. Also, there will be as material objects, the disputed mark and the materials marketed under that mark. The court has got the obligation to make its own opinion on a visual and phonetic basis. What is the exact width and extent of its own perception the court can employ in deciding a case of infringement of trade mark or a passing off action is not very clear and plain.
10. I shall advert to certain decisions on this aspect of the matter as a prelude to the examination of the principal question whether there is infringement of trade mark in this case. Before dealing with the assessment of deception in a given case, I feel that I should state the cardinal principle which forms the basis of the action of infringement of trade mark or passing off in the words of Lord M.R as early as 1842, but referred to by the House of Lords in 1979 (2) All. E.R 291 as being “A man is not to sell his own goods under the pretence that they are the goods of another man.”
11. In 1899 A.C 84, The North Cheshire and Manchester Brewery Company Limited v. The Manchester Brewery Company Limited. Earl Halsbury L.C said: “Upon the one question which your Lordships have to decide, whether the one name is so nearly resembling another as to be calculated to deceive, I am of opinion that no witness would be entitled to say that, and for this reason; that this is the very question which your Lordships have to decide.”
12. Lord Upjohn in Berlei (U.K) Ltd. v. Bali Brassiers. Co., (1969) 2 All. E.R 812 said:… “the judicial ear has the final say, for in the end it is a question of impression and common sense.” Lord Morris has said:
“The matter is very much a question of first impsession and to a person who is not familiar with either word, which is the proper approach, I should have thought that there was a reasonable apprehension of confusion between the two words.”
13. In (1942) 1 All E.R 615 (Coco Cola Company of Canada Ltd. v. Pepsi-Cola Company of Canada Ltd.) Lord Russel of Killowen plainly said:—
“In these circumstances, the question for determination must be answered by the court, unaided by outside evidence, after a comparison of the defendant's mark as used with the plaintiff's registered 3 mark not placing them side by side but by asking itself whether, having due regard to relevant surrounding circumstances, the defendant's mark as used is similar (as defined by the Act) to the plaintiff's registered mark as it would be remembered by persons possessed of an average memory with its usual imperfections.”
14. The question whether one mark so nearly resembles another as to be likely to deceive is a question for the court and is not a matter for witnesses. Where the case turns on phonetic resemblance, once the evidence has established how the marks are pronounced in use, the judicial ear has the final say. The question of infringement, the question whether one mark is likely to cause confusion with another, is a matter upon which the, judge must make up his mind and which, he and he alone must decide. He cannot abdicate the decision Page: 560in that matter to witnesses before him. On the other hand, it is equally true that he must be guided in all these matters by the evidence before him and where the evidence is that there has been no confusion that is a material matter which the judge must take into account. See Electrolux v. Electrix, (1954) 71 R.P.C 23.
15. The obligation of the court to form its own opinion as regards the resemblance of the mark under dispute to be likely to deceive is really a complex and difficult duty. In (1942) 1 All. E.R 615 Lord Russel of Killowen went to the extent of saying that the “question for determination must be answered by the court unaided by outside evidence”. In General Electric Co. v. The General Electric Co. Ltd., (1972) 2 All E.R 507 at 515, Lord Diplock observed:—
“The question does not cease to be a ‘jury question’ when the issue is tried by a judge alone or on appeal by plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their, number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself”.
16. The above quote indicates that Judges are entitled to form their own opinions independent of the evidence of the witnesses called at the trial. The words used are significant. “Judges are not confined to the evidence of witnesses called at the trial”, but in what I have quoted above, Lord Diplock observed a Judge has to use his own common sense and consider whether he would himself be likely to be deceived or confused. Further, it is said, the question does not cease to be a jury question when the issue is tried by a judge alone or on appeal by plurality of judges.
17. Is it necessary or useful for the plaintiff to ask a witness whether he himself would be deceived by the concurrent use of the two marks concerned? Of course, such evidence can be given in the case, but evidence on this point from ordinary members of the public, not acqauinted with the usages of the trade is of very limited value for establishing any general proposition and it is impracticable in any ordinary case to call as witnesses a representative sample of members of the public. In England, there is a practice of obtaining opinions of the general public by a properly conducted opinion poll or survey (such as is used in market research) and this has been attempted in several cases but, the case law would reveal that it was not of much effect. Normally judges do not like novelties in presentation of evidence because they have Page: 561to conform to the statutory provisions of the evidence Act and a case strong enough to permit of innovation should be provable by conventional techniques. A somewhat crude survey was attempted in Treasure Cot Case (1950 67 R.P.C 89. In (1972) 2 All E.R 507, there was a relatively sophisticated survey. The trial judge admitted the evidence, but dismissed it saying the questions asked were misleading. Vide (1969) R.P.C 418 at 446. The Court of Appeal accepted the survey (1970) R.P.C 339, but when it came before the House of Lords, the Law Lords were not impressed by it. See (1972) 2 All E.R 507.
18. I am of the view that proof of actual deception is difficult and unnecessary if the mark is in the opinion of the court likely to deceive or if the court finds that it has been substantially copied from another. But, if one or more cases of actual deception are made out to the satisfaction of the court, this will certainly afford in my opinion, very strong evidence, that the resemblance of the marks in question is so close as to be likely to deceive. In Saville Perfumery v. June Perfect, (1941) 58 R.P.C 147. Viscount Maugham (H.L) observed: “Even if instances of actual confusion can be found, it may be rather difficult to satisfy the court; people who make good witnesses tend not to be very easy to deceive or confuse. It may be noted that some judges are persistently harder to convince by instances of deception than others.”
19. Referring to several decisions, the Supreme Court in Parle Products (P.) Ltd. v. J.P & Co. Mysore ((1972) 1 SCC 618 : A.I.R 1972 S.C 1359) said:—
“It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical hears such a close resemblance that one can easily be mistaken for the other”.
20. In A.I.R 1958 Bombay 56 (Ciba Ltd. v. M. Ramalingam) Chagla C.J said:
“As the authorities have said, it is not for a witness or a large number of witnesses to tell the court whether there is likelihood of deception. The court cannot abdicate its own function which is to Page: 562decide on looking at the two trade marks and on considering them phonetically whether they resemble each other and whether there is likelihood of deception. That function cannot be discharged by a person in the witness-box. It is true that the absence of any evidence of deception may be a material fact which the court may take into consideration but if the resemblance between the two marks is clear and obvious, then it is the duty of the court to remove from the register a mark which is likely to cause deception. Mr. Justice Chitty in In re, Hill's Trade Mark (1893) 10 RPC 113, emphatically stated:
“I state my opinion that directly it is apparent that if any part of a trade mark is calculated to deceive it is the duty of the Court to order it to be removed”.
(emphasis added).
21. A Newzealand Court had occasion to consider this aspect of the matter in Customglass v. Salhouse, (1976) R.P.C 589. The court admitted the results of the survey which comes on its weight based on the decision of House of Lords in (1972) 2 All. E.R 507. In Coca-Cola v. Struthers, (1968) R.P.C 231, a tape-recorded survey to find out how people pronounced “Koala Kola” was, given little weight compared with the more conventional trade evidence. In Tetrosyl v. Silver Paint, (1980) F.S.R 68 (C.A) “a get-up case where there were obvious differences between the goods, the plaintiff's market research evidence failed to persuade the court that they had an arguable case on likelihood of confusion. But, Falconer J. in (1983) F.S.R 155 gave considerable weight for a properly conducted opinion poll amongst the public. A question was raised whether the opinion poll evidence is hearsay evidence. But the question was answered in the negative. The reason stated is “It was evidence of an external fact, viz. that a particular opinion was held by the public. So, it is not hearsay evidence. In Laura Ashley v. Coloroll Whitford, J. said: ‘evidence that a number of the plaintiffs’ customers, shown the defendants' mark on a “tachistoscope” for a few milliseconds, too short a time was of no use’. The survey evidence is not at all attempted in our country. Such evidence cannot be assessed unless the questions asked and answers given are recorded and those conducting the survey are subject to cross-examination. Vide Bulner v. Bollinger, (1976) R.P.C 97.
22. The question whether the mark ‘Bismilla’ is deceptively similar to the registered trade mark ‘Bismi’ has to be decided at any rate, primarily, by examining the material objects produced in this case, viz. Nos. 1 to 11. These material objects are cartons with the trade mark Bismi on it and cartons of the defendants with the name Bismilla, Pen and refill of dot pen of the defendant and the plaintiff are also material objects produced before Page: 563the court. The cartons are used for packing ball pens and fountain pens sold by the defendant and the plaintiff. The court has to decide by examining the marks of the plaintiff and defendant, the amount of resemblance that is likely to deceive. It is not possible to discover or to deduce the standard from the decided cases as to the amount of resemblance which may suffice to deceive or cause confusion Lord Cranworth said in Seixo v. Provezende (1895) L.R 1: “What degree of resemblance is necessary………is from the nature of things incapable of definition a priori”. The standard always may not be the same. So, it is plain that except in so far as the decided cases may give some guidance of the general nature they are of little assistance in the determination of new questions of fact raised upon the materials placed before the court. Thus the onus of proof in relation to reasonable probability of deception depends upon the nature of articles, nature of the mark, nature of persons who use those articles and other allied circumstances. It will be a safe rule and in comparing the marks, the court must take into account all the circumstances of the case and consider whether as a whole, the mark complained of is likely to deceive the customer on account of the close resemblance of the mark with the mark of the plaintiff.
23. Here, the two marks which have to be compared by the court are the two words ‘Bismi’ and ‘Bismilla’. Bismilla has got the meaning, in the name of Allah’. Bismi has no meaning at all. It is simply a name. It is better to adopt what Parker J. said in a case involving the comparison of two words - Pianotist Case, (1906) 23 R.P.C 774 - “You must take the two words, You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks”. I am sure that considerations, however, would differ considerably and appreciably, when device marks are to be compared or when a device mark is to be compared with a word mark. I am certain that in all cases, it should be borne in mind that a decision on the question whether a mark - a device mark or a word mark - so nearly resembles another as to be likely to deceive or cause, confusion is not purely an exercise of discretion by a court, but it must be a finding of fact.
24. In this case, no customer has been examined. No witness has told the court that he was deceived, but the plaintiff's witnesses have told that there is close resemblance to the design and the colour combination of the cartons and also there is close resemblance of the name Bismilla and Bismi. The cartons are before the court as material objects. The court below examined them and found that they are deceptively similar. I have also examined the Page: 564cartons of the defendant and I am of the view that the colour combination, the size and the design are all similar to the cartons of the plaintiff.
25. A further question that has to be considered is whether the word Bismilla would so closely resemble with the word Bismi. This I say because the trade mark that is registered is Bismi, and the main case of the plaintiff is that there is infringement of the trade mark. The case is based on the statutory provisions contained in sections 28 & 29(1) of the Trade and Merchandise Marks Act.
26. Counsel for the respondent referred me to several decisions. In deference to counsel, I shall catalogue those decisions and consider some of them. They are: (1926) 23 R.P.C 774, A.I.R 1982 Delhi, 308 (Essco Sanitations…Petitioner v. Mascot Industries (India)…); A.I.R 1984 Bombay, 281 (Mohann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Ltd.); A.I.R 1964 Madras 204 (N. Arumugam Pillai v. K.S Syed Abbas); A.I.R 1959 Calcutta 636 (Bengal Immunity Co. Ltd. v. Denver Chemical Manufacturing Co.); A.I.R 1963 S.C 449 (Amritdhara Pharmacy v. Satya Deo Gupta ); A.I.R 1979 Cal. 133 (Banwaridas Pugalia v. Colgate Palmolive Co., A.I.R 1989 Delhi 157; A.I.R 1989 Madras 9 (Kali Aerated Water Works, Tiruchirapalli v. Rashid, (196) RPC 229, (1969) RPC 102, (1969) 2 SCC 727 : A.I.R 1970 S.C 1649 (Ruston & Hornby Ltd. v. Z. Engineering Co., (1951) 68 R.P.C 103 and (1972) 1 SCC 618 : A.I.R 1972 S.C 1359 (Parle Products v. J.P & Co. Mysore).
27. In A.I.R 1963 S.C 449, the Supreme Court held that Lakshamandhara and Amritdhara are two names likely to deceive and cause confusion in respect of medicinal preparations. In (1969) 2 SCC 727 : A.I.R 1970 S.C 1649, the marks were Rustam India and Ruston. Defendant was using Rustam India. Plaintiff claimed that the use by the defendant would infringe his trade mark Ruston. The suit was dismissed. The High Court in appeal held that there was deceptive resemblance between Ruston and Rustam and so, the use of Rustam India constituted infringement of plaintiff's trade mark Ruston. But the High Court however held that the suffix ‘India’ after Rustam was a sufficient warning to the purchaser and that the defendant could be allowed to use the combination. In appeal, the Supreme Court held that the fact that the word ‘India’ was added to defendant's trade mark was of no consequence and plaintiff was entitled to succeed in its action for infringement of trade mark. In (1972) 1 SCC 618 : A.I.R 1972 S.C 1359, what the Supreme Court has said on this point I have already quoted in another context.
28. In Pidilite Industries Pvt. Ltd. v. Mittees Corporation (A.I.R 1989 Delhi 157), the Delhi High Court held that the plaintiff was using the name ‘Fevicol’ for a long time, but the defendant started marketing his goods in the name ‘Trevicol’. It was found that the name ‘Trevicol’ is deceptively similar to the name ‘Fevicol’. It was said that the mark is to Page: 565be compared as a whole and there is real phonetic similarity in both the names. In this case, the court has taken note of the class of customers also, viz. carpenters, who are normally illiterate persons.
29. In this case, though disintegrating the marks (the name) and comparing them may not help to get a satisfactory result, if there is a common denominator, such a process also may help to come to a correct conclusion. This process was adopted in (1950) 67 R.P.C 209 where a dispute arose as to what was fair use of marks “Alka-vescent” and Alka-Seltzer. Lord Evershed M.R followed the observations of Lord Russell in Coca Cola Canada v. Pepsi Cola Canada, (1942) 59 R.P.C 127. It was said: “Where you get a common denominator, you must in looking at the competing formulae pay much more regard to the parts of the formulae which are not common-although it does not flow from that you must treat the words as though the common part was not there at all”. But where common marks are included in the trade mark to be compared, or in one of them, the proper course is to look at the marks as wholes, and not to disregard the parts which are common.
30. Here, the trade mark ‘Bismi’ and the mark of the defendant ‘Bismilla’ are two words, the prefix of both are the same. It is seen accepted in several reported cases that the first syllable of a word mark is generally most important. It has been observed in many cases that there is a tendency of persons using English language to slur the termination of words. Vide-London Lubricants (1925) 42 R.P.C 264. In (1966) R.P.C 152, the court found that “Accutron too near Accurist” for watches and in (1966) R.P.C 141 “Buler too near Bulova” for watches. These are paired marks with common first parts.
31. Taking all the circumstances unfolded in the case and the instances referred to by me in the cases decided, though I am not hide bound by the precedents in the matter of a finding of fact, I have to hold that the name Bismilla - ball point pens, fountain pens and allied articles - is deceptively similar to the trade name ‘Bismi’. In this respect, I have to agree with the finding recorded by the court below.
32. The court below has directed to pass a final decree in regard to damages. A successful plaintiff in a passing off action or for an action for infringement of trade mark is normally entitled to an enquiry as to damages. Nonetheless, the court retains some degree of discretion to refuse an enquiry if satisfied that such an enquiry Would be fruitless…………… Nevertheless, there are few cases in the text books in which plaintiffs have recovered substantial damages in the absence of good faith.
33. The question of damages is a matter to be proved in the suit itself by the plaintiff. In this case, there is no proof as to quantum of damages, The turnover of sales of the plaintiff is seen increased. In the circumstances, the decree directing a final decree for the assessment of damages is vacated. In all other respects, the decree passed by the court below is confirmed. Appeal is disposed of as above. No order as to costs.