JUDGMENT*

The plaintiffs are the manufacturers and vendors of a brand of beedies known as “Kareem Beedies.” The suit was for an injunction restraining the defendants and their agents from manufacturing or selling beedies in packets which are colourable imitations of plaintiffs' trade-mark and for other and similar remedies. They were given an injunction and Rs. 50 as damages. Against this the defendants have appealed.

The plaintiffs' case is that they were manufacturing and selling beedies for over 20 years, that they enclose their beedies in packets of 25, that 20 of these packets are then made up into a larger bundle and wrapped in a covering which constitutes plaintiffs' trade-mark, that plaintiffs' beedies are known as “Kareem Beedies,” that their trade-mark consists, in the front, of two hemispheres with three stripes running across each hemisphere in which their trade name is inscribed, that they have registered these marks with the Chamber of Commerce, and that originally the mark was a single hemisphere but that from 1920 they have been using the present trade-mark; that the defendants describe their beedies as “Zackaria Beedies” and profess that they are manufactured in Tumsur, Gondia, but that in reality the defendants are manufacturing them in Madras; and that they are pretending that a fictitious person called Zackaria is manufacturing them in Gondia.

The defendants deny that plaintiffs have manufactured or sold beedies for 20 years, that their beedies have earned the popularity or reputation attributed to them and that the wrappers or designs in question have come to be associated with the plaintiffs' beedies. They say that they do not themselves manufacture beedies that the wrappers, letter-press and designs referred to in the plaint belong to one A.M Zackaria Sait who owns a large beedi factory in Gondia, Central Provinces, and that it was at his request and for his benefit that defendants caused the wrappers and labels to be printed in Madras and sent to him.

The 3rd and the 4th issues dealt with the question whether the name of A. M. Zackaria appearing on the wrapper is a fictitious name as alleged by the plaintiffs or that of a real manufacturer as alleged by the defendants, and whether the defendants caused the wrappers to be printed for and on behalf of the said A. M. Zackaria or whether they did so on their own behalf, and whether, even if they did so on behalf of A.M Zackaria, the defendants are not liable to be restrained. The Court below found on issue No. 3 that though A. M. Zackaria may be the name of a real person, there is no such firm or shop separately functioning in Tumsur, Gondia. This A.M Zackaria was examined as D.W 1. He is the son of Haji Ibrahim, one of the principal partners of defendants' firm. Though in examination-in-chief he said that he had got commission agents in Bombay, Madras, Bengal and Burma, he admitted in cross-examination that he had no other commission agent except the firm of the defendants. So also though he stated in chief that he never stayed in Madras nor had any business there, he admitted in cross-examination that he was employed by the defendants' firm and was at one time doing duty for the firm and used to tour about. He could not say even approximately what his remuneration was. P. W. 2, the manager of the defendants' firm in Madras, admits that A. M. Zackaria was employed in the firm until three or four years ago. There has been really no serious attempt in appeal to dispute the lower Court's finding on issue 3. It is argued no doubt that the plaintiffs have not proved that ‘Zackaria’ beedies were manufactured in Madras. It is really immaterial whether they proved this point or not, but it may be noted that Zackaria as D.W 1 admitted that on one of his own wrappers in the Urdu advertisement he put Madras as one of the places where his factory was located. He says that this was a mistake due to forgetfulness. So also on issue 4 there cannot be the least doubt that the defendants' firm had the wrappers printed not for Zackaria but for themselves. We have the clear evidence of P. W. 3, the printer in Madras, who says that one of the defendants' firm, Noor Muhammad Abdul Ghani, together with one Kangaswami Ayyangar came to him and gave orders for the block, that they brought the plaintiffs' trade-mark and asked him to introduce a tiger, insert Noor Muhammad's name, and get it printed and that one month later Noor Muhammad came with a man who, he said, was his brother. There can be little doubt that the story of D. W. 1, Zackaria, that he came to Madras and himself gave the order is false. We find from the accounts that the defendants' firm not only gave the order but paid for the printing. Here again the finding of fact cannot be seriously disputed and there is no doubt that it is the defendants' firm which got the wrappers printed for themselves and put their own beedies into them for

The learned advocate for the appellants has practically confined his argument to the following lines. He states that the plaintiffs have to prove three things: (1) that they have been using the particular mark for a number of years exclusively and that their goods have obtained a reputation in the market as being known by this mark; (2) that the mark which they complain of must be likely to deceive the class of persons who buy such goods; and (3) that it must be proved that somebody has been so deceived.

The first two questions are really two classes of fact bearing on a single issue, namely, whether the defendants have knowingly done that which would pass off other goods as and for the goods of the plaintiffs. Vide on this point Halsbury Vol. 27, para. 1327 where he says

“In many cases the evidence can be conveniently divided into two separate heads, namely, the plaintiff's title to a name or get-up, and the defendant's infringement of that title; but these are not really separate issues, but classes of facts bearing on the one issue given above.”

That the plaintiffs' goods have come to have an exclusive reputation on the market by this mark is, we consider, proved beyond the smallest doubt. As stated above, the plaintiffs' beedi business in Madras has been going on for 20 years and he has been using those marks since 1920. The figures of sales given by the lower Court in paragraph 5 sufficiently show how large the plaintiffs' business was and how it suffered from about October 1929 when the defendants started a rival business. The best proof of the reputation of the plaintiffs' beedies is the fact that the defendants were plaintiffs' agents for them for several years until 1929 and were buying each month about Rs. 1000 worth of beedies, and they therefore had ample knowledge of the plaintiffs' goods, of their trade mark, and of the reputation of the goods in the market. They had an advance of Rs. 50 with the plaintiffs' firm and as soon as they started to put on the market the “Zackaria Beedies”, they withdrew this balance. These same plaintiffs brought a similar action with regard to their beedies against one Abdul Kareem Sahib. The appellate judgment in that case is reported in Kareem v. Kareem . There although the period during which the plaintiffs had been selling their beedies under this trade-mark was less than a year, the Court felt “no reason to doubt that the plaintiff's wrapper had become clearly identified with his beedies in the minds of purchasers when the defendant placed his imitation upon the market.” We have no hesitation in coming to the same conclusion here.

As regards the second point that the mark complained of must be one likely to deceive the customers, there cannot be the least doubt judging merely by the two wrappers that this would be the case. The size, get-up, design and lettering are similar throughout. The colours employed on the two hemispheres, are the same. In both, the latitude and longitude on the hemispheres are identical. There are three red lines on each bearing descriptions in the same languages. The defendants' wrapper has a not very conspicuous and uncoloured tiger's head drawn on it and the red bands at the top and bottom of the hemispheres are concave instead of convex. As a matter of fact even this last difference is seen from the evidence to have been due to the designer not being able to fit in the tiger's head otherwise. But of course the defendants are entitled to take advantage of any difference, whether it was one which they themselves designed or not. A very striking point which shows that the defendants' wrapper was got up to imitate the plaintiffs' wrapper is that the latter has on it “post-box No. 85”, whereas in an exactly similar place the defendants' wrapper has “Post-box No.……” (blank), (the defendants presumably not having a post-box number which they could enter). It is in evidence that people who are not highly educated use the plaintiffs' beedies: vide the evidence of P. W. 2. It is however argued that the evidence of P. W. 5 shows that the public were not mistaken between the two articles. P. W. 5 is an up-country dealer who sells both Kareem and Zackaria beedies. The sentence relied on is this: “Purchasers used to say when the Kareem was out, there are also Globe beedies, give us Zackaria ‘. The meaning of this sentence is not very clear, but the very fact that customers recognised both as “Globe beedies” goes to show that in a way they identified them, no doubt from the hemispheres appearing on both. We are not prepared to say that this stray and not very clear sentence can overcome what is perfectly obvious to the eye, that the defendants' wrapper is a colourable imitation of plaintiffs' which is likely to deceive customers, especially of the ignorant class who do not know how to read. When the plaintiffs prove that the mark is a colourable imitation, the burden of showing how they came to adopt it is on the defendants. There has been no attempt in the present case at any explanation by the defendants: Vide Kerly, pages 459-460.

But it has been argued that the Court cannot act simply on its own comparison of the two wrappers. We have not been shown any case supporting this view. If it is pushed to its logical conclusion, it would follow that even though the trade-marks and the get-ups complained of were absolutely identical and the defendants could not point out the smallest difference, nevertheless the Court should require some evidence aliunde to show that persons were likely to mistake the defendants' goods for those of the plaintiffs. In the very case on which the learned advocate for the defendants seeks to prove his third point that there must have been actual deception proved there are remarks which show clearly the extent to which the Court is justified in acting on its own comparison of the exhibits before it. In Payton and Co. v. Snelling, Lampard and Co at page 311, in dealing with what one may call “opinion evidence”, it was observed:

“That is not a matter for the witness; it is for the judge. The judge, looking at the exhibits before him and also paying due attention to the evidence adduced, must not surrender his own independent judgment to any witness.”

In a case in Jones Bros Ltd. v. Anglo-American Optical Co. , an action for passing off and infringement of trade-mark, where it was found that there was no infringement and no evidence of any witness that the goods supplied by the defendants were accepted by him in the belief that they were of the plaintiffs' manufacture, nevertheless we find Cozens Hardy M. R. at page 366 comparing the two exhibits and saying

“All I can say is that, looking at a plain duster of the Defendants, with no wording whatever round the outside, and looking at the Plaintiffs' with the words very conspicuously printed all round the outside, I think it is impossible for any reasonable person to say that they so resemble one another as to be calculated to deceive,”

and further on

“I say that, so far as my eyes enable me to say, and so far as it is my duty to judge by that, I can see no resemblance such as is calculated to deceive.”

So also in the third case relied on by the learned Advocate for the defendants, Lever Brothers Ltd., v. Bedingfield , we find a minute comparison by the learned judge, Lindley M.R, of the two wrappers as regards their resemblances and differences.

At this point it becomes necessary to see whether a distinction which the learned appellant's Advocate seeks to draw between cases of infringement of a trade-mark registered under a statute, impairs the authority of any of the cases relied on by the plaintiffs. As there is no registration Act in India the principles of the English Common Law have to be applied. Vide The The British American Tobacco Co., Ltd. v. Mahboob Buksh at page 117 and Imperial Tobacco Co. Ltd., v. Albert Bonnan at page 790. The only difference between a suit for infringement of a trade-mark registered under the Act, and that of a trade-mark not registered, appears to be that a trade-mark registered under the Act of 1875 in England gives an immediate property in the registered trade-mark, whereas that property has got to be acquired by user in a country in which there is no registration. As it is put by Curgenven, J., in V. Abdul Kareem Sahib… v. A. Abdul Kareem Sahib…. (4) “the user acquires a property in the mark or combination which the law will protect just as much as if it were a registered trade-mark,” Kerly on Trade Marks at page 551 says:

“It will be seen from the definition placed at the beginning of the chapter and the comparison of the two actions in the preceding pages that the rules and principles relating to the action of infringement, which are collected, in the last chapter in general apply also to the action for “passing off,” substituting proof of repute for evidence of title and registration. The defence available the relief granted, and the practice and procedure in both actions are substantially the same.”

With these preliminary remarks we may come at once to what the learned Counsel for the appellants has made the sheet anchor of his case, namely, the proposition that in order to obtain an injunction in a ‘passing off’ action it must be proved that somebody has been deceived, and this he seeks to found on a remark of Lori Macnaghten in 1901 Appeal Cases 308 at page 309, which runs as follows:—

“In the next place, it is perfectly clear that no human being has been deceived. There is not a single instance of any person wishing to buy “Royal Coffee” buying “Flag Coffee” instead through any mistake of any sort. Mr. Warmington accounted for that by saying “Oh, we were bound to institute proceedings at the earliest possible moment” but if persons come to the Court under an apprehension of that sort, they are still bound to make out their case. It will not do to say, “We were frightened by what might happen, and therefore, you must stop the thing in limine.”

We will consider this remark later on in its context. For the present let us look at the cases where it has been authoritatively laid down that evidence of somebody having been actually deceived is not necessary. The first of these is a very oft-quoted case, Johnston v. Orr Swing. This case arose on a matter which was not governed by the Registration Act of 1875-6 which Act had not come into force at the time of the suit. Even therefore, if there can be any distinction with regard to this matter between cases, of trade-marks registered under the Act and other cases it will not be available to distinguish this case. There it was held, that the use of a trade-mark calculated to mislead incautious purchasers may be restrained by injunction, although no purchaser has actually been misled: “for the very life of a trade-mark depends upon the promptitude with which it is vindicated”. It is true that in that case a large body of evidence was let in and relied on to the effect that deception would be likely to occur, at all events with the more ignorant class of consumers (vide page 226), whereas in 1901 Appeal Cases 308 it seems to have been held that such opinion evidence is not relevant. But we are not satisfied that on the point, that actual deception must have occurred, the authority of 7 Appeal Cases has been shaken. It has been cited with approval in Somerville v. Schembri a case that came from Malta, where, as in India, there is no registration Act. It is there distinctly stated that the question whether the respondents have infringed the appellant's exclusive right depends upon how far the defendants' trade-mark bears such resemblance to that of the plaintiffs as to be calculated to deceive incautious purchasers. There is nothing said at all about any actual deception having occurred, nor does it appear that there was any evidence in that case to show that it had occurred. In Iron-Ox Remedy Co. Ltd., v. Co-operative Wholesale Society Ltd., a case subsequent to 1901 Appeal Cases 308, an injunction was granted in spite of there being no evidence of any person having been actually deceived. As we said above on this matter we think that no distinction can be drawn between a suit for infringement of a registered trade-mark and an ordinary passing off suit. As a matter of fact, that suit was one under both heads. In Juggi Lal Kamalapat v. Swadeshi Mills Co. Ltd. the Privy Council again quotes 7 Appeal Cases 219. There is nothing in the report of that case to indicate that any actual deception had been proved. In Slazenger v. Feltham (5) it was held that “if it is shown to have been intended by the defendant to deceive in this way, the Court will not generally push the inquiry further.” (Vide Kerly page 606). There is a Full Bench decision of this Court in Nooroodeen Sahib v. Charles Sowden. (6) In that an injunction was granted, and Benson, J., said that in order to get an injunction it is not necessary to prove that any one has in fact been deceived but that it is enough if the defendant's trade-mark bears such a resemblance to that of the plaintiffs as to be calculated to mislead incautious purchasers. If it could be stated beyond any dispute that that particular aspect of the case was in question in the suit, this Full Bench decision, in the absence of any later and overriding decision, would preclude us from going into the question at all. It may be useful to note exactly in what shape the point arose. The suit came first before two judges, Boddam and Bhashyam Ayyanger, JJ., who differed, the former holding that an injunction should be granted and the latter holding that it should not be granted. But it is to be noticed that even Bhashyam Ayyangar, J., who was opposed to the granting of an injunction held the view that it was not necessary that actual deception should have been proved. It is clear from the remarks of Davies, J., the dissenting member of the Full Bench, at page 96 that no instance of actual deception was cited in that case. Nevertheless he says “We have to consider only the probabilities of deception and for that purpose to bear in mind who the purchasers are”. He then discusses this matter at length. So although he was against granting the injunction, it is perfectly clear that he did not consider the fact that no instances of deception had been proved concluded the matter, nor does he base his opinion at all on any such ground. As observed above, Benson, J., distinctly laid down that it is immaterial. It is difficult under all these circumstances not to hold that the Full Bench decided both by implication and expressly that actual instances of deception were not necessary. 1901 Appeal Cases 308, so strongly relied on by the appellants was also quoted before the learned Judges in that case, and even the passage of Lord Macnaghten's judgment, which is the appellants” sheet anchor, was referrel to, though in a somewhat different connection. Bearing in mind all this case-law, both previous and subsequent to 1901 Appeal Gases 303, it has to be seen whether the remark of Lord Macnaghten relied on can be considered to have altered the law as laid down in 7 Appeal Cases 219, especially when there is no indication in his judgment that that case is being overruled on this point, and when subsequent equally authoritative cases have upheld the view that proof of actual deception is not necessary. In 1901 Appeal Cases there were two sets of dealers of two sorts of coffee, one called “Royal Coffee” and the other “Flag Coffee”. The appellants alleged that the respondents sold their coffee in canisters with labels and colours which were calculated to deceive purchasers into the belief that they were buying the appellants coffee. It was found that the colours would not deceive. The finding also was that one was distinctly labelled “Royal Coffee” and the other “Flag Coffee”, and Lord Macnaghten said “Nobody has been deceived, and I do not think any one will be deceived.” Therefore the remarks in the case must be read in the light of the finding that there was no colourable imitation in point of fact. Lord Macnaghten then remarks “In the first place, the defendants did not, as it seems to me, pass off or attempt to pass off their goods as the goods of the plaintiffs………………I do not see the slightest ground for suspecting them of any intention or design or wish to steal the trade of the plaintiffs-” In the present case we have no hesitation in holding that the defendants did wish and intend to pass off their beedies as those of the plaintiffs. Then his Lordship goes on with the sentence quoted above so much relied on. The first two sentences,—” it is perfectly clear that no human being has been deceived “and” There is not a single instance of any person wishing to buy ‘Royal Coffee’ buying ‘Flag Coffee’ instead through any mistake of any sort “—are perfectly intelligible as proof that the get-up of the Flag Coffee would not lead customers to believe that it was Royal Coffee. It is the sentences that follow which give ground for the contention of the learned Counsel for the appellants. Mr. Warmington accounted for that by saying, “we were bound to institute proceedings at the earliest possible moment”. Then Lord Macnaghten says “but if persons come to the Court under an apprehension of that sort they are still bound to make out their case. It will not do to say ‘we were frightened by what might happen, and therefore, you must stop the thing in limine.’ We think a reasonable interpretation of this is that a person cannot substitute his apprehensions for actual proof that there is a probability of the defendants' goods being mistaken for his goods. If Lord Macnaghten meant that an action could not be brought until some person has been actually deceived, it would conflict with the law as laid down from the time of 13 Chancery Division 464, wherein James L. J., said “the very life of a trade-mark depends upon the promptitude with which it is vindicated”, which remark is quoted in 7 A. C. 229 in the following context. “But in this case the plaintiffs judged it necessary to proceed without waiting till actual deceit was proved, and I think they judged rightly, for as James L. J., said” and then follows the quotation cited above. There appears to be no equitable principle on which the plaintiffs should have to wait till the deception has actually been successful and we do not think that Lord Macnaghten could possibly have intended by his remark to imply that they must so wait. Even on what we must consider the very remote supposition that he did, the remark would have been an obiter dictum on the facts of the case before him.

The other cases quoted for the appellant do not support the proposition at all. 29 R. P. C. 361 was not decided on the point that no witness was called to show that he accepted the goods supplied by the defendants in the belief that they were of the plaintiffs' manufacture. That fact was merely used as an additional argument to support the Court's conclusion that the two articles were not so similar in get-up and appearance as would be likely to deceive customers and to create the probability of customers confusing them. As regards 80 L.T 103, there is no doubt one point of resemblance to this case, that the defendant to a certain extent copied the plaintiff's wrapper, but it was held that “the defendants' wrappers are in truth extremely dissimilar from those of the plaintiffs. The prominence of the word “Sunlight” on the plaintiffs' wrappers and the substitution in equally large type of the words “Red Maid” on the defendant's wrappers, coupled with the other differences between the wrappers, make the dissimilarities so obvious as to draw attention from the resemblances. The difference, not the resemblances, are what catch the eye.” Perhaps when there is only some resemblance between the two trade marks actual instances of deception may be of some help to the Court in deciding whether the articles are likely to be mistaken for each other.

In the result we hold that the decree awarding an injunction and damages to the plaintiffs was correct. The appeal therefore fails and is dismissed with costs.

N. R. R.Appeal dismissed.