Judgement

Appeal (No. 18 of 1939) from a decree of a Division Bench of the High Court (March 13, 1935), affirming a decree of the Additional District Judge of Cawnpore (April 11, 1930).

The action out of which this appeal arose was brought on May 27, 1929, by the appellants, Thomas Bear & Sons (India) Ld., to restrain infringement of trade mark rights and passing-off by the respondent, Prayag Narain. The appellants were manufacturers and sellers of cigarettes and of

Law. Rep. 67 Ind. App. 212 ( 1939- 1940) Thomas Bear and Sons (India) Limited V. Prayag Narain

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"Virginia "Birds Eye" tobacco for smoking in pipes. The tobacco was sold in packets and tins bearing a mark the distinguishing feature of which was the representation of an elephant. The goods were well known and asked for throughout India as "Elephant Mark.” The respondent manufactured chewing tobacco, and sold it in packets and tins, on which was the picture of an elephant not unlike that used by the appellants, though there were differences, particularly in colour. In other respects the packets and tins were unlike the containers in which the appellants goods were put upon the market, and the respondents labels bore the firm name " Rama & "Company," while the appellants bore their own name.

The facts appear more fully from the judgment of the Judicial Committee.

The trial judge dismissed the appellants claim.

On appeal, the High Court (King and Iqbal Ahmad JJ.) differed in their opinions, King J. being for allowing the appeal, and Iqbal Ahmad for dismissing it. The case was thereupon referred to the Chief Justice under cl. 27 of the Letters Patent for the appointment of a third judge to hear the case upon the points on which the judges differed. The case was referred to Niamat-Ullah J., who concurred with Iqbal Ahmad J., and the appeal was accordingly dismissed. The appeal is reported at ( 1935) I. L. R. 57 A. 510.

The second respondent, Jagannath, had purchased the trade mark, trade name, label and designs from the first respondent on October 14, 1935, and was directed to be impleaded as a respondent to this appeal by order of the High Court, dated December 18, 1936.

1940. Feb. 2, 5, 6. F. E. Bray K.C. and James Mould for the appellants. There is no dispute that the appellants rights to this elephant trade mark in respect of their cigarettes and tobacco are fully established. If the decisions of the Courts below are right there can be two elephant marks for the tobacco trade, and King J., in the High Court, held that that must be a source of confusion injurious to the good-will of the appellants, whose business depends largely upon the reputation of the elephant brand. The other judges have held that no cause of action was shown, and have based their ultimate conclusion on two subsidiary conclusions; first, that the marks are not sufficiently alike, whereas the appellants contend that the whole point of the case is that these marks both give the name " elephant " to the goods; the complaint is the danger of purchasers concluding that the two elephant-marked goods must come from the same trade source, so that the reputation of the appellants is, so to speak, put at the mercy of the second comer into the field with an elephant mark. The High Courts second conclusion is expressed as being that the goods are of a different description. The real question which falls to be determined is whether it is likely that the use by the respondent on his chewing tobacco of the elephant mark will lead to the belief that the respondents goods and any goods which the appellants now or in the future may supply, emanate from the same trade source. If that be answered in the affirmative, then there is an injury to the good-will of the appellants business which the Courts will restrain notwithstanding the fact that chewing tobacco has qualities which make it distinguishable from smoking tobacco. The appellants must establish that there is evidence that people will be misled into supposin