Back
1940 Supreme(SC) 8
PRIVY COUNCIL [ON APPEAL FROM THEEAST INDIES]
VISCOUNT MAUGHAM, LORD PORTER, AND SIR GEORGE RANKIN.
THOMAS BEAR AND SONS (INDIA) LIMITED - Appellant
Versus
PRAYAG NARAIN - Respondents
On appeal from the High Court at Allahabad.
Decided On : Mar. 7. 1940.
Solicitor for appellants: D. M. Oppenheim.
In passing-off actions, the probability of deception is a question of fact. While protection extends to closely similar goods, where products differ significantly in use and appearance, the plaintiff must provide evidence of likely deception to prevent the use of a similar mark.
Headnote:(A) Trade Marks and Passing-off - Common law principles - Right of property in a trade mark based on proved association in the market - Probability of deception as the vital element - No monopoly in the use of a trade mark across unrelated goods - Question of whether use of a mark on goods of a different description leads to belief of a common trade source is a question of fact requiring evidence. (Paras 11-15)
(B) Evidence of Deception - Comparison of marks side-by-side is not a sound test as purchasers seldom have both before them - Adoption of a mark causing goods to bear the same name in the market may be a violation of rights - Differences in labels or containers may not be a complete defense if the mark itself causes deception, though they are an element in considering the probability of deception. (Paras 16-17)
(C) Scope of Protection - Protection extends to goods so similar in kind that it is an almost inevitable inference they are manufactured by the same trader - Where goods differ widely in appearance and use, the probability of deception must be proved by evidence and cannot be inferred. (Paras 19-21)
Facts of the case:
The appellants, manufacturers of cigarettes and smoking tobacco, used a trade mark featuring an elephant. The respondents manufactured and sold chewing tobacco using a similar elephant mark, although the colors and packaging differed. The appellants sought to restrain the respondents from using the mark, arguing that the reputation of their brand would lead consumers to believe the chewing tobacco originated from the same source.
Findings of Court:
The court found that while the appellants had a proprietary right to the mark for cigarettes and smoking tobacco, this right did not automatically extend to chewing tobacco, which differs significantly in appearance and use. In the absence of evidence of actual or probable deception, the claim for infringement could not be sustained.
Issues: Whether the use of a trade mark on chewing tobacco is likely to lead the public to believe that such goods emanate from the same trade source as smoking tobacco and cigarettes sold under the same mark.
Ratio Decidendi: The probability of deception is a question of fact that must be decided on evidence. While a trade mark protects goods of a closely similar kind, it does not grant a monopoly over the mark for all goods. Where the products differ widely in use and appearance, the plaintiff must provide evidence that the public is likely to be misled.
Result: Appeal dismissed.
Legal Category Hierarchy
-
tort
-
passing off
- trademark infringement
-
passing off
-
intellectual property
-
trademarks
- common law trademarks
-
trademarks
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
54
"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
