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HIGH COURT OF CALCUTTA
S. C. GHOSH
EAST END HOSIERY MILLS PRIVATE LTD. - Appellant
Versus
AGARWAL TEXTILES MILLS - Respondent
Suit 3093 Of 1968
Decided On : AUGUST 25, 1970
TRADEMARK - PASSING OFF - INJUNCTION - SIMILARITY OF MARKS - DECEPTIVE INTENT - DISTINCTIVENESS - CONFUSION - LIKELIHOOD OF DECEPTION - TRADE MARKS ACT, 1958.
Fact of the Case:
Plaintiff, a manufacturer of hosiery goods, sought an injunction to restrain the defendant from passing off Ganjies (vests) not of the plaintiff's manufacture as those of the plaintiff and from selling or offering for sale under the trade mark or name "sacha MOTI" Ganjies not of the plaintiff's manufacture. The plaintiff claimed that the defendant's mark "sacha MOTI" was a deceptive imitation of the plaintiff's mark "moti" and was likely to deceive purchasers into believing that the defendant's goods were those of the plaintiff.
Finding of the Court:
The court found that the plaintiff's mark "moti" had acquired distinctiveness in the market and that the defendant's mark "sacha MOTI" was deceptively similar to the plaintiff's mark. The court also found that the defendant had the intention to deceive purchasers into believing that its goods were those of the plaintiff. The court concluded that the plaintiff had made out a prima facie case for the reliefs claimed and granted an injunction restraining the defendant from selling or offering for sale Ganjies under the trade mark or name "sacha MOTI" without sufficiently distinguishing them from the plaintiff's products.
Issues: 1. Whether the plaintiff's mark "moti" had acquired distinctiveness in the market? 2. Whether the defendant's mark "sacha MOTI" was deceptively similar to the plaintiff's mark? 3. Whether the defendant had the intention to deceive purchasers into believing that its goods were those of the plaintiff?
Ratio Decidendi: 1. The court held that the plaintiff's mark "moti" had acquired distinctiveness in the market based on the following factors: - The plaintiff had been using the mark since 1956. - The plaintiff's sales of Ganjies under the mark "moti" had increased significantly over the years. - The plaintiff had spent a substantial amount of money on advertising and promotion of the mark "moti". 2. The court held that the defendant's mark "sacha MOTI" was deceptively similar to the plaintiff's mark "moti" based on the following factors: - The two marks were phonetically similar. - The get-up of the two marks was similar. - The defendant's mark was likely to be mistaken for the plaintiff's mark by purchasers. 3. The court held that the defendant had the intention to deceive purchasers into believing that its goods were those of the plaintiff based on the following factors: - The defendant had knowledge of the plaintiff's mark "moti". - The defendant's mark "sacha MOTI" was deceptively similar to the plaintiff's mark "moti". - The defendant had not taken any steps to distinguish its goods from those of the plaintiff.
Final Decision: The court granted an injunction restraining the defendant from selling or offering for sale Ganjies under the trade mark or name "sacha MOTI" without sufficiently distinguishing them from the plaintiff's products.
( 1 ) THIS is an application filed by the plaintiff inter alia for an injunction restraining the defendant from passing off Ganjies which are not of the petitioner's manufacture as and for those of the petitioner and from selling or offering for sale under the trade mark or name "sacha MOTI" Ganjies not of the petitioner's manufacture. The application is also for an injunction restraining the defendant from displaying or causing to be displayed sign boards or posters inscribed with the mark "sacha MOTI" in relation to Ganjies or such other mark which are colourable imitation of the petitioner's trade mark "moti".
( 2 ) THE petitioner who has been carrying on business on an extensive scale as a manufacturer of Hosiery goods including ganjies in India has been selling Ganjies manufactured by it since 1956 under the trade mark or name "moti". The said mark "moti" is embroidered in a particular style in neck labels and stitched to the neck of each Ganjies or Vest. The said label and name is used in the best quality of vests or ganjies produced by the petitioner. According to the petitioner the said mark or name as well as the said get-up in the neck labels as well as in the packing box has acquired great popularity in the market in Calcutta, Madras, Kanpur, Delhi, etc. , and has become associated with the petitioner. So much so that the sales of such Ganjies rose from Rupees 97,000/- in 1960 to Rs. 8,50,000/- in 1968. The petitioner's advertisement expenses rose from Rs. 10,000/- to Rs. 16,000/- during the said period. Thus the petitioner came to acquire a proprietary right in the said mark "moti", The petitioner came to know about the use by the defendant of the name "sacha MOTI" with regard to the Ganjies manufactured by the defendant from an advertisement appearing in the "hosiery Sandesh" during Diwali 1968.
( 3 ) ACCORDING to the petitioner the said mark is a deceptive imitation of the petitioner's aforesaid mark or name and is likely to deceive purchasers and intending purchasers into believing that the said goods bearing the label "saciia MOTI" are the goods of the petitioner for inter alia the following reasons:-- (a) Phonetically the word "sacha MOTI" is substantially the same as "moti". (b) The get-up of the said mark as embroidered and printed on neck labels and packing box labels of the defendant's products are deceptively similar to the get-up, embroidery and printing of the said marks on neck labels and packing box labels of the petitioner. (c) There are only very minor differences which are insignificant between the two marks and/or get-up. The said get-up and the mark used by the defendant is a colourable imitation of the get-up and mark of the petitioner. The word "sacha" is written above the word "moti" in smaller letters and is likely to escape notice. The word "moti" is written in bold letters and of similar design as that of the petitioner. So much so purchasers are likely to be misled to buy "sacha MOTI" Ganjies believing that they were buying "moti" Ganjies of the petitioner.
( 4 ) THE defendant in opposition to the present application has pleaded as follows:-- (i) "moti" is not a registered Trade Mark. (ii) The plaintiff has no exclusive right to use the said word "moti". (iii) In fact other persons including one Samarendra Narayan Choudhury had been using the said mark "moti" in Ganjies manufactured or sold by him. (iv) Since July, 1966, the defendant has been using the said trade mark or name "sacha MOTI" which has acquired a reputation in the market as signifying goods belonging to and manufactured and sold by the defendant. (v) The said words are not unlawful or colourable or deceptive imitation of the said alleged trade mark or name "moti". (vi) Phonetically the two words are not at all similar. (vii) The get-up of the words in their respective neck labels or packing boxes have also no similarity. (viii) The word "sacha" is not in insignificantly small letters. (ix) The goods of the
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