1998 Supreme(Guj) 198

Gujarat High Court
Judgename :R.BALIA
RUPA AND COMPANY LIMITED - Appellant
Versus
DAWN MILLS COMPANY LIMITED - Respondent
C.A. 48 of 1998
Decided On : 04/16/1998

Headnote:(a) Trade and Merchandise Marks Act, 1958 - Secs. 29, 2(d) & 9(1)(d) - Suit for perpetual injunction - Appeal against order of temporary injunction directing the defendant company not to use `Don trademark on its hosiery products - The Trial Court to exercise reasonable discretion on materials before it - The test is whether the trade mark in question is likely to cause confusion in the mind of the prospective buyers - Buyers of average intelligence with imperfect recollection - Each case to depend on its own facts - Held, the Trial Court was right in granting the temporary injunction particularly when the fact of using defendant companys the objectionable trademark had come to the knowledge.

       With all these material on record, the conclusion of Trial Court that the use of word `DON by defendant prima facie infringes plaintiffs registered mark in question, is a reasonable conclusion.

       [Para 77]

       One cannot say with confidence that a buyer of average intelligence with imperfect recollection is not likely to be confused by the manner in which the mark of defendant is projected to treat it as the trade mark under which the goods are being sold and confusion between the two marks is likely to prevail in his mind.

       The fact that in reply to very first notice the defendant held out that he has taken proceedings for rectification for removing the mark `DAWN registered in favour of plaintiff from the registrar of trade marks at least does go to show that defendants knew that use of word `DON by it is likely to cause confusion in the minds of prospective buyers.

       It was not a case where he bona fide believed that no infringement is likely to cause by the use of word `DON by him.

       [Para 76]

       Each case must depend on its own facts and on the satisfaction of Court on totality of evidence where words or group of words are considered essential feature of the mark, than instead of its visual detail, resemblance in sound or phonetic similarity will be of prime relevance.

       From the above discussion, in the light of decided cases, it can be broadly stated that in an action for infringement of passing off, the crux of enquiry is whether mark used by defendant on comparison is deceptively simialr to that of plaintiff which is likely to deceive or cause confusion amongst its buyers. the similarity which can cause infringement may be ocular as well as phonetic similarity on comparison of two marks, depending upon the essential feature of the marks in question.

       [Para 71]

       What is relevant is what is the essential feature of the mark that connects the goods, with its rightful user, in the mind of buyer with imperfect recollections.

       [Para 65]

       In other words, in considering the question whether a mark used by a person infringes the registered trade mark held by another, the test is not confined to exact reproduction of the infringed mark or to actual deceptions or confusion to exist among its users, but it is enough if the offending mark is deceptively similar to a degree with the infringed mark to a degree which is likely to deceive or cause confusion in the minds of buyer. It is even not necessary that offender may have intended to use it as a mark, if the manner of use of a mark impresses in the mind of buyer that the same is being used as mark.

       [Para 37]

       Court has come to the conclusion that the temporary injunction has been granted by the Trial Court in reasonable exercise of its discretion on the materials before it, and to that conclusion, I have also agreed on merits.

       [Para 83]

       In other words, using of a mark by a person which is `deceptively similar to a registered trade mark owned by another person as distinct from user of an identical mark also amounts to infringement of a trade mark.

       [Para 36]

       (b) Appellate Jurisdiction - Exercise of discretion in case of grant of temporary injunction - Held, the Trial Court has been found to have exercised its discretion by reaching conclusions which are reasonably possible, as such the Court sitting in its appellate jurisdiction would not interfere with such discretion.

       If in totality of circumstances if the Trial Court has exercised its discretion by reaching conclusions which are reasonably possible, the appellate court will not interfere with such exercise of discretion.

       [Para 20]

       Court has come to the conclusion that the temporary injunction has been granted by the Trial Court in reasonable exercise of its discretion on the materials before it, and to that conclusion, I have also agreed on merits.

       Keeping in view the limitation of the appellate jurisdiction, as pointed by the Honble Supreme Court in Whirlpools, case (Supra), I am not inclined to make any modification in the order passed by the Trial Court.

       [Para 83]