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High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE BELLIE & THE HONOURABLE MR. JUSTICE RAMASWAMI
Kali Aerated Water Works - Appellant
Versus
Rashid and Others - Respondent
Case No : L.P. A. No. 118 of 1983
Decided On : 01 September 1987
TRADEMARK - PASSING OFF - SIMILARITY OF TRADE NAME AND LABEL - LIKELIHOOD OF DECEPTION - EXCLUSIVE RIGHT TO USE TRADE NAME NOT REQUIRED - SHARED REPUTATION.
Fact of the Case:
Plaintiff, a partnership firm, sued the defendants for passing off their aerated water business under the trade name 'Sri New Kali Mark', alleging that it was deceptively similar to their own trade name 'Kali Mark' and was likely to mislead consumers.
Finding of the Court:
The court found that the defendants' trade name and label were strikingly similar to the plaintiffs' and that there was a likelihood of deception or confusion in the minds of the consuming public. The court also held that the plaintiffs did not need to establish an exclusive right to use the trade name 'Kali Mark' in order to succeed in their passing off action, as they were one of a definite and ascertainable class of those entitled to use it.
Issues: 1. Whether the defendants' trade name and label were deceptively similar to the plaintiffs' trade name and label. 2. Whether the plaintiffs had an exclusive right to use the trade name 'Kali Mark'. 3. Whether the plaintiffs were entitled to succeed in their passing off action.
Ratio Decidendi: 1. The court applied the principles of passing off to determine whether the defendants' trade name and label were deceptively similar to the plaintiffs'. The court considered factors such as the visual, phonetic, and conceptual similarity of the two marks, as well as the likelihood of confusion in the minds of consumers. 2. The court held that the plaintiffs did not need to establish an exclusive right to use the trade name 'Kali Mark' in order to succeed in their passing off action. The court relied on the principle of shared reputation, which allows multiple parties to use the same trade name if they are all entitled to do so.
Final Decision: The court set aside the judgment and decree of the lower court and restored the judgment and decree of the trial court, which had granted the plaintiffs a decree for passing off.
V. RAMASWAMI, J.
Kali aerated Water Works was a firm of registered partnership carrying on business in the manufacture and sale of aerated water of many kinds in the trade name of Kali Mark. They started the business in the year 1948. The trade name of Kali Mark was registered in the Trade Mark Registration office at Bombay on 19-2-1948. It was being renewed from time to time, and the last of such renewal was on 19-2-1970 for a period of seven years. However, after the expiry of the said period of seven years, no further renewal of the trade mark was made. The partnership was carrying on business with head office at Virudh unagar with branches at Tiruchirapalli, Kumbakonam, Madras, Karaikudi, Palayamkortai and Madurai. Under a registered deed of dissolution dt. 31.3.1977, the firm was dissolved and at the time of dissolution there were ten partners. The firm was dissolved with effect from 1.4.1977. Under this deed of dissolution, the business of the dissolved partnership at Tiruchirapalli was given to the plaintiff. The document provided that the two individual partners to whom the Tiruchirapalli branch was allotted shall take over with its assets and liabilities including the stock-in-trade, goodwill etc. By an amendment deed dt. 7.4.1977, this clause was amended and the plaintiff was to take over the business at Tiruchirapalli 'with its assets and liabilities including the stock in trade, goodwill, name and style etc.
"Clause 5 of the dissolution deed partner provided that the parties who take over the respective branches or head office wit assets and liabilities as stated in the deed shall be entitled to run the business in the trade name of Kali Mark either individually or by a partnership in the name and style of Kali Aerated Water Works and the other parties shall not have any claim or right over such business or businesses
2. After thus taking over the assets and liabilities etc. of the Tiruchirapalli branch, the two partners of the dissolved firm constituted themselves as a registered partnership under the name and style of Kali Aerated Water Works Tiruchirapalli, and it is this firm at Tiruchirapalli, that has filed the present suit out of which the L. P. Appeal arises.
3. The plaintiff were manufacturing and selling under the name of Kali Mark various hinds of aerated waters in Tiruchirapalli. The defendants who appeal to be the erstwhile employees of the plaintiff firm started a business in the name and style of Sri New Kali Soda Factory and were manufacturing aerated water and selling them under the trade name Sri New Kali Mark. The plaintiffs filed the suit for declaration of its title for the exclusive use of the trade mark and trade or business name of Kali Mark and for restraining the defendants and their men from using their trade mark Sri New Kali Mark in relation to the aerated waters manufactured and are sold by them and for rendition of a true account of the sale. This prayer was made on the ground that the plaintiffs have acquired an exclusive right to use the words Kali Mark both as a trade mark and also as a trade name by long user and none else is entitled to use the trade mark or trade name for aerated water business. Their further case was that a comparison of the plaintiffs label and the defendants' label will clearly show that the defendants' label is a colourable imitation of the plaintiffs' label, and a comparison of the bottles will also show that the defendants' bottle with their label is practically similar to the plaintiff's which is likely to mislead the purchaser who is accustomed to purchase the plaintiff's goods in purchasing the defendants' goods as the plaintiffs' goods. In other word, the plaintiffs, case was that there was an implied representation by the defendants to the purchaser that the goods offered by them for sale is the manufacture of the plaintiff. They have also pleaded that they have been demnified.
4. The defendants contended that they are not using the name of th
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