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Madras High Court
MAHESWARAN
P.L.Anwar Basha - Appellant
Versus
M.Natarajan - Respondent
Decided On : 11/26/1979
TRADEMARK - INFRINGEMENT - DECEPTIVE SIMILARITY - PASSING OFF - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTIONS 2(D), 23, 29 - INTERPRETATION AND APPLICATION.
Fact of the Case:
The plaintiff, a manufacturer of beedies under the trade mark 'Meen Beedies', filed a suit against the defendant for infringement of his trade mark and passing off. The plaintiff claimed that the defendant had used a deceptively similar trade mark and had passed off his goods as those of the plaintiff. The defendant denied the allegations and contended that the court had no jurisdiction to entertain the suit as the plaintiff's trade mark was not registered under the Trade and Merchandise Marks Act.
Finding of the Court:
The court held that the plaintiff's trade mark was registered on the date of application for registration, and therefore the court had jurisdiction to entertain the suit. The court further held that the defendant's trade mark was deceptively similar to the plaintiff's trade mark and was likely to cause confusion among the public. The court also held that the defendant had passed off his goods as those of the plaintiff. The court therefore decreed the suit for declaration and injunction as prayed for by the plaintiff.
Issues: 1. Whether the plaintiff's trade mark was registered on the date of application for registration, and therefore the court had jurisdiction to entertain the suit. 2. Whether the defendant's trade mark was deceptively similar to the plaintiff's trade mark and was likely to cause confusion among the public. 3. Whether the defendant had passed off his goods as those of the plaintiff.
Ratio Decidendi: 1. Section 23 of the Trade and Merchandise Marks Act provides that a trade mark, when registered, shall be registered on the date of making of the application for registration of a trade mark in part A or part B of the register and that date shall, subject to the provisions of Section 131 of Trade and Merchandise Marks Act, be deemed to be the date of registration. 2. Section 2(d) of the Trade and Merchandise Marks Act defines 'deceptively similar' as a mark that so nearly resembles another mark as to be likely to deceive or cause confusion. 3. Section 29(1) of the Trade and Merchandise Marks Act provides that a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
Final Decision: The appeal was allowed, the judgment and decree were set aside, and the suit was decreed for declaration and injunction as prayed for by the plaintiff with proportionate costs throughout. The claim for damages was disallowed.
JUDGEMENT :- The plaintiff has preferred this appeal against the dismissal of his suit in O.S. No. 4 of 1972 on the file of the District Judge, North Arcot.
2. The plaintiff, a manufacturer of beedies at Vaniyambadi under the name 'fish beedies' with wrappers and labels showing the picture of fish in water, applied to the Court for declaration of his right to 'use the trade mark Meen Beedies to the beedies manufactured by him as shown in Annexure-II to the plaint and for permanent injunction restraining the defendant who is also engaged in the business of manufacture of beedies at Vellore from using the infringed trade mark. The plaint averred that the plaintiff has been using his trade mark of fish in water encircled with an oval ring with the letters PLA on either side of oval ring within a circle as set out in Annexure-I to the plaint with the trade name Meen Beedi both in Tamil and Urdu beneath it and in Telugu above it with the words 'Fish Mark Beedi' and 'Meen mark beedi' on either side of it, that the beedies of the plaintiff are of high quality and were very popular with the beedi smoking people and that he has also spent a large amount in advertising his beedies in journals and newspapers and wall, posters including exhibition of slides in Cinemas. It was further averred that he is using this trade mark from 1959 onwards uninterruptedly, that he has also registered the trade mark under the Indian Copyright Act, as early as in 1965, that he has also' applied to the Registrar of Trade Marks for registration of the trade mark under the Trade and Merchandise Marks Act and that the said application is pending registration. The plaint further stated that the defendant who was also a manufacturer of beedies has used the trade mark of the plaintiff and thought of passing of his inferior goods as those of the plaintiff in the year 1972. It is also stated that by such passing off the goods, he has caused confusion in the mind of the public and has also caused loss to the plaintiff. The plaint also stated that the mark used by the defendant is identical with the trade mark used by the plaintiff, and that any unwary beedi smoking person is likely to be confused. The plaintiff therefore prayed for the reliefs already stated.
3. The defendant in his answer denied the allegation in the plaint that he thought fit to pass off his goods as those of the plaintiff, and stated that the beedies manufactured by the defendant are wrapped in cartons of different colour, that his beedies are in great demand and the beedi smoking people have come to associate the name 'flying fish beedies' and the design of the defendant's goods, as articles manufactured by the defendant and that the beedies of the defendant are superior in quality to those of the plaintiff and there is also difference in size and can easily be distinguished. The defendant also denied the allegation that his beedies were sold in the market only from October 1972. Finally he contended that the court has no jurisdiction to entertain the suit as the plaintiff has not registered the trade mark under the Trade and Merchandise Marks Act.
4. On these pleadings, the following issues were framed by the District Judge :-
1. Whether the plaintiff has acquired a proprietary right to the use of the mark and design depicted in Annexures-II(a), II(b) and II(c) ?
2. Whether the designs and marks depicted as Annexures-III(a), III(b) and III(c) are colourable imitations of the plaintiff's marks ?
3. Whether the defendant has been passing off his goods as those of the plaintiff ?
4. Whether the defendant had started using marks in Annexure-III (a) III (b) and III (c) only from September 1972 as alleged by the plaintiff or even from 1952 as. alleged by the defendant ?
5. To what if any damages is plaintiff entitled ?
6. Whether this Court has no jurisdiction to entertain the suit in its present form ?
7. Whether the plaintiff has acquired any copyright to the trade mark ?
8. To what relief, if any
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