Delivery of the offending labels in a passing off action based upon an unregistered trade mark.

The first plaintiff in this suit is the widow of one Duraiswamy Mudaliar and the second plaintiff is her son. Duraiswamy Mudaliar is said have started a business about the year 1934 of manufacturing tooth powder under the name Pyorrhea Tooth Powder. The tooth powder was packed in paper envelopes and tin containers with a trade mark the principal features of which were the picture of a human face with open mouth showing diseased gums, super imposed with the numeral 1431. In the course of a few years the tooth powder became very popular, being sold all over South India and even in far off places like Malaya. In 1935, a declaration of ownership of the Plaintiff’s trade mark was filed before the Presidency Magistrate’s Court, Calcutta. This declaration of ownership was registered under the numeral 1431 of 1935. Thereafter, the founder Duraiswamy Mudaliar is said to have added the words "Registered No. 1431 as part of his trade mark. In 1937 the founder altered the trade mark by adopting a red and green label wherein his own bust portrait appeared at the left-hand bottom corner. Besides the expression "Pyorrhea Tooth Powder" was written in a distinctive manner in red ink in such a way that the bottom edge lay along the arc of a circle. A declaration of ownership of the amended trade mark was duly filed before the Registrar of Assurances at Calcutta on 3rd August, 1937. Ever since 1937 it is alleged that the founder and the plaintiffs have been regularly and continuously using the above trade mark for their tooth powder and the public have come to associate the plaintiff’s trade mark containing the numeral 1431 with the tooth powder manufactured by the plaintiffs.

The founder applied for registration of the above trade mark in May, 1948 and the trade mark was registered without the expression "Calcutta Registered No. 1431". In December, 1951, Duraiswamy Mudaliar, the founder of the plaintiffs’ business, again applied for registration of the numeral 1431 as part of his trade mark. But, this was not granted. On 19th October, 1953 the first plaintiff’s husband Duraiswamy Mudaliar died. Thereafter the business is being continued by the plaintiffs.

On 6th November, 1953 the first defendant obtained registration of a trade mark for tooth powder with the numeral 1431. He and the second defendant are brothers. It is said that the first defendant applied for registration of 1431 in order to pass off his goods as the goods of the plaintiffs. Soon after, the plaintiffs received numerous complaints from their dealers about the defendants goods being sold to the public as plaintiffs’ tooth powder. Thereupon plaintiffs applied for rectification of the Trade Mark Register by expunging the registration of the trade mark obtained by the first defendant. This application was made on 4th April, 1955 and after notice to the first defendant it was allowed by the Registrar of Trade Marks on 4th July, 1957. Against that order the first defendant preferred C.M.P. No. 94 of 1959 in this Court which was dismissed in April, 1959. Against the dismissal of that C.M.P., L.P.A. No. 153 of 1959 is now pending.

It is alleged that the first defendant is not only using the numeral 1431 as part of his trade mark, but has copied all the prominent features of the plaintiffs trade mark such as distinctive design, colour scheme and get-up of the label of the plaintiffs. The first defendant has no right to use any imitation of plaintiffs trade mark which has the effect of deceiving the members of the public. The plaintiffs therefore pray for an injunction restraining the defendants, their servants and agents from using the trade mark "1431" or the design and get-up of the plaintiffs s trade mark, label or any imitation thereof on their tooth powder They also pray for an injunction directing the defendants to surrender on oath to the plaintiffs all labels, packets, tins and other containers or receptacles bearing the offending trade mark together with blocks, dies,