Scope of bar under passing off action.

This is an appeal against the Judgment and Decree of Ramaswami Goundar, J., in a suit filed on the Original Side of this Court, C.S. No. 223 of 1950, by the respondents, C. H. Kizar Mohamed & Company, in the following circumstances: The plaintiffs are a registered firm of merchants carrying on lunghi business in Madras. The defendants are a firm of merchants carrying on business in Moore Street, Madras. The plaintiffs alleged that their business consisted in the manufacture and sale of a special class of cloth known as lunghi, kylie and sarangs, that their business had been established and had been in existence for over 8 years and their goods have become well-known in many places and territories; that from about the year 1913, the plaintiffs had been using for their goods a trade mark the outstanding feature of which was a chair printed on a label. A specimen of the label was appended to the plaint and marked as Exhibit A. The plaintiff alleged that their goods with the trade mark of the said description had acquired a special name and fame for the quality and genuineness in the markets throughout India and outside India. It was further alleged by them that they came to know recently that the defendants who are also lunghi merchants trading in Madras were adopting a device or mark for their goods labels with the representation of the chair and practically of the same size as the label used by the plaintiffs. A specimen label used by the defendants was appended to the plaint, marked as Exhibit B. The plaintiffs charge that such user by the defendants of the mark resembling the trade mark used by the plaintiffs has the effect of passing off the defendant’s goods as goods manufactured by the plaintiffs which have come to be known in the market popularly as Karzi or chair brand goods. The plaintiffs, therefore, had to seek the protection of the Court to prevent such passing off. The plaintiffs prayed that the defendants be restrained by a permanent injunction from using the said trade mark in future for their goods, that the defendants be directed to surrender all the printed labels with such marks to the plaintiffs; that the defendants be directed to render an account of all the sales effected by the defendants of their goods with such trade marks from the date when they commenced to use the mark in question and that an account be taken of the profits made by the defendants on such sales, and defendants be directed to pay such amount as may be found due on the taking of such accounts.

Several pleas were taken by the defendants in their written statement. They pleaded that one of the several trade marks used by them was the table brand mark which was in use ever since 1928 ; that there was practically nothing in common between the plaintiffs’ trade mark and the defendants’ table brand mark which can in any sense be regarded as calculated to deceive the unwary public into believing that the goods of the one are really the goods of the other. They pointed out that there was great dissimilarity in device, size, get-up, colour, name, lettering and other details. There was, therefore, no chance of any deception resulting in the passing off of the goods. A legal plea was also taken, namely, that the suit was barred under section 20 of the Trade Marks Act, 1940.

The following issues were framed:

(1) Whether the plaintiffs are entitled to the right of trade mark claimed by them ?

(2) If so, whether the defendants have infringed the plaintiffs’ rights; and what are the reliefs the plaintiffs are entitled to ?

(3) Whether the suit is not maintainable under section 20 of the Trade Marks Act (V of 1940) ?

The learned Judge Ramaswami Goundar, J., who tried the suit held that if” the defendants were allowed to retain the chair in their label it would enable them to pass off their goods as those of the plaintiffs, and, therefore, they should be directed to remove the chair from their label. The learned Judge found that the plaintiff