Mohamed Et Al., V. Mohamed Uvais

1942 Present: Wijeyewardene and Nihill JJ.

MOHAMED et al v. MOHAMED UVAIS.

277--D. C. Colombo. 10,036.

Trade Mark-Action for infringement and passing off-Distinct labels-Alleged phonetic similarity -Burden of proof-Injunction.

Where, in an action for the infringement of a trade mark, the label used by the defendants on their goods was distinct from and. incapable of being mistaken or confused with the label of the plaintiffs, the burden is upon the latter to establish by evidence that their goods are known by some name or description of such a nature that the use of the defendants label would cause people to think that the goods having that label were the goods of the plaintiff.

THIS was an action for infringement or a trade mark and for passing off in which the District Court granted an injunction restraining the defendant from the use of his unregistered trade mark. The plaintiffs, who were carrying on business in Colombo under the firm name of Vally Noor Mohamed & Company, alleged in their plaint that the defendants by the use of their unregistered trade mark had infringed their registered Trade Mark No. 6,867, which was registered by them in September, 1937,

and was in use by them for ten years prior to that. The facts are fully set out in the judgment. The defendants appealed against the order of the District Judge granting the injunction.

H. V. Perera, K.C. (with him D. W. Fernando), for the defendants. appellant.-This action was based on two causes of action, viz., (1) infringement, (2) passing-off. The evidence led to prove both the counts is the same. If the action, therefore, for infringement fails, the action for passing-off must also fail.

In an action for infringement the burden of proof is on the person who alleges it-Eno v. Dunn [L.R.(1890)15 A.C.252 at 257] Kerly on Trade Marks (5th ed.), p. 474. For meaning of "calculated to deceive" see Kerly on Trade Marks, p. 270. The two designs are entirely distinct. They are neither pictorially nor phonetically similar. See In re Trade Mark of La Societe Anonyme des Verreries de l'Etoile [L.R.(1894) 2 Ch 26] Board & Son. 'V. Bagots, Hutton & Co., Ltd. [L.R.(1916) 2.A.C.382 at P.392] Re British Drug Houses Limited's Trade Mark [107 L. T (N. S) 756] St. Mungo Manufacturing Co. v. Viper & Recovering Co.[27 Reports of patent Cases 420], Mohamed Noordin v. Abdul Kareem & Co .[A. I .R. (1931) P.C.272], Hollandia & Anglo-Swiss Condensed Milk Co. [(1923) 24 N.L.R.396]. The Nestle & Anglo-Swiss Condensed Milk Co.'. The test of Easy to pass off " applied by the District Judge is wrong. There should, in a case like this, be positive and particular evidence that people of a certain type were deceived-Malayan Tobacco Distributors Ltd. United Kingdom Tobacco Co., Ltd .[A. I. R (1934) P.C.167 ], Sanrus Case [(1937) 54 Rep Patent Cases 341 at p 348],46 Reports of Patent Cases 453, 40 Rep. Patent Cases 219, Venkateswaram on Trade & Merchandise Marks in India, p. 261.

The finding of fraudulent intention on the part of the defendant cannot be justified. Fraud must be pleaded and put in issue before there could be a finding on it-Malayan Tobacco Distributors, Ltd. v. United Kingdom Tobacco Co., Ltd. (supra), Venkateswaram pp. 275-6, 29 Rep. Patent Cases 465.

L. M. D. de silva, K.C. (with him N. K. Choksy), for the plaintiff, respondent.-The nature and scope of a passing-off 'action are discussed in Reddaway v. Banham [13 Rep Patent Cases 218]. See also Kerlyon Trade Marks (5th ed.), p. 563. Action for passing-off is a generalized form of the action for infringement. The principles are the same in both actions-Kerly, p. 471.. In regard to burden of proof and weight of evidence there is no difference between the two actions. It is sufficient to prove intention to deceive-Kerly, p. 270. An infringement may take place by the copying of one single substantial char- acteristic-Kerly, p. 468. That

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