TaxTMI 
TaxTMI 
1985 (1) TMI 347
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....hion and other articles as and for the plaintiff Company's goods and from selling or offering for sale any articles associating them with the name of 'Bata' in any manner or form. Their further prayer was that the defendants and their servants, employees and agents be directed to deliver the infringing labels and marks of 'Bata' for destruction. Their further case was that they have achieved a phenomenal success in the Indian market and have acquired goodwill for its goods all over India. Even before the advent of Trade Marks Act, 1940 the plaintiff-Company acquired a great name and reputation for its goods. The name 'Bata' was associated with the goods produced by the Company. Before the enactment of the Trade Marks Act, 1940, the plaintiff-company had a declaration registered in the office of the Registrar of Assurance, Calcutta, asserting its exclusive right to the user of the sole name 'Bata'. After the enactment of the Trade Marks Act, 1940, the plaintiff-Company registered its trade mark 'Bata' in respect of several types of goods including canvas, rubber, rubber plates, leather shoes, rubber monlith etc., included in Cl. 55 of the ....
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....ade to purchase 'Batafoam' as if it was manufactured and marketed by the plaintiff Company. The action of the defendants was described as entirely fraudulent and dishonest for making unlawful gain by selling plaintiff-Company's good-will and reputation. 5. 'Bata' was the surname of the founder and the defendants had no justification in adopting this foreign name. Addition of the word 'foam' with the trade name 'Bata' was just to confuse the public and has been done with deliberate intention of making unlawful gain. According to the plaintiff-Company, the action of the defendants constituted passing off their own goods as and for those of the plaintiff-Company. Since this involves a threat to the plaintiff-Company's goodwill and its right, the suit was instituted in the court of the District Judge with the relief mentioned earlier. 6. The defendants denied all the allegations in the plaint and alleged that the name of 'Bata' was registered under the Trade Marks Act, 1940 in respect of canvas, rubber, leather shoes, rubber monlith (foot-wear) rubber heels, rubber sole, rubber plates, leather soles, half soles, wooden heels, heels,....
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....tion. However, the court below held that the only thing that the injured party had to prove is that the mark used by the other party was so close either visually or phonetically that the court comes to the conclusion that there was an imitation. In such a case, it was not necessary for the plaintiff to establish that its right had been violated. The court below observed that the trade mark 'Bata' of the plaintiff was not registered in relation to the goods manufactured, sold and offered for sale by the defendants. Further, since there was nothing on the record to establish that the plaintiff dealt in manufacture and sale of mattresses, cushions and bus seats etc. and further since the registered trade mark 'Bata' did not appear to be identical to the word 'Batafoam', the question of passing off by the defendants did not arise in the case. The court further opined that the plaintiff-Company had failed to establish a prima facie case for the grant of temporary injunction and as such the question of balance of convenience and irreparable loss did not arise for consideration. Consequently, the application for temporary injunction was rejected. 8. Mr. Sudhir C....
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....ed a Privy Council decision. He urged that there must be evidence of probability of deception and likelihood of confusion being caused to the mind of purchaser. This could be possible where the goods were closely related and finally in a passing off action there must be proof of loss of good-will which was non-existent in the present case. Learned counsel further urged that the stage of adducing evidence in the present case has not arisen as yet. Whether any person was deceived or not and whether the confusion had been caused to the mind of the intending purchaser was yet to be established. The user of the word 'Bata' and that too not in similar manner or style was not enough to restrain the defendants from using the name 'Batafoam' to their products. 10. The suit is based on 'passing off action. Section 27 of the Trade and Merchandise Marks Act, 1958, hereinafter referred to as the Act, reads as follows : -- "27. No action for infringement of unregistered trade mark - (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this....
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....be injured by the passing off." 12. The concept of passing off has undergone changes. At the outset, it was based on representation that the goods were being marketed as the goods of another. Subsequently, the concept has been extended to profession and non-trading activities and at present it is applicable to various forms of unfair trading where such activities caused damage or injury to the goodwill associated with the activities of another person. The classic definition of 'passing off is contained in the case of Singer Manufacturing Co. v. Loog (1880) 18 Ch D 395 at p. 412 :- No man is entitled to represent his goods as the goods of another man; and no man is permitted to use any mark, sign or symbol, device or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer." This principle has been followed in the case of Thomas Bear & Sons (India) Ltd. v. Prayag Narain. In an earlier case in Perry v. Truefitt (1842) 6 Beav 66, Lord-Langdale observed : - "A man is not to sell his ow....
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....in the course of trade to prospective customers which is likely to injure the business or the goodwill of the plaintiff-Company, then he can ask for a restraint order against the defendant-respondents from using the mark or the produce bearing such mark. 16. In para-998 of Halsbury's Laws of England Vol. 38 (Third Edition), the essentials of the cause of action have been distinctly stated as under : - "998. Essentials of the cause of action. The plaintiff must prove that the disputed name, mark, sign or get up has become distinctive of his goods in the sense that by the use of his name or mark, etc., in relation to goods they are regarded, by a substantial number of members of the public or in the trade, as coming from a particular source, known or unknown; it is not necessary that the name of the plaintiff's firm should be known......... The plaintiff must further prove that the defendant's use of name or mark was likely or calculated to deceive, and thus cause confusion and injury, actual or probable, to the goodwill of the plaintiff's business as for example, by depriving him of the profit that he might have had by selling the goods which ex hypothesi....
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....The name 'Bata' is associated with his name. The defendant-respondents manufacture foam and foam materials in several of their products. They, however, use the name of their product as 'Batafoam'. Spelling of the word 'Bata' is the same as used by the plaintiff-company. There is, thus, similarity in the spelling of the word 'Bata' used by the defendant-respondents. 19. The next point for consideration is whether the word 'Batafoam' as used by the defendants is written in a similar style as used by the plaintiff-Company in writing their name 'Bata'. From a perusal of the material on the record and visually comparing the writings in Annexures 'A' and 'D' to the affidavit in support of the injunction application filed in this Court, it is evident that although the writings 'Batafoam' and 'Bata' do not have exactly similar style of lettering, yet the fact that they are written somewhat in a similar style cannot be overlooked. The question is whether it is enough to cause deception. 20. Learned counsel for the respondents contended that there was no similarity nor even these marks were deceptively simi....
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....; to any of their product. In other words, the contention is that the name 'Bata' is so very well known in the market that its use on any product gives an impression to the purchaser that it is an item produced by the plaintiff-Company, Further, that the quality of goods prepared by the plaintiff is of a very high standard and in the event the goods marketed by the defendants are not of a very high quality, it may justifiably lead to an inference being drawn by the purchaser that the plaintiff-Company is no longer producing goods of high quality. This would result in injury to the goodwill of the plaintiff-Company in their product marketed under the name 'Bata'. It was further urged that even if the plaintiff was not producing the goods which the respondents were producing and marketing under the name 'Batafoam' it would still be actionable. 23. The respondents, however, urged that it was necessary for a passing off action that there was some resemblance in the nature of goods produced by the two traders. In other words, the claim of the plaintiff did not give rise to a cause of action, for the plaintiff did not produce foam. Foam was not one of the produ....
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.... the use of the trade mark. A manufacturer of cigarettes under an undoubted trade mark such as an animal, or any other device cannot legally object to the use of the identical mark on say, hats, or soap, for the simple reason that purchaser of any of the latter kinds of goods could not reasonably suppose, even if they were well acquainted with the mark as used on cigarettes that its use on hats or soap denoted that these goods were manufactured or marketed by the cigarette manufacturer...... It is, however, very important to observe that each of these questions will be a question of fact to be decided on the evidence adduced. The vital element in such a case is the probability of deception." Their Lordships also observed : "......... the test of comparison of the marks side by side is not a sound one, since a purchaser will seldom have the two marks actually before him when he makes his purchase..........." Their Lordships further observed : "Their Lordships however are not to be understood as saying that the differences in getup are immaterial; for they must inevitably form an element in considering the question of probability of deception by the u....
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....t in the circumstances of each case. Phonetic or visual similarities, get up, packing or other writings and marks on the goods or on the parcels in which they are offered for sale and other resemblances may help in determining the probability of deception on its own facts. If there, is no link between two trades, or in other words, the two trades are not closely correlated and the goods are not analogous, a conclusion may be reached in a particular case that the chances of deception are too remote to be taken notice of so as to restrain the defendant from selling his goods under the same or similar trade mark. Great emphasis was laid by the learned counsel for the respondents on the underlined portion to say that there should be some similarity or correlationship between the two products. This argument is supplemented by another argument that the plaintiff was not producing any goods like foam or analogous product. Consequently, there was no question of any deception being practised on the purchaser of foam materials in the market. This argument loses sight of an important feature viz., how would a lay customer know in the first place that the plaintiff was not producing f....
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.... passing off. The reason given was that there was obvious imitation of the mark 'Bata' on the labels or cartons used for the lungis or handkerchiefs and that this similarity was likely to deceive the customers of these goods into believing that they were of the plaintiffs. The learned District Judge also imputed dishonesty in the user of the mark. The Division Bench considered the case of Thomas Bear & Sons (India) Ltd. v. Prayag Narain (supra) and the case of Somerville v. Schembri (1887) 12 AC 453 (B), where it was held : "The acquisition of an exclusive right to a mark or name in connection with a particular article of commerce cannot entitle the owner of that right to prohibit the use of others of such mark or name in connection with goods of a totally different character; and that such use by others can as little interfere with his acquisition of the right". After considering the above two cases the Division Bench observed : - "In our view, the mark "Bata" not having been associated in the public mind with lungis or handkerchiefs, these goods being of a totally different character from those of the respondents' goods, the appellant's user o....
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.... and in distinguished circles" and it was, therefore, wrong for the defendant to market his produce under the name "Spanish Champagne". What is actually meant by affording protection to the business values was laid down by the learned single Judge in the following words : -- "The case related to the protection of a reputation which the word Champagne suggested. It is a word that was valuable to a group of traders to preserve. It was held that the traders engaged in a field of business activity had locus standi to obtain an injunction to restrain a competitive producer from making deceptive statements as to the place of origin or similar falsehood." Learned single Judge further observed : "The dealers may not themselves be deceived but they can certainly use the instrument of deception to create confusion in the trade or to mislead the purchasers. The representation need not deceive immediate purchasers; the test is the likely impact on those members of the public who ultimately become purchasers." 29. The ultimate test was whether the defendants have any right to represent their business as the business of the plaintiffs. It leads to the question as to why t....
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....e Judge. 33. It is also well settled that proof of actual damage or fraud is unnecessary in a passing off action. The question is whether the offending goods is likely to cause injury or damage to the interest of the plaintiff. A question arises as to who are the people who are likely to be deceived or in whose mind confusion may be created by the user of a mark which is familiar and well established in the market. The Supreme Court in the case of Amrit Dhara Pharmacy v. Satya Deo Gupta [1963]2SCR484 observed (at p. 453 of the AIR) :-- "A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names......" 34. 1 am of the opinion that the user of the name 'Bata' to any product may give rise in the mind of "unwary purchaser of average intelligence and imperfect recollection" that it is a product by the plaintiff. It is this impression which may ultimately cause damage to the reputation of the plaintiff. It amounts to an invasion of his right vis a vis the name 'Bata'. The moot point to be considered in an....