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PETITIONER: PARLE PRODUCTS (P) LTD.

       Vs.

RESPONDENT: J. P. & CO.  MYSORE

DATE OF JUDGMENT28/01/1972

BENCH: MITTER, G.K. BENCH: MITTER, G.K. VAIDYIALINGAM, C.A. DUA, I.D.

CITATION:  1972 AIR 1359            1972 SCR  (3) 289  1972 SCC  (1) 618

ACT: Trade and Merchandise Marks Act, 1958, s.  2(d)--Deceptively similar’--Proper  approach by court for determining  if  one mark is deceptively similar to another.

HEADNOTE: The  appellants filed a suit for an  injunction  restraining the respondents from infringing their registered trade  mark used  on packets of biscuits manufactured by them, The  suit was dismissed by the trial court and the High Court. Allowing the appeal to this Court, HELD : (1) Under the Trade and Merchandise Marks Act,  1958, a  registered trade mark is infringed by a person who  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 the  expression ’deceptively similar’ means a mark which  so nearly resembles another mark as likely to deceive or  cause confusion.   In order to come to the conclusion whether  one mark  is  deceptively  similar  to  another  the  broad  and essential  features of the two are to be  considered.   They should  not be placed side by side to find out if there  are any  differences in the design, and if so, whether they  are of  such  character  as to prevent  one  design  from  being mistaken for the other.  It would be enough if the  impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing  with one to accept the other if offered to him. [292 B-D; 294  D- F] In  this case, the packets of biscuits manufactured  by  the appellants  and  respondents were practically  of  the  same size,  the color scheme of the two wrappers was  almost  the same,  and the designs on both, though not  identical,  bore such  a close resemblance that one could easily be  mistaken for  the other.  If one was not careful enough to  note  the peculiar  features of the wrapper on the plaintiffs’  goods, he  might  easily mistake the defendants’  wrapper  for  the plaintiffs’ if shown to him some time after he bad seen  the plaintiffs’  wrapper.  Though the trial court and  the  High Court  had concurrently found that the  defendants’  wrapper was  not deceptively similar to that of the plaintiffs,  the

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finding  must  be set aside as it was not arrived  at  on  a proper consideration of the law. 1294 F-H], Durga  Dutt  v. Navaratna Laboratories [1965]  1  SC.R.  737 followed. Karly’s  Law, of Trade Marks and Trade Names, 9th  ed.  para 838 .referred to.

JUDGMENT: CIVIL APPELLATE JURISDICTION : C.A. No. 1051 of 1967. Appeal  by special leave from the judgment and decree  dated July  5,  1966  of the Mysore High Court  in  Regular  First Appeal No. 170 of 1963. 290 S.   T. Desai and I. N.  Shroff, for the appellant. S.   K. Mehta and K. L. Mehta, for the respondent. The Judgment of the Court was delivered by Mitter,  J.  This  is  an appeal by  special  leave  from  a judgment  of the Mysore High Court confirming the  dismissal of a suit for an injunction restraining the respondent  from infringing the registered trade mark of the plaintiffs  used on packets of biscuits. The facts are as follows.  The plaintiffs-appellants  before us  are manufacturers of biscuits and confectionery and  are owners  of certain registered trade marks.  One of  them  is the  word "Gluco" used on their half pound biscuit  packets. Another  registered trade mark of theirs is a  wrapper  with its  color scheme, general set up and entire collocation  of words registered under the Trade Marks Act 1940 as No.  9184 of  7th December, 1942.  This wrapper is used in  connection with  the  sale of their biscuits known  as  "Parle’s  Gluco Biscuits"  printed on the wrapper.  The wrapper is  of  buff color  and  depicts a farm yard with a girl  in  the  centre carrying a pail of water and cows and hens around her on the background  of a farmyard house and trees.   The  plaintiffs claim  that  they  have been selling their  biscuits  on  an extensive  scale  for many years past under the  said  trade mark which acquired great reputation and goodwill among. the members  of the public.  They claimed to have discovered  in March  1961 that the defendants were manufacturing,  selling and offering for sale biscuits in a wrapper which  according to  them was deceptively similar to their  registered  trade mark.  The plaintiffs assert that this act of the  defendant constitutes an infringement of their trade mark rights.   As in  spite  of lawyer’s notice the  defendants  persisted  in manufacturing, selling and using the wrappers complained  of with regard to their biscuits, the plaintiffs filed the suit claiming injunction as already mentioned. The defendants pleaded ignorance of the registration of  the trade marks claimed by the plaintiffs.  They denied that the wrapper  used by them in connection with the sale  of  their biscu its  was deceptively similar to the plaintiffs’  trade marks  as alleged or that they had in any way infringed  the trade  mark rights of the plaintiffs.  They pleaded  further that  there was a good deal of difference in the  design  of their  wrapper  from that of the plaintiffs  and  relied  on certain features of their design which were said to be quite dissimilar  to those of the plaintiffs’ wrapper inasmuch  as the  defendant’s  wrapper contained the picture  of  a  girl supporting  with  one band a bundle of hay on her  head  and carrying  a  sickle and a bundle of food in the  other,  the cow-, and hens being unlike 291 those  of the plaintiffs’ wrappers.  There was also said  to

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be  difference  in the design of the buildings  on  the  two wrappers  and  the words printed on the  two  wrappers  were distinct and separate. The trial court meticulously examined the features found  on the two wrappers and the packets of biscuits produced before it  and  took  the view that there were  greater  points  of dissimilarity than of similarity between the two and as such it  was unlikely that the defendants, goods could be  passed off as and for the goods of the plaintiffs.  After  pointing out  the distinguishing features of the wrappers, the  trial court  concluded  that  there  was no  chance  of  a  seller committing  fraud  on a customer and an  ordinary  purchaser would certainly refuse to purchase the defendants’ goods  if he  was  offered  them as and  for  the  plaintiffs’  goods. Accordingly  the  trial court held that the  plaintiffs  had failed to establish their case. Although the High Court held that in such a case it was  not necessary  for  the plaintiffs to adduce evidence  that  any particular  individual had been deceived by the  defendants’ wrapper and it was undeniable that the general get up of the two wrappers was more or less similar, it went on to observe that the court had to bear in mind that it was dealing  with packets  of biscuits which were generally used by people  of the  upper  classes, and a purchaser desirous of  getting  a packet  of Parle biscuits would go and ask for the  same  as such,  in which case there could be no scope for  deception; again the plaintiffs could have no cause for grievance if  a purchaser was content to buy any biscuits which were offered to him by the shopkeeper.  The High Court  also took  the  view  that  there  were  several’  distinguishing features between the two wrappers and these could be noticed even  from  a distance.  According to the  High  Court,  the similarity  in the two wrappers lay in the facts  that  both were  partly yellow and partly white in color and both  bore the  design of a girl and some birds.  "But" the High  Court said  "there the similarity ends.  The lady in  the  wrapper used  by the plaintiff company has a pot on her hand  while, the  lady  in the wrapper used by the defendant has  a  hay- bundle  on  her head.  In fact, they are  not  identical  in features.  In the defendants’ wrapper we have got a cow  and in  the  plaintiffs’ wrapper we have got  two  calves.   The upper  portion of the defendants wrapper is not  similar  to that of the ,Plaintiffs’ wrapper." The High Court went on to comment:               "it is true that in a passing off action,  one               is not to look to minor details but must  take               into  consideration the broad features.   Even               if  we  take  the broad features  of  the  two               wrappers  into consideration, we do not  think               that they are similar.  At any rate, they  are               not  so  similar  as to  deceive  an  ordinary               purchaser of biscuits." 292 With due respect to the learned Judges of the High Court, we are constrained to remark that they fell into an error.  The plaintiffs’ marks were registered under the Trade Marks Act, 1940  which  was  however repealed by S. 136  of  the  Trade and .,Merchandise Marks Act, 1958.  Under sub-s. (2) of  the said  section any registration under the Act of 1940  if  in force at the commencement of the Act of 1958 was to continue in force and have effect as if made, issued and given  under the  corresponding provisions of the Act of 1958.  Under  S. 21(1) of the Act of 1940 the registration of a person in the register  as  proprietor of a trade mark in respect  of  any goods gave to that person the, exclusive right to the use of

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the Trade mark in relation to those goods and that right was to  be deemed to be infringed by any person who,  not  being the  proprietor  of  the trade mark  or  a  registered  user thereof  using  by  way of the permitted use,  used  a  mark identical with it or so nearly resembling it as to be likely to  deceive or cause confusion, in the course of  trade,  in relation to any goods in respect of which it was registered. Under s. 28(1) of the Trade and Merchandise Marks Act,  1958 the registration of a trade mark in Part A or Part B of  the register gave to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the    trade    mark    was registered   and  to  obtain  relief  in  respect   of   the infringement of the trade mark in the manner provided by the Act.  Under s. 29(1):               "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 a 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." The expression ’.’deceptively similar" has now been  defined under s. 2(d) of the Act of 1958 thus               "A  mark  shall be deemed  to  be  deceptively               similar  to  another  mark  if  it  so  nearly               resembles  that other mark as to be likely  to               deceive or cause confusion;" It is to be noted that although there was no such  provision in the definition section of the Act of 1940 s. 21(1) of the said Act was to the same effect.  The Indian Trade Marks Act of  1940 was based on the English Trade Marks Act, 1938  and s. 21 of the Act of 1940 was more or less similar to s. 4 of the English Act of 1938. 293 To  decide the question as to whether the plaintiffs’  right to a trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of  the  defendant  as  and  for  those  of  the  plaintiff. According  to  this,  Court  in  Durga  Dutt  v.   Navaratna Laboratories(1):               "While  an action for passing off is a  Common               Law  remedy being in substance an  action  for               deceit, that is, a passing off by a person  of               his own goods as those of another, that is not               the  gist of an action for infringement.   The               action for infringement is a statutory  remedy               conferred  on the registered proprietor  of  a               registered  trade mark for the vindication  of                             the  exclusive  right to the use of  t he  trade               mark,  in relation to those goods (vide s.  21               of  the Act).  The, use, by the  defendant  of               the   trade  mark  of  the  plantiff  is   not               essential in an action for passing off, but is               the sine qua non in the case of an action  for               infringement." In the above case the Court further pointed out               "In an action for infringement, the  plaintiff               must,  no doubt, make out that the use of  the               defendant’s  mark  is likely to  deceive,  but

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             where  the similarity between the  plaintiff’s               and  the defendant’s mark is so  close  either               visually,  phonetically or otherwise  and  the               court reaches the conclusion that there is  an               imitation, no further evidence is required  to               establish  that  the  plaintiff’s  rights  are               violated.   Expressed in another way,  if  the               essential  features of the trade mark  of  the               plaintiff have been adopted by the  defendant,               the  fact that the get-up, packing  and  other               writing  or  marks  on the  goods  or  on  the               packets hi which he offers his goods for sale               show marked differences, or indicate clearly a               trade or’ in different from that of the regis-               tered   proprietor  of  the  mark   would   be               material; whereas in the case of passing  off,               the  defendant may escape liability if he  can               show  that the added matter is  sufficient  to               distinguish  his  goods  from  those  of   the               plaintiff." According  to  Karly’s  Law of Trade Marks  and  Trade  (9th edition paragraph 838):               "Two  marks,  when placed side  by  side,  may               exhibit  many and various differences vet  the               main idea left on the mind by both may be  the               same.  A person acquainted with one mark,  and               not having the two side by side               .lm0               (1) [1965] 1 S.C.R. 737. 754               294               for comparison, might well be deceived, if the               goods  were allowed to be impressed  with  the               second mark, into a belief that he was dealing               with goods which. bore tile same mark as  that               with  which  he  was  acquainted.   Thus,  for               example,  a  mark  may  represent  a  game  of               football;  another mark may show players in  a               different   dress,  and  in   very   different               positions,  and yet the idea conveyed by  each               might be simply a game of football.  It  would               be  too  much to expect that  persons  dealing               with trade-marked goods, and relying, as  they               frequently  do, upon marks, should be able  to               remember  the exact details of the marks  upon               the goods with which they are in the habit  of                             dealing.   Marks  are  remembered  rat her   by               general  impressions  or by  some  significant               detail  than by any photographic  recollection               of the whole.  Moreover, variations in  detail               might  well be supposed by customers  to  have               been made by the owners of the trade mark they               are  already  acquainted with for  reasons  of               their own." It  is  therefore  clear  that  in  order  to  come  to  the conclusion  whether  one  mark  is  deceptively  similar  to another, the broad and essential features of the two are  to be  considered.  They should not be placed side by  side  to find  out if there are any differences in the design and  if so,  whether  they are of such character as to  prevent  one design  from  being  mistaken for the other.   It  would  be enough if the impugned mark bears such an overall similarity to  the  registered  mark as would be likely  to  mislead  a person  usually  dealing  with one to accept  the  other  if offered  to him.  In this case we find that the packets  are

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practically  of the same size, the color scheme of  the  two wrappers  is almost the same; the design on both though  not identical bears such a close resemblance that one can easily be  mistaken for the other.  The essential features of  both are  that there is a girl with one arm raised  and  carrying something in the other with a cow or cows near her and  hens or chickens in the foreground.  In the background there is a farm  house with a fence.  The word "Gluco Biscuits" in  one and "Glucose Biscuits" on the other occupy a prominent place at  the top with a good deal of similarity between  the  two writings.   Anyone in ,our opinion who has a look at one  of the packets to-day may easily mistake the other if shown  on another  day  as being the same article which he  had  seen before.  If one was not careful enough to note the  peculiar features  of the wrapper on the plaintiffs goods,  he  might easily mistake the defendants’ wrapper for the plaintiffs if shown  to. him some time after he had seen the  plaintiffs’. After all, an ordinary purchaser is not gifted with 295 the  powers  of observation of a Sherlock Holmes.   We  have therefore   no  doubt  that  the  defendants’   wrapper   is deceptively similar to the plaintiffs’ which was registered. We  do  not  think it necessary to refer  to  the  decisions referred to at the Bar as in our view each case will have to be, judged on its own features and it would be of no use  to note on how many points there was similarity and in how many others there was absence of it. It was argued before us that as both the trial court and the High Court had come to the same conclusion namely, that  the defendants,  wrapper  was  not deceptively  similar  to  the plaintiffs’, the finding is one of fact which should not  be disturbed by this Court.  Normally, no doubt this Court does not  disturb  a concurrent finding of fact.  But  where,  as here,  we  find  that,, the finding was arrived  at  not  on proper  consideration  of the law on the subject it  is  our duty to set the same aside on appeal. In the result, we hold that the defendant had infringed  the registered  trade mark of the plaintiff and the suit of  the plaintiff  should  be  decreed  and  an  injunction  granted restraining  the defendant-respondent from selling or  using in  any  manner whatsoever biscuits in wrappers  similar  in appearance to the registered trade mark of the plaintiffs on their  packets.   The appellants will be entitled  to  their costs throughout. V.P.S.                             Appeal allowed. 296