Krishna Rao, J.

1. The plaintiff has filed the present suit against the defendants praying for the following reliefs:

“a) Perpetual injunction restraining the defendants, their men, assigns, servants, agents, officers, distributors, representatives or anyone claiming through or under them from in any way or manner passing of and enabling others to pass off their products by using the marks “NAKODA SumEEt, “NAKODA Summit”, “NKDSUMEET”, “MISUMEET”, “NAKODASUMMIT” and/or “NAKODASUMEET” or any other deceptively similar mark as and for the plaintiff’s trade mark “MI SumEEt” in any way or manner whatsoever;

b) Perpetual injunction restraining the defendants, their men, assigns, servants, agents, officers, distributors, representatives or anyone claiming through or under them from in any way or manner infringing the plaintiff’s copyright over and in respect of his artistic work “MI SumEEt” by use of any work and/or mark shown in Annexure “A” hereto or any other identical and/or deceptively similar work and/or mark;

c) Perpetual injunction restraining the defendants, their men, assigns, servants, agents, officers, distributors, representatives or anyone claiming through or under them from copying and/or imitating and/or pirating registered design of the plaintiff as shown in Annexure “C” hereto by use of article as shown in Annexure “P” hereto;

d) Delivery up on oath any article and/or all labels, dyes, blocks, plates, moulds, screen prints, cylinders, advertising materials, products, name boards, letter heads, stationeries, pamphlets, brochures and any other materials of the defendants bearing the mark “NAKODA SumEEt”, “NAKODA Summit”, “NKDSUMEET”, “MISUMEET”, “NAKODASUMMIT” and/or “NAKODASUMEET” or any other mark that is identical and/or deceptively similar to the plaintiff’s mark “MI SumEEt” and the same be cancelled and/or destroyed;

e) Decree for a sum of Rs. 5,00,00,000/- (Rupees Five Crores) against the defendants jointly and severally for damages suffered by the plaintiff;

f) In the alternative an enquiry be made to ascertain the loss and damage suffered by the plaintiff and a decree be passed for such sum as may be found due upon enquiry against the defendants jointly and severally.”

2. On receipt of writ of summons, the defendant nos. 1 to 3 have entered appearance but inspite of publication of notice in the paper publication, the defendant no. 4 did not entered appearance. After 10th May, 2022, the defendant nos. 1 to 3 have also not appeared and have also not filed written statement, accordingly, by an order dated 29th July, 2022, the case is placed in the list of “Undefended Suit”.

3. The fact of the case in a nutshell is as follows:-

(a) The plaintiff is engaged in the business of manufacturing and/or marketing of mixer, grinder, juicer, hand blender, electrical accessories, kitchen home appliances, etc and carried on its business from 19, Pratham Industrial Estate, Western Expressway Highway, Vasai (East), Palghar – 401208.

(b) The plaintiff carries on his business through proprietorship firms, namely (i) Manibhadra Industries also known as Manibhadre Industries; (ii) Sumeet Engineering Works; (iii) Shree Sai Marketing; (iv) Pet & Mineral.

(c) The defendant nos. 1, 2 and 3 claim themselves to be manufacturer and/or marketer of mixer, juicer, grinder etc., and carries on their businesses from their respective place of business.

(d) The defendant no. 4, is purportedly the distributor of the products of the defendant nos. 1, 2 and 3 and carries on its business from 54, Cotton Street, Burra Bazar, Kolkata – 700 007.

(e) The plaintiff had entered into a manufacturing agreement with one Taffy Appliances Private Limited, who manufactures goods for the plaintiff, which the plaintiff markets under his various brands and more particularly “MI SumEEt”, the plaintiff manufactures and markets goods falling within the Classes 7, 9, 11 and 21 of the Trade Marks Act, 1999.

(f) The plaintiff since the year 1993 has been manufacturing and/or marketing home appliances products and the first manufacturing unit was set up by the plaintiff was at Mangarh Hill, Vasco da Gama, Goa – 403802 and the plaintiff during the same year coined, adopted and devised a mark, being “MI SumEET”, with “SumEET” written in a stylized font.

(g) The plaintiff coined and/or adopted the “MI SumEET” in the fond memory of his deceased son Sumeet and MI being abbreviation of the deity which the plaintiff had all throughout his life worshipped, wherein the ‘M’ stands for ‘Manibhadra’ and ‘I’ stands for ‘Industries’.The style of writing “MI SumEET” is that “MI” is written in capital letters in deep red colour on a yellow background and “SumEET” written in a stylized font in deep red colour where the letters “S” and “E” are written in capital letter where letters “u”, “m” and “t” written in small letters.

(h) The plaintiff through his proprietorship firm “Pet and Mineral” has been continuously and uninterruptedly except for brief period been selling and/or supplying his products under the mark “MI SumEET”, to Indian Naval Canteen Service at Kochi, Vishakhapatnam, Goa, Mumbai and Karvar, and on the basis of such services provided by the plaintiff, the Indian Naval Canteen Services, Vishakhapatnam, had also certified the plaintiff’s proprietorship firm “Pet and Mineral”.

(i) Sometimes in or around the year 2009, the plaintiff had applied for registration of the said, mark under the Trade Marks Act, 1999 under Classes 7, 9, 11 and 21 of the Trade Marks Act, 1999.

(j) The plaintiff also sometimes in the year 2006, decided to come up with a variant of his products, targeted to meet demands of people belonging to lower income strata at an economical and budgeted price, and then the plaintiff for purpose of differentiating and categorizing the quality and price of the plaintiff’s products, adopted two marks namely “LUMEET” and “MUMEET”. The plaintiff extensively used the said two marks till the year 2016.

(k) Numerous designs of mixtures, grinders and/or its attachments manufactured and/or marketed by the plaintiff have been coined and designed by the plaintiff and they are all designs within the meaning of the Designs Act, 2000, and also got them registered under the same Act of 2000.

(l) In or around the year 2005, one Sumeet Appliances Pvt. Ltd., running its business in the market of manufacturing and/or marketing of mixer, juicer and grinder under the brand name of ‘Sumeet’, based in Mumbai,, had approached the plaintiff and appointed the plaintiff as its authorized distributor for the state of Goa.

(m) The plaintiff started acting as the distributor of Sumeet Appliances Pvt. Ltd. since June 2005. It was made clear under the distributorship agreement between the parties that the Plaintiff in addition to act as a distributor of the goods of the said Sumeet Appliances Pvt. Ltd., shall also have the right to manufacture and/or market his goods under his own mark ‘MI SumEEt’.

(n) Sometimes in the year 2010 – 2011, certain disputes and differences arose by and between the plaintiff and Sumeet Appliances Pvt. Ltd. and the said Sumeet Appliances Private Limited had initiated proceeding before the Hon’ble Bombay High Court being Suit No. 1184 of 2011 (Sumeet Appliances Private Limited –vs- Dilip Kumar Jain & Anr.). The said case is still pending before the Bombay High Court.

(o) Sometimes in the year 2014, the plaintiff came to know that the defendant no. 2 was manufacturing and marketing similar products as that of the plaintiff along with one Mahaveer Manufacturing Mumbai were illegally, wrongfully and fraudulently with respect of mixture and grinders using identical and deceptively similar mark of the plaintiff namely “SUMEET/ SWMEET”.

(p) The plaintiff had initiated a suit before this Court being CS No. 210 of 2014 along with an application being GA No. 1867 of 2014 and this Court by an order dated 1st July, 2014 passed an order of injunction against the defendant no. 2 and Mahaveer Manufacturing restraining them from using, advertising or dealing with the mark “SUMEET/SWMEET”. After communication of the order dated 1st July, 2014, the defendant no. 2 and Mahaveer Manufacturing stopped using and marketing the product with the mark “SUMEET/SWMEET”. Unfortunately, the suit filed by the plaintiff was dismissed on 14th August, 2018 for non-compliance of the provisions of Chapter VIII Rule 14 of the Original Side Rules of this Court.

(q) In the meantime, the defendant no. 1 filed an application for registration of the mark “NAKODA SumEEt” vide Trademark Application Nos. 2999878 and 2999879 in Classes 7 and 21 respectively of the Trade Marks Act, 1999. The plaintiff has filed his opposition to the said application and the same is pending before the Trade Mark Registry. In the month of December’ 2017, two more marks of the defendant no. 1 were published with regard to “NAKODA SumEEt” in Class 9 and Class 11 by Trademark Application Nos. 2503434 and 2503435 respectively. The plaintiff has duly opposed the said registration and status of the said application is still pending as opposed. In the month of March’ 2018, another mark “NKDSUMEET” was published in the Trade Marks Journal on the application filed by the defendant no. 1 being Application No. 3752161 dated 2nd February, 2018 in Class 11 and when the plaintiff came to know about the same, the plaintiff had filed his opposition of the said mark. The said application is abandoned. The defendant no. 1 had again advertised in the Trademarks Journal dated 21st May, 2018 being Application No. 2684048 in Clause 7 with respect to the mark “NKDSUMEET” and the defendant no. 1 mentioned that he is using the said mark since 23rd May, 2013. When the plaintiff came to know about the same, the plaintiff is filed opposition and the status of the said application is pending as opposed.

(r) The plaintiff sometime in or around January, 2020, received complaints that mixer, grinder and juicer bearing the mark “NAKODA SumEET” and “NAKODA Summit”, with “NAKODA” written over a yellow background and “SumEET” and “Summit” written prominently in the same stylized form, way and colour as that of the plaintiff’s mark were being sold by the Defendant No.4.

(s) The plaintiff upon coming to know such fact, immediately caused products bearing the mark “NAKODA SumEET” and “NAKODA Summit” to be purchased from the defendant no.4, and upon such purchase, the plaintiff came to know that the same had the name of the defendant no. 3 as its manufacturer and defendant no. 2 as its marketer.

(t) The plaintiff further found out that the defendants were selling their products illegally without charging and/or raising any GST invoice.

(u) Furthermore, the plaintiff on perusal of the packaging of the defendants came to know that the Defendant Nos. 1, 2 and 3 have also imitated and adopted the phrase “Research and Technology” in the same manner as being used by the plaintiff, which the plaintiff has adopted sometime in the year 2011.

(v) The plaintiff further came to know that one of the jar part of the juicer, which is being sold by the plaintiff, was now being sold by the Defendants under the brand of “NAKODA Summit”, and the design was the exact imitation as of the plaintiff’s product and the plaintiff enjoys a registration of the same vide Design Registration No. 253615 in Class 31-00.

4. The plaintiff has examined one witness, namely, Mr. Dilip Kumar Jain @ Dilip Kumar Ranawat, who is the Owner of the plaintiff Company. During the evidence of the plaintiff, all together 15 documents were marked as “Exhibit 1 – Exhibit 13” and Material Exhibit’s “Exhibit I and Exhibit II”.

Exhibit – 1: Copies of certified copy of the certificate issued by the Commercial Tax Officer, Vasco-da-Gama, Goa, in connection with the registration of manufacturing of MI Sumeet Mixer and other items.

Exhibit – 2: License issued by the Directorate of Industries of Goa Government for registration as Small Scale Industries, which was issued in the name of Manibhadre Industries, issued regarding the manufacturing of MI Sumeet and other items.

Exhibit – 3: Certificate issued by the Indian Naval Canteen Service, to certify that the plaintiff has been supplying items of MI Sumeet to them for the last six years.

Exhibit – 4: Copies of several purchase orders for supply of products of MI SumEEt dated 4th September, 2002; 27th January, 1998; and 5th September, 1998, exhibited collectively.

Exhibit – 5: Second copies of several bills issued by the plaintiff and its office staffs, exhibited collectively.

Exhibit – 6: Certificate issued by the Chartered Accountant, which shows audited sale figures of products of MI Sumeet Mixer for the years 2017-2018, 2018-2019, 2019-2020.

Exhibit – 7: Documents to show advertisement of the plaintiff’s products, exhibited collectively.

Exhibit – 8: Sample of the packaging box of MI Sumeet.

Exhibit – 9: A copy of an application made by the plaintiff to the Trade Mark Registrar.

Exhibit – 10: Copy of the certificate of registration of design issued to the plaintiff from Government of India, the Patent Office.

Exhibit – I: A Jar of the Plaintiff’s company having design no. 253615.

Exhibit – II: A jar of the company who has made the duplicate of the plaintiff’s jar.

Exhibit – 11: Copies of the bills of the products purchased by the plaintiff from SSS Sai Super Stockist, exhibited collectively.

Exhibit – 12: Copies of photographs of Sumeet Mixer Grinder.

Exhibit – 13: A copy of an application form of Trade Mark which has been filed on behalf of the NAKODA Sumeet, Summit of Vikas D. Jain, and also MI SumEEt and all of the certificates are under the name of Mr. Vikas D. Jain, exhibited collectively.

5. Exhibit 1 proves that the plaintiff Company was having the registration of manufacturing of MI SumEEt mixer, toasters, non-stick glassware and cookery etc. Exhibit 2 proves that the plaintiff is having the Certificate of manufacturing/ processing of Mi SumEEt mixer, toaster, non-stick, glassware, cookery and plastic wares.

Exhibit-3 proves that the plaintiff had supplied MI Sumeet to the Indian Naval Canteen Service for about six years.

Exhibit-6 is the audit reports of the plaintiff for the year 2017-2018, 2018–2019 and 2019-2020. Exhibit-6 proves that the sale of the plaintiff reduced from 0.75 crores to 0.27 crores.

Exhibit-7 proves that the plaintiff has made advertisement of MI Sumeet Mixer and grinder.

Exhibit-8 proves that in respect of packing box of MI Sumeet Mixer.

Exhibits 9 and 10 proves that the plaintiff had applied for registration of the Trade Mark MI Sumeet under Class 7 and 11 and the competent authority has issued certificate of registration of designed being No. 253614 and 235615.

The plaintiff has also exhibited original jar having Registration No. 235615 as Material Exhibit-I.

The plaintiff has produced the original jar of the defendant which is marked as Material Exhibit–II and on comparison of Mat-I and Mat-II, it proves that defendant has used the trade mark and design of the plaintiff mark in the said jar.

Exhibit–11 proves that the plaintiff has purchased Material Exhibit-II from the shop of the defendant no. 4.

Exhibit-12 proves that the defendants have advertised the product NAKODA SumEEt and have utilized the same jar that of the plaintiff.

Exhibit-13 proves that the defendant had got registration mark of NAKODA Summit, NKD SUMEET and Sumeet but using the plaintiff’s mark “MI SumEEt” by making it look deceptively similar to the mark and product of the plaintiff.

6. Sometimes in the year 2011, Sumeet Appliances Private Limited had initiated a case against the plaintiff being Suit No. 1184 of 2011 before the Bombay High Court on the allegation that the plaintiff is using the trademark “SUMEET” and accordingly by an order dated 1st September, 2014, the Bombay High Court passed an order of injunction against the plaintiff for using of the Trade Mark “SUMEET”. By an order dated 28th October, 2015, the Bombay High Court has disposed of the Notice of Motion of the Sumeet Appliances Private Limited in their favour. On 17th June, 2016, the defendant appeared in person before the Bombay High Court in Suit No. 1184 of 2011 and given an under taking that the plaintiff has removed from the website domain name www.misumeet.co.in and are not using the marks of MI SUMEET, SUMEET or SUMEET SASSAKI. On the basis of the said statement, the Bombay High Court accepted the undertaking of the plaintiff.

7. Subsequently, the plaintiff has filed a review application before the Bombay High Court in Suit No. 1184 of 2011 for review of the order dated 28th October, 2015 and while admitting the review application, the Bombay High Court has passed the following order:

“4. The devolution of the trade marks, is, too, traced by the Plaintiff. It begins with the adoption of the trade mark by Mr. Mathur in 1963, with its first use in 1964 by Power Control & Appliances Company. That firm used it continuously till 1980. On 1st January, 1981, Power Control & Appliances Company assigned and transferred its rights in this mark to Sumeet Research & Holdings Pvt. Ltd., a company promoted by Mr. and Mrs. Mathur. That company then used the mark continuously from the date of its acquisition till December 1992. On 21st December 1992, Sumeet Research & Holdings Pvt. Ltd. Assigned and transferred all its rights in the mark to Sumeet Machines Pvt. Ltd., an entity promoted by Mr. Mathur’s eldest son, Mr. Ajay Mathur. On 9th February 1993, the company changes its name to Sumeet Machines Ltd. It continued using the mark without interruption till April 2008. The plaintiff claims that under two assignment deeds dated 28th April, 2008 and 1st October 2008, and a supplementary deed dated 17th September, 2008, all rights in this mark were assigned to the Plaintiff. It is to be noted that the Plaintiff’s predecessors-in-title had multiple registrations, and this history is traced to all those registrations.

5. This is straightforward enough. But what the Defendants say is that there is material here that has been carefully and deliberately omitted; in essence, that the so-called assignments and transfers to the Plaintiff are in themselves void, and that the Plaintiffs can therefore claim no statutory or common law rights over them. To understand this, we must see how the marks in question came to be registered, when, and by whom.”

8. The Review Application filed by the plaintiff was disposed of by the Bombay High Court on 12th February, 2019 by passing the following order:

“15. Now this dispute as to proprietorship seems to me to go to the root of the matter. It squarely affects SAPL’s entitlement in the first place to maintain the infringement action against anybody at all, whether it be Jain or any other user of the mark. Was SAPL on the date of the suit even a registered proprietor of the mark If it was not, then no amount of demonstration of alleged infringement or similarity could have helped its cause. If there was even the slightest uncertainty about the title, the same result would probably follow. The Review Petition is, I hasten to make clear, is not being allowed on the basis of what Sumeet Research today claims or does not claim. After all it has a substantive suit and a Notice of Motion of its own and these will be considered. Undoubtedly SAPL will also be heard in Sumeet Research’s claim for an injunction, as will Jain. Therefore, even excluding from present consideration whatever Sumeet Research may have to say, on Jain’s own showing there is adequate material to indicate that SAPL’s standing to maintain the suit itself was never adequately or fully addressed. This, in my view, is not only within the frame of Order XLVII but is also something that a Court is beholden and obliged to address. It is an error apparent on the face of the record. It may even be a mistake, and as to the question of due diligence I think it is sufficient to say that when Jain repeatedly sought this disclosure but did not get it – and there is no doubt that the compromise decree was never disclosed – but got it only much later, then that is sufficient to meet the due diligence test as well.

16. Mr. Rebello for SAPL insists that the relevant facts were all before me. I disagree. The relevant facts were not before me. And neither was Mr Rebello.

17. Dr Saraf relies on the decision of the Supreme Court in United India Insurance Co Ltd v Rajendra Singh & Ors where the Supreme Court in paragraph 16 said in the context of an Insurance Court that no Court or Tribunal is powerless to recall its own order if it is convinced that (and now I am using the words of the Supreme Court) “the order was wangled through fraud or misrepresentation of such a dimension as would affect the very basis of the claim”. Whether or not SAPL is guilty of such “wangling” is something I will decide in the Notice of Motion, which I will restore by allowing this Review Petition and recalling the order of 28th October 2015.

18. The Review Petition is allowed.

19. The order dated 28th October 2015 is recalled and set aside.”

9. Mr. Rajeev Kumar Jain, Learned Advocate representing the plaintiff relied upon the judgment reported in (1972) 1 SCC 618 [LQ/SC/1972/67] (Parle Products (P) Ltd –vs- J.P. and Co., Mysore) and submitted 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. 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.

10. Mr. Jain relied upon the judgment reported in (2007) 6 SCC 1 [LQ/SC/2007/785] (Heinz Italia and Another –vs- Dabur India Ltd.), it is admitted case that term “MI Sumeet” has been used by the defendant form the year 2009 but the plaintiff is using the same from the year 1993. He submits that the plaintiff has proved that the plaintiff is the prior user of the said mark.

11. Mr. Jain relied upon the judgment reported in (2004) 3 SCC 90 [LQ/SC/2004/103] (Midas Hygiene Industries (P) Ltd. and Another -vs- Sudhir Bhatia and Others) and submitted that in the case of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant injunction in such cases. He submits that grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.

12. Mr. Jain relied upon the judgment reported in (2002) SCC 65 (Laxmikant V. Patel -vs- Chetanbhai Shah and Another) and submitted that in an action for passing-off is an essential to seek an injunction. The principles for grant of injunction are the same as in the case of any other action against injury complained of. He submits that in the present case, the plaintiff has proved the prima facie case, balance of convenience and inconvenience and suffering from irreparable injury.

13. Mr. Jain relied upon the judgment reported in (2016) 2 SCC 683 [LQ/SC/2015/405] (S. Syed Mohideen -vs- P. Sulochana Bai) and submitted that registration is merely a recognition of the rights pre-existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the Court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognized in the form of the registration by the Act.

14. The main bone of the contentions of the plaintiffs before me is whether the defendant's mark is deceptively similar to the plaintiff's mark. To adjudicate this issue, it would be appropriate to recapitulate some wellestablished principles.

15. In James Chadwick & Bros. Ltd. v. The National Sewing Thread Co., reported in AIR 1951 Bom 147, the Division Bench of the Hon’ble Bombay High Court held that what is important is to find out what is an essential feature of the trade mark already registered and what is the main feature or idea under-lying such trade mark, and ascertain if the trade mark whose registered contains the same distinguishing or essential feature or conveys the same idea. The relevant question to be asked is, what would be the salient feature of the trade mark which would lead the purchaser to associate the particular goods with that trade mark

16. In Corn. Products Refining Co. v. Shangrila Food Products Ltd. reported in AIR 1960 SC 142 [LQ/SC/1959/182] , it was held that “Glucovita” and “Gluvita” were deceptively similar while observing that in deciding question of similarities between two marks. The approach must be from the point of view of a man of average knowledge and imperfect recollection. To such a person, the overall structural and phonetic similarity and the similarity of the idea in the two marks are reasonably likely to cause confusion between them.

17. In Amritdhara Pharmacy v. Satya Deo Gupta reported in AIR 1963 SC 449 [LQ/SC/1962/200] that the Hon'ble Apex Court considered overall structural and phonetic similarity between two names, “Amritdhara” and “Lakshmandhara”, which was likely to cause confusion for unwary purchaser of average intelligence and imperfect recollection. It was held that if a person is put in wonderment, it is sufficient to hold that mark is likely to deceive or confuse.

18. In F. Hoffimann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Private Ltd. reported in (1969) 2 SCC 716 [LQ/SC/1969/320] : AIR 1970 SC 2062 [LQ/SC/1969/320] , the Hon'ble Apex Court has held that marks must be compared as a whole. The true test is whether the totality of the trade mark is such that it is likely to cause deception, confusion, or mistakes in the minds of the persons accustomed to the existing trade mark. It is held that microscopic examination is not necessary. Both tests, visually and phonetic, must be applied.

19. In Parle Products (P) Ltd. v. J.P. and Co., Mysore reported in (1972) 1 SCC 618 [LQ/SC/1972/67] : AIR 1972 SC 1359 [LQ/SC/1972/67] that the Hon'ble Apex Court has held that what must be considered are the broad and essential features of two trademarks, which should be placed side by side in order to find out any differences in design. It is enough if the impugned trade mark bears such an overall similarity to the registered mark as it would be likely to mislead a person usually dealing with one, to accept the other if offered to him. Each case must be judged on its own features, and it would be of no use to note how many points there were in similarity and how many others there were in the absence of it.

20. The Hon'ble Apex Court, in a recent judgment in the case of Renaissance Hotel Holdings Inc. v. B. Vijaya Sai reported in (2022) 5 SCC 1 [LQ/SC/2022/68 ;] has held that in action for infringement, once it is found that the defendant's trade mark was identical with the plaintiff's registered trade mark, the Court could not have gone into an enquiry whether the infringement is such as is likely to deceive or cause confusion. In an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the trade mark of the plaintiffs. It is held that the question to be asked in an infringement action is as to whether the defendant is using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark. It is held that though the get-up of the defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless, even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the plaintiff's mark. It is not necessary to prove actual deception or any actual damage.

21. In the light of principles of law established in the aforesaid judgments, it is necessary to consider essential features of marks in the present case.

22. The mark of the plaintiff and the defendants are as follows :

23. On close scrutiny of marks placed side by side based on wellestablished principles, the question that arises for consideration is what would be the effect on the mind of a person of average intelligence and imperfect recollection Applying the test with well-established principles summarized in an earlier paragraph, there can be no manner of doubt that the defendant's label/mark is deceptively similar to the plaintiff's mark. It would be highly improbable to expect an ordinary person of average intelligence and imperfect recollection to recall the exact nature and features of the plaintiff's mark before being led into confusion with the defendant's mark and consequently purchasing the defendant's fan in the belief that he is purchasing plaintiff's fan. It is a well-settled principle of law that the duties of the Court are not to compare two marks as they were side by side, with a view to find out if there are differences or dissimilarities. What is essential is whether ordinary purchasers going about their normal affairs would be liable to be deceived into believing that the fan he purchased from a shop, not under a microscope or upon careful evaluation, is a product of plaintiff. Apart from using the word “MI SumEEt” instead of “NAKODA Summit”, the features would lead the purchasers to associate the plaintiff's product with the defendant's brand. In view of the well-settled position in law that the Court must have regard for all the surrounding circumstances and the overall similarities of the two marks, there can be no doubt whatsoever that the product of the defendant, prima facie, is deceptively similar to that of plaintiff's and is likely to cause confusion and deception.

24. The phonetic similarity between “MI SumEEt” on the one hand and on “NAKODA Summit” on the other is strikingly similar. The two marks are phonetically, visually and structurally similar. Phonetic similarity constitutes an important factor to ascertain as to whether the mark “NAKODA Sumeet” on the other is strikingly similar. The two marks are phonetically, visually and structurally similar. Phonetic similarity constitutes an important factor to ascertain as to whether the mark bears deceptive or misleading similarity to another. The phonetic structure indicates how rival mark sounds. The overall impact in terms of phonetic use is strikingly similar. The phonetic, visual and structural get-up of two words is so structurally similar that it would lead to the likelihood of deception. The respondent has no bona fide and logical explanation for adopting such a mark. This is not a case where it can be said that there is the bona fide, honest and concurrent use of the mark by the defendant.

25. The test of phonetic similarity was accepted in the judgment of the Hon'ble Apex Court in the case of Amritdhara Pharmacy (supra). This principle is reiterated in the judgment of the Hon'ble Apex Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in (2001) 5 SCC 73 [LQ/SC/2001/847] : (AIR 2001 SC 1952 [LQ/SC/2001/847] ). The three judges bench of the Hon'ble Apex Court in Cadila Health Care (supra) has held that the principle of phonetic similarity is to be jettisoned when the manner in which the words are written. However, the Court held that in both Amritdhara Pharmacy (supra) and Kaviraj Pandit Durga Dutt Sharma -vs- Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980 [LQ/SC/1964/275] ), the relevancy test of phonetic similarity is relevant.

26. Considering the above facts and circumstances mentioned herein above, this Court finds that the plaintiff is the prior user of the mark and the defendants have wrongfully, frequently been using the mark of the plaintiff by making it look deceptively similar as to that of the plaintiff’s product and also selling and marketing its products.

27. In view of the above, prayers (a) to (d) of the plaint as mentioned in paragraph 1 (supra) is allowed.

28. As regard damages claimed by the plaintiff, this Court is of the view that an enquiry is to be conducted to ascertain the loss and damages suffered by the plaintiff by appointing a Special Referee. Mr. Abhijit Basu, Advocate, Bar Association Room No. 4, Mobile No. 8240391773, is appointed as Special Referee to ascertain the loss and damages suffered by the plaintiff. The remuneration is fixed Rs. 3,00,000/-. At the first instance, the said remuneration shall be paid by the plaintiff and the plaintiff is at liberty to recover the same from the defendants.