S.N. Shankar, J:

1. By the order under appeal, the learned single judge on the original side has vacated an interim ex parte injunction granted to the appellant in a suit for permanent injunction filed by him against the respondent on the allegations of `infringement and `passing off in respect of his registered trade mark in relation to `agarbatis etc.

2. The learned single Judge has held that the appellant had failed to establish any exclusive right in regard to the use of the numerals 555 appearing in his registered trade mark in respect of `agarbatis and that at this stage it could not be said that these numerals 555 were the distinctive or essential features of his trade mark. He further observed that as the respondent had not copied the respondents trade mark as a whole, no case for injunction was made out.

3. Before dealing with the merits, it would be appropriate to notice the legal aspect of the questions that require consideration for the decision of the controversy.

4. In M/s. Atlas Cycle Industries Ltd. v. Hind Cycle Limited : I.L.R. (1973) Delhi 393 this Court has said:

"In an action for an alleged infringement of a registered trade mark, it has first to be seen whether the impugned mark of the defendant is identical with the registered mark of the plaintiff. If the mark is found to be identical, no further question arises, and it has to be held that there was infringement. If the mark of the defendant is not identical, it has to be seen wether the mark of the defendant is deceptively similar in the sense that it is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got his mark registered. For that purpose, the two marks have to be compared, `not by placing them side by side, but by asking itself whether having due regard to relevant surrounding circumstances, the defendants mark as used is similar to the plaintiffs mark as it would be remembered by persons possessed of an average memory with its usual imperfections, and it has then to be determined whether the defendants mark is likely to deceive or cause confusion".

5. In Taw Manufacturing Co. Ltd. v. Notek Engineering Co. Ltd and Another:(1951 68 Reports Patent Cases 271, the monopoly right claimed under the registered trade mark related to Motor Lamps and consisted of a pictorial device and the word "Taw". The device comprised of a representation of the full-faced view of the cats head, wherein the eyes were drawn in the form of a motor car headlamps and the whole was superimposed upon open body motor car viewed from the front in a manner as to substitute the cats head for the bonnet and radiator as normally seen. The device that was the subject matter of challenge consisted of a square panel with informative particulars printed below. The panel depicted a full-faced view of a cats head with the eyes drawn as motor car headlamps, beneath which was the caption "Let Notek be your eyes in fog and darkness". The disposition and lettering was such as to lead the render to take particulars notice of the device with the word "Notek" beneath it. The question for decision was whether there was infringement by the latter device of the former registered trade mark. The Court held:

"A trade mark is infringed if a person other than the registered proprietor or authorised user uses, in relation to goods covered by the registration, one or more of the trade marks essential particulars. The identification of an essential feature depends partly upon the Courts own judgement and partly upon the burden of the evidence that is placed before the Court".

6. In James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd., AIR 1951 Bombay 147, the Court ruled that in an action for infringement what is important is to find out what was the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying the trade mark. In Parle Products (P) Ltd. v. J.P. & Co. Mysore, AIR 1972 SC 1359 [LQ/SC/1972/67] , the Supreme Court took the same view.

7. This being the law, it cannot be disputed that in an action for infringement the plaintiff can succeed not only when he proves that the whole of his registered trade mark has been copied but can also succeed if he shows that the defendants mark is similar to the plaintiffs mark as it would be remembered by persons possessed of an average memory with its usual imperfections or that its essential particular or the distinguishing or essential feature has been copied.

8. Coming to facts of this case, even at this stage, there are certain facts about which there is no dispute between the parties. These facts are that one other manufacturer of `agarbatis "Mysore Sugandhi Dhoop Factory" at Bombay manufacture `kasturi agarbati under the registered trade mark `Kasturi Agarbati 555 and that another manufacturer `agarbatis Ananda Perfumory Works, Bangalore" also manufacture `agarbatis under their registered trade mark `Anand Darbar Batti 555. The trade marks of these two parties are published in the Trade Marks Journal of 16th August, 1957 and 1st July, 1949 respectively. Both these trade marks contain the numerals `555. This aspect has been noticed by the learned single judge in the impugned order and with the material on record he has said:

"In my opinion the registration of the trade marks of `Agarbatis in the two Trade Marks Journals referred to above, clearly indicate that the numerals 555 has come to be regarded in this trade as denoting superior quality of the product of the manufacturer".

9. Thus, according to evidence on record and the observation of the learned single judge himself, numerals 555 have come to acquire a distinctive meaning in the trade, in relation to `agarbatis. They are not wholly meaningless. These numerals, but for this acquired meaning in the trade, do not have the dictionary meaning of "First Class" of "superior" quality goods.

10. It is further admitted between parties that the respondent itself has applied under Section 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter called "The Act") to the Registrar for rectification of the registered trade mark of the appellant by deleting the numerals 555, as a result of which the present suit has been stayed. Copy of this application is on the record. In para 1 of this application he has asked for rectification. Para 2 of the application is in the following terms;

"The numerals 555 be removed from the label or in the alternative the rights for the exclusive user of the numeral 555 should be disclaimed".

11. In paragraphs 3 and 4 the respondent has averred that the appellant was at no time the owner of the numerals 555 in the Trade Mark and that its goods were not known in the market by these numerals. This application is still pending before the Registrar of Trade Marks and it is a matter to be proved by the respondent in these proceedings whether in spite of registration by the appellant of his trade mark containing the numerals 555 he was not an owner as alleged or that his goods in the market were not known by that numeral. As the matter stands at present, according to sub-section (1) of Section 28 the appellant, subject to the other provisions of the Act, as the registered proprietor of the trade mark, has the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered in the manner provided by this Act. It is open to the respondents to prove that he does not have that right and that is the contention he has raised before the Registrar in his application under Section 56 of the Act, as a result of which the learned single Judge has stayed the suit as required by the provisions of the Act.

12. There is another significant fact relevant for purposes of the present appeal. The respondent is admittedly a manufacturer of agarbatis. By trade marks Nos. 180044 and 157462 he got the same registered in respect of these goods. Under the former trade mark he got the name of `Rajkamal per se registered in respect `dhoop agarbatis and `havan samagaris etc. for the territories mentioned in the certificate. By the latter registration he got the device mark registered. In none of these trade marks, numerals 555 appear. These numerals have now been added by the respondents to his registered trade mark. This prima facie lends support to the claim of the appellant that he has done so deliberately as these numerals have come to be associated in the mind of the public with a particular quality of `agarbati made by the manufacturer of trade marks with these numerals.

13. The learned single Judge felt disinclined to continue the injunction mainly because he found that two other manufacturers, whose names we have set out earlier in this order, had already been selling `agarbatis manufactured by them under their registered trade mark containing the numerals 555. To our mind, at the present stage, this alone, without anything more, does not furnish a sufficient ground to discharge the injunction because of the provisions in sub-section (3) of Section 28 of the Act. Sub-section (3) of this Section provides that where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not be deemed to have been acquired by any one of those persons but regarding the right of such registered proprietors against third parties, it says that:

"..............each of those persons has otherwise the same right as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor".

14. The result, therefore, in law is that even though the appellant may not be in a position to enforce any right against the other two registered holders of the trade mark using the numerals of 555 but against every third person (including the respondent) who is not a registered holder of the trade mark, he is entitled to enforce all his rights as registered holder of the trade mark. In our view, therefore, as the respondent itself has applied for rectification of the appellants trade mark in respect of the numerals `555 and has specifically pleaded therein that the appellants goods are not known in the market by these numerals (vide para 3 of the application referred to above) there was a prima facie case for the appellant for the confirmation of the injunction till such time as the respondent is able to prove his contention before the Registrar.

15. Shri P.C. Khanna, learned counsel for the respondent, argued that where a distinct label is registered as a whole such a registration does not confer any exclusive statutory right on the proprietor to use any particular word or name contained therein, apart from the mark as a whole. Reliance in support of this proposition was placed on the observations in the Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (1955) 2 S.C.R. 252. These observations in the cited case were made in the context of exercise of powers conferred on the Registrar by Section 13 of the Trade Marks Act, 1940. This aspect is not at all relevant for the present controversy because the plaintiff can succeed in an action for `infringement if he proves that an essential particular of his trade mark has been copied : See Taw Manufacturing Co. Ltd. v. Notek Engineering Co. Ltd. and Another: (1951) 68 Reports of Patent Cases 271.

16. The learned counsel then urged that the registered label of the appellant was a composite label and the numerals 555 were only in the corner along with the words `highly perfumed. They cannot, he maintained, be said to be a distinctive part of the trade mark. We are unable to sustain this submission of the learned counsel in view of the averment in the respondents petition under Section 56 of the Act. The burden of substantiating the averments made therein lies on the respondent and in view of this application it is for him to prove before the Registrar, now that the present suit has been stayed, that the goods of the appellant are not known by the numerals 555 in the market.

17. Placing reliance on Section 29 of the Trade and Merchandise Marks Act, 1958, the learned counsel then argued that in order to constitute infringement of the trade mark, when the copy is not of the whole of the trade mark, the plaintiff has to prove that his mark is deceptively similar to the registered mark in relation to any goods in respect of which the trade mark is registered. In support of this submission, he referred us to Ruston and Hornby Ltd. v. Zamindara Engineering Co. AIR 1970 SC 1649 [LQ/SC/1969/330] . No exception can be taken to this proposition but in the present case when the suit of the appellant has been stayed, there is no occasion for him to discharge the burden. On the contrary, by raising the controversy before the Registrar the respondent has volunteered to undertake this burden. Numerals `555 in the registered trade mark of the appellant have an acquired meaning in the trade in respect of `agarbatis as shown earlier. The very fact that the respondent added these numerals (without registration) to his registered trade mark is by itself an indication prima facie that he wanted his goods to be deceptively similar to those containing the numerals 555 as part of the registered trade mark.

18. Lastly, Shri Khanna argued that the balance of convenience was in favour of the respondent and that the injunction will adversely affect his trade. The argument does not impress us, firstly, because the numerals 555 are a subsequent addition to the respondents trade mark and as such not prima facie bona fide and secondly, because the appellant as the registered holder of the trade mark with numerals 555 has certainly a better right prima facie to restrain the respondent from using it vide Section 28(1) of the Act. In Wearwell Cycle Co. (India) Limited v. Wearwell Industries, Ludhiana and Others: 1969 DLT 469 [LQ/DelHC/1968/191] in a case for ` passing off" dealing with the scope of grant of temporary injunction under Order 39, with reference to balance of convenience, this Court said that this question was relevant only when at least prima facie the two parties were on the same level and their rights are about equal. This obviously is not so in the instant case for reasons already stated. It cannot, therefore, be said that the balance of convenience is in favour of the respondent.

19. For all these reasons, we are of the view that the interim injunction granted in favour of the appellant deserved to be confirmed. We accordingly accept this appeal and grant ad interim injunction in favour of the appellants against the respondents restraining him from using the numerals `555, on their cartons in respect of `agarbaits. This injunction, however, will abide by and be subject to the decision of the application of the respondent under Section 56 filed by him before the Registrar. Respondent will be entitled to move the court for appropriate order or direction after the decision of his application. In case that application is dismissed the interim injunction shall continue to remain operative till the decision of the suit.

20. Having regard to all the circumstances of the case, parties are left to bear their own costs of this appeal.