SABHARWAL, J:1. The appellants are plaintiffs in the original suit (hereinafter referred to as Plaintiffs). Plaintiff No. 1 is a Corporation organised under the laws of Nerw Jersey, U.S.A. Plaintiff No. 2 is a Company incorporated under the Companies Act, 1956. Plaintiffs trade mark is STAYFREE. The plaintiffs have brought a passing off action. According to the plaint since June 1978 plaintiff No. 1 has permitted plaintiff No. 2 to the use of the said trade mark STAYFREE in respect of sanitary napkins manufactured by them and since then they have used the said mark in respect of sanitary napkins manufactured and marketed by them in India under a licence granted by plaintiff No. 1. The Plaintiffs claim that the mark STAYFREE has acquired a wide reputation and goodwill in India and has come to be associated by the traders and members of public in India exclusively with the plaintiffs. Alongwith the plaint a statement showing sales figures of the goods sold under the mark STAYFREE in India from 1978 till December 1985 has been filed. Another statement showing amounts spent on advertisements and publicity has also been filed. They claim that the mark STAYFREE has acquired a vast and enviable reputation and goodwill and has become distinctive of their goods.

2. Plaintiff No.1 applied for registration of the trade mark STAYFREE under application No. 369841 dated 18th December 1980 in respect of sanitary napkins and personal hygine products used in menstruation claiming user since 1978. The application was advertised in the Trade Mark Journal on 16th August 1984. On 26th November 1984 defendant No. 1 filed a notice of opposition to the said application. The said proceedings are pending. It has been further averred in the plaint that since June 1978 the plaintiffs have adopted polythene packs having distinctive colour scheme of blue, pink and white get up which is easily recognisable by the customers. On the packing, the mark STAYFREE has been prominently displayed and the catchy legend NO BELTS; NO PINS; NO STRINGS: is printed. It is claimed that in our about February 1986 the plaintiffs learnt that the defendants have also used the marks STAYFREE in respect of sanitary napkins and have substantially copied the plaintiffs pack and the mark STAYFREE. According to the plaintiffs, the defendant No. 1 also adopted their packing which has a deceptively similar get-up and colour scheme as that of the packing of the plaintiffs viz, blue, yellow and white combination. They further claim that the defendants have fraudulently and blatantly adopted the same wordings viz. No Belts, No Pins, No Strings with the whole aim and intention to trade upon the enviable reputation and goodwill acquired by plaintiff No. 2 in respect of their goods and to make dishonest and illegal gains. The suit is pending.

3. Pending the disposal of the suit the plaintiffs by an application under Order 39 Rules 1 and 2 read with Section 151 C.P.C. sought temporary injunction restraining the defendants, their servants and agents from in any manner using the mark STAYFREE or the impugned legend No Pins; No Belts, No Strings on any packing for sale of sanitary napkins. The respondents are defendants in the original suit (hereinafter referred to as the defendants). In opposition to the claim made by the plaintiffs various preliminary objections have been raised by the defendants in their reply. The defendants opposed the application for grant of temporary injunction primarily on four points. Firstly, that their trade mark is Comfit Always and not Stay Free. Secondly, that the word STAYFREE is a common descriptive word for the product and is incapable of distinguishing the goods; thirdly that the words STAYFREE is a common dictionary word and was in existence much before either of the plaintiffs came into existence and lastly that there is no likelihood of any confusion or deception.

4. The learned Single Judge has dismissed the application of the plaintiffs for grant of temporary injunction. The learned Single Judge has come to the conclusion that there is no likelihood of deception and it cannot be said that anyone would be misled. The learned Single Judge has further come to the prima facie conclusion that both packings are quite distinctive. The further finding of learned Single Judge is that the word STAYFREE has reference to the user, that is, it gives a message to the user. The learned Single Judge is of the view that it cannot be said that the defendants are marketing their goods in the packing with the mark STAYFREE. On the basis of the material placed on the record by the parties the learned Single Judge has held: -

the plaintiffs have not been able to show that the use of the word STAYFREE by the defendants on their packing is calculated to deceive the customers as such.

5. The learned counsel for the plaintiffs has not objected to the colour scheme of the packing of the defendants nor has he objected to the use of the legend No Belts, No Pins, No Strings for the purpose of decision of this appeal. The same was the position before the learned Single Judge although in the application the plaintiffs did claim an order of restraint for the use of the colour scheme and aforesaid legend by the defendants. Now the only objection is t the use of the word STAYFREE on the packing of the defendants. Shri Anoop Singh has made two contentions. One that the use of the mark STAYFREE by the defendants is likely to deceive the customers and general public and (2) that the mark STAYFREE is distinctive of the goods of the plaintiffs and that the conclusion of the learned Single Judge on both these points is not sustainable.6. It is always a question of the fact in each case whether the deception or confusion is likely to be caused or not by use of the impugned mark. Both the learned counsels have cited various judgments in support of their respective contentions. Although precedents act as goods guide for achieving clarity and help the court in coming to conclusion but in the end in these cases, the court has to put itself in the position of an average customer and ask a question to itself whether there is likelihood of deception or confusion or not and then answer the question on that basis. Lord Langdale MR nearly a century ago said that A man is not to sell his own goods under the ------ that they are the goods of another man; he cannot be permitted to practice such a deception, nor to adopt means which contribute to that end. He cannot be allowed to use names, marks, letters or other devices by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another. The aforesaid statement was referred to which approved by Lord Scarman in Cadbury Schweppes Pty Vs. Pub1981 (1) All England Reports 213.

7. I will proceed further by keeping in view the aforesaid statement of principle which has been accepted by courts of law. Insofar as the facts and circumstances of the present case are concerned it is admitted case of the parties that the average customers are literate and semi literate ladies. In this view of the matter one will have to put himself in the position of literate or a semi literate lady and then look for an answer. Another factor to be kept in view is that the trade mark of the defendants, which is prominent on their packing is COMFIT ALWAYS. The plaintiffs have no objection to the use of the trade mark COMFIT ALWAYS. As stated above, for the purposes of this appeal, the plaintiffs have also no objection to the use of the colour scheme as is being used by the defendants. Plaintiffs have also no objection to the use of the legend No Pins, No Belts, No String. The only objection is to the use of the word STAYFREE. The main thrust of the argument of the learned counsel for the plaintiffs is that the defendants have used the word STAYFREE seven times on their packing with a view to deceive and confuse the customers, that they are selling their goods under the pretence that they are the goods of the plaintiffs and that the defendants cannot be permitted to practice such a deception. In this case the question is not as to what would be the effect if STAYFREE is used as a trade mark. The question is can the plaintiffs stop the defendants from using the word STAYFREE in the manner being used by the defendants and whether it has the effect as is being suggested by the plaintiffs.

8. The contention of the learned counsel for the plaintiffs is that the intention of the defendants in using the word STAYFREE is dishonest and, therefore, it is a fit case for grant of an order of restraint against them. Reference is made to Lakbir Singh Vs. Bakhat Singh and others AIR 1973 Delhi 225. In this case the learned Single Judge of this Court on comparison of the two marks came to the conclusion that there was similarity between the two devices and the adoption of a similar trade mark by the respondents was obviously with a view to exploit the reputation which the appellants trade mark had already acquired. In other words, the court came to the conclusion that there was likelihood of deception and confusion and, therefore, reversed the decision of the Assistant Registrar in granting registration of the mark in question in that case. Mr. Anoop Singh submitted that the learned Single Judge came to the conclusion that the words, according to the learned counsel, means that the use of the word STAYFREE was dishonest. The argument proceeds that where you see dishonestly then even though the items of similarity are less the courts ought to pay great attention to the items of similarity and less to the items of dissimilarity (See Munday v. Carey (1905) 22 R.P.C. 273). What is the effect of this principle on the present case and on the impugned mark has been considered in latter part of this judgment while deciding the question of deception and confusion.

9. It is well established that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion or the word in the other ease there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark in such that it is likely to cause deception or confusion or mistake in the minds of person accustomed to the existing trade mark. (See Hoffimann-La Roche and Co. Ltd. V. Geoffrey Manners and Co. (P) Ltd. AIR 1970 SC 2062 [LQ/SC/1969/320] ).

10. Next it is the contention of the learned counsel for the plaintiffs that by use of the word STAYFREE the defendants enable the traders, which generally are Chemists and General Merchants who sell these goods, to tell a lie or to make a false representation to the ultimate customer. In such an event the defendants are liable to be restrained, is the argument of the learned counsel. Reference is made to the decision of Chancery Division in John Walker & Sons Ltd & Ors v. Henry Ost and Company Ltd and another: 1970 R. P. C. 489 for the proportion that no one is entitled to represent his goods as being 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 the purchaser who purchases from him, he enables such person to tell a lie or to make a false representation to somebody else who is the ultimate customer. There can be no duspute to the above statement as generally put. This position has been accepted for more than a century that Nobody has any right to represent his goods as the goods of somebody else. (See Raddaway Vs. Benthem (1896) Appeal Cases 199). But all these questions are connected with the ultimate question whether there is likelihood of confusion and deception to an average unwary customer. If there is likelihood of confusion or deception the injunction has to follows. If there is no likelihood of confusion or deception then there is no question of enabling another person to make a false representation to an ultimate customer or even enabling a trader to tell a lie or to make false representation to ultimate customer. Similarly in Lever Vs. Goodwin reported in 4 R.P.C. 492, the Chancery Division proceeded on the similar get up of the two wrappers and came to the conclusion that the get up of the defendants soap was a fraudulent imitation of the get up of the plaintiffs soap and puts into the hands of shopkeeper, the means of deceiving the ultimate purchaser.

11. Actual deception is not required to be proved. It is the tendency to mislead or confuse that forms the gist of passing off action and the plaintiffs need not establish fraud nor that anyone was actually deceived or that he actually suffered damage. (See: Ellora Industries, Delhi Vs. Banarasi Dass Goela, AIR 1980 Delhi 254).

12. Mr. Anoop Singh contended that both marks will not be available with the customer at the same time. I am cautious of the well settled principle that 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 would be remembered by persons possessed of an average memory with its usual imperfection and it has then to be determined whether the defendants mark is likely to deceive or cause confusion. Before I start considering the items of similarities and dissimilarities of the plaintiffs and defendants mark it is useful to remind oneself with the accepted principle that in passing off action defendant may escape liability if he can show that the added matter is sufficient to distinguish defendants goods from those of the plaintiffs (See: Kaviraj Pandit Durga Dutt Sharma V. Navaratna Pharmaceutical Laboratories: AIR 1965 SC 980 [LQ/SC/1964/275] ).

13. The judgement of the Division Bench in B. K. Engineering Co. Delhi. v. U. B. H. I. Enterprises (Regd.) Ludhiana and another AIR 1985 Delhi 210 relied by learned counsel for the plaintiffs turned on its own facts as in that case the two marks were substantially similar namely, B.K. and B.K. 81. On comparison of the two marks the Division Bench came to the conclusion that the defendants mark was deceptively similar to that of the plaintiffs and was likely to cause confusion in the minds of the general public and consequently the plaintiff was held entitled to a temporary injunction restraining defendants from using the trade mark B.K. 81. The judgment of Globe Super Parts v. Blue Super Flame Industries reported in AIR 1986 Delhi 245 also had its own peculiar facts. In this case the defendant was earlier working for the plaintiff for nearly 17 years as a Contractor and started the business when the contract was terminated. Under these circumstances the learned Single Judge came to the conclusion that the words Super Flame had been deliberately incorporated in the trading style / trading name of defendant No. 1 and defendant No. 2 was the father of the owner of defendant No. 1 firm. It was the defendant No. 2 who was the contractor of the plaintiff for nearly 12 years. The conclusion drawn was that the word Super Flame was used in trading style by the defendant only with a view of filch the business of the plaintiff. Accordingly, the plaintiffs were held entitled to permanent injunction restraining the defendants from using the words Super Flame in their trading style.

14. In Charan Dass Vs. M/s. Bombay Crockery House (1984 PTC 102), a learned Single Judge of this Court restrained defendants from using the word Perfect in defendants mark Trishil Perfect and Vijay Perfect because defendants, upto 1981, were stocking and selling the stoves manufactured by the plaintiffs under plaintiffs registered trade mark Perfect and Swastik Perfect. The learned Judge came to the prima facie conclusion that defendants can easily pass off their goods as those of plaintiffs.

15. The central question in each case is whether the name of description given by the defendants to his goods in such as to create a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the plaintiff. The main question is not the intention of the defendant in using certain words but the probable effect of such action on the minds of the customers. In the end the court has to trust to its own perception into the mind of the reasonable man. In the words of Lord Scarman balance is to be maintained between the protection of a plaintiffs investment in his product and the protection of free competition. On which side the balance lies is to be seen in the facts and circumstances of each case.

16. No I will turn to the two packings, one of the plaintiffs and other of the defendants, in an attempt to decide as to whether there is a likelihood of deception or confusion or not and on which side the balance tilts. Before I narrate the points of similarities, it has to be kept in mind that the ultimate customers in the present case are admittedly literate and semi literate ladies and not illiterate. The only grievance made is about the use of the words STAYFREE. It is said that STAYFREE has been used seven times by the defendants and on this hypothesis the argument built is that defendants goods can be sold as those of the plaintiffs and there is likelihood of deception and confusion and in any case it provides the trader with an opportunity to give to the ultimate customer the goods of the defendants even though the customer may be wanting to purchase the goods of the plaintiffs. With the assistance of the learned counsel for the parties I have examined the packings of the plaintiffs and of the defendants. It is apparent that the plaintiff is using the mark STAYFREE as a trade mark whereas the trade mark used by the defendants is COMFIT ALWAYS. It is no doubt true that the defendants alongwith the word Beltless have used the words STAYFREE on its packing at seven places but the get up, colour scheme and the other essential features are altogether different. In the packing of the plaintiffs there is a picture/figure of a lady which has been shown very prominently. There is no such figure on the packing of the defendants. The packing of the plaintiffs shows the trade origin as that of Johnsons & Johnsons whereas that of defendants shows of Chirstine Hoden. The colour scheme adopted by the plaintiff is that of green and blue whereas the packing of the defendants shows that the base is white with a blue border. The colour scheme of the two wrappers is altogether different. The letter style of the word STAYFREE in two marks is also quite different.

17. The word STAYFREE has been used, according to the defendants, to convey a message to the customers that by using the COMFIT ALWAYS Napkins, they will stay free of any external support. The counsel has drawn our attention to advertisement in Free Press Journal of 12th December 1985 issue, in which, the prominent trade mark is COMFIT ALWAYS and there is message for the customer reading Your wouldnt even feel you have worn a sanitary napkin. The defendants also referred to their bill dated 25th April, 1986 which was filed by plaintiffs in which, while selling the napkins in packets containing the word STAYFREE the defendants make the bill of COMFIT ALWAYS and not STAYFREE. The contention is that their trade mark is COMFIT ALWAYS and not STAYFREE. According to the learned counsel the dictionary meaning of the word STAY is anything that props or supports or steadies of holds. The contention is that the word FREE has often been used in combination of various other words such as, duty, graft, salt, tax, trouble and such like words (American Heritage Dictionary of English Language and Websters II New Riverside University Dictionary, Collins Cobuild English Language Dictionary). The argument is that customer is being conveyed a message that she will not be required to use any support if she uses their Napkin. Learned counsel for the defendants also referred to the advertisements of the plaintiffs to show that by use of word STAYFREE even the plaintiffs are conveying a message to the customers. In the advertisement of the plaintiffs the figure of a lady is shown and at the bottom it reads STAYFREEbecause that is the way you ought to be (See: Eves Weekly 19-25 April 1986).

18. The true test is whether the totality of the trade mark is such that it likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. On totality of circumstances, prima facie, it is difficult for anyone to take the goods of the defendants thinking that they are the goods of the plaintiffs. There is no likelihood of deception or confusion to the ultimate customer, namely, literate or semi-literate ladies. Customer will be able to distinguish two marks. If there is no likelihood of deception or confusion to the ultimate customer, namely, literate or semi literate ladies. Customer will be able to distinguish two marks. If there is no likelihood of deception or confusion to the ultimate customer the question of the impugned mark enabling the trader to misrepresent the goods of the defendants as that of the plaintiff does not arise nor does it put an handle into the hands of the traders to create deception or confusion. The dissimilarities are too many and the only similarity pointed out is that the word STAYFREE.

19. On the question of likelihood of deception and confusion another argument of counsel for the plaintiffs is why the defendants have suddenly started using the word STAYFREE on their packings. In this behalf reference is also made to other litigation pending between the parties in Bombay. The said litigation started in the year 1972. The argument of the plaintiffs is that one of their registered trade marks was CAREFREE. In 1972 the trade mark of the defendants was COMFIT. In November 1971 defendants started selling their sanitary Napkins with the mark COMFREE and adoption of the mark COMFREE by the defendants was dishonest with a view to encash upon the goodwill of the plaintiffs. The plaintiff says that CAREFREE and COMFREE being deceptively similar an action for passing off was brought by the plaintiffs against defendants in Bombay High Court. The defendants gave an undertaking not to use the trade mark COMFREE. The argument is that the defendants are in the habit of encashing upon the goodwill and reputation of the plaintiffs. They say it is a case of rank dishonesty and, therefore, injunction should issue.

20. Why the defendants have started using STAYFREE is answered by them by explaining that prior to 1985 defendants were not manufacturing beltless Napkins and, therefore, there was no question of their using the word STAYFREE at that time. Defendants say that if their intention were dishonest then they would not have waited from 1978 to 1985 to use the words STAYFREE. According to defendants when they started manufacturing beltless sanitary napkins they thought of conveying a message to the customers that by use of their beltless sanitary napkins the customers would STAYFREE of any external support. According to defendants it is a very appropriate and meat and apt description of the products. For the purposes of temporary injunction, in my opinion, the explanation is satisfactory. About undertaking given in Bombay High Court the answer of the defendants is that the undertaking was given by them of their own free will. They say that the order of Bombay High Court dated 7th April 1972, a copy of which has been placed on record by them, would show that the application of the plaintiff for grant of temporary injunction was rejected by the said court. While rejecting their application for grant of temporary injunction the Bombay High Court came to the conclusion that the plaintiffs have failed to make out a prima facie case for granting interim relief on the grounds of passing off. The Bombay High Court also came to the conclusion that the word CAREFREE is a common word having descriptive elements and it requires a long and substantial exclusive use by the plaintiffs in connection with their products to acquire a secondary sense as the trade name of the said goods. The Bombay High Court also came to the conclusion that the purchaser of the goods are well to do and educated English knowing persons and held that there was no warrant for issuing an interim injunction for restraining the defendants. A perusal of the order of the Bombay High Court shows that the defendants are right. If inspite of the aforesaid findings the defendants voluntarily gave any undertaking in Bombay High Court not to use the trade mark CAREFREE then this factor cannot be used against the defendants in contending that they are in the habit of imitating the trade mark of the plaintiffs. It cannot be said that the present case is that of rank dishonesty. I am prima facie, convinced with the explanations give by the defendants.

21. In my opinion, the learned Single Judge was right in his conclusion that there is no likelihood of confusion or deception and that the two packings are very much different. The balance is to be maintained between the protection of plaintiffs investment and protection of free competition. The balance in my opinion, on a consideration of all facts and circumstances, tilts in favour of the defendants. It cannot be said that defendants are marketing their goods in the packing with the trade mark STAYFREE. There is no resemblance between the two packings. It cannot be said that the use of the words STAYFREE by the defendants is with a view to deceive the ultimate customer. The temporary injunction was rightly refused by the learned Single Judge.

22. The learned Counsel for the defendants raised various preliminary objections such as about maintainability of the suit; the plaintiffs being not the owners of the trade mark STAYFREE; there being no valid licence in favour of plaintiff No. 2 and that the trade mark of the plaintiff is Johnsons & Johnsons and not STAYFREE. Another argument on which great strees was laid and various judgments and dictionaries were referred was that the word STAYFREE is descriptive and not distinctive. Defendants say that the word STAYFREE cannot be exclusively appropriated by the plaintiffs. They cannot have a monopoly for use of the word STAYFREE. It is a common English word, defendants urge.

23. Insofar as the last argument about the STAYFREE being descriptive, the main emphasis of learned counsel for the defendants is on the judgment of the court of Appeal in Mc Cain International Ltd. V. Country Fair Foods Limited and another; 1981 R.P.C. 69 for the proposition that one who seeks to adopt and use exclusively as his own a merely descriptive term, the onus is much heavy and task is very difficult. Much reliance was also placed by the defendants on the judgment of Ship-on in Re: Burberrys Vs. J. C. Cording & Co. Ltd. Reported in 1909 (26) R.P.C. 693 for the proposition that no one can claim monopoly rights in the use of a word or name.

24. On the other hand learned counsel for the plaintiffs in order to meet the arguments put forth on behalf of the defendants, cited various judgments and in particular emphasis was laid on Reddaway Vs. Behnam (Supra) where the word Camel hair belting received the protection of the Court. Learned counsel for the plaintiffs also placed strong reliance on the judgment of Chancery Division in the case of Dunlop Rubber Co. Ltd. (59 R.P.C. page 134) where it was held that the word Trakgrip was a coined word, hither to unknown to the English language, and what familiarity it had was due to the applicants use of it in connection with their own goods. Accordingly it could not be said that it was a word which other traders would be likely in the ordinary course of their business to desire to use in connection with such articles. The Assistant Comptroller had refused to allow registration of the mark as in his opinion the word Trakgrip was both descriptive and laudatory and it was possible that other traders might legitimately wish to use it in connection with their goods. The said finding was reversed by the Chancery Division and the Assistant Comptroller was directed to proceed with the application for registration. Plaintiffs claim exclusive right to use this word and say that it is not an English dictionary word. In short the argument is that it is a distinctive word within the meaning of Section 9 of the Act. Reference was also made to various dictionaries for the proposition that the word STAYFREE is not an ordinary English word. It cannot be said that the word STAYFREE is an invented word. The word STAYFREE, it cannot be doubted is a combination of two English words, namely, STAY and FREE. Whether it is a coined word or only a dictionary word would be considered during the trial of the suit. I may, however, add here that according to the learned counsel for the defendants the word STAYFREE is an ordinary English word like CAREFREE SALTFREE, TROUBLEFREE and TAXFREE etc. The argument of the learned counsel for the defendant is that English is an expanding language. Reference is made to various dictionaries to show as to how these words come into use with the passage of time and how it has become an ordinary English word (See Longman Dictionary of the English Language, Longmans Dictionary of Contemporary English, Longman-Laxicon-Contemporary English). Defendants say that STAYFREE is a collogical word. I am making reference to these arguments as considerable time was spent by learned counsel for the parties in arguing this question and for the present I will leave the matter here itself without expressing any opinion. In view of the conclusions reached above that there is no likelihood of confusion and deception, in my opinion it is necessary to decide these questions which would, of course be decided during the course of the trial of the suit pending on the original side of this court. Accordingly, I express no opinion on the aforesaid questions including the question that the STAYFREE is distinctive or descriptive.

25. The result is that I would confirm the order of the learned Single Judge and dismiss the appeal leaving the parties to bear their own costs.