S. RANGARAJAN, J.

( 1 ) THE Plaintiffs-Appellants, Nestles Products Limited, instituted a suit on 23-11-

1971 and also filed an application under Order 39 Rules 1 and 2 and S. 151 of the

Code of Civil Procedure for a temporary injunction against the defendants (Messrs

Milkmade Corporation and Anr ). Shankar Lal (defendant No. 2) is supposed to be

carrying on the business of the first defendant either alone or in association with

other persons in the following circumstances.

( 2 ) PLAINTIFF No. 1 is Nestles Products Limited, a company registered under the

laws of the Bahama Islands and the second Plaintiff, Nestles Products (India)

Limited though registered under the laws of the Bahama Islands has its principal

place of business in India at New Delhi.

( 3 ) PLAINTIFF No. 1 is the registered proprietor of the following among other trade

marks registered in India in respect of goods mentioned in class 29 of the classified

list of goods in the Fourth Schedule of the Trade and Merchandise Marks Rules : (1)

Trade Mark consisting of a figure representing a milkmaid and the words "milkmaid

brand". (2) Trade Marks consisting of the transcription of the English word

milkmaid in Tamil, Telugu, Bengali, Gujarati, Hindi and Assamese, respectively.

( 4 ) IN addition the second plaintiff had applied for the formalities for the recorded

of registered user rights in respect of trade mark containing the words "milkmaid

Brand" on a central panel consisting of a figure representing a milkmaid

reproduction on either side thereof of two sides of a medal set in the middle of a

rectangle with the words "condensed Milk". The trade marks consisting of the word

"milkmaid" and the figure representing a milkmaid have been used by the plaintiffs

and their predecessors for over 100 years to distinguish the condensed milk

manufactured and/or sold by them. The said condensed milk has been sold in India

for over 50 years. The plaintiffs had acquired the said trade marks and brand

"milkmaid" which had acquired a wide reputation in other markets as well as in

India. It came to the notice of the plaintiffs in or about November, 1970 that the

defendants had adopted the trade name "milkmade Corporation" and had put on the

market biscuits and toffees, under their said trade name and/or mark "milkmade".

The plaintiffs complained that the said trade name and/or mark adopted by the

defendants was both visually and phonetically nearly identical with and/or

deceptively similar to the aforesaid trade marks and brand name "milkmaid". The

second plaintiff thereupon wrote to the defendants requiring them to desist from

using the word "milkmade" or any other similar word or mark in respect of their

goods.

( 5 ) VARIOUS defences were taken to the plaintiffs suit; they are, inter alia, as

follows : The plaintiffs trade marks, which were in respect of class 29, could not

give them any right in respect of biscuits and toffees manufactured by the

defendants, which fall under class 30 and not under class 29. The defendants had

advertised those products in 1968 (An issue of the Indian Express of that year

containing the said advertisement was relied upon in support of this) and have

invested huge sums of money going beyond Rs. 6 lakhs, on the construction of the

factory and installation of machinery for the manufacture of biscuits and toffees.

The plaintiffs have stood by and allowed the defendants to carry on their business.

Moreover "milkmaid" is an ordinary English word which could not be registered

under the Indian Trade and Merchandise Mark Act.

( 6 ) IN their replication, which was filed by the plaintiffs, they met the charge of

delay or latches made by the defendants and explained that the registered

proprietors (Plaintiff No. 1) had to be consulted, necessary copies had to be

obtained and that a counsel had to be engaged and pleadings drafted with the

approval of both the plaintiffs. The legal certificates of their trade mark registration

were not available until November, 1971. The present suit was filed in November,

1971 without even waiting for the said certificates. It was also asserted that the

manner in which the defendants were manufacturing and selling their goods has

made people wonder whether the plaintiffs were also entering the markets in regard

to the products manufactured by the defendants In this way not only did the

defendants infringe the plaintiffs trade marks but also passing off their goods as the

goods of the plaintiffs and exploiting the goodwill and reputation of the plaintiffs to

their disadvantage.

( 7 ) THE learned single Judge who had granted an ex-pane interim in junction

vacated it by his impugned order dated 20-12-1971. The learned single Judge has

held as follows : (1) The plaintiffs, on their own showing, have a registered trade

mark "milkmaid Brand" which falls under class 29 of the Fourth Schedule whereas

the biscuits and toffees, which are manufactured by the defendants but not by the

plaintiffs, are covered by class 30. (2) Although the plaintiffs trade mark is

"milkmaid Brand" they are using only "milkmaid" with a pictorial figure of the

milkmaid and that under Section 15 of the Trade and Merchandise Marks Act they

were not entitled to exclusively use a part of the trade mark "milkmaid" without

applying for separate registration of that mark (not the whole "milkmaid Brand" ).

(3) There were no materials to show that the defendants were passing off their

goods as those of the plaintiffs. The above view it may be noticed, was taken

without any prejudice to the case of both sides on the merits. The plaintiffs have

filed this appeal aggrieved by the above-said order of the learned single Judge

vacating the interim injunction granted to them.

( 8 ) SHRI A. C. Gulati, learned counsel for the plaintiffs, has contended before us

that the classification of goods in the Fourth Schedule was not a legal criterion

regarding description of the goods or classes of goods, the said classification merely

being procedural. The real question was the nature of the goods and the trade

connection. He contended that the registration of the trade mark is sufficient to give

the exclusive right to the said trade mark to the plaintiffs who were entitled to

prevent the defendants from manufacturing biscuits and toffees under the impugned

trade marks which are said to be deceptively similar because the description of the

plaintiffs goods were wide enough to cover goods of similar nature entitling them to

enter the field for allied goods.

( 9 ) IT was contended by Shri N. N. Keshwani, learned counsel for the defendants

(respondents), that the right of plaintiffs to complain of infringement was confined

to the goods in respect of which the trade mark has been registered in the plaintiffs

favour and there being no registration of trade mark in respect of toffees and

biscuits the present action is misconceived. The goods and business of the plaintiffs

being wholly different from that of the defendants, it is contended, the plaintiffs

could not bring an action against them. It is, therefore, pointed out that the

plaintiffs have no prima fade case and that in any case, the balance of convenience

is in favour of refusing the injunction rather than granting it; the plaintiffs cannot

be said to suffer any irreparable injury by the injunction being not granted during the

pendency of the suit.

( 10 ) THE arguments concerning delay need not detain us for this has been

sufficiently explained in the replication filed by the plaintiffs. The learned single

Judge has also not apparently vacated the interim ex parte injunction on the ground

of delay.

( 11 ) THE most important question for consideration in this appeal is whether the

appellants have a prima fade case. This aspect of the matter has to be considered

from the point of view of whether in relation to biscuits and toffees (the latter,

toffee, alone was pressed seriously for the purpose of this injunction application by

Shri Gulati during the hearing) would come within the ambit of the registered trade

mark in favour of the plaintiffs. Whereas according to Shri Keshwani the goods

manufactured by the defendants are totally different from the goods in respect of

which registration was granted to the plaintiffs, according to Shri Gulati, the

registration is wide enough to cover goods of similar nature for the appellants could

enter the field in respect of similar and allied goods.

( 12 ) IN order to appreciate these rival contentions it is necessary to notice the

relevant provisions of the Trade and Merchandise Marks Act, 1958 (Act 43 of 1958 ).

Section 28 of the Act provides that registration of a trade mark shall, if valid, give 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 is registered

and to obtain relief in respect of infringement of the trade mark in the manner

provided above. Section 29 (1) provides that 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 trade a mark

which is identical with, or deceptively similar to the trade mark, in relation to any

goods in respect of which the said 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.

According to Section 32, the original registration (subject to sections 35 and 46,

which do not apply here) of the trade mark shall, after the expiration of seven years

from the date of such registration, be taken to be valid in all respects unless the

registration is obtained by fraud or was registered in contravention of the provision

of Section 11 (which prohibits the use of certain marks likely to deceive or cause

confusion) or was not at the commencement of the proceedings, distinctive of the

goods of the registered proprietor.

( 13 ) THE distinction between an action for infringement and for passing off is well known. The latter is a common law remedy being in substance an action for deceit,

that is, passing off by a person of his own goods as those of another. The former 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 the trade mark in relation to

those goods. The use by the defendant of the trade mark of the plaintiff is not

essential in an action for passing off, but is the sine qua non in the case of an action

for infringement. In an action for infringement, the plaintiff must make out that the

use of the defendants mark is likely to deceive, but where the similarity between

the plaintiffs and the defendants 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 plaintiffs rights are violated. In other

words, 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 in which he offers his goods for sale show marked

differences, or indicate clearly a trade origin different from that of the registered

proprietor of the mark would be immaterial; 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 (Kaviraj Pandit Durga Dutt Sharma

v. Navaratna Pharmaceutical Laboratories, AIR 1965 Supreme Court 980 ).

( 14 ) THE test as to likelihood of confusion or deception arising from similarity of

marks is the same both in infringement and passing off actions. The action for

infringement is a statutory right depending on the validity of the registration and

subject to other restrictions laid down in the Act (Ruston and Hornby Ltd. v.

Zamindara Engineering Co. AIR 1970 S. C. 1649 ). Lord Denning explained in Parker

Knoll v. Knoll International Ltd. [1962 R. P. C. 265 (274)] the words "to deceive" and

the phrase "to cause confusion". "when you deceive a man you tell him a lie. . . . . .

you may not to do it knowingly, or intentionally, but still you do it and so you

deceive him. But you may cause confusion without telling him a lie at all, and

without making any false] representation". These observations were cited with

approval by Ramaswami,. in F. Hoffimanna-La Roche and Co. Ltd. v. Geoffrey

Manners and Co. Private Ltd. (A.. R. 1970 S. C. 2062 at page 2064 ). As pointed out

by Sir Wilfred Green, M. R. reversing the judgment of Bennet,. in Saville Perfumery

Ltd. v. June Perfect Ltd. and F. W. Woolworth and Co. Ltd. (58 R. P. C. 147 at page

163 ). that it did not necessarily follow that a trader who uses an infringing mark

upon goods is also guilty of passing off, the reason being that once a mark is used

indicating its origin, no amount of added matter intended to show the true origin of

the goods can affect the question. The statutory protection is absolute and

infringement takes place not merely by exact inaction but by the use of a mark so

nearly resembling the registered mark as to be likely to deceive (at page 161 ). The

House of Lords dismissed the appeal preferred TO against the decision of the Court

of Appeal.

( 15 ) SECTION 12 imposes a ban on the registration of an identical or deceptively

similar trade mark. But this prohibition does not apply where the applicants trade

mark is in respect of goods which are of essentially different character from the

goods or description of goods for which an identical or similar mark is already in the

register.

( 16 ) TO sell merchandise or carry on business under such a name, mark,

description, or otherwise in such a manner as to mislead the public into believing

that the merchandise or business is that of another person is a wrong actionable at

the suit of that other person. This form of injury, according to Heuston (Law of

Torts, 12th Ed. , pp. l659-668) is commonly though awkwardly, termed as that of

passing off ones goods or business as the goods or business of another and is the

most important example of the wrong of injurious falsehood, though the statutory

remedies in this respect would have to be treated separately. The wrong of passing

off is not confined to cases of the sale of goods but assumes many forms of which,

Heuston has given some instances.

( 17 ) THOUGH in the plaint as well as in the application for injunction reference has

been made to the use of the trade name and/or mark- "milkmade"-of the

defendants being calculated to deceive, confuse and induce the belief that the goods

of the defendants are those of the plaintiffs, thus damaging the high reputation

which they had earned, it is seen from the order of the learned single Judge,

however that only two contentions were put forward, namely, infringement of trade

mark and brand name of the plaintiffs and passing off by the defendants of their

goods as if they were the goods of the plaintiffs. It is, therefore, not permissible for

the plaintiffs/appellants before us to support their application for a temporary

injunction, pending the disposal of the suit on any ground not expressly urged

before and considered by the learned single Judge; that could be canvassed, if it is

permissible, only in the suit. The present discussion, therefore, is confined to the

twin contentions, of infringement and of passing off which alone were urged before

the learned single Judge.

( 18 ) DR. Venkateswaran in his book on Trade and Merchandise Marks (1963

Edition at page 511) has stated as follows :"it has already been pointed out that the

exclusive right conferred by registration is limited to the goods for which the mark is

registered, and does not extend to allied goods. In order to constitute infringement,

the defendants use of the mark complained of must be in relation to any goods in

respect of which the plaintiffs mark is registered. An action for infringement cannot,

therefore, be brought when the use complained of is in respect of goods for which

the plaintiffs mark is not registered, even though an action for passing off may still

be sustained".

( 19 ) IN support of this statement the following cases have been cited :"hart v.

Colley, (1890) 7 R. P. C. 93,. Edwards v. Dennis, (1885) 30 Ch. D. 454,. Hargr aves

v. Freman, (1891) 8 R. P. C. 237. In Hart v. Colley, the defendant was charged with

selling rolls of paper with the trade mark of the plaintiff; the plaintiff was not

registered in class 39 which took in rolls of paper. It was held that the plaintiff not

being registered under class 39 was not entitled to sue in respect of the

infringement of the trade mark. We are not for the moment concerned with the

other ground of passing off, on which that decision was rested. North,. observed as

follows : "in turning over the leaves of the Trade Mark Journal we constantly find

four or five or more trade marks all exactly alike registered in respect of different

classes of goods. What is that for Why, because the common consent of every one

shows that they understand the right to registration under the Act is in respect of

the particular goods or classes of goods for which registration is obtained. I am

surprised to find that this point has not expressly been decided, for it must have

arisen a great many times; but I find in that case to which Mr. Aston REFERRED TO

of Edwards v. Dennis, there are certain observations of the Judges which seem to

me to point exactly the same way. There, it will be remembered, it was held that a

person could not register with respect to all goods of a particular class unless he had

used the marks in respect of such goods; and it was held that the mark having been

registered with respect to a particular class, but only used with respect to certain

goods in that class, the registration must be rectified so as to show that it was not in

respect of the whole class, but of the goods only with respect to which the marks

had been used. Now, it would be absured to say that if a man registers under Class,

I, in respect of particular goods in that class, he cannot sue in respect of other

goods in that class, but can, without any other registration sue in respect of all

goods found in all the other classes. It is impossible to come to the conclusion that

that could be so : and as it is decided that a man can register with respect to such

only of the goods in any given class as he has used his marks upon, it follows, a

fortiori, that a man who is registered in respect of one particular class cannot, by

virtue of such registration, sue in respect of goods which are not within that class at

all. At page 474 of the 30th Chancery Division, in the case of Edwards v. Dennis,

Lord Justice Cotton says :-now, what was done in the present case There was a

registration by Mr. Edwards predecessors in title for Class 5, of unwrought and

partly wrought metals used in manufacture. That was registration in respect of all

goods which came under Clause 5, a class which includes a vast number of things.

Then, passing over a few lines :-the registration in the present case has been for

the entirety of that class. In my opinion that is wrong. Even if a trade mark can be

registered, which is not in actual use, it ought to be restricted to those goods in

connection with which it is going to be used. In my opinion if is not the intention of

the Act that a man registering a trade mark for the entire class, and yet only using it

for one article in that class, can claim for himself the exclusive right to use it for

every article in the class.

( 20 ) A little further on, he says :--can a man claim registration for all the articles

specified in the class when the business he is engaged in comprises only one

specific portion of the articles named in the class. I am of the opinion he cannot. To

paraphrase that, can a man who is registered in one class claim in respect of articles

not comprised in that class, but comprised in some of the other classes In the

same way, in my opinion, he cannot". (Emphasis supplied)

( 21 ) IN Edwards v. Dennis it was held that an assignee of the goodwill of a

business with the right to a trade mark which has been registered by the assignor

under the Trade-marks Registration Act, 1875, in respect of an entire class, but of

which the articles dealt with in such business form part only, is not entitled to the

exclusive user of the trade-mark for the entire class, but only for the particular

articles in connection with which it is actually used. In addition to the passages

occurring in the above extract it would be helpful to set out the observations of

Lindley, L.. (page 477) :"in my opinion the existing registration has no application to

a class of goods in which Mr. Edwards carries on no business whatever. Surely an

iron manufacturer could not obtain a restriction of registration against, for instance a

gold manufacturer. " (Emphasis supplied)

( 22 ) IN Hargreaves v. Freeman, Hargreaves registered a mark consisting of three

crowns, his name and address, and the words "the Three Crowns Mixture" for

tobacco; he sold cut tobacco with this mark, and sold cigars with a label containing

the three crowns, ornamental devices of leaves and flowers along with the words

"the Three Crowns" and " Habana". Freeman commenced to sell cigars with a label

bearing three crowns and the words "the Three Crowns". It was contended that the

registration of hargreaves was confined to cut tobacco only and did not extend to

cigars and was never applied by him to cigars. The motion was dismissed.

( 23 ) REFERENCE may now be made to some further English cases which seem to

bear on this question. In Eno v. Dunn (7 R. P. C. 311 at p. 317) it was observed by

Lord Marshall that the words "fruit salt" for medicinal preparation did not prevent

the registration by another for umbrellas. Whether the concerned goods are of the

same description is a question of fact (Lord Evershed, M. R. and Romer, L.. Lycns (.)

and Co. Ltds. application, 1959 R. P. C. 120 at pages 28 and 132, respectively ). In

deciding this question one has to look at the trade and from a practical, business

and commercial point of view (Australian Wine Importers Trade Mark, 6 R. P. C.

311), It is also true that the mere classification in the trade mark rules may not be

the decisive consideration. Lindley,. observed in the above case at page 318 as

follows :"now, for the purpose of deciding whether two sets of goods are of the

same description, when they are not the same goods, we must not, as it appears to

me, lay too much stress on the classification of the framers of the rules".

( 24 ) SHRI A. C. Gulati relied upon the above case, where an application to register

for wines with a trade mark containing the device of a suspended sheep and the

words "golden Fleece" was refused on the opposition of one who was the owner of

two trade marks for spirits which comprised the same device and the same words;

the appeal against the said refusal was dismissed. Cotton, L.. distinguishing Edwards

v. Dennis (7) observed as follows :"although Mr. Mason does not in fact use his

registered trade mark-nor could he without some alteration-in the sale of his wine,

yet he is selling both whiskey and rum, and also selling wine, and it would be

therefore wrong, in my opinion, to give a sanction to the Australian Wine Importers

by enabling them to register this trade mark, although they register it, not for that in

respect of which Mr. Mason is using his trade mark, but in respect of one branch of

the trade which he is carrying on, and has been carrying on, since the year 1882".

(Emphasis supplied)

( 25 ) THE decision of the Supreme Court in Corn Products Refining Co. v. Shangri/a

Food Products Ltd. (A.. R. 1960 Supreme Court 142) (12) is also of no assistance to

Shri Gulat. That case also arose out of an application for registration of the trade

mark "gluvita" in class 30, which the applicant had not used prior to the date of

application for registration. The application by Shangrila Food Products Ltd. for

registration was opposed by Corn Products Refining Co. on the ground that it had

the mark "glucovita" in class 30 in respect of "dextrose (d-Glucose powder mixed

with vitamins) a substance used as food for as an ingredient in food ; glucose for

food". They had also registered the same trade mark in class 5 in respect of "infants

and invalids foods". A single Judge of the Bombay High Court had allowed the

appeal against the Registrars decision, but it was set aside by a Division Bench of

that High Court. The Supreme Court restored the decision of the single Judge on the

ground of the absolute identity of the two competing marks and the trade

connection. A. K. Sarker,. speaking for the Supreme Court observed as follows : . .

. . . . a trade connection between glucose and biscuits would appear to be

established. We are therefore of opinion that the commodities concerned in the

present case are so connected as to make confusion or deception likely in view of

the similarity of the two trade marks. " (Emphasis supplied)

( 26 ) REFERENCE was made by the Supreme Court to 58 (1941) R. P. C. 91 (In the

matter of an Application by Edward Hack for the registration of a Trade Mark) and to

63 (1946) R. P. C. 59 ( (In the matter of an application by Ladislas Jellinek for the

registration of a Trade Mark ). In the former case Morton,. accepted the appeal

against the Registrar of Trade Marks allowing the registration of laxatives despite

opposition. The facts were that application was made for registration of the words

"black Magic" in respect of "medicated preparations in solid form for human use as

laxatives" in Class 3. It was opposed by the proprietors of the Trade Mark "black

Magic" in Class 42 in respect of (inter alia) "chocolate and chocolates", which mark

had been extensively advertised and used for a certain class of their goods. It was

proved that chocolate was used to flavour certain laxatives, and that in many cases

chocolates and laxatives were sold in the same shop. On the ground that there was

a risk of confusion. in that some persons are likely to think that both the

preparations were made by the same manufacturers and others to wonder if this

might be the case: the appeal was allowed and registration was refused. Morton,.

pointed out that chocolates and laxatives were alike in this, that they were both

edible, that the laxatives were solid in form and both articles were intended for

human consumption. There was evidence, however, that black Magic" had been

applied in respect of lip-stick pencils and vacuum cleaners, but there was no

evidence that it had ever been applied, except by those who opposed registration,

to articles which are edible, or solid in form and intended for human consumption.

This case, therefore, does not support the broad proposition of Shri Gulati that

regardless of the nature and kind of goods in respect of which the plaintiffs trade

marks were adopted by the defendants, the registration in the plaintiffs favour, of

the trade mark, by itself, is sufficient. In the latter case the trade name "panda" in

respect of shoe polish was held not permissible when the mark had been used for

shoes even though both of them were not of the same description of goods.

Romer,. declined to interfere with the order of the Registrar allowing an application

to register the trade mark of a Panda together with the word "panda" in class 3 for

shoe polish despite the opposition by the proprietors of a similar mark "panda"

registered in respect of shoes. The Registrar had found that the main channel for

the sale of shoe polish was such that there was little risk of confusion with the

opponents shoe mark, and that different traders did not hesitate to adopt the same

mark for shoes and polish respectively as was seen from a reference to a trade Year

Book and to extracts from the Registrar; the Registrar also held that shoes and shoe

polish were not of the same description of goods. Romer,. observed that while shoes

are made to wear, shoe polish is used for cleaning and from this point of view there

is nothing common between the two. Reliance was placed upon the decision of Eve,.

in. and. Colman Ltd. s Application reported in 46 R. P. C. 126, (13) The Registrar

had come to the conclusion that mustard and semolina were sold by the same

persons and across the same counter and both the commodities were sufficiently

similar to one another and should be treated as of the same description, one being

condiment and the other a nutrient; both were probably treated as articles of food

and used for cooking in the same kitchen. Eve,. , however, took a different view of

the matter while conceding the common characteristics on which the Registrar relied

and had observed as follows:"one must, I think, go a little further and find out what

is the real nature of the article. . . . I think it is a fair division of the two sets of

things to say that one would fall under the description of a condiment and the other

under the description of a cereal, and although these goods are found side by side

and in just aposition when offered for sale and in domestic use, that cannot of itself

alter the description of the goods".

( 27 ) ROMER,. also observed that there was no evidence that members of the

public at any relevant time were aware of Panda at all. Romer,. applied the test (in

63 R. P. C. 59 at page 80) propounded by Lord Wright in Aristoc Ltd v. Rvsta Ltd.

(1945) R. P. C. 104 (14) of there being a general risk of confusion which in the

public interest should not be authorised.

( 28 ) SHRI Gulati also relied upon a number of other cases where trade marks

resembling those already in the register were not permitted even in respect of goods

which were either not the same or identical with those used by the existing

registered proprietor but also not strictly coming within the classification of the

goods in respect of which registration had already been permitted. These cases

would, on examination, seem to rest on the basis of the connection in the course of

trade which the two classes of goods in addition to similarity of the marks and other

surrounding circumstances may lead on unwary customer to mistake the

defendants goods for those of the plaintiffs.

( 29 ) IN the Eastman Photographic Materials Company, Ltd. v. The John Griffiths

Cycle Corporation, Ltd. and the Kodak Cycle Company, Ltd. (15) (1898) R. P. C.

105) an injunction was granted restraining the carrying on of cycle manufacturing

business under the name Kodak Cycle Company Ltd. having regard to the trade

mark "kodak" having become associated with the manufacturers of "cycle cameras"-

camras associated with cyclists. It was held that the registration had been procured

by the Cycle Company by an untrue statement to the Registrar and that the trade

mark of the Cycle Company must be expunged as being calculated to deceive.

Following this, among other cases, an injunction was issued by the Lahore High

Court in National Electric Stores v. General Electric Co. Ltd. (A.. R. 1944 Lahore 386)

restraining the use of the trade mark "osram" in respect of electric batteries at the

instance of the General Electric Company who had been manufacturing electric

goods, such as, bulbs and dry cells for flash light batteries. It was held on the basis

of the evidence in that case that any normal purchaser of ordinary intelligence who

had used Osram electric bulbs would regard the battery sold by the defendants as

having been manufactured by the general Electric Company as they bore the trade

mark which is also printed exactly in the same manner on the batteries as on the

electric goods manufactured by the General Electric Company.

( 30 ) ABDUL Rashid,. , speaking for the Division Bench in the above case, also

REFERRED TO to a number of other English decisions, some of which have also

been replied upon by Shri Gulat. One of them was Warwick Tyre Co. Ltd. v. New

Motor and General Rubber Co. Ltd. (1910) 1 Ch. 248, where the plaintiffs had

manufactured and sold tyres for cycles and motor cycles under the name of

"warwick" and had obtained a distinctive meaning and character, but they never

manufactured or sold tyres for motor cars. The defendants, whose Managing

Director bore the name Warwick, commenced to sell their motor tyres under the

name of "warwick Motor Tyres". Injunction restraining the selling of motor tyres was

granted on the ground that it would lead to the supposition that the persons who

were dealing with motor tyres were the same as those who had for many years in

the past been dealing with Warwick Cycle tyres.

( 31 ) ANOTHER case was The Dunlop Pneumatic Tyre Co. Ltd. v. The Dunlop

Lubricant Co. (1899) R. P. C. 12) where an injunction was issued restraining the use

of the word "dunlop" for oils and lubricants for cycles, a name which had become

associated with pneumatic tyres for cycles and other accessories, such as pumps,

inflators etc. by the Dunlop Pneumatic Tyre Co. , Ltd. Romer,. (as he then was)

observed as follows :"it appears to me that the plaintiffs are entitled to say that the

word "dunlop" ought not to be allowed to be used under those circumstances with

those objects by the Defendant; that it would injure them in their business very

considerably if it is not stopped. They themselves are sellers of cycles accessories,

though as a matter of fact up to the present time they have not sold burning oil or

lubricants. But they may do so, and in the meantime it appears to me that they are

entitled to come into Court and say that a name substantially identical with theirs

ought not to be allowed to be used by the Defendant in the way in which he is using

it. " (Emphasis supplied)

( 32 ) YET another case REFERRED TO to by Abdul Rashid,. was Ainsworth v.

Walmslay, (1966) 35 L.. Ch. 352, where the following observations were made by

Vice Chancellor Wood :"if a manufacturer does not carry on a trade in iron, but

carries on a trade in linen, and stamps a lion on his linen, another person may

stamp a lion on iron; but when he has appropriated a mark to a particular species of

goods and caused his goods to circulate with this mark upon them, the Court has

said that no one shall be at liberty to defraud that man by using that mark, and

passing off goods of his manufacture as being the goods of the owner of that mark.

" (Emphasis supplied)

( 33 ) ABDUL Rashid,. had relied on Niamatullah,. of the Allahabad High Court, who

in Thomas Bear and Sons v. Pryag Narain (A.. R. 1935 Allahabad 7) held (on a

difference between King and lqbal Ahmed,.) that chewing tobacco did not constitute

goods of the same character as smoking tobacco; these observations were affirmed

by the Privy Council in Thomas Bear and Sons v. Pryag Narain (A.. R. 1940 Privy

Council 86) The observations of Viscount Maugham,. , who spoke for the Judicial

Committee of the Privy Council, are instructive :"a manufacturer of cigarettes under

an undoubted trade mark such as an animal, or any other device cannot legally

object to the use of the identical mark on, say, hats, or soap, for the simple reason

that purchasers of any of the latter kinds of goods could not reasonably suppose,

even if they were well acquainted with the mark as used on cigarettes, that its use

on hats or soap denoted that these goods were manufactured on marketed by the

cigarette manufacturer: see Somerville v. Schembri, (1887) 12 A. C. 453-56 L.. P. C.

61-56 L. T. 454. Those would be simple cases, but some much more difficult ones

can be suggested. If a manufacturer of a special kind of smoking tobacco under a

trade mark seeks to restrain the use of it on cigars, or on a very different kind of

smoking tobacco, of or cigarettes, or on snuff, or on chewing tobacco, or on tobacco

in some form sold for use as a weed killer-all these things being made of tobaccoquestions, sometimes of great difficulty, may arise. It is however very important to observe that each of these questions will be a question of fact to be decided on the evidence adduced. The vital element in such a case is the probability of deception." (Emphases added)

( 34 ) REFERENCE was also made by Abdul Rashid,. to Angle-Indian Drug Chemical

Co. v. Swastik Oil mills Co. Ltd. (A.. R. 1935 Bombay 101) (23) where it was held

that bar soap for washing clothes could not be regarded as goods of the same class

and character as toilet requisites.

( 35 ) IN the Matter of Dunns Trade Mark (7 (1890) R. P. C. 311)) (24) the House

of Lords, by a majority, held that the application by Dunn to register the words

"dunns Fruit Salt Trade Mark Baking Powder" as a trade mark for baking powder in

class 42 should not be registered on account of there being already on the register

the mark of. C. Eno, containing the words "fruit Salt", in class 42 for dry preparation

for making a non-intoxicating beverage. Despite the powerful dissent of the Lord

Chancellor and Lord. Morris the majority held that it was the element of deception

which compelled Courts of Equity to interfere to protect traders. Lord Macnaghten

REFERRED TO (at page 319) to Dunn giving the words "fruit Salt" prominent

position among the words he sought to be registered, which was calculated to

deceive. What is of particular significance for our present purpose is the observation

of Lord Morris which characterised the argument for. C. Eno that persons who

wanted Enus Fruit Salt powder to bake might be deceived into buying Dunns

products, as an argument wanting foundation in fact. As we read the majority

opinions we do not think that this reasoning of Lord Morris was repudiated; the

majority rested the decision against Dunn on the element of deception. Lord

Evershed, M. R. held ice cream and table jellies were not of the same description

( vide. Lyons and Co. Lds Application to rectify the register, 1959 R. P. C. 120 ). He

discussed some of the cases decided in England. Paraffin oil intended to be used

medically for human consumption was held to be of the same description as paraffin

oil intended to be used for machine lubrication on the ground that both were

chemically the same substance, the difference between them depending only on the

degree of refinement (In the matter of Mcdowells Application for a Trade Mark, 43

R. P. C. 313 at P. 334 (C. A.) and in the matter of Mcdowells Application for a Trade

Mark, 44 R. P. C. 335 (H. L. ). In the Australian Wines case (already noticed) spirits,

particularly rum and whiskey were held to be of the same description. In Jellineks

Application (already noticed) it was held that shoe polish and shoes were different.

In J and J Colman Ltds Application (also noticed already) mustard and semolina,

inspite of their being commonly sold in the same establishment over the counter

were held to be not goods of the same description particularly having regard to the

divergence in use and method of preparation when they respectively reached the

kitchen of the housewife. Lord Evershed, M. R. then observed Cat pages 128-

129) :"it should be stated that the two things, ice creams and. jellies, are not in the

same classes under the rules for registration of trade marks. This, however, is

admittedly irrelevant. Now, with all respect to the Assistant Comptroller, can I attach

much significance to the fact that they may be eaten off the same plate, if he

meant, so eaten at the same time : for so might, for example, roast beef and

Yorkshire pudding or chops and tomato sauce, respectively goods (I should say) of

very different descriptions. But the circumstances in which the two things are used

(as I have attempted to state in my more limited description of the kind of sweets

which they are) plus the fact that they or their sources for the housewife may be

offered for sale side by side on a grocers counter are, I think, weighty

considerations".

( 36 ) THE Judicial Committee of the Privy Council held in Somerville v. Schembri

(1881) XII Appeal Cases 453 that on general principles, even apart from any statute

(the case arising from Malta) the use of the trade mark " Kaisar-i-Hind" in respect of

hats, soaps and pickles could not impede the acquisition of an exclusive right to it as

a trade mark for cigarettes.

( 37 ) A Division Bench of the Calcutta High Court held in Rustom Ali and Bata Shoe

Company (A. LR. 1957 Calcutta 120) that the trade mark bata used in respect of

foot-wear, leather and rubber goods. socks and hosiery, could not impede the use of

the said mark with reference to lungis. Warwick (cited already) was distinguished on

the ground that it involved tyres for cycles and motor cycles. Somerville was

followed and the observations of Romer,. in Dunlop Pneumatic Tyre Co. case

(already cited) were dissented from if he meant that even if the sets of articles

concerned had no connection with each other, still an injunction could be granted.

( 38 ) SINCE even the cases relied upon by Shri Gulati, besides those discussed by

Abdul Rashid,. , were also seen to be those where some kind of trade connection

between the two sets of goods was established, he had ultimately to rely more on

the appellants making a false suggestion that Nestles had entered the field of

toffees also and that if this is permitted the trade reputation acquired for them by

expending such labour and cost over a long period of time would be affected. For

this submission Shri Gulati tried to seek support from the observations of Maugham,.

in British Medical Association v. Marsh (48 R. P. C. 565) This case really followed the

observations of Winn Parry,. in Derek Mcculloch v. Lewis A. May (Produce

Distributors) Ltd. (65 (1948) R. P. C. 58 ). In the latter case the plaintiff, a wellknown

broadcaster under the name "uncle Mac" sued the defendant from selling

cereals under his name, causing confusion with himself and damaging his

professional reputation; the action was dismissed. In the former case the British

Medical Association (B. M. A. , for short) obtained an injunction against the

defendant who had formed a company which made articles from the analysis of the

B. M. A. but sold them at low prices with the letters "b. M. A. 2". On the window,

where these goods were displayed, there was a card guaranteeing that they were

prepared strictly according to analysis of the B. M. A. The injunction was granted on

the ground that the act of the defendant injured the plaintiffs in their business both

by tending to cause existing members of the Association to leave it and others to

abstain from joining it. Referring to a decision of Lord Langdale in the year 1848

(dark v. Freeman (11 Beav. 112) Maugham,. observed that the said case was not an

authority for the proposition, as some people held, that a professional man had no

remedy if a tradesman chooses to put forward some quack remedy or ar- tide of

that kind as having been prescribed or been sold for the benefit of or the approval

of the medical man in question. In Clark v. Freeman a leading physician had applied

for an injunction restraining the defendant from selling or processing to be sold pills

purporting to be those of that Physician. The injunction was refused on the ground

that such an eminent physician could not be really injured by the kind of false

statement published by the defendant.

( 39 ) AN action of this kind, it is worth recalling, would not be either one of

infringement or of passing off; it would be one of injurious falsehood. Wynn Parry,.

referring to the British Medical Association case observed as follows :-"i have

listened with care to all the cases that have been cited and upon analysis I am

satisfied that there is discoverable in all those in which the Court has intervened this

factor, namely, that there was a common field of activity in which, however,

remotely both the Plaintiff and the Defendant were engaged and that it was the

presence of that fact or that accounted for the jurisdiction of the Court. " (Emphasis

supplied)

( 40 ) THE relevancy of the use of the mark in respsct of goods was highlighted in

Walpamur Company Ltd. v. A. Sanderson and Co. Ltd. [43 (1926) R. P. C. 385]. The

plaintiffs were proprietors of the mark "mirabol" registered for enamels, paints and

varnishes, but only used in respsct of enamels and undercoating. The defendants

were proprietors of Trade Mark "muralol" registered for colours, paints and

varnishes, but used only for flat oil paint. There was a motion by plaintiffs to remove

defendants mark from the register and there was another motion by the defendants

to limit registration of plaintiffs mark. The defendants mark was ordered to be

removed from the register and the plaintiffs mark was allowed to be infringed. It

was held that passing off was not proved. Astbury,. REFERRED TO to Edwards v.

Dennis and Hart v. Colley. In distinguishing the former, Astbury,. observed that the

trade mark of the defendants was of a totally separate class of business, one which

was not carried on and was never intended to be carried on by the plaintiff. In

Walpamur the plaintiffs had registered in a very wide class but only for specific

articles in respect of which they carried on their business articles ordinarily made

and sold by persons in that particular kind of business. Hart was distinguished on

the ground that the registration in that case was for a wide class and not for a

specified article in that class: the user had been for 15 years unlike the one which

had just commenced in Walpamur.

( 41 ) THE test of remoteness of the defendants activities from that of the plaintiff

was adopted in the Matter of British Lead Mills Ltd. s Application for a Trade Mark

(1958 R. P. C 425 ). British Lead Mills Ltd. applied to register the mark "welloy" in

respect of "cast rolled and extruded alloys of tin and lead". Wellworthy Ld. opposed

on the grounds (under S. 11) that they were the proprietors of the registered trade

marks "wellworthy", "welflex" and "welcrom" in respect of goods which were

included "metallic Alloys" and that the registration of the metallic alloy would be

contrary to Section 12 of the Trade Marks Act, 1938 on account of "welloy" and

"walloy" both being similar visually and phonetically, and that the goods in respect

of which Welloy were registered (alloys containing lead, the lead predominating) are

goods of the same description as the goods in. respect of which it was sought to

register the mark Welloy. The Assistant Controller disallowed the application on the

ground that tin alloys were not so remote from the Wellworthys field of activity.

( 42 ) THE Court of Appeal discussed in Neostyle Manufacturing Company Ltd. v.

Ellams Duplicator Company [21 (1904) R. P. C. 569] whether the word "neostyle"

had become identified in England with the plaintiffs duplicating machines (they

never had any exclusive right to the word in connection with duplicator accessories)

and whether the defendants might sell ink and paper for use on the "necstyle"

machines. and so describe them, provided they did not by words or get up represent

their goods as those of the plaintiffs. Passing off was no. made out. The injunction

sought for was refused by Byrne,. which decision was confirmed in appeal. Byrne,.

had suggested, however, that the defendants name should always appear on the

tins of ink sold by them.

( 43 ) TOFFEES are of various kinds. According to the classification made in the

Prevention of Food Adulteration Rules, 1955 framed under the Prevention of Food

Adulteration Act, 1954, toffees have been classified as plan. milk, modified and

butter. Plain toffee shall be made out of sugar, vanaspati, milk fat of any edible oil

and in addition any of the materials mentioned in Rule A. 25. 02 as being

permissible for use in such manufacture. Milk toffee shall be made out of sugar,

vanaspati, milk fat of any cdible oil and milk in any form and in addition may contain

any of the materials used in the making of plain toffee. Modified toffee shall be

made of the ingredients used for plain coffes or milk toffee. In addition, it may

conta. in one or more of chocolate. coffee, cocoa, dried fruits and nuts. Butter toffee

shall be made out of ingredients used for plain toffee, milk toffee or modified toffee,

but should not contain less than 5 per cent butter by weight. Toffee should also

comply with certain prescribed requirements. e. ingredients like ash, sugar, fat, total

protein etc. In. the face of the above there does not appear to be much force in the

contention of Shri Gulati that by merely condensing the condensed milk still further

toffee is prepared. According to Encyclopaedia Britannica (1969) Vol. 15, page 457,

plain condensed milk is concentrated whole milk of a composition similar to that of

evaporated milk, but not sterilised. The standards of solids and food value differ

from country to country. The same Encyclopaedia (Vol. 6, page 284) explains

"caramel and Toffee" as follows :"carmels depend on large amounts of milk for their

typical texture. The other ingredients are sugar, corn sirup and fat, which are

cooked until the desired degrees of caramelization. and texture have been attained.

The most popular flavours arc vanilla and chocolate. Toffee is highly cooked or hard

caramel. "

( 44 ) WEBSTERs Third New International Dictionary Vol. II (page 2403) describes

toffee as a candy of brittle but tender texture made by boiling sugar and butter

together to approximately 310 For the hard crack stage.

( 45 ) SHRI Gulati has not been. able to substantiate his contention that toffee is

merely condensing already condensed milk without more. The ingredients of toffee

could be as noticed, above. His further contention that the buyers of the toffee of

the defendants would, because of the name "milk-made" being used with reference

to them, be led to think that these toffees are made out of the condensed milk

prepared by Nestles has not been prima fade established. The said view of the

plaintiffs could not derive support merely from the fact that in the defendants

wrappers two bottles of milk are shown as being emptied in a glass tumbler; this

alone without mere, cannot support the inference that the condensed milk of the

plaintiffs was being used by ths defendants. The plaintiffs/appellants have also not

been able to establish prima fade that there is such a trade connection between the

defendants goods and the plaintiffs trade mark. and the goods manufactured by

them with the said trade mark as would constitute an infringement of the said trade

mark.

( 46 ) REGARDING passing off the plaintiffs face greater difficulty because they are

unable to show how there could be an action for passing off of goods without the

defendants even putting on the market goods of an identical or similar description or

at least having such a close association with the goods of the plaintiffs as are likely

to deceive or cause confusion.

( 47 ) THE learned single Judge has REFERRED TO to the decision of the House of

Lords in Reddaway v. Banham (1896) A. C. 199. and distinguished it on ths ground

that the impugned goods bore no marks or words, that the manufacturer could not

be known therefrom and hence the respondents were held guilty of passing off. The

wrappers used in the present case bear the words "milk-made Corporation" which

are sufficient to show that the goods are the products of a different Corporation and

not of the Plaintiffs. The learned single Judge has also REFERRED TO to Anglo Swiss

Condensed Milk Co. v. Metcalf, in re : Metcalfs trade mark, (1886) 31 Ch. D. 454,

(involving the present "milk-Maid" mark) and distinguished it on the ground that the

defendants in this case were not selling condensed milk in tins or cans having the

same size. type and shape as are the tins used by the plaintiffs in packing their

condensed milk; they are dealing with biscuits and toffees which are not produced

by the plaintiffs.

( 48 ) IN the above view it is not necessary to go into the further contention raised

as to whether the plaintiffs are entitled to use the word "milkmaid" in English

separately when the registered trade mark is "milkmaid Brand".

( 49 ) WE have only to reiterate what we have already stated that the question

whether apart from infringement of trade mark and passing off the plaintiffs are

entitled to any relief on any other footing does not fall to be considered in this

appeal in view of the submission before the learned single Judge having been

restricted to only two aspects. namely, infringement of trade mark and passing off.

( 50 ) IN the result we hold that the plaintiffs have not made out any prima facie

case for the grant of the injunction sought for by them or for any other allied relief

pending disposal of the suit and that the learned single Judge, with respect, rightly

dismissed the plaintiffs application for interim relief. In the result the appeal is

dismissed but in the circumstances without costs. C. M454/72 is also dismissed.