(Prayer: Appeal (disposed of on 9-12-1947) against the decree of the District, Court, South Arcot dated 16-11-1945 in O.S. 13 of 1944.)

Govindarajachari, J.

This is an appeal in a passing off action in the Court of the District Judge of South Arcot. The defendant company against which a decree granting an injunction, ordering an account, and directing the delivery of the offending labels has been passed is the appellant.

The respondent which is a company registered under the English Companies Act suing by its attorney alleged that it had been for a considerable number of years manufacturing and selling throughout India a sewing thread named Eagley with a distinctive label containing the figure of a bird, that the said device and name had become associated in the minds of the public and the traders with sewing thread made by the plaintiff and that the defendant put on the market for sale sewing thread with a label bearing the representation of a bird and the name Eagle brand and that such use is calculated to deceive the trade and the public into the belief that when purchasing the defendants goods they are purchasing the manufacture of the plaintiff. The defendant denied knowledge of the manufacture by the plaintiff of sewing thread using the label in question and stated that when informed of it by the plaintiff in November 1942, the defendant, to avoid any complaint, substituted the word vulture for the word eagle, and that the differnces between the plaintiffs label and the defendants lable are so many and so large that no ordinary and reasonable trader could be deceived into mistaking the defendants label for the plaintiffs label. The defendant denied that the plaintiff had any cause of action or was entitled to any injunction, account or damages.

On issue No. 1 the Court below has found that the plaintiff has acquired a right to the exclusive use throughout India of the label marked A and the name Eagley in connection with sewing thread and on issues Nos. 3 and 6 that the defendants label is a colourable imitation of the plaintiffs label and trade name calculated to deceive any ordinary or reasonable trader or member of the public into mistaking defendants thread for plaintiffs. On issue No. 2, however, the learned District Judge has he ld that D.W. 1, the managing director of the defendant company did not himself know about the existence of the plaintiffs trade mark, but added that this conclusion did not exclude the likelihood that the artist who designed the defendants label had seen the plaintiffs label. On issue No. 7 it has been held that there is no evidence to show that the defendant company has itself sold or passed off its goods as those manufactured by the plaintiff. The findings on issues 2 and 7 have not been traversed in the appeal. The appellant challenges the correctness of the findings on issues 1, 3 and 6.

There is a reference in both the plaint and the written statement to certain applications made by the plaintiff and the defendant for the registration of their respective trademarks under the Trade Marks Act (Act V of 1940). It is however admitted that the case falls to be decided without reference to the provisions of that Act and merely on the basis that one party alleges and the other denies that there is passing off of goods, a right of action which is expressly saved by Sub-S

. (2) of S. 20 of Act V of 1920.

There has been considerable citation before us by the learned Counsel appearing on either side as to the points arising for determination in a passing off case. While it cannot be denied that on some points there was, at any rate in the past, some difference of opinion and while differences are also noticeable in the relative emphasis laid on the several considerations relevant in a case of this kind which is perhaps inevitable when different Judges deal with varying facts and express their conclusions each in his own words, it seems to us nevertheless that the principles which should govern the decision of cases of this description are now fairly well established and can be briefly stated.

The general principle which was founded on justice and equity is nowhere better expressed than in the following passage in Singer Manufacturing Co. v. Loog (18 Ch. D. 395), which has been become classic;

No man said James L.J. in that case is entitled to represent his goods as being the 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 a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer.

In his speech in Leather Cloth Co. Ltd. v. American Leather Cloth Co. Ltd. (11 H.L.C. (Clark) 523) Lord Cranworth observed that the gist of the complaint in all these cases is, that the defendant, by placing the plaintiffs trade mark, or it may perhaps be added a colourable imitation of it on goods not manufactured by the plaintiff, has induced persons to purchase them, relying on the trade mark as proving them to be of the plaintiffs manufacture. This necessarily supposes he added some familiarity with the trade mark. To state the position completely it may also be mentioned that a plaint if need not wait till the defendants goods are purchased as his, but may maintain a quia timet action for the infringement of a trade mark, but must in such a case make out a strong case to justify the conclusion that confusion would result from the appearance of the defendants goods in the market [See Malayan Tobacco Distributors Ltd. v. United Kingdom Tobacco Co. (1929) Ltd. 66 M.L.J. 588=39 L.W. 755 (P.C.)].

The plaintiff who alleges passing off must first establish that the public has grown accustomed to associate the particular name and label with him as the manufacturer or dealer in the article [ Mohamed Esuf v. Rajaratnam Pillai (33 Mad. 402)] [LQ/MadHC/1909/370] . There must be such an association between the number or the name or the label and the plaintiff as to indicate an understanding of the public that the goods bearing that number, name or label came from the plaintiff [See Barloo v. Gobindram (24 Cal. 364)] [LQ/CalHC/1897/29] . Shephard J. observed in Ebrhahim Currim v. Essa Abba Sait (24 Mad. 163) that a man can be said to have property in a trade mark only in a peculiar or a qualified sense because in order to establish an infringement he must prove the possibility of other persons being deceived.

The view was at one time expressed that a person who is deceived or is likely to be deceived may be a thoughtless or on incautious purchaser. Lord Kingsdown in Leather Cloth Co. Ltd. v. American Leather Cloth Co., Ltd. (11 H.L.C. (Clark) 523) poses the question for determination as to whether the trade mark used by the defendant is calculated to mislead incautious purchasers. The same expression is used by Lord Blackburn in Johnston v. Orr Ewing(7 A.C. 219). In the same case at page 226 after referring to one class of customers Lord Selbourne L.C. goes on to refer to the more ignorant class of consumers apparently describing them relatively to the other class which he previously dealt with. Similarly in Juggi Lal Kamalapat v. Swadesdi Mills Co. Ltd.( 51 All. 182 (P.C.) Viscount Dunedin after stating that a person of such literacy as to have critical powers of observation would not be confused with the defendants trade mark proceeds to observe that the trade mark would be apt to be confused by the illiterate and unobservant. In Payton and Co. v. Snelling Lamard and Co., Ltd. (1898) 17 R.P.C. 48) however Romer L.J. observed in the following manner in a well known passage.

It seems to be a sort of popular notion of some witnesses that in considering whether the customers are likely to be deceived, you are to consider the case of an ignorant customer who knows nothing about, or very little about, the subject of the action. That is a great mistake. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiffs goods, those characteristics which distinguish his goods from other goods on t he market so far as relates to general characteristics. The customer must be one who, knowing what is fairly common to the trade, knows of the plaintiffs goods by reason of these distinguishing characteristics. If he does not know that he is not a customer whose views can properly or will be regarded by this Court.

In Thoms Bear and Sons (India) Ltd. v. Prayag Narain (I.L.R. 1940 All. 446=52 L.W. 25 (P.C.) the Privy Council pointed out that the test is whether a person exercising ordinary caution is likely to be deceived and not whether some ignorant and indiscriminating persons might not be deceived. In Leather Cloth Co., Ltd. v. American Leather Cloth Co., Ltd. (11 H.L.C. (Clark) 523) Lord Cranworth stated that no general rule can be laid down as to what is or is not a mere colourable variation. All that can be done is to ascertain in every case, as it occurs, whether there is such a resemblance as to deceive a purchaser who exercises ordinary caution. The prevalent and in our opinion, the correct view is, therefore, that the resemblance must be such as to induce an average man exercising ordinary caution to suppose that in buying the defendants goods he is buying what has been m anufactured by the plaintiff.

It is again well settled that it is not enough for the plaintiff to show a mere possibility of deception. He must establish that there is a reasonable probability of purchasers being deceived [ Barloo v. Gobindram (24 Cal. 364) [LQ/CalHC/1897/29] , Thomas Bear and Sons (India) Ltd. v. Prayag Narain (I.L.R. 1940 All. 446=52 L.W. 25 (P.C.) and Malayan Tobacco Distributors Ltd. v. The United Kingdom Tobacco Co. (1929) Ltd. (66 M.L.J. 588=39 L.W. 755 (P.C.)]. This is expressed in slightly different language in Boord and Son (Incorporated) v. Bagors Hutton and Co., Ltd. , (1916) 2 A.C. 382) (a case of registration of a trade mark) a judgment of the House of Lords confirming the judgment of the Court of Appeal in Bagots Hutton and Cos Trade Mark In re (1916) 2 Ch. 103). It is there said that it must be proved that the defendants mark is calculated to deceive and that a bare possibility of deception will not do.

It cannot be denied that deception may be by sound as well as by sight [See Johnston v. Orr Ewing (7 A.C. 219) and Juggilal Kamalapat v. Swadeshi Mills Co., Ltd. , (51 All. 182=29 L.W. 243 (P.C.)].

It was at one time held that the opinion of persons more or less conversant with the trade can be given for proving the likelihood of deception (See Johnston v. Orr Ewing(7 A.C. 219) . But the better view and the view which is binding on us is that expressed in Thomas Bear and Sons (India) Ltd. v. Prayag Narain (I.L.R. 1940 All. 446=52 L.W. 25 (P.C.) as follows:

There is no such person as an expert in human nature, and it is now well settled that a witness cannot be called to say that it is likely that purchasers of the goods will be deceived. This can only be a matter of opinion formed after the dispute has arisen and too often without any judicial consideration of the opposing contentions. On the other hand a person who is accustomed to buy the articles in question may be called to say that he would himself be deceived, and cross-examination will often show what weight should be attached to such a statement.

While on the one hand it would be a mistake to suppose that the resemblance must, be such as would deceive persons who would see the two marks side by side [See Seixe v. Provesende (1 Ch. A. 192)]: it must, on the other hand, be remembered that the customer to whose views the Court will have regard must be one who had some familiarity with the plaintiffs trade mark and who knows the distinguishing characteristic of the plaintiffs goods.

The evidence in this case is mostly oral. The documentary evidence consists partly of the correspondence which passed between the plaintiffs agents in India, the Central Agency Ltd., and the defendant between November 1942 and March 1943, the former asserting that the name and label used by the latter are likely to result in passing off the defendants goods as the plaintiffs and the defendant denying that they had or would have that effect. The rest of the documentary evidence consists of orders for the plaintiffs products to which we shall refer in dealing with the oral evidence. The plaintiff examined seven witnesses in Court and five witnesses on commission at Bombay. The defendants sole witness is its managing director. Robert Anderson, the first witness for the plaintiff who has been working as an assistant for 23 years in several branches of the Central Agency Ltd., deposes that the trade mark Eagley is one of the favoured trademarks of James Chadwick and Co., that eagley thread has been marketed in India since 1896, that it is found throughout India and that to the purchaser it signifies a product of James Chadwick and Co. He further deposes that except the defendant nobody else to his knowledge has sold the sewing thread with the name eagle or with the figure of a bird. He also states that the plaintiffs thread is made up in reels or clubs, in cops or cones in varying length, but adds that the standard length of eagley sold in reels is 5000 yards, that at present they are selling in cones and that he has no record here to show that they sold in reels. Judging however from the orders which have been placed on record and from the other oral evidence in the case it would appear that for a considerable number of years the plaintiffs eagley thread is being sold only in cones of 10,000 yards or 5000 yards, P.W. 1 states in cross-examination that the plaintiffs thread can be used for any purpose and not merely for the making of banians. The evidence of the five Bombay witnesses is almost identical in terms and it is quite enough to take Gulamal Sadakali Unwalas evidence as typical. He states that his firm deals in sewing thread imported by the Central Agency. He identifies the plaintiffs eagley mark and says that he knows that the goods bearing the eagley mark are manufactured by Chadwick in England, that there is a great demand for eagley sewing thread and that both the wholesale and retail purchasers ask for this tread as eagley cone. When Exs. D and F are shown to the witness as the reels sold by the defendant he says that it would be possible to pass off the goods bearing those marks as those of the plaintiff. In his opinion it makes no difference whether the thread is sold in reels or cones or otherwise. It is elicited in cross-examination that there is no resemblance between the plaintiffs thread and the defendants, though in the opinion of the witness there is a great resemblance between the plaintiffs eagley mark and the defendants mark. It is unnecessary to refer to the evidence of the other witnesses examined in Bombay, some of whom are more emphatic than Sadekali Unwala to the extent of stating that in their opinion anyone seeing the mark on the defendants goods would think that they have been manufactured by the same people who had manufactured the plaintiffs sewing thread. Mr. O.T.G. Nambiar, Counsel for the respondent, has conceded, in our opinion, rightly, that he cannot rely upon the last portion of the evidence in view of the decision in Thomas Bear and Sons (India) Ltd. v. Prayag Narain (I.L.R. 1940 All. 446=52 L.W. 25 (P.C.), to which we have already referred.

There can be no doubt that the plaintiffs eagley thread has established a considerable reputation in this country and that for some decades it has been commanding a wide sale in the Indian markets. It must also be held on the evidence that has been adduced that the thread with the name eagley and the labels used by the plaintiff are associated in the minds of customers with Chadwick and Co.

It has been argued by the learned Advocate General for the appellant that the market for the plaintiffs thread is different from the market for the defendants. This has not been established. From the evidence of the Bombay witnesses and that of P.Ws. 1 to 6 it is clear that the plaintiffs eagley thread is put to a variety of uses, for knitting banians, for making ladies clothes, for stitching and so on. Rajagopala Reddiar, the managing director of the defendant company who has been examined as D.W. 1 deposes that the defendants thread is used for stitching clothes and not for banians, while it may be that much larger quantities of the plaintiffs eagley thread are used for hosiery, there can be no doubt that the markets for the two goods overlap and that both the threads can be used for stitching purposes.

It has next been argued by the learned Advocate General that the plaintiff has not established that there is a reasonable probability of deception of customers by the use by the defendant company of the words vulture brand, together with the labels wound round the reels manufactured by them. It is pointed out that the defendant applied for the registration of the trade mark eagle brand to the Registrar of Assurances, Calcutta, as early as 25th January 1940, that in the following February they published a notification in the Hindu that they are the owners and sole proprietors of that trade mark and that in deference to an objection taken by the Central Agency Ltd., the defendant-Company changed the name of the trade mark from Eagle to Vulture in December 194

2. The dissimilarities between the two labels are also pointed out. There can be no doubt that the labels used by he plaintiff and the defendant have several points of difference. The plaintiffs label is circular while the defendants is rectangular. The former is in colour litho print while the latter is printed in ordinary black. The defendant companys name is also displayed in their label. There is a difference also in the appearance of the two birds. It is not possible to accept the defendants suggestion that the figure in his label represents a vulture as it is admitted that the same figure was used even when the defendant described his trade mark as eagle brand and though the name was subsequently changed from Eagle brand to vulture brand the figure was retained without any alteration. The plaintiffs label is printed on neat white paper while the defendants is printed on brown paper. The plaintiffs thread is sold in Indian markets only in cones of 10,000 or 5000 yards. The defendants thread is sold in cylinders with varying lengths but never exceeding 1000 yards. While, as stated, it must be taken that there is a market in which both the plaintiffs and the defendants thread are offered for sale, it cannot at the same time be overlooked that there is considerable disparity in prices. Venkatesa Iyer (P.W. 3) who is an employee of Messrs. S. Duraiswami Mudaliar and Sons, Madras, a firm dealing in both threads, states that the plaintiffs thread costs 2 or 3 times as much as that of the defendant. No doubt a plaintiffs grievance in a passing off action very often is that the defendant is selling cheaper goods passing them off as the plaintiffs; but if the disparity of prices is so large as to make the customer pause and think whether he is buying the plaintiffs goods at all, it seems to us that this circumstance cannot be ignored in deciding whether there is a reasonable probability of deception. It is unnecessary to refer to the letter press on the labels which is of course different but to which much importance need not be attached, as the customer is not expected to place the two labels side by side and make a comparison of their appearance or their contents, the test in all these cases being whether the general impression left in the mind of a customer who had previously bought the plaintiffs goods is such that he is likely to accept the defendants goods when they are offered to him in the belief that they are the plaintiffs. When we speak of a label we are not of course confining ourselves to the visible representations of the trade-marks of the two parties. When the plaintiffs goods are sold by a certain name and under a certain label the cumulative effect of what is seen and what is heard provides the criterion. Mr. O.T.G. Nambiar the learned Counsel for the respondent has argued that the most distinctive part of the plaintiffs label is the figure of a bird and that the customer is likely to remember only that figure and the word eagley and that having regard to the fact that the defendants label also contains the figure of an eagle and the defendants goods are sold as Vulture brand, there is every chance of the purchasers taking the defendants goods for the plaintiffs.

It is necessary now to examine the evidence in the light of the respective contentions. It must first be pointed out that the Bombay witnesses and P.Ws. 1, 2, 4, 5 and 6 have always dealt only with the plaintiffs goods and never with the defendants. P.Ws. 7 and 8 have similarly handled only the defendants goods and have never handled the plaintiffs. The only witness whose firm has been trading in both the plaintiffs and the defendants goods is P.W. 3 and in our opinion therefore considerable importance attaches to the evidence of this witness.

Dealing with the several classes of purchasers of the plaintiffs goods it cannot be denied that the wholesale and retail dealers of the status of the Bombay witnesses cannot be deceived by the supply of the defendants goods when they ask for the plaintiffs, nor can it be maintained that buyers like the Common Wealth Trust Ltd., or Madura Knitting Co. or Sri Krishna Rajendra Mills Ltd., who require the plaintiffs goods for their own manufactures can possibly be the victim of any deception.

As regards tailors buying the sewing thread for their shops or house-holders buying it for their domestic needs a distinction must necessarily be made between those who are acquainted with the English language and those who are not. It would be difficult to suppose that the former class would accept the defendants goods as the plaintiffs. Though the defendant started in 1940 calling his goods Eagle brand we must for the purpose of this case proceed upon the footing that since 1942 he has been decribing them as Vulture brand. The statement in the evidence of P.W. 7 that after the defendant changed the name from eagle to vulture the English knowing customers would ask for vulture mark must be accepted as correct.

The evidence as to the residuary class of individual buyers unacquainted with the English language is far from being definite. P.W. 2 is a traveiling representative of the Central Agency, Ltd. who, as already stated, handle the good produced by Chadwick and Co. in India. His mother-tongue is Tamil. He admits that no order whereby he means a written order, has been placed, with the Central Agency in Tamil. The orders are always taken in English. He says that when the orders are oral the Tamil customers ask for the Kazhugu mark. He is unable to give the Tamil equivalent of Vulture; but it may be assumed that the word Kazhugu is the Tamil equivalent for the English words eagle and vulture (see Tamil Lexican published by the University of Madras). In answer to a question by Court, P.W. 2 states that in Telugu districts people call it Pakshi mark or Garuda mark. P.Ws. 7 and 8 are witnesses from Guntur and Kistna districts. P.W. 7 states that those unacquainted with English call the defendants goods Gadda Garuda, that they are sold under the name of Pakshi mark or Garuda mark and that notwithstanding the change of the English name for the defendants goods from Eagle brand to Vulture brand those who do not know English still call them Garuda mark. P.W. 8 does not refer to the Telugu equivalents of the word Eagle or Vulture. His evidence does not impress us as sufficiently definite or accurate. His statement for instance that his firm continues to sell the defendants goods to the consumers under the name eagle even after the defendant altered the name to Vulture cannot be accepted if he is referring to purchasers who know English. The evidence of P.W. 7 with regard to this class of customers seems more probable. Customers who know English would not only find the words Vulture brand on the defendants label; but would also notice that the manufacturers are the defendant company. P.W. 8 qualifies in cross-examination what he has stated in chief-examination and admits that after the name eagle was changed into Vulture his firm ordered goods with the Vulture mark and was so supplied.

The evidence of P.W. 3 is much more important and reliable. He is the only witness who had occasion to buy and sell the plaintiffs goods and the defendants. In his examination in chief he states that if a customer came to his firm and asked for eagle thread they would first show the cheaper variety in the defendants article. If the customer wanted a superior quality then they would show the plaintiffs thread. In his cross-examination he says that the defendants goods are inferior in quality and are being used for stitching shirts, coats etc., while the plaintiffs goods are being used for making hosiery; but he adds that if one cannot be had, the other thread can be used. The customers would come and ask for Pakshi nule and the witnesss firm would first offer the defendants products. If they asked for a superior kind, they would then show the plaintiffs goods. The witness refers to the difference in the posture of the birds in the two designs. It is true that there is some difference, but no importance need be attached to this as a purchaser cannot be expected to make a detailed comparison of the two labels before buying. The most significant part however of the evidence of P.W. 3 consists in his answer that, If a purchaser had once bought the plaintiffs goods he would know the difference at once if the defendants goods are offered. This seems to us to put the whole case in a nut-shell. If the true test is as has been laid down in the cases how a person who once bought the plaintiffs goods would react, when the defendants goods are offered to him, the witness states definitely that he would at once notice the difference. Mr. Nambiar relies on a statement occurring in the cross-examination of P.W. 8, We can dispose of the defendants goods only with the name eagle. The customers like and ask for eagle and we supplied the defendants goods and the customers got off. We have already had occasion to refer to the evidence of this witness as somewhat unconvincing. The witness does not differentiate between those who are acquainted with the English language and those who are unacquainted with it. In fact he does not speak of the latter class at all and as regards the former class his evidence cannot easily be accepted, particularly in view of the evidence of P.W. 7 which sounds true that English-knowing customers would ask for Vulture mark. The evidence of P.W. 3 that the difference in the quality of the two threads is so marked, that customers ask for a superior article after the defendants thread is shown to them also reveals that the one cannot easily be mistaken for the other. P.W. 3s evidence does not show that his firm ever thought they would be guilty of deception if they offered the defendants goods when asked for eagle brand. Evidently they were under the impression that the defendants thread is not likely to be assumed to be the plaintiffs and having regard to the relative prices and qualities the two threads were apparently treated as being in different classes.

On the whole we have come to the conclusion that the evidence offered on behalf of the plaintiff is very meager and that the plaintiff has not succeeded in making out that there is any probability of a purchaser exercising ordinary caution being confused or deceived into buying the defendants goods under the impression that they are the plaintiffs.

One more observation has to be made. We cannot accept what Mr. Nambiar seemed to suggest at one stage in the course of his argument that we should have regard only to the name eagley and not to the label. In the first place in paragraph 5 of the plaint, it is stated that the said device or trade mark and the name eagley have become associated in the minds of the public and the traders and merchants with sewing thread made and sold by, and as the merchandise of the plaintiff. The case itself proceeded on the footing that the label also plays an important part. This is apparent from the evidence of the Bombay witnesses who describe the design of the label and who also offer their opinion that the mark on the defendants goods is such as to make the purchasers mistake them for the plaintiffs goods. As has been pointed out in Barloo v. Gobindram (24 Cal. 364) [LQ/CalHC/1897/29] , where numbers were used in conjunction with striking object designs and in Mohamed Noordin v. Abdul Kareem and Co. , (48 R.P.C. 491), where a name was used along with a picture, if the plaintiff claims that the goods are dealt with by the number alone or by the name alone divorced from the design or the picture, it is for him to make it out and in the absence of evidence that the design or picture is of no consequence, the legitimate inference should be that it played an important part along with the number or the name as the case may be. It seems to us that having regard to the pleadings in the case and also to the probabilities in cases of this kind the cumulative effect of the name and the figure falls to be decided.

We hold agreeing with the learned District Judge in this regard that the goods described as eagle brand with the distinctive label used by the plaintiff company have become associated in the Indian market with Chadwick Co.; but we are unable to accept the conclusion of the learned District Judge that there is such a resemblance in the name and label of the defendants goods as to render reasonably likely or probable that customers intending to buy the plaintiffs thread would be so confused and deceived as to mistake the defendants article for the plaintiffs. The question is one of fact on which evidence is essential and bearing in mind the guidance that is afforded by the several decisions to which reference has already been made we have come to the conclusion that the plaintiff has failed to make out his case as to the second and essential ingredient in a passing-off action, viz., likelihood of deception of a purchaser exercising ordinary caution.

In the result we allow the appeal and dismiss the plaintiffs suit with costs throughout.