RUSTON & HORNSBY LTD. versus THE ZAMINDARA ENGINEERING CO.

Ramaswami, J.-This appeal is br<mght by special leave from· the iudgment of the Allahabad High Court dated November 23, 1965 in First Appeal No. 208 ct 1958.

p. 223, margin A

The appellant is a limited liability company incorporated under the English Companies Act with its registered office at Lincoln, England. It carries on business in the manufacture and sale of diesel internal combustion engines and their parts and accessories. Rustori Hornsby (India) Ltd., a company registered in l1ndia under the Companies Act, 1956 is a subsidiary of the appellant. The-respondent is a firm carrying on business in the maITUfacture and sale of diesel internal combustion engines and· their parts. The appella1nt was a registered proprietor of the registered trade mark Ruston being registration No. 5120 in Class 7 in respect of internal combustion engines. Ruston and Hornsby (India) Ltd .. is the registered user 01' the said trade mark and manufactures in India and sells in India internal combustion engines under the trade mark "RUSTON". Sometime in June, 1955 the apoellant came to learn that the respondent was manu· facturing and selling diesel inter1nal combustion engines under the trade mark "RUSTAM". On July 8, 1955 the appellant wrote through its attorneys a letter to the respondent and called upon it to desist from using the trade mark "RUSTAM" on its engines as it was an infringement of the re.2ist-~red trade mark "RUSTON". The defendant replied that "RU~ TAM" was not an infringement of "RUSTON" as the words "RUSTAM INDIA" was used. On February 17. 1956 "the appellant instituted a suit "praying for a permanent injunction restraining the respondent and its agents from infringing the trade mark "RUSTON". On January 3, 1958 the Ad.ditional District Judge, Meerut, dismissed the suit holding that there was no visual or phonetic similarity between "RUSTON" and "RUSTAM". The appellant tuck the matter in appeal in the Allahabad High Court. By its judgment dated November 23, 1965 the Higl-i Court held that the use of the word RUST AM bv the respondent constituted infringement of the appellant's trade mark "RUSTON" ~nd the respondent should be prohibited from using the trade mark "RUSTA_M". ·But the. High Court proceeded to hold that the use oi the words "RUSTAM" 1NDIA" was not infringement because the plaintiff's engines were manufactured in England and the defendant's engines were m<inufactured in India. The suffix "India" would be a sufficient warni,n? that th'e en~ine sold was not a "RUSTON" engine manufactured in England and the respendent may be perrriitted · to use the combination "RUSTAM INDIA". Section 21 of the Trade Marks Act, 1940 states :

pp. 223–224, margin B

"Subject to the provisions of section 22, 25 and 26 :the registration of a person the register as proprietor of a trade mark in respect of any goods shall, give to that person the exclusive right to the use of the Trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shalI be deemed to be infringed by any person who, not behg the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registerP.d, and in such manner as to render the use of the mark likely to be take!l eitlier- ( a) as being used as a trade mark; or (b) to import a reference tq some person having the right either as a proprietor or as registered user to use the trade mark or to goods with ·which such a person as aforesaid is connected

p. 224, margin A

in the course o~ trade."

p. 224, margin D

The distinction between an infringement action lllld a passing ·off action is important. Apart from the question as to the nature •Of trade mark the issue in an infringeme,nt action is quite different from the issue in a passing off action. In a passing off action the ·issue is as follows :

p. 224, margin D

"Is the defendant selling goods so marked as <o be designed or calculated to lead purchasers to believe that

p. 224, margin E

they are the plantiff's goods ?" But in ain infringement action the issue is as fo,llows :

p. 224, margin E

"Is the defendant using a marJ< which is the same as or which is a colourable imitallon of the, plaintiffs

p. 224, margin F

registered trade mark ?" It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up.of the defendant's goods ·may be so much like the plaintiff's that a clel!r-case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plain- . tiffs goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, •iin an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the' defendant is improperly using the plaintiff's mark.

pp. 224–225, margin F

The action for infringement is a statutory right. It is dependent upqn the validity of the registration and subject to other restrictions laid down in ss. 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of B's goods· has become distinctive of them and that there is a probability of coP.fosion between them and the goods of A. No case of actual deception nor ~ny actual damage need be proved. At common law the action was not maintainable unless there had been fraud on A's part. In equity, however, Lord Cottenham L.C. in Millington v. Fox(') held that it was immaterial whether the defendant had been fraudule nt or not in using the plaintiff's trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the· Judicature Acts, by fusing Jaw and equity, gave the equitable rule the victory over the common law rule.

p. 225, margin A

The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery· Ltd. v. June Perfect Ltd.(').

p. 225, margin D

"The Statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating tc passing-off. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passing-off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by shuwing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in co.nsidering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered marl; as to

p. 225, margin E

be likely to deceive." In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire· whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringem~nt consists of using: : not the exact mark on the Register, but something similar to it, . the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusiqn or deception arising from similarity of marks is the same both in infringement . and passing off actions.

pp. 225–226, margin G

In the present case the High Court has found that there is a . deceptive resemblance between the word "RUSTON" and the word "RUSTAM" a,nd therefore the use of the bare word "RUSTAM" constituted infringement of the plaintiff's trade mark "RUSTON". The respondent has not brought an appeal against the judgment c.f the High Court on this point and it is, therefore, not open to him to chall~nge that finding. If the respondent's trade mark is deceptively similar ·o that of the appellant the fact that the word 'INDIA' is added to the respondent's trade mark is of no consequence and the appellant is enitled to succeed in its action for infringement of its trade mark.

p. 226, margin A

We are accordi;ngly of the opinion that this appeal should be . allowed and the appellant should be granted a decree restraining the respondents by a permanent injunction from infringing the plaintiff's trade mark "RUSTON" a;nd from using it in connection with the engines machinery and accessories manufactured and sold-- by it under the trade mark of "RUSTAM INDIA". The appellant is also entitled to an injunction restraining; the respondent and its agents from selling or advertising for sale of engines. machinery or accessories Uinder the name of "RUSTAM" or · "RUSTAM INDIA". The appellant is also granted a decree for nominal damages to the extent of Rs. 100/-. The appellant is further entitled to an order calling upon the respondent to deliver ·to the appellant price-lists, bills, invoic.~s and other advertising material bearing the mark "RUSTAM" or "RUSTAM INDIA". The appeal is allowed with costs to the above extent. 'Y.P. Appeal allowed.

p. 226, margin C