Sri Sai Agencies Pvt. Ltd.

vs Chintala Rama Rao on 5 August, 1997

Andhra High Court Andhra High Court Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997 Equivalent citations: 1997 (5) ALT 545 Author: B Raikote Bench: B Raikote JUDGMENT B.S. Raikote, J. 1. Though the matter was earlier posted for consideration of the vacate stay petition but on 19-6-1997, both the Counsel submitted that the main matter (i.e. appeal) itself could be heard and finally disposed of. Accordingly the appeal itself was heard on merits. 2. This is defendant's appeal challenging the order of the II Additional Chief Judge, City Civil Court, Hyderabad dated 13-12-1996 in I.A. No. 649/96 in O.S. No. 14/96. By the impugned order the Court below granted an injunction in favour of the respondent/plaintiff restraining the appellant/defendant from using the trade mark in question i.e. "Mathurag Ghee" with the pictoral device of Lord Krishna in sitting posture. 3. The learned Counsel appearing for the appellant strenuously contended that the impugned judgment and order of the lower Court is illegal and without jurisdiction and the Court below has not applied its mind to the facts of the case properly and as such the impugned order is liable to be set aside. On the other hand the learned Counsel for the respondent strenuously supported the impugned order. 4. In order to appreciate the rival contentions I have to summarily note the facts of the case. For the sake of convenience I refer to the ranking of the parties as assigned by the Court below, as plaintiff and defendant. 5. It is the case of the respondent/plaintiff that he started manufacturing and marketing ghee under the trade name Mathura Diary at Vijayawada from 1990. For the purpose of his business he adopted the trade mark as Mathura Ghee for marketing ghee. He also adopted a pictoral device of Lord Krishna in sitting posture, taking out butter from the pot. He stated that the pictoral device of the pot are printed in a distinctive blue and red colours and silver white background which is surrounded by the bright red background, on pouches. The plaintiff further submitted that he has spent a sum of Rs. 6.0 lakhs for promotion of the sales of the ghee and due to his untiring efforts and huge investment and the purity of the quality maintained, his product ghee has assumed reputation in the market and as such it has become an household word among the consumers. He submitted that the housewives identify his ghee manufactured with the trade mark as Mahura Ghee and with pictoral device of Lord Krishna in the sitting posture. As a result the turnover of his ghee during the year 1995-96 reached to an amount of Rs. 53,38,042/-. His turnover itself reflects the reputation he has built. The plaintiff further submitted that to safeguard his trade mark he filed an application for its registration under the Trade and Merchandise Markets Act, 1958 vide his application No. 677822 on 24-8-1995 claiming the use of the trade mark from the year 1990. He further submitted that he got trade mark caution notice published in Eenadu, Telugu daily on 18-11-1995, warning the ghee manufacturers against the adopting and marketing ghee under the said trade mark. When the things stood as that, he learnt that the appellant/defendant started manufacturing and marketing ghee in pouches bearing the replica of the petitioner's trade mark by adding only a letter "G" to the petitioner's trade mark, making it to read as "Mathurag". He also adopted the same Lord Krishna in the sitting posture taking butter from the pot. He further submitted that a comparison of both the pouches filed along with the plaint would clearly indicate that the defendant has borrowed all the features from the plaintiff's pouches so as to have a trade mark as "Mathurag" by committing piracy and infringement of the plaintiff's copy right in the trade mark. The plaintiff further alleged, that immediately after coming to know of this activity of the defendant he sent a notice to the defendant on 1-8-1996, through his Counsel requesting him not to use his trade mark but the respondent did not reply to it. He stated that the defendant was adopting a deceptive word "Mathurag" by borrowing all the other features from the pouches of the
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Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997

petitioner an-such an act of the defendant is nothing but to create confusion and deception in the minds of purchasers and to market his goods under the plaintiff's trade mark and thereby he has caused huge loss and hardship to the plaintiff. He further submitted that the consumers being illiterate and semi-literate housewives they are easily deceived by the similarity of the trade mark adopted by the defendant. The ghee is normally marketed in the super bazars and also in certain shops where there is self service counter system and if this passing off is allowed to continue the reputation and goodwill earned and built up by the plaintiff's trade mark would be eroded and it would be impossible to put the clock back. He further alleged that the defendant has usurped his trade mark, and has started marketing his ghee from the month of July'96 and the plaintiff being the prior user of the trade mark he was entitled to claim all the rights to the trade mark and accordingly he prayed for an order of injunction. 6. The defendant filed a counter denying the allegations made by the plaintiff. He also stated that the very suit filed by the plaintiff is defective and not maintainable under the provisions of the Trade and Merchandise Act, 1958 and as such he was not entitled for injunction. He denied the allegation of the plaintiff that the plaintiff started his business under the trade name "Mathura" with pictoral devise of Lord Krishna in the year 1990. He stated that no one can claim exclusive right over Lord Krishna and every Hindu who has faith in Lord Krishna is entitled to use this picture for his business. The alleged trade mark cannot be his sole right of the plaintiff. The allegation regarding the plaintiff's sales promotional expenses of Rs. 6.0 lakhs was denied. The plaintiff has not produced any material to show where from he purchased butter. The alleged certificate from his Chartered Accountant can never be the evidence to plead the alleged cost incurred by the plaintiff for the manufacturing of his goods. The defendant, further alleged that the plaintiff's family and the defendant's family are closely related. He stated that his proprietary concern, under the name and style of Sri Sai Agencies, had undertaken distribution of ghee in Hyderabad and himself being the instrumental for its promotion of the business. He further stated that due to his experience, the sales of Sri Sai Agency shot up from Rs. 30,000/- to Rs. 3.0 lakhs per month. He further submitted that due to the close relation, the plaintiff agreed with defendant's concern for marketing ghee and accordingly M/s. Sai Surya Agency Private Limited, got registered with the Registrar of Companies, on 8-6-1995 vide Registration No. 01/20638 with its registered office at Tilak Nagar, Hyderabad, and established a factory at Madugumpally(V) Bibinagar(M) Nalgonda district. He further stated that he obtained licence from the Department of Industries on 19-7-1995 and started manufacturing ghee, by processing the milk, under the name and style of "Mathurag Ghee" "Naturally Pure". He stated that he has registered his company with the sales tax department for the purpose of business and for submission for the returns regularly and the sales tax department is imposing tax on his turnover. He stated that the defendant adopted his own trade mark as "Mathurag Ghee" "Naturally Pure" with pictoral device of Lord Krishna in the sitting posture and eating butter by taking it from the pot, printed in maroon colour with background of alluminium in blue colour, having monogram of its own and such a trade mark is distinctive in appearance and different from the one used by the plaintiff and thus they are in no way similar, as alleged by the plaintiff. He further submitted that both the pouches are easily distinguishable having regard to the pictoral devise and the language used. He further stated that the pouches are of different size and quantity. He stated that the plaintiff has filed a suit only as a counter blast, for demanding money or remuneration, which the plaintiff was liable to pay, for the propriety concern of Sri Sai Agencies. In fact when the plaintiff questioned the defendant regarding the use of the trade mark, on the intervention of the elders of both the families, a settlement was arrived at, between the plaintiff and the defendants and accordingly an agreement was entered into on behalf of the plaintiff, through his son in law Ragamala Murali Krishna, s/o Kanaka Rao, by receiving an amount of Rs. 60,000/- and this Ragamala Murali Krishna agreed that the defendant could do his business under the name and style of "Mathurag Ghee" by using the device of Lord Krishna with certain minor changes regarding the colour and the monogram. He further submitted that in view of the said agreement the plaintiff has specifically permitted the defendant to use the said trade mark and do his own business under the said device. The plaintiff having permitted the defendant to use the trade mark for defendant's products, could not complain regarding its use by the defendant. In view of these circumstances, the defendant pleaded that the plaintiff has not made out any prima facie case for the grant of injunction and the balance of convenience was in his favour, since the defendant invested huge amount for establishing his factory and also spent lot of amount for marketing his product. He stated that according to his own showing
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Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997

the plaintiff filed an application to register the trade mark on 24-8-1995 whereas the defendant has applied for the same on 29-6-1995 and as such the application of the defendant was much prior to the application of the plaintiff and both the applications are still pending for consideration. The defendant denied the allegation, regarding the publication of the notice by the plaintiff in Eanadu daily newspaper on 18-11-1995. At any rate, the defendant submitted, that the trade marks in question are not similar and as such there would not be any confusion among the customers in choosing their respective products of the plaintiff and the defendant. He stated that from the several documents, he has filed, it was clear that the defendant started his business from 1995 onwards to the knowledge of the plaintiff. The plaintiff cannot claim a right of prior user of the trade mark, which is not even registered, and he cannot claim monopoly over Lord Krishna and as such the plaintiff cannot claim any kind of exclusive right over the trade mark in question. He stated that the suit itself is filed belatedly, after six months of the publication of his notice and absolutely there is no prima facie case in his favour. Moreover the plaintiff has no right to issue public notice like the one published in Eenadu newspaper, threatening traders not to sell their other products. Accordingly the defendant requested the Court to dismiss the petition filed by the plaintiff for injunction. 7. The plaintiff has filed rejoinder denying the allegations made by the defendant. He denied that there was any agreement, nor the defendant was permitted to use the said trade mark. He stated that as per the established principle of law a person can claim an exclusive right, in the device of deity and trade mark, by virtue of long and continuous user, whether such trade mark is registered or not, and he stated that the certificate issued by the Chartered Accountant regarding the expenditure of Rs. 6 lakhs, he incurred, was based on the account books maintained by the plaintiff, in the regular course of business, and such a certificate cannot be ignored. He further stated that according to the counter, the defendant admittedly commenced the marketing of "Mathurag Ghee" from 19-7-1997, that means, nearly 5 years subsequent to the date of the plaintiff using his trade mark and the defendant's trade mark is not at all distinctive and it is nothing but a replica of the plaintiff's trade mark. He stated that the plaintiff has not entered into any settlement, nor authorised any person, much less Ragamala Murali Krishna, to arrive at an agreement with the defendant relating to the plaintiff's trade mark "Mathura Ghee" and he never received any amount either from the defendant or from anybody towards the alleged settlement. As such the alleged settlement is nothing but a device invented by the defendant to defeat the plaintiff's right in the trade mark. He submitted that as per the alleged agreement an amount of Rs. 50,000/- was to be paid to the mediator. If that is so the defendant could not claim to have paid the said amount to Ragamala Murali Krishna or to the plaintiff. At any rate, the plaintiff was not aware of the commencement of the alleged business by the defendant till July'96 when their goods appeared in the shop for sale. The plaintiff denied the allegations of the defendant that they invested huge amount. He reiterated that the plaintiff has neither authorised anybody, much less Ragamala Murali Krishna to enter into any agreement on behalf of the plaintiff, in relation to his trade mark and as such he is not a 'permitted user' and the present counter is filed only to extract money from the plaintiff. He further stated that absolutely there is no delay in filing the suit. Assuming that there is delay in filing the suit the same cannot be a ground for refusing the injunction, since the plaintiff has made out a prima facie case. Accordingly the plaintiff prayed, before the Court below, that the injunction may be granted as prayed for by him. 8. The plaintiff filed Ex. A-1 to A-55 in support of his case and the defendant has filed Exs. B-1 to B-32 in support of his case. On consideration of the entire evidence on record, the Court below granted injunction in favour of the plaintiff by holding that the plaintiff has made out a prima facie case and the balance of convenience for granting injunction was in favour of the plaintiff. It is in these circumstances, as I have already stated above, the defendant has come up in this appeal. Before proceeding with the discussion of the case, I have to note, at this stage itself, that both the plaintiff and the defendant have applied for registration of the trade mark under the Trade and Merchandise Act, 1958 and the same is not granted to them. As such the instant case is a case of passing off action, but not a case of infringement of trade mark. In "Ruston & Hornby Ltd. v. Z. Engineering Co. , the Hon'ble Supreme Court made a clear
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Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997

distinction between an infringement action and a passing off action as follows : "4. The distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows : "Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods ? 5. But in an infringement action the issue is as follows : "Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's 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 clear 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 plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in 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." Relying on the said judgment of the Hon'ble Supreme Court and other High Courts in a reported judgment of this Court in M. Mahender Shah v. Tiruchy Flour Mills (1997(2) ALD 251), (rendered by me) held that : "an action for 'passing off' lies against the defendants if he sells goods, so marked, designed or calculated to lead purchasers to believe that they are the plaintiff goods. But in the case of an action for infringement it is enough if the defendant uses the mark which is similar to the registered mark of the plaintiff for such action. The purchasers or the consumers, therefore, believe that particular goods of a particular trade mark are good or bad only on the basis of its trade mark. The longer the use the more would be his assessment regarding the quality of a particular trade mark. It is only on this principle a trader acquires a 'right of property' in a distinctive market merely by using it upon in connection with his goods as held by the High Court of Bombay in "Consolidated Foods Corporation v. Brandon & Co.", . Thus an action for passing off is "a common law remedy being in substance an action for deceit, i.e. a passing off by a person of his own goods as those of another" (AIR 1965 SC 680- Durgadutt v. Navaratna Pharmaceutical Laboratories". In view of the above judgments, I have to consider this case as one relating to passing off action. In a passing off action what is to be considered is who is the prior user of the trade mark, since the prior use is a decisive factor. As held by this Court in (2) supra "the prior use was considered to be the relevant because during such a period consumers or purchasers must have found that quality of a particular product associated with a particular brand name either it is good or bad and using a similar trade name or mark by two different persons would definitely cause confusion in the minds of the consumers and in such circumstances the sale of goods by the person using the trade mark latter may tantamount of passing off." Therefore, now, I proceed to consider the respective cases of the plaintiff and the defendant in order to find out who is the prior user. According to the plaintiff he started using the trade mark in question right from the year 1991 for marketing his product ghee. In order to substantiate his contention he has relied upon the cash bill books for the year 1990 to 1995, vide Exs. A-1 to A-6. He has also relied upon the photostat copies of the Commercial Tax Assessment orders of the plaintiff business vide Exs. A-35 to A-50. These documents clearly establishes that the plaintiff was marketing his product ghee right from the year 1990. He also produced the certificate issued by the Chartered Accountant vide Ex. A-34 to show that he has spent huge amount for
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Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997

publicity and advertisement. The said certificate of the Chartered Accountant clearly establishes that the plaintiff has spent Rs. 1,99,558.81 ps for the year 1992-93, Rs. 1,7,650.70 ps for the year 1993-94, Rs. 95,613.55 paise for the year 1994-95 and Rs. 1,64,248.00 for the 1995-96. This document also further reinforces the case of the plaintiff that he was marketing the goods right from the year 1990 with due advertisements through different media. As against this, the documents of the defendant show that he started marketing his goods from the year 1995 onwards. According to his own documents vide Ex. B-2 and B-3, it is clear that the defendant's company, under the name M/s. Sri Sai Surya Agencies, was started on 8-6-1995 and Ex. B-4 is the copy of the provisional registration issued by the Department of Industries, in the name of the defendant company on 19-7-1995, and Ex. B-5 is the copy of the certificate of registration issued by the Central Sales Tax authorities in the name of the defendant on 21-11-1995. Likewise Ex. B-6 also shows that the defendant company was issued a certificate of registration by the Commercial Tax Department and Ex. B-5 is the assessment order dated 30-5-1995 for the year 1995-96. Ex. B-8 is the proceedings of A.C.T.O. dated 30-5-1996 showing the tax payable by the respondent company for the year 1995-96. From these documents, it is clear that the defendant company started its business from the year 1995-96 onwards. Assuming for the sake of the argument that they were using the trade mark 'Mathurag Ghee' it should be from the year 1995-96 onwards only and not prior to that. Ex. B-9 and 10 also shows that the plaintiff appointed the defendant as their agents for marketing the goods of the plaintiff. Moreover as per Exs. B-11 and B-12, dated 18-11-1995, a letter sent by Kamat & Kamant patent and Trade Mark Attorney, it is clear that the defendant applied for registration of trade mark "Mathurag Ghee" in the year 1995. As I have already stated above, both the applications filed by the plaintiff and the defendant are still pending before the registration authorities for consideration. At any rate, the pendency of such applications by both the parties will have little consequence on the merits of the case, as I have already stated above it is not a case of an infringement of any trade mark. So far as the passing off action is concerned, as I have already noted above, the plaintiff has proved that he started using the trade mark right from the year 1990 and such a use of the trade mark by the plaintiff is much prior to the use of the trade mark by the defendant from the year 1995. However, the learned Counsel for the petitioner contended that even if it is assumed that the plaintiff started using the trade mark much prior to the defendant using the same, the defendants are entitled to use this trade mark in view of the agreement entered into between the plaintiff and Ragamala Murali Krishna vide Ex. 32, dated 27-11-1995. On the other hand, the plaintiff's case is that the said Ragamala Murali Krishna has nothing to do with the plaintiff's business and he was not authorised to enter into an agreement with the defendant on behalf of the plaintiff. He relied upon other documents including Ex. B-16, a receipt signed by the said Ragamala Murali Krishna, on a small slip dated 27-5-1995 for Rs. 37,000/- and on that basis the defendant contended that Ragamala Murali Krishna was looking after the business of the plaintiff and as such he was authorised to enter into an agreement. I am afraid, this contention, cannot be accepted for the simple reason that absolutely there is no evidence on record, as on today, in what capacity the said Ragamal Murali Krishna was working with the plaintiff. At any rate, there is no material on record, for holding that Ragamala Murali Krishna was acting for or on behalf of the plaintiff, nor there is any evidence on record to hold that the said Ragamala Murali Krishna was authorised by the plaintiff to sign the said agreement vide Exh. B-32 dated 27-11-1995. This is a matter yet to be gone into at the time of the trial of this case. Moreover, in the said agreement it is not stated that the said Ragamala Murali Krishna was authorised to sign by the plaintiff. As contended by the plaintiff's Counsel the agreement also does not show that an amount of Rs. 60,000/- was paid to Ragamala Murali Krishna and in fact as per the said agreement it was to be paid to Sri Atkharalam, and it is not known, at this stage, why the said money was required to be paid to Sri Atkharalam. The receipt alleged to have been executed by Sri Atkharalam shows the receipt of Rs. 50,000/- only as against Rs. 60,000/- stipulated in the agreement. Even the content of the said receipt discloses that the said amount of Rs. 50,000/- was received subject to return of ADT 3941 auto, and no due certificate. From the content of the said receipt, it prima fade, appears that the said amount of Rs. 50,000/- was received by Sri Atkharalam for certain other purpose not as a consideration stipulated in the agreement, Ex. B-34. As I have already stated these are the matters, yet to be gone into in the case and at this stage it is not possible to accept the said agreement as an agreement entered into between the plaintiff and the defendant. Therefore, on the basis of the said agreement the defendant cannot contend, at this stage, that on the basis of the said agreement, he was authorised to use
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Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997

the trade mark in question i.e. "Mathura Ghee" with slight modification as "Mathurag Ghee" with the same monogram and colour. In this view of the matter, I am of the opinion that the Court below rightly refused to rely on the agreement, Ex. B-32. After excluding Ex. B-32 from consideration what remains is that the plaintiff started using "Mathura Ghee" right from the year 1990 and the defendant started using Mathurag Ghee from the year 1995 onwards. As I have already stated above, the use of the said trade mark by the plaintiff is much prior to the use of the defendant and as such the defendant using the said trade mark tantamounts to passing off action. The learned Counsel for the petitioner nextly contended that even if it is taken that the plaintiff was using his trade mark "Mathura Ghee" much prior to the using of trade mark "Mathurag Ghee" by the defendant the two trade marks are entirely different and absolutely there is no similarity between them. Therefore, there is little chance for the confusion to the consumers, in choosing the product for their choice. In order to consider this argument I looked into pouches used by the plaintiff and the defendant for marketing their ghee. The trade mark in the plaintiff's pouch shows "Mathura Ghee" Pure & Fresh, with Lord Krishna in the sitting posture taking butter from the pot and at the bottom, manufactured by Mathura Diary, Durgapuram, Vijayawada is printed. As against this, the pouch used by the defendant, for marketing his ghee, reads as "Mathurag Ghee" Naturally pure. The picture of Lord Krishna in sitting posture taking butter from the pot. From looking to both the pictures, it is clear that they are almost exactly the same except little colour change in the defendant's pouch, with almost similar predominant red colour used for the pot and the dress of Lord Krishna. The only difference is that in the pouch of the plaintiff there is further star mark with 'economy pack' printed inside, and the same is not found in the pouch used by the defendant. At the bottom in the rectangular portion of defendant's pouch it is printed that manufactured by Sri Sai Surya Agencies Private Limited, Hyderabad, Andhra Pradesh. Therefore, the contention of the learned Counsel for the defendant that the printing of monograms and trade marks are different in both the pouches cannot be accepted, even though the trade mark of the defendant reads as "Mathurag Ghee" as against "Mathura Ghee" of the plaintiff. Though there is an extra letter "G" in the trade mark of the defendant that by itself does not make it substantially different from the trade mark of the plaintiff. In similar circumstances, the Hon'ble Supreme Court pointed out in "K. Krishna Chettiar v. Ambal & Co. , that "the resemblance between the two marks must be considered with reference to ear as well as eyes". It is further pointed out that the striking 'phoenetic' as well as the 'visual' resemblance between the two trade marks should be considered in order to find out, the essential features of both the trade marks; and ultimately the Hon'ble Supreme Court held that the trade mark sought by the appellant as "Ambal" was similar to already registered trade mark of the respondent as "Andal". The Hon'ble Supreme Court pointed out that even though there is no visual resemblance between the two marks, but, the ocular comparison is not always the decisive test and even the striking phonetic resemblance between the distinctive words used also would be relevant to be considered and accordingly it held that the appellant's trade mark "Ambal" could not be registered as against the trade mark of the respondent "Andal" which was already registered. In E.E.H. Mills v. A.T. Mills , it is further held by the High Court of Calcutta that "17 .... An action for passing off is an action for deceit for colourable imitation of a mark adopted by a person in relation to his goods which has acquired distinctive reputation in the market, as referring to the goods belonging to or produced by that person only. 18 .... 19. Evidence of actual deceit however is not necessary. The cause of action in an Action for passing off arises by the use of the defendant of mark which is likely to deceive on account of being similar to the plaintiff's mark either visually, phonetically or otherwise so that the Court is likely to conclude that there is an imitation
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Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997

and no further evidence is required to establish that the plaintiff's rights, have been violated." In the light of the above principle the said Court considered the trade mark of the defendant "Sacha Moti" used since July' 1996 as against the plaintiffs trade mark "Moti" being used from the year 1956 and accordingly held that the plaintiff was entitled for injunction. In the light of the above principles of law laid down by the Hon'ble Supreme Court and the other High Courts, I now proceed to consider the trade mark used by the plaintiff and the defendant on their respective pouches. As I have already noted above the only difference between the defendant's trade mark and the plaintiff's trade mark is only the alphabet "G" so far as the name is concerned. Plaintiffs trade mark is "Mathura Ghee" and the defendant's trade mark is "Mathurag Ghee". Phonetically they are very much similar to each other. Even the pictorial and monogram is concerned absolutely there is not much difference between these two devices used by the plaintiff and the defendant and as such the use of the trade mark by the defendant is likely to deceive and confuse the persons of the classes, who generally purchase the ghee in question. Being the same product, i.e. ghee, for both the commodities, the trading channel is the same i.e. grossory shops and super markets. Therefore, such a confusion cannot be avoided if the defendant is allowed to pass off his goods. In order to consider whether a particular device is likely to create a confusion to a purchaser we have to keep in mind a purchaser of an ordinary prudence of an average memory who is likely to mistake it for a device or trade mark with which he is already acquainted. In Amritdhara Pharmacy v. Satya Deo , the Hon'ble Apex Court relying on its own earlier judgment, in . Held that "8 .... the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Lakshmandhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as 'current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between 'current of nectar' and 'current of Lakshman'. 'Current of Lakshman' in a literal sense has no meaning; to give it meaning one must further make the inference that the 'current or stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise to the extent of seeing the so-called ideological difference between 'Amritdhara' and 'Lakshmandhara'. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments. (9) We agree that the use of the word 'dhara' which literally means 'current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing the whole word has to be considered."
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Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997

In Parle Products v. J.P. & Co., Mysore , the Hon'ble Supreme Court referring to Kerly's "Law of Trade Marks and Trade Names", 9th edition, at para 88, further pointed out that for such a comparison of the two trade marks they should not be placed side by side, to find out whether there is any difference between them. But, what is to be considered is that a person acquainted with one mark, and not having both the marks side by side, for comparison, might well be deceived. In paragraph 8 of the said judgment (6) supra the Hon'ble Supreme Court with an approval of Karly's Law of Trade Marks and Trade Names (9th edition paragraph 838) quoted the same as under : "8 .... "Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person aquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the good with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own." The Hon'ble Apex Court in the light of the above observations of the learned authority further ruled that 9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and it so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case were find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. 10. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The words "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiff's if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendant's wrapper is deceptively similar to the plaintiff's which was registered. 11. In the light of the law laid down by the Hon'ble Supreme Court, in the above decisions, I am of the opinion that the trade mark used by the defendant is similar in all respects to the trade mark used by the plaintiff. As I have already noted above, the plaintiffs have popularised his trade mark by investing huge amount, for advertisements, through different media right from the year 1990. An ordinary consumer may confuse himself with the goods manufactured by the defendant as that of the plaintiff. As I have already noted above, the plaintiff started using the trade mark "Mathura Ghee" right from the year 1990 whereas defendant started using his trade mark "Mathurag Ghee" only from the year 1995. In these circumstances, the defendant cannot be permitted to pass off his goods. In similar circumstances, in "Astra-IDL Ltd. v. TTK Pharma Ltd. , the High Court of Bombay held that 'Betalong' and 'Betaloc' used for pharmaceutical preparations were
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Sri Sai Agencies Pvt. Ltd. vs Chintala Rama Rao on 5 August, 1997

phonetically, visually and structurally similar. So also in the present case "Mathura Ghee" and "Mathurag Ghee" are phonetically and structurally are the similar and likely to confuse the consumers and as such the plaintiffs are entitled for injunction. 12. Lastly, the learned Counsel for the defendant contended that the device of Lord Krishna can be used by every devotee and hence the defendant also can use it. He elaborated his argument contending that Lord Krishna is a deity for Hindus and the plaintiff cannot have any monopoly over such a device. Over ruling similar contentions, the Division Bench of the Madras High Court in "A.P.W. v. Suryanarayanaiah (DB), held that "28 .... But, it was never pretended that the word 'Ganesh' cannot become distinctive for respondent firm's Agarbathis, or that it is not registrable. We need only observe, without proceeding further into this aspect, and leaving the issue quite open, that there are several other names of the deity (Vigneswara, Vinayaka etc.) which could be appropriately used by persons, designing to associate their goods with the favour of the deity, if the Mark and device, which are thus invented, do not otherwise infringe any prior registered device under the Trade Mark Law." 13. In the light of the observations made by the Hon'ble Division Bench of the High Court of Madras, I am of the opinion that the device of any deity with a particular name, monogram, colour combination, and picture pattern one can develop a right, in such a device, as his trade mark, and such a trade mark can also be registered. Some other trader may use some other name of a particular deity with a different phonetic and visual structure. What ultimately that has to be considered by the Court in cases of this type is its distinctiveness and independence as a trade mark quite different and dissimilar to any other trade mark in existence. Once a particular type of trade mark of a particular trader with a particular name and picture of a deity assumes popularity as a trade mark, the others cannot imitate it only on the ground that he is also a devotee of a 'deity' used by the 'earlier' trade mark. Therefore, the contention of the learned Counsel for the defendant that Lord Krishna being the deity of the defendant, the defendant is entitled to make use of it cannot be accepted. 14. The very fact that the plaintiff was using the trade mark "Mathura Ghee" much prior to the use of the trade mark "Mathurag Ghee" by the defendant the plaintiff definitely has developed reputation and as such the plaintiff has made out prima facie case for injunction. In similar circumstances, the High Court of Delhi in "M/s. Hindustan Radiators Co. v. M/s. Hindustan Radiators Ltd. , held that on the basis of such prior use, of the trade mark, of the plaintiffs has acquired a distinctiveness and is associated in the minds of the general public, as goods of the plaintiff, and as such, the prima facie case is established by the plaintiff. It also further held that once a prima fade case is established the balance of convenience also would follow. In the instant case the plaintiff has proved that he has invested lot of money to advertise and popularise his product "Mathura Ghee" and in case the defendant is allowed to market his goods under the trade mark "Mathurag Ghee" the plaintiff would be put to great loss and hardship, and his loss cannot be compensated in terms of money since it is difficult to put the clock back. The object of the law in this behalf is to prevent unfair competition and undue advantage being taken of the reputation by the rival traders by means of false or misleading devices. 15. For the above reasons, I am of the opinion that the impugned order of the Court below granting injunction in favour of the plaintiff does not call for interference. It cannot be said that the impugned judgment and order of the Court below is either capricious or perverse. Hence, I pass the order as under : This C.M.A. is accordingly dismissed, but in the circumstances without costs. 16. Appeal dismissed.
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