Judgment :- These two appeals arise from the judgment and decree of the learned District Judge, Kozhikode, in O. S. No, 2 of 1977. A. S. No. 71 of 1978 is the plaintiff's appeal against the decree rejecting his prayer for injunction to restrain the defendants from infringing the plaintiff's trade-mark. A. S. No.73 of 1978 is the 1st defendant's appeal against the decree granting the plaintiff's prayer for injunction restraining the 1st defendant from passing off his goods as the plaintiff's goods. The 2nd defendant remained ex parte in the court below and he has not entered appearance here. The contesting parties in these two appeals will be generally referred to as plaintiff and defendant. 2. The plaintiff is the proprietor of Panama Soap Works, Kakkodi. The defendant is the proprietor of Puthiyara Soap Works, Puthiyara, Calicut. The plaintiff manufactures washing soaps under the registered trade-mark "Panama". The registration of the trade-mark was obtained by the plaintiff with effect from 15-11-1974 under the Trade and Merchandise Marks Act, 1958 (Act 43 of 1958) (the Act). It is alleged by the plaintiff that he has been using the trade name 'Panama' with its distinctive design, get-up, style, and colour scheme ever since 1970 when he first started production of soaps. The plaintiff's business was carried on during 1971-1972 under the name "Panama Chemicals, Calicut. S. India.". It was subsequently renamed as 'Panama Soap Works, Kakkodi.' The plaintiff's trade-mark is contained in Ext. A53 and it is printed on his wrapper, Ext. A6. The 1st defendant started manufacturing soaps from 18-6-1974 under the mark 'Prameela' which is printed in his wrapper, Ext. A41. The second defendant has adopted Ext. A42 wrapper which is almost identical to Ext. A-41. The defendants' marks are not registered. When the plaintiff came to know of the 1 st defendant's manufacture of Prameela soaps, Ext. A39 notice dated 9-7-1977 was sent to him on behalf of the plaintiff pointing out the striking resemblance of his mark 'Prameela' to the plaintiff's registered trade-mark 'Panama'. The defendant was told that his mark was an infringement of the plaintiff's registered trade-mark, and he was accordingly called upon to stop using the mark 'Prameela' in the present form and style. He was also told that he was passing off his soaps as the plaintiff's soaps and he was called upon to refrain from such acts. Ext. The defendant was told that his mark was an infringement of the plaintiff's registered trade-mark, and he was accordingly called upon to stop using the mark 'Prameela' in the present form and style. He was also told that he was passing off his soaps as the plaintiff's soaps and he was called upon to refrain from such acts. Ext. A40 dated 4th August 1977 was the reply sent to the plaintiff on behalf of the defendant. The defendant's advocate explicitly stated in Ext. A40 that it was not the defendant who imitated the plaintiff's mark and get-up, but it was the plaintiff who imitated the defendant's mark and get-up. This is what he stated: "In fact your clients have copied the style, colour scheme, etc. of my client's goods 'Prameela 315' as is obvious from the specimen served along with the notice ...Your clients have attempted to make a colourable imitation of my client's goods to grab at the reputation my client is already having in the market." Ext. A43 dated 20-8-1977 was sent on behalf of the plaintiff to the defendant's lawyer calling upon the defendant once again to refrain from infringing the plaintiff's trade-mark "Panama" and from passing off the defendant's goods as the plaintiff's goods. 3. As the defendant refused to comply with the plaintiff's demand the suit was instituted on 7-10-1977. The plaintiff's user of the 'Panama' trademark with its distinctive get-up, style and colour scheme as from 1970 and the registration of the said mark with effect from 15-11-1974 were specifically pleaded in the plaint. It was alleged that the defendant infringed the plaintiff's mark as well as passed off his goods as the plaintiff's goods. The plaintiff sought an injunction against the defendant on both the grounds. 4. In his written statement the defendant claimed user of his mark "Prameela" as from 18-6-1974. He stated that even if his mark infringed the plaintiff's mark in the present get-up and style, the defendant was protected by reason of prior user in terms of S.33 of the Act. He categorically asserted that it was not he who imitated the plaintiff's mark but it was in fact the plaintiff who imitated his. This is what he stated in para. He categorically asserted that it was not he who imitated the plaintiff's mark but it was in fact the plaintiff who imitated his. This is what he stated in para. 3 of the written statement: "In fact the plaintiff has copied the colour scheme, lay out, design and form of our trade name Prameela 315, with a writing of a name Panama which is copied from Panama cigarettes." He further states in para. 7: 'Moreover, the plaintiff having surreptitiously adopted the layout, colour scheme, get-up, form and style of this defendant's product as well as of many other manufacturers, made false declaration before the Registering authorities that they are exclusively his, does not get any right even on registration on the form, style and lay out." These statements by the defendant are extracted to show that there is admittedly a striking resemblance between the plaintiff's and the defendant's marks in their present form and style. The question is who has imitated whose mark. 5. The learned judge on the basis of the evidence before him concluded that the plaintiff commenced manufacturing "Panama" soaps long before the defendant started manufacturing "Prameela" soaps He also held that the defendant's wrappers Exts. A41 and A42 bore such close resemblance to the plaintiff's wrapper Ext. A6 containing the mark 'Panama' that the defendants attempted to pass of their goods as the plaintiff's goods. The Judge, however, found on the basis of certain observations of this Court in M. Damodara Pai v. C. K. Mani Lai (1972 KLJ 19) that, notwithstanding the registration, the plaintiff had no exclusive right to the word "Panama" or to the designer colour scheme as shown in his wrapper. This is what he stated: "I am of opinion that this principle governs the present case also. Here also it is the entire design of the wrapper which has been registered as a trademark. Such a registration will not protect the design as such. The design as such including a particular colour scheme cannot be treated as a mark or a trade mark. Therefore it has to be held that the plaintiff does not have any exclusive right either on the word 'PANAMA' or on the design or colour scheme shown in the wrapper Ext A6." (emphasis supplied) 6. Ext. The design as such including a particular colour scheme cannot be treated as a mark or a trade mark. Therefore it has to be held that the plaintiff does not have any exclusive right either on the word 'PANAMA' or on the design or colour scheme shown in the wrapper Ext A6." (emphasis supplied) 6. Ext. A53 dated 29-11-1977 is the certificate issued by the Assistant Registrar of Trade Marks to the plaintiff containing the registered trade-mark which, in terms of S.23 (1) of the Act, came into effect as from the date of the application, viz., 15-11-1974. The mark contains the name "Panama" in italics on top. Below that the words "Bar Soap" in capital letters are written in a parallelogram and below the parallelogram the name "Panama" appears in capital letters. On either side of the capital letters there is a rectangle. The rectangle on the left contains the words "A Panama Product" and the one on the right contains the picture of a flower. There is a segment of a circle over the right-hand side of the parallelogram. That circle has a flower in it. On either end of the design, "Panama" is written in white letters on black back-ground. All the letters with the exception of those in white arc in black. There is a disclaimer of the exclusive use of the device of flowers. There is no limitation of colour, and therefore the mark, which is shown in Ext. A53 in black and white, is deemed to be registered for all colours. (See S.10(2) of the Act). The mark is printed in Ext. A6 wrapper. Ext. A6 contains the following additional information. The words "Trade Mark Regd." and below it the figure "No. 300700B" appears on the left hand side of the parallelogram at the top of the wrapper. The weight and price are shown on the left hand side of the name "Panama" in capital, as "N. W. 250 Gms. Price Rs. 135." Behind the name "Panama" in capital at the top appears the address "Panama Soap Works. Kakkodi, 673011." The trade-mark is printed on Ext. A6 at the top as well as at the bottom in such a way that the marks appear on all sides of the soap as on M. 0.2 which is the Panama soap covered in Ext. A6 wrapper. 7. In Ext. Kakkodi, 673011." The trade-mark is printed on Ext. A6 at the top as well as at the bottom in such a way that the marks appear on all sides of the soap as on M. 0.2 which is the Panama soap covered in Ext. A6 wrapper. 7. In Ext. A6 the plaintiff has put yellow colour in the parallelogram containing the words "Bar Soap". Likewise the segments of circles with the flower, the rectangles on the right containing the flower and the rectangle at the bottom left containing the words "A Panama Product" and the rectangle on top left showing the weight and price arc all in yellow But the letters and the designs are in black except that white strokes appear on the flowers in the segments of circles. 8. The defendant's mark "Prameela" is contained in Ext. A41 wrapper. It closely copies the plaintiff's wrapper (Ext. a6 ), except for the following differences: Instead of "Panama" the name "Prameela" appears in the same places and style. Unlike in Ext. A6 the rectangles in Ext. A41 carry black borders. The segments of circles and the rectangles on the right hand side of Ext. A41 contain, instead of the flower, the figure "315". Similarly the two rectangles on the left-hand side of Ext. A41 contain the letters "A Puthiyara Product" in the place of the weight and price on the left-hand side at the top, and "A Panama Product" on the left-hand side at the bottom, of Ext. A6. Instead of the address of the manufacturer shown in Ext. A6, the price and weight appear in Ext. A41 between the name 'Prameela' in italics and the parallelogram at the bottom. But for these differences, the style of writing, the design, colour and the get-up of the two wrappers (Exts. A6 and A41) are identical. The words "Bar Soap" are printed alike in both the wrappers in the respective parallelograms. 9. Ext. A42 is the wrapper used by the 2nd defendant and it is spoken to by Pw.1. It is identical to Ext.A41 except for the following minor differences. Instead of the figure "315" in the segments of circles and the rectangles on the right-hand side of Ext A41, in Ext. A42 the segments of circles and rectangles on the right hand side contain the letter "OM" in Devanagiri script. The rectangles on the left-hand side of Ext. It is identical to Ext.A41 except for the following minor differences. Instead of the figure "315" in the segments of circles and the rectangles on the right-hand side of Ext A41, in Ext. A42 the segments of circles and rectangles on the right hand side contain the letter "OM" in Devanagiri script. The rectangles on the left-hand side of Ext. A42 contain the words "A Prameela Product" instead of "A Puthiyara Product" as in Ext A41. The address "Prameela Soap Works, Calicut-673611" appears on the top of Ext. A42 over the italicised "Prameela". The weight of the soap which is given above the parallelogram at the bottom is shown as "280" in Ext. A42 instead of "250" as in Ext. A41. Referring to Exts. A6, A41, and A42, the judge says: "The essential and broad features found in the wrappers used by the plaintiff have been copied by defendants 1 and 2 for their wrappers. There can be no doubt that the average customer will be misled and confused into believing that soaps manufactured and sold by the defendants are those of the plaintiff....!, therefore, hold that the defendants have attempted to pass off their goods as alleged in the plaint." The judge has thus upheld the plaintiff's case as regards passing-off. 10. The Judge did not enter on a consideration of the merits of the contentions regarding infringement for the reason that, according to him, the plaintiff's design on the wrapper was not protected by the registration of the mark obtained by him. Admittedly the trade mark contained in Ext. a53 was duly registered under the relevant provisions of the Act. The plaintiff is therefore the registered proprietor of the mark, and is entitled to institute proceedings to prevent, or to recover damages for, the infringement of the mark. The registered proprietor has the exclusive right to the use of the trade-mark in relation to the goods in respect of which the trade-mark is registered. (Subject to the exceptions, conditions or limitations referred to in the act. ) (S.28). The registered proprietor has the exclusive right to the use of the trade-mark in relation to the goods in respect of which the trade-mark is registered. (Subject to the exceptions, conditions or limitations referred to in the act. ) (S.28). Infringement of a trade-mark is mentioned under S.29(1) as follows: "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 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." (emphasis supplied) If a person Having no right to the trade-mark uses a mark which is identical with or deceptively similar to the trade-mark, the owner of the trade-mark will be entitled to restrain that person from the use of the trade-mark and obtain relief for the infringement of the same. The expression 'deceptively similar' is defined under S 2(1)(d). It says: "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion." S.31(1) says: "In all legal proceedings relating to a trade mark registered under this Act, (including applications under S.56), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof." 11. The Act prohibits registration of marks which are likely to deceive or cause confusion, or the use of which would be contrary to any law for the time being in force, or which contains scandalous or obscene matter, or any matter likely to hurt the religious susceptibilities of any class or section of the people, or which would otherwise be disentitled to protection in a court (S.11). The Act further provides that, except in certain special cases, no mark shall be registered which in identical with or deceptively similar to another registered trade mark. (S 12). The Act further provides that, except in certain special cases, no mark shall be registered which in identical with or deceptively similar to another registered trade mark. (S 12). S.46 provides for the removal of a registered trademark from the register on the ground of lack of bona fide intention on the part of the owner to use the mark. Any person aggrieved by the registration can make an application to the High Court or to tile Registrar. S.46(1) says: "(1) Subject to the provisions of. S.47, a registered trademark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either- (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of S.45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application; Chapter VII of the Act contains provisions for rectification and correction of trade-marks. Any person aggrieved by any mark remaining on the register may apply to the High Court or to the Registrar for cancelling or varying or expunging the mark. S.56 states as follows: "56. (1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit. If the defendant has a case that the plaintiff's trademark has become public juris and has thus lost its distinctiveness he may by an application to the High Court or to the Registrar seek an order expunging the entry relating to the plaintiff's mark from the register. 12. S.107 refers to the procedure to be adopted when the validity of registration is questioned by the defendant in an action for infringement. It says: "(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant ...the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register, and notwithstanding anything contained in S.46, sub-section (4) of S.47 or S.56, such application shall be made to the High Court and not to the Registrar. (2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under S.46 or sub-section (4) of S.47 or S 56, the Registrar may, if he thinks fit, refer the application at any stage of the proceeding to the High Court." S. Ill provides for stay of proceedings where the validity of registration is questioned. It says: "(1) Where in any suit for the infringement of a trade mark (a) the defendant pleads that the registration of the plaintiff's trade mark is invalid; or (b) ... It says: "(1) Where in any suit for the infringement of a trade mark (a) the defendant pleads that the registration of the plaintiff's trade mark is invalid; or (b) ... the court trying the suit (hereinafter referred to as the court), shall, (i) it any proceedings for rectification of the register in relation to the plaintiff's... trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings; (ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's ...trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register. (2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings, (3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case. (4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit comformably to such order insofar as it relates to the issue as to the validity of the registration of the trade mark. The High Court having jurisdiction under the Act is the High Court within the limits of whose appellate jurisdiction the office of the Trade Mark Registry referred to in S.3 is situate. (See S.3). 13. The defendant has no case that any application has been made by him under S.46 or S.56. The High Court having jurisdiction under the Act is the High Court within the limits of whose appellate jurisdiction the office of the Trade Mark Registry referred to in S.3 is situate. (See S.3). 13. The defendant has no case that any application has been made by him under S.46 or S.56. The validity of registration of the trade-mark cannot be questioned by the defendant as a defence in a suit for infringement except in accordance with the above provisions. The District Court trying a suit for infringement has no jurisdiction to decide an issue as to the validity of the registration. If that question is specifically pleaded and the Court is satisfied that the plea is prima facie tenable, it is the duty of the Court to raise an issue on the point and allow the party concerned an opportunity to make an application to the competent High Court for the rectification of the register. This duty is cast on the court only in cases where such issue arises on the basis of pleadings. Once the issue is raised by the court, the party shall be given three months' time to approach the comment High Court. If the court is satisfied that the party has made an application to the High Court for rectification of the register, the trial of the suit shall be stayed until the final disposal of such application. On the other hand if no application is made by the party within three months or such further time as the court may allow, the issue as to the validity of the registration of the trade-mark shall be deemed to have been abandoned by the party concerned and the court shall then proceed with the suit in regard to the other issues 14. The learned judge did not follow this procedure. No issue was raised by him as to the validity of registration. No issue could have been raised on this point as it was not specifically pleaded. In the absence of such plea and issue he could not and did not stay the trial. He had in any view of the matter no jurisdiction at all to pronounce upon the validity of registration. 15. S.107 is imperative in terms. No issue could have been raised on this point as it was not specifically pleaded. In the absence of such plea and issue he could not and did not stay the trial. He had in any view of the matter no jurisdiction at all to pronounce upon the validity of registration. 15. S.107 is imperative in terms. It says that where in a suit for infringement the validity of the registration is questioned, the issue as to the validity shall be determined on an application for rectification and such application can be entertained only by the High Court. It is for that purpose that S. Ill provides for a stay of the trial. Overlooking these provisions, the judge said: "Here also it is the entire design of the wrapper which has been registered as a trade mark. Such a registration will not protect the design as such." It is not quite clear what exactly the judge meant when he said that the registration did not protect the entire design which was registered. Perhaps he only meant to speak as to the scope of the registration, in which event, it was clearly wrong in law as the entire design was registered, and as such it was protected. But if it was a pronouncement as to invalidity of the registration, such pronouncement was without jurisdiction and is therefore invalid. 16. The basis of this pronouncement, as I stated earlier, is a certain observation of this Court in M. Damodara Pai v. C. K. Mani Lai (1972 KLJ.19). In that case this Court held: "If at all, the respondent's trade mark could only have been the monogram CRK above the crescent appearing on the front of the carton; and this has not been copied by the appellant in his carton. Therefore, there is no infringement of any trade mark registered by the respondent." This is a finding of fact and such finding is confined to the facts of that case. It is true that this Court also stated: "The respondent had of course obtained registration for his carton.", and then posed the question whether the entire carton could be considered to be his trade-mark. The answer was, "The respondent's trade-mark; could only have been the monogram CRK." The facts of that case were exceptional and peculiar, and the decision on those facts cannot have any application as a principle of law. 17. The answer was, "The respondent's trade-mark; could only have been the monogram CRK." The facts of that case were exceptional and peculiar, and the decision on those facts cannot have any application as a principle of law. 17. The respondent's counsel Shri Balakrishna Menon, however, submits that a principle of law has to be deduced from the observation of this Court, viz„ the rule that a carton cannot as such be registered under the Act. Such deduction, in my view, is not warranted. But if it were, it would be inconsistent with the decision of the Supreme Court in Parle Products (P) Ltd. v. J. P. & Co. Mysore (AIR. 1972 SC.1359), where the Court treated the whole wrapper as registered (Para. 9). Whatever that be, in the instant case, the plaintiff has no case that the entire carton or wrapper is registered. His case is that the entire trade-mark, as seen in Ext. A53, is printed on his wrapper and he seeks the protection of the law against the infringement of that mark. The learned judge in my view was wrong in thinking that on the basis of the observation in M. Damodara Pai v. C K. Mani Lai (1972 KLJ.19) he was justified in holding that, notwithstanding the registration of the entire trade-mark, such mark was not protected. This Court had no occasion to consider the question of validity in that case and none of the observations of this Court warranted any such inference. The Judge, in my view, was not competent to look behind the registration and consider its validity. 18. Shri Menon further submits that, assuming that the judge overstepped his jurisdiction in pronouncing upon the validity of the registration, the defendant should not suffer owing to the fault of the Court. He says that the judge ought to have raised the issue as to validity of the registration and stayed the trial until the issue was determined by the competent High Court. Since the court had not done that, counsel says, it is open to the defendant to request the appellate court, as he has in fact done by means of CMP No. 3848 of 1979, to grant him time. Since the court had not done that, counsel says, it is open to the defendant to request the appellate court, as he has in fact done by means of CMP No. 3848 of 1979, to grant him time. This submission appears to be based on the assumption that the defendant had clearly and specifically pleaded that the registration of the plaintiff's mark was invalid and that the court had, notwithstanding such plea, failed to raise the necessary issue and afford an opportunity to the defendant to approach the correct forum for rectification of the register. This is far from the position as is clear from the pleadings as well as the order sheet. Nowhere in the written statement did be specifically say that the registration was invalid. All that he stated was: "There is nothing invented by the plaintiff in it, he having blended the writing on Panama Cigarettes with our. design and form. Panama itself is not an invented name, it being a name of place and Canal which is indiscriminately used by cigarette manufacturers, blade manufacturers etc. So in spite of registration the plaintiff is not entitled to get a relief of injunction There is nothing important in lay out and colour scheme as the same and similar name and colour scheme is copied or followed by various soap manufacturers." (Para. 3). (emphasis supplied) He further says in para. 7 (which I have extracted earlier) that the plaintiff surreptitiously imitated the defendant's mark as well as the mark of other manufacturers and made false declaration before the registering authorities that the plaintiff's mark was exclusively his. The defendant states that the plaintiff "does not get any right even on registration on the form, style and lay out." He then says that the plaintiff "has not acquired any valid right over the same since seven years have not elapsed under law and the defendant is entitled to challenge his claiming any vested right over the get up, form, lay out etc." These pleadings do not, in my view, directly question the validity of registration. What the defendant says is that the registration had no effect to protect the mark. The reason stated is not the invalidity of the registration but the circumstances in which and the time at which it was granted. What the defendant says is that the registration had no effect to protect the mark. The reason stated is not the invalidity of the registration but the circumstances in which and the time at which it was granted. It is the scope or the efficacy or the effect of the registration and not the validity of the registration that is directly and explicitly questioned by the defendant. On the basis of such pleadings it could hardly be expected that the judge, whose responsibility it was to raise the issue in the case, would have noticed that the defendant wanted to raise an issue on the question of validity, I have read the pleadings several times and, having listened to Shri Menon's extremely persuasive advocacy particularly on this point, I am prepared to accept the submission that, shorn of technicalities of pleadings, the written statement in the present form should be understood to be wide enough to include the necessary plea as to invalidity. If I could have been in law called upon to hear arguments on the issue of validity I probably would have accepted the written statement in its present form for the purpose of considering that question. But that is not the point here. What Shri Menon says is that the court below failed in its duty in not having raised an issue as to validity and journed the case interms of S.nl to enable the parties to apply to the competent High Court for rectification. Unaided by counsel on this point, as I am now, the learned judge could hardly be expected to notice at the time of framing the issues the possibility of reading into the present plea the question of validity. I am therefore not prepared to accept the submission that the judge unjustifiably failed to notice a plea as to validity at the time of raising the issues. The matter does not, however, end there. The B-Diary in the case contains the following entries as regards the progress of the case on 18-11-1977, 21-11-1977 and 23-II-1977, "18-11-77... O.S.2/77 The injunction petition came up for hearing today. Both parties submit that instead of hearing the petition, the suit itself can be taken up for trial 1st defendant agrees to file written statement tomorrow. Parties agrees that issues could be framed on 21/11 and trial could commence on 23/11. D2 is absent. O.S.2/77 The injunction petition came up for hearing today. Both parties submit that instead of hearing the petition, the suit itself can be taken up for trial 1st defendant agrees to file written statement tomorrow. Parties agrees that issues could be framed on 21/11 and trial could commence on 23/11. D2 is absent. His counsel Shri B. G. Bhaskar has not filed Vakalath. D2 is called, set ex parte. Call on for issues 29/11.21-11-77... O S.2/77 Written statement filed on 19/11. Issues framed. For trial 23/11. 23-11-77... O. S.2/77 Exhibits AI to A7 and BI to B75 marked. For oral evidence 24/11." These entries show that it was with the consent of the defendant that the case was posted for trial. The defendant willingly went to trial knowing fully well that the issues as framed by the court did not include an issue on the question of validity. But he did not protest. Not only that. As seen in the B-Diary he had agreed to the suit being tried without a stay of the proceedings for the purpose of making a reference to the High Court. He had, as it clearly appears from the B-Diary, no intention whatever at that stage to raise the question of validity and approach the competent authorities for a consideration of the question. Assuming that the court had made a mistake in not properly understanding the pleadings and raising the necessary issue, he could have requested the court by means of a petition to raise the issue and adjourn the case for the purpose of enabling him to make an application to the competent High Court. No such request was made to the court and no stay of the proceedings of the court was ever sought at any stage. I have no doubt in my mind that that question bad never occurred to the defendant at any stage of the proceedings in the court below. 19. I see no merits in the contention that at this stage of the appeal I should stay the proceedings and give the defendant an opportunity to approach the competent court. The two appeals (A. S. Nos. 71 and 73 of 1978) were filed in April 1978. It was not until March 1979 that the defendant moved this Court by CMP. No. 3848 of 1979 in AS. The two appeals (A. S. Nos. 71 and 73 of 1978) were filed in April 1978. It was not until March 1979 that the defendant moved this Court by CMP. No. 3848 of 1979 in AS. No. 71 of 1978 for a declaration as to the invalidity of the registration or, in the alternative, to grant the petitioner sufficient time to apply for cancellation of the trademark. No order was passed in the CMP. except to post it along with the appeal. The appeal came up for hearing only in October 1979. The pendency of the appeal in this Court was no bar against moving the competent High Court for a rectification of the register. No such attempt is stated to have been made by the defendant so far. 20. Shri Menon contends that if it were to be held that the judge had no jurisdiction to pronounce upon the validity of the trade-mark, as he might have done, albeit on the mistaken impression that the decision in M. Damodara Pai v. C. K Mani Lai (1972 KLJ.19) supported such pronouncement, the decision of the judge is void. Consequently, Shri Menon says, the plaintiff's appeal has to be stayed, for, this Court cannot determine the various questions raised therein until the issue as to validity is determined by the competent High Court. These submissions, I think, are based on a total misunderstanding of the relevant provisions. 21. It is true, as I stated earlier, that the judge erred in law, and might even have overstepped his jurisdiction, in stating, as he did: "Here also it is the entire design of the wrapper which has been registered as a trade mark. Such a registration will not protect the design as such." This, I am prepared to assume, is capable of being understood as a pronouncement, not merely on the scope of the registration, but also as to its validity. Apart from the fact that the judge wrongly thought that the entire wrapper was registered (while in fact it was the entire mark appearing on the wrapper that was registered) the judge was not competent to question the effect of registration of the wrapper, assuming that the wrapper as such was registered. Apart from the fact that the judge wrongly thought that the entire wrapper was registered (while in fact it was the entire mark appearing on the wrapper that was registered) the judge was not competent to question the effect of registration of the wrapper, assuming that the wrapper as such was registered. Nevertheless the invalidity of his decision on the point of the validity of the registration (here again I am assuming that the judge intended to pronounce upon the validity), cannot nullify his findings on other issues S. Ill says that the issue as to validity has to be raised by the court only if the court is satisfied that the plea as to that question is prima facie tenable If the issue is raised by the court, the case will have to be adjourned for three months to enable the party concerned to apply to the High Court for rectification. If the party has proved to the court that an application for that purpose had been made by him to the High Court within the period of three months or within such further time as the court may have granted, the trial of the suit would stand stayed until the final disposal of the rectification proceedings. Sub-section (3) of S. Ill provides: " If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case." (emphasis supplied) The conduct of the party can be taken as an abandonment of the issue as to validity. If the court is satisfied that the party has so abandoned the issue, the court is bound to proceed with the suit in regard to the other issues in the case. The conduct of the defendant in this case, as I stated earlier, undoubtedly leaves the impression that at no stage of the proceedings in the court below he woke up to his right to have an issue referred to the High Court. His conduct in fact militates against the present submission that the question of validity was in his mind. The conduct of the defendant in this case, as I stated earlier, undoubtedly leaves the impression that at no stage of the proceedings in the court below he woke up to his right to have an issue referred to the High Court. His conduct in fact militates against the present submission that the question of validity was in his mind. Even in this Court, the idea of invalidity appears to have dawned on his mind very late and even after its dawn he was very slow in seeking his remedy. In the circumstances I have no doubt that, even if the defendant can betaken to have by implication raised the plea as to invalidity in the written statement, he had abandoned such plea in the court below. Whether he had so abandoned the issue, or had never thought of it, at the instance of a person who wakes up to his right so late, as he had done now, it would be an abuse of the process of this Court to seek a stay of the proceedings before it purportedly for the purpose of raising the question of invalidity. 22. I shall presently deal with the merits of the contention regarding infringement.' But before I do so it is necessary to deal with the defence of prior user. 22. I shall presently deal with the merits of the contention regarding infringement.' But before I do so it is necessary to deal with the defence of prior user. S.33 of the Act reads as follows: "Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior - (a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or (b) to the date of registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark." If the defendant is in a position to prove-the burden of which is entirely upon him -that his continuous user of the mark "Prameela" started on a date anterior to the date on which the plaintiff commenced using his mark "Panama" or the date on which the mark "Panama" was registered, whichever is earlier, the registration of the plaintiff's mark would not stand in the way of the defendant's continued use of his mark "Prameela". The crucial question therefore is what are the earliest dates to which the parties can trace the user of their respective marks? It is admitted by the defendant in his written statement that he started using the trade name "Prameela" for the first time on 18-6-1974 (see paras. 3 and 6 or the written statement; He says in his evidence as Dw-1 that he purchased the Puthiyara Soap Works as a running concern in 1973 from K. Chathu Chathu did not manufacture or market soaps with the mark "Prameela" or "Prameela 315". 3 and 6 or the written statement; He says in his evidence as Dw-1 that he purchased the Puthiyara Soap Works as a running concern in 1973 from K. Chathu Chathu did not manufacture or market soaps with the mark "Prameela" or "Prameela 315". Although atone stage of his evidence in chief he states that he used the mark "Prameela 315" long before 15-11-1974 (which is the date on which the plaintiff's registered mark came into effect), his categoric admission in the written statement conclusively proves that the user of the mark "Prameela" by the defendant did not commence prior to 18-6-1974. It would appear that there is no controversy now about this date, and arguments proceeded at the bar on the basis that the defendant has no case that he used the mark "Prameela" prior to 18-6-1974. 23 It is stated in the plaint: "For the past several years the plaintiff has been regularly and in the course of trade using a distinctive trade mark PANAMA having a distinctive get up, style, lay out arrangement and colour scheme in order to indicate that such goods are of their sole manufacture." The plaintiff as Pw.1 says that he started production of the Panama soaps in 1970 and ever since then he has been using his wrapper with the mark "Panama" having its distinctive design, get-up, colour and style. The design "'Panama" was made for him by one Mukundan in 1970. This is corroborated by Mukundan (Pw. 2) who says that he designed the wrapper for the plaintiff at the beginning of 1970. The plaintiff further says that his factory was originally known as "Panama Chemicals, Calicut." After 1972 the name was changed to "Panama Soap Works, Kakkodi" (Kakkodi, I am told, is on the outskirts of Calicut). Ext A52 is an advertisement in Pradeepam dated 9th October 1971 in the name of Panama Chemicals, Calicut, S India, showing the design "Panama" in a wrapper which, as far as I can see, appears to be almost identical in size, shape, style and get-up to the plaintiff's present wrapper, Ext. A6. The picture in the advertisement closely resembles MO.2 Panama soap. The defendant does not effectively challenge the plaintiff's contention that Panama Chemicals, Calicut, belonged to him and that under that name he had carried in the business of manufacturing the Panama soaps as shown in Ext. A52. A6. The picture in the advertisement closely resembles MO.2 Panama soap. The defendant does not effectively challenge the plaintiff's contention that Panama Chemicals, Calicut, belonged to him and that under that name he had carried in the business of manufacturing the Panama soaps as shown in Ext. A52. This is what the defendant says as Dw.1 in 1977: "I have heard about 'Panama Chemicals' manufacturing 'Panama Soap'. Such a factory has been in existence since about six years. I only heard so. T heard about its proprietor. I do not know the proprietor personally. I cannot mention his name, I cannot say anything if it is suggested that the plaintiff initially was trading in the name and style of 'Panama Chemicals'." (emphasis supplied). Ext. A 52 was produced by the plaintiff, during trial, with I. A. 1975/1977. Its production was not objected to by the defendant The document was put to the plaintiff in cross-examination by the defendant's counsel, and it was accordingly proved by the plaintiff. He stated in answer to the defendant's counsel's questions as follows: "I see Ext. A 52. My design in Ext. A52 is the same as in Ext. A 6. In 1971 and 1972 the name of my factory was 'Panama Chemicals, Calicut'. Thereafter the name is' Panama Soap Works, Kakkodi'. J have Panchayat licence to show that 'Panama Chemicals' belonged to me " Ali (Pw. 4) is a trader in Kakkodi bazaar. He sells in his shop both Panama and Prameela soaps. He says that he has known the plaintiff's Panama Soap Works for about six years. The plaintiff has been, he says, manufacturing and selling Panama Soaps for nearly six years. This would mean that the plaintiff's user of the mark "Panama" in the present form and style commenced some time in 1971. Ext A3 is the plaintiff's bill book of the year 1972. In the bill dated 1-4-1972 there is a reference to the sale of Panama Soaps. The plaintiff had stated in his application for registration of the trade-mark as per Rule 27 of the Trade and Merchandise Marks Rules, 1969 ('the rules') that he had been using the mark "Panama" since 1970. This is spoken to by him as Pw. 1. Ext. The plaintiff had stated in his application for registration of the trade-mark as per Rule 27 of the Trade and Merchandise Marks Rules, 1969 ('the rules') that he had been using the mark "Panama" since 1970. This is spoken to by him as Pw. 1. Ext. Al (a) is a publication, as per Rule 40 read with S.20, in the Trade Marks Journal, claiming user by the plaintiff since 1970 of the mark "Panama". Exts. A 7 and A 8 dated 15-II-1974 are orders of assessment under the Sales-tax Act for the years 1972-73 and 1973-74, respectively. These orders show that the plaintiff has been a manufacturer of soaps under the name and style, 'Panama'. The testimony of Pws.1, 2 and 4 and Exts. Al (a), A3, A7, A8 and A52 conclusively prove that the plaintiff has been using the mark "Panama" with its distinctive style and getup long prior to 18-6-1974 which is the date on which the defendant admittedly started production of his soaps under the mark or name "Prameela". This conclusion is fortified by the defendant's own admission as DW.1, when he says: "It is not true that Pw.1 has been manufacturing and selling soaps since 1970. He started it only since about one year prior to 16-11-1974". This takes the plaintiff's user prior to 18-6-1974. This admission on the part of Dw.1 is attempted to be explained away by saying that he only stated that the plaintiff started production of soaps about one year prior to 18-11-1974 and not that he started production of Panama soaps. Bat nobody has a case that the plaintiff produced any soap other than Panama soaps or used a mark other than "Panama". Shri Menon tells me that Ext. A3 bill book dated 1-4-1972 does not show the design "Panama" but only the name "Panama", and therefore Ext. A3 can only be proof of the plaintiff's manufacture of Panama soaps, but not of the design used. It is true that the bill book does not show the design, but it conclusively proves-which fact is not denied by Shri Menon-that the plaintiff produced Panama soaps as early as April 1972. This adds significance to the defendant's admission and strengthens the plaintiff's case that he was producing Panama soaps prior to 18-6-1974 when the defendant started production of Prameela soaps. The defendant relies upon Ext. This adds significance to the defendant's admission and strengthens the plaintiff's case that he was producing Panama soaps prior to 18-6-1974 when the defendant started production of Prameela soaps. The defendant relies upon Ext. BI to establish that he started production of Prameela soaps as from 18-6-1974. This assertion is not questioned by the plaintiff.1 am mentioning this only to show that Ext BI bill is also of the same character as Ext. A3 insofar as it only shows that Prameela soaps had been sold by the defendant and does not indicate in what design that name was used. Ext. BI thus suffers from the same infirmity, if any. as in the case of Ext. A3. Whatever that be, I have no doubt that the evidence which I have discussed earlier conclusively proves that the plaintiff has been manufacturing and marketing his soaps under the mark "Panama" in its present style and get-up long prior to 18-6-1974 when the defendant commenced user of his mark. I therefore hold that the learned judge was perfectly justified in rejecting the defendant's contention that he has prior user of the mark "Prameela". The defendant is not protected under S.33 of the Act. 24. The question which now arises is whether the defendants hare by the use of the mark "Prameela" in the manner, style, colour and get-up in which they have adopted it in their wrappers Exts. A44I and A42 infringed the plaintiff's mark The plaintiff's mark, as I stated earlier, is what is seen in Ext. A53. It has a particular form, style and design The entire design has been printed on his wrapper (Ext A6 ) with certain additional details The appellation "Panama" which is the name of a country lying between the two tips connecting the American continents is adopted by the plaintiff for his soap as a fancy name. He claims that the mark, including the name, is distinctive of his soap as to its origin and source The mark, he states, is closely and intimately associated with him in the minds of his customers. 25 The plaintiff obtained registration of the mark in the style in which it is seen in Ext. A53 and the validity of the registration, as 1 have stated earlier, is not, and cannot be, in question in the present proceedings. 25 The plaintiff obtained registration of the mark in the style in which it is seen in Ext. A53 and the validity of the registration, as 1 have stated earlier, is not, and cannot be, in question in the present proceedings. What has therefore to be considered is whether the defendants' unregistered mark "Prameela" bears such a close resemblance to the plaintiff's mark "Panama" that it is likely to deceive, or cause confusion in the minds of. the customers who habitually buy bar soaps of the same price and quality as the soaps :n question here. If the mark "Prameela" as seen in Ext. A41 or Ext A42 is-either identical or deceptively similar to "Panama" as shown in Exts. A53 and A6 there is an infringement of the plaintiff's trade-mark. 26. Before I examine the law relating to infringement I shall briefly refer to the available evidence on the point. As I have already indicated the parties have understood these two marks as closely resembling each other. This is of course the positive case of the plaintiff and hence he brought the action for infringement. But the case of the defendant himself is, as seen in the passages which 1 have extracted from his written statement, that there is close similarity between the two marks. But the defendant would have it that it was the plaintiff who imitated the defendant's mark. Such contention in the light of my finding regarding prior user can have no substance. 27. Apart from the admissions in the pleadings as well as in the reply notice Ext. A40 which I have already mentioned, the testimony of the defendant as Dw.1 confirms this fact. In cross-examination this is what he says: "My soaps and plaintiff's soaps are sold mostly in villages. I see Ext. A6 (Panama) and Ext. A41 (Prameela). They are similar in their location of colour and lay out. There is a slight difference in colouring. The size of design is similar. The style of writings in Ext. A6 and Ext. A41 are similar. The location of letters in the two wrappers is the same. The black colouring in the two is at the same location. In the black coloured portion, the writings are in white in both." The plaintiff himself has stated categorically in his evidence that the 1st defendant's wrapper Ext. A4I and the 2nd defendant's wrapper Ext. A41 are similar. The location of letters in the two wrappers is the same. The black colouring in the two is at the same location. In the black coloured portion, the writings are in white in both." The plaintiff himself has stated categorically in his evidence that the 1st defendant's wrapper Ext. A4I and the 2nd defendant's wrapper Ext. A42 are deceptively similar to his mark and the wrapper which bears his mark. He says that the soaps manufactured by him and the defendant are of the same size, and when wrapped in their respective wrappers they appear deceptively similar to each other, as a result of which customers are likely to be deceived or confused as to the origin of these soaps He, however, says that he has no objection to the defendant using his brand-name "Prameela 315". His objection is to the use of that name in Ext. A41 and Ext. A42 in such form, style, get-up and colour as to be deceptively similar to Exts. A53 and A6. Pw.1 further says that the length of the name "Prameela" is the same as that of "Panama" when written. There is however some difference phonetically between the two words. He candidly says in cross-examination: "English knowing customers may not be deceived by the wrappers used by Dl. I do not know English. There may be several people who do not know English language, but can read English letters i cannot distinguish between Prameela and Panama at first sight. But on close examination, those familiar with English letters can distinguish between the two wrappers Illiterate people are guided by sign on wrappers. They will be easily deceived because of similarity of designs. Illiterates know my brand name I say so because of volume of my business " He also says that according to his information many of his customers have been deceived into purchasing Prameela soaps when they wanted to buy Panama soaps. He says earlier in his evidence that his customers identify his bar soap by the appearance and design of the wrapper which are distinctive of its origin and manufacture. 28. Pw. 4 is a retail trader who sells soaps in the course of his business. He says that the plaintiff's soap (MO. 2) and the defendant's soap (MO. I) are so similar in appearance that they are indistinguishable. 28. Pw. 4 is a retail trader who sells soaps in the course of his business. He says that the plaintiff's soap (MO. 2) and the defendant's soap (MO. I) are so similar in appearance that they are indistinguishable. Most of his customers who buy washing soaps are labourers They do not carefully examine soaps when handed over to them At first sight it is not possible for the customers to distinguish Panama soaps from Prameela soaps. He states that Panama and Prameela soaps are stacked together and kept mixed in his shop He has mistakenly handed over Prameela soaps to his customers when they asked for Panama soaps The mistake was not intentional. Certain customers pointer Out the mistake to him two or three days later and asked him to be more careful. Most of the customers who ask for pieces of soaps ask specially for Panama soaps. Although it is possible for Pw. 4 himself to distinguish a 'Panama' soap from a 'Prameela' soap, he is not certain whether his staff who serve the customers can distinguish these soaps from one another. Pw. 4 further says that the plaintiff's as well as the defendant's bar soaps bear the impressions of their respective marks. When soaps are sold in bits to customers who ask for pieces those marks are visible on the soaps. The evidence of Pws. I and 4 and Dw.1 appears to be clear that there is close resemblance between the plaintiff's wrapper (Ext. a6 ) and the defendant's wrapper (Ext. A41), and when the plaintiff's soap is covered in Ext. A6 (as seen in M. 0.2) and the defendant's soap is covered in Ext. A41 (as seen in M.O.I), they are indistinguishable except to a very careful purchaser. This is the case with Ext. A42 as well, for it is a close copy of Ext. A41. This is spoken to by Pw. 1. 29. A registered trade-mark is infringed by a person who, not having any right to that mark, uses in the course of his trade a mark which is identical with or deceptively similar to the registered trade-mark, in relation to any goods in respect of which the 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. (S 29). (S 29). In other words, the offence of infringement arises from an imitation of the registered trade-mark in the course of trade in relation to the goods for which the mark is registered. A mark is imitated when the offending mark is either identical to it or is a colourable imitation of the same, in the sense that it is deceptively similar to it. A registered trade-mark is a trademark which is actually on the register of trade-marks. (S.2(r)). A trademark is defined under S 2(v) as follows: "'trade mark' means - (i) in relation to Chapter X (other than S.81), a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and (ii) in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identy of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII;" A trade-mark is therefore a mark used or proposed to b; used in relation to goods to indicate a trade connection between the goods and the person having a right to use the mark. S.20) defines a mark as follows: "'mark' includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof;" 30. The definition of 'mark' is inclusive. A 'device' is included as a mark. According to the Concise Oxford Dictionary, the expression 'device' means drawing, design etc. Ext. A53 contains the plaintiff's registered trademark, which contains words, designs and drawings. Although the plaintiff has no right to the exclusive use of the flowers which form part of the mark, he is entitled to the exclusive use of the rest of the device in the form and style in which it appears in Ext A53. Ext. A53 contains the plaintiff's registered trademark, which contains words, designs and drawings. Although the plaintiff has no right to the exclusive use of the flowers which form part of the mark, he is entitled to the exclusive use of the rest of the device in the form and style in which it appears in Ext A53. If any part of that mark (including the design, drawing and words) is imitated by adopting a mark which is either identical to it, or is deceptively similar to it, in the sense that it is likely to deceive or confuse the buyer as to the identity or trade origin of the mark, there is an infringement of the plaintiff's trade-mark. 31 Where the defendant's mark is identical to the plaintiff's registered trade-mark the offence of infringement is apparent on the face of the former. Where the defendant adopts a mark which, though not identical, is similar, the question whether the ultimate buyers would be likely to be deceived or confused by the use of such mark is a question which has to be determined by the judge who tries the case or hears the appeal. 32. Evidence may be adduced to show that a mark resembling that of the plaintiff has been adopted by the defendant. Evidence as to the state of the trade, the class and type of consumers of the goods and such circumstances may be relevant. But as Earl Halsbury L C says: "...upon the one question which your Lordships have to decide, whether the one name is so nearly resembling another as to be calculated to deceive, I am of opinion that no witness would be entitled to say that, and for this reason: that that is the very question which your Lordships have to decide." (The North Cheshire and Manchester Brewery Company, Limited v. The Manchester Brewery Company, Limited-(1899 AC. 84 at 85)). [See also Spalding and Brothers v. A. W. Carnage, Lim.-(1915) 84 L. J. Ch. 449 (H. L.); Ciba Ltd., Basle, Switzerland v. M. Ramalingam, (AIR. 1958 Bombay 56; Sunder Paramanand Lalwani v. Cal tax (India) Ltd, (AIR. 1969 Bombay 24.] The Judge's approach to the question is the same as that of a jury. Lord Diplock in General Electric Co. v. The General Electric Co. Ltd.- [1972] 2 All E. R.507 at 515, calls it a "jury question". 1958 Bombay 56; Sunder Paramanand Lalwani v. Cal tax (India) Ltd, (AIR. 1969 Bombay 24.] The Judge's approach to the question is the same as that of a jury. Lord Diplock in General Electric Co. v. The General Electric Co. Ltd.- [1972] 2 All E. R.507 at 515, calls it a "jury question". He says: "By that I mean that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which bad been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused." Lord Diplockl continues: "The question does not cease to be a'jury question' when the issue is tried by a judge alone or on appeal by plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their, number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself." 33. The question whether a trade-mark or name is likely to deceive or cause confusion is very much a question of first impression. The question has to be approached from the point of view of a person not familiar with either mark: Amritdhara Pharmacy v. Satyadeo Gupta-(1963) 2 S.C.R.484. As stated by Lord Upjohn in Berlei (U.K.) Ltd. v. Bali Brassiere Co.-[1969]-2 All. The question has to be approached from the point of view of a person not familiar with either mark: Amritdhara Pharmacy v. Satyadeo Gupta-(1963) 2 S.C.R.484. As stated by Lord Upjohn in Berlei (U.K.) Ltd. v. Bali Brassiere Co.-[1969]-2 All. E. R.812: "...the judicial ear has the final say, for in the end it is a question of inpression and common sense." (p. 828) or as Lord Morris of Borth -y-Gest says: "The matter is very such a question of first impression and to a person who is not familiar with either word, which is the proper approach, I should have thought that there was a reasonable apprehension of confusion between the two words." (ibid at p. 823). 34. In deciding the question of similarity between the two marks, the court has to approach it "from the point of view of a man of average intelligence and of imperfect recollection " (Corn Products defining Co. v. Shang-rila Food Products Ltd, AIR. 1960 SC. 142 at 147). 35. As stated by Luxmore L. J. in Re an application by Rysta Ltd. - [1943] 1 A 11. E. R.400 at 407: "...obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it who is likely to be deceived or confused." The words have to be considered "not merely when they are placed side by side, but from the view point of a person who may have seen or heard of one of the marks and then, with a more or less imperfect recollection of that mark, comes across the other." Re Peddle's Applications-(1943), 61 RFC. 31 at p. 33 extracted in Berlei (U. K.) Ltd, v. Bali Brassiers Co., 7«c.-[1969]-2 All. E. R.812 at 817.) 36. The court has to take into account all the surrounding circumstances. It must consider the extent of the resemblance, whether visual or phonetic. It must look at the evidence regarding the market in which the goods are generally sold, the character, education, general mental equipment and the living condition of the likely customers, and all other relevant and surrounding circumstances. 37. It must consider the extent of the resemblance, whether visual or phonetic. It must look at the evidence regarding the market in which the goods are generally sold, the character, education, general mental equipment and the living condition of the likely customers, and all other relevant and surrounding circumstances. 37. What may be clear and distinctive to a cautious purchaser with sufficient knowledge of men and matters may not be equally clear and distinctive to the generality of buyers to whom the language in which the words are written is unknown and whose minds are not equally discerning. In respect of such untrained persons with imperfect knowledge of language, the words of Lord Selbourne L. C. are apposite: "But although the mere appearance of these two tickets could not lead anyone to mistake one of them for the other, it might easily happen that they might both be taken by natives of Aden or of India unable to read and understand the English language, as equally symbolical of the plaintiff's goods. To such persons, or at least to many of them, even if they took notice of the differences between the two labels, it might probably appear that these were only differences of ornamentation, posture, and other accessories leaving the distinctive and characteristic symbol substantially unchanged," (R. Johnston & Co. v. Archibald Orr Swing & Co.- (1881-82) 7 A. C. 219 at 225). 38. The resemblance has to be considered with reference to the ear as well as the eye What is distinguishable to the literate and educated may appear to be strikingly similar to the others. "If the words or marks look or sound alike there is an infringement." [Corpus Juris Secundum, Vol.87, p. 288]. "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of consumer who would be likely to buy those goods.' (Per Parker J. in Pianotist Co.'s application (1906) 23 RFC 774,-extracted in Bengal Immunity Co. Ltd. v. Denver Chemical Manufacturing Co. (AIR. 1959 Calcutta 636 at 638). What is phonetically dissimilar may have a close resemblance when seen with the eyes, or what is dissimilar to the eye may be similar to the ear. Ltd. v. Denver Chemical Manufacturing Co. (AIR. 1959 Calcutta 636 at 638). What is phonetically dissimilar may have a close resemblance when seen with the eyes, or what is dissimilar to the eye may be similar to the ear. In either event if the similarity is sufficiently marked so as to be deceptive or confusing the offence of infringement is complete. K R. Chinna Krisnna Chettiar v. Sri Ambal & Co.-AIR. 1970 SC. 146). 39. Mere use by the defendant of the colour adopted by the plaintiff is not objectionable so long as the trade mark itself is not imitated. The plaintiff has no monopoly of a colour. But "a colour impressed in a particular design, such as a circle, square, triangle, cross, or star, or used in connection with other characters, may be appropriated as a trade-mark. Furthermore, where a colour has acquired a secondary meaning, it may be appropriated as a trademark. Colour may be an element in the imitation of another trade-mark or. dress of goods and in such case relief may be afforded." (Corpus Juris Secundum, Vol. 87, para 47at page 276). 40. No manufacturer has a right to use a trade-mark so nearly resembling the mark of his rival as to be designed to mislead incautious buyers. It is not necessary that there tail trader himself may not be deceived but it would be sufficient if the mark is calculated to deceive or cause confusion in the minds of the ultimate purchasers. The law does not allow a person to put into the hands of the retail dealers the means of deceiving or confusing the ultimate consumers: (Lever v. Goodwin-[1887] 36 LJ. Ch. D. 1). [t is however not necessary to prove that any purchaser has been actually deceived or misled. A prudent person will promptly bring legal action to restrain the offender without waiting till actual deceit is proved. This, as Lord Blackburn says in R Johnston & Co. v. Archibald Orr Ewing & Co. (1881-82) 7 AC. 219 at 229, -is; the right thing to do, for, in the words of James LJ. in 13 Ch.D. 464, "the very life of a trade-mark depends upon the promptitude with which it is vindicated." "41. This, as Lord Blackburn says in R Johnston & Co. v. Archibald Orr Ewing & Co. (1881-82) 7 AC. 219 at 229, -is; the right thing to do, for, in the words of James LJ. in 13 Ch.D. 464, "the very life of a trade-mark depends upon the promptitude with which it is vindicated." "41. Fraudulent intention or intenion to deceive or cause confusion is not a necessary ingredient for consideration of the question whether the offending mark is likely to deceive or cause confusion: The Cellular Clothing Company, Ltd. v. Maxlon & Murray (1899) AC 326 at 334; See also the judgment of Lord Denning in Parker Knoll Ltd. v. Knoll International Ltd* 1962 RFC. 265 at p. 273 (quoted in AIR. 1967 Madras 186 at 187). What is relevant is the likelihood of deceit or confusion. 42. A mark should not be looked at with reference to any particular part of it, but should be seen as a whole, for it truly consists of a combination of all its parts: Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (AIR. 1955 S.c 558). As stated by Lord Esher in Pinto v. Badman, 1891-8 RFC. 181 at p. 191: "The truth is that the label does not consist of each particular part of it, but consists of the combination of them all." (Quoted in AIR. 1955 SC. 558 at 565). 43. The registration of a trade-mark confers upon its owner property in the mark. The statute allows him the right to protect the mark by bringing action against infringement. He has a right to restrain the offender by means of an injunction, and claim damages from him or ask for an account of his profits. In deciding the question whether the mark has been infringed-this being a question of fact-little assistance can be derived from decided cases except for the general principles of law discussed therein. What is required is a comparison 01 the marks in the manner suggested by Lord Russel of Killowen in Coco Cola Company of Canada, Ltd v, Pepai-Cola Company of Canada, Ltd. (1942)-! All. ER. What is required is a comparison 01 the marks in the manner suggested by Lord Russel of Killowen in Coco Cola Company of Canada, Ltd v, Pepai-Cola Company of Canada, Ltd. (1942)-! All. ER. 615, at 617 He says: "In these circumstances, the question for determination must be answered by the court, unaided by outside evidence, after a comparison of the defendant's mark as used with the plaintiff's registered mark, not placing them side by side but by asking itself whether, having due regard to relevant surrounding circumstances, the defendant's mark as used is similar (as defined by the Act) to the plaintiff's registered mark as it would be remembered by persons possessed of an average memory with its usual imperfections." 44. This aspect of the question is highlighted in the decisions of the Supreme Court, fn Parle Products (P) Ltd. v. J. P & Co. Mysore (AIR 1972 SC. 1359) this is what the Court says: "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. If they should not be placed side by side to find out if there are any differences in the design and if 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 we 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." In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR. In this case we 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." In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR. 1965 SC 980, 990), the Court observes: "...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;..." I shall have occasion to revert to this decision when I deal with the difference between infringement and passing off. For the present it will suffice to say that in an infringement action all that the plaintiff has to show is that the defendant's trade-mark is an imitation of the plaintiff's registered trade-mark either because it is identical or because it is deceptively similar. If the marks are identical there will be no difference between the two: but if the defendant's mark, though not identical, is sufficiently similar as to be deceptive or confusing, and infringement is thus made out, the court will not proceed to count the differences between the two marks as they are no longer relevant to the point. [See for an interesting discussion of the subject, Corpus Juris Secundum, Vol. 87, p. 283, para. 64 et segJ 45. I shall now deal with the question of passing off which is what arises in the defendant's appeal. "The essence of passing off is that one trader represents his goods (or his services) as those of another and he commits the tort even if he does so innocently, that is, with no intention to deceive. All that is necessary is that the get-up or description of the plaintiff's goods should have become distinctive of them and that there is a probability of confusion between them and those of the defendant." (Winfield and Jolowicz on Tort, 10th Edn.,1975, p. 472), 46. There are many things in common between infringement and passing off actions, although they differ from each other fundamentally in certain important aspects. There are many things in common between infringement and passing off actions, although they differ from each other fundamentally in certain important aspects. What is stated earlier, in the context of infringement, as regards the evidence about the type of ultimate purchasers, the nature of the market and the kind of goods, the absence of necessity to prove intention to deceive or actual deception or fraud; and, the role of the judge in evaluating evidence and determining facts apply with equal force to an action based on passing off. 47. The Act has conferred upon the proprietor of a registered trademark property in the mark. Any infringement of that mark attracts the provisions of the statute. Passing off actions, on the other hand, are based on common law rights, and the Act has no application to them; although the right to bring such actions are preserved under the Act (S.27). A manufacturer has no property in an unregistered mark, but he has property in the goodwill of his business, in defence of which he is entitled to bring legal action when his mark is imitated by a rival in business. A mark which is distinctive of the goods, although unregistered, can thus be protected from imitation by means of an action for passing off, 48. As Lord Kings down says in Leather Cloth Company (Limited) v. American Leather Cloth Company Limited, 11, H.L C. 538 (quoted by Lord Blackburn in R. Johnston & Co. v. Archibald Orr Ewing & Co, (1811-82) 7 A.C. 219 at p. 229): "The fundamental rule is that one man has no right to put off his goods for sale as the goods of a rival trader; and he cannot therefore (in the language of Lord Longdale in the case of Perry v. Truefit (6 Beav. 66, 73)) 'be allowed to use names, marks, letters or other indicia by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person." 49. Lord Halsbury L. C. says in ReJdaway v. Banham-(Camel Hair Belting Case)-(1896] A. C. 199,204): "...nobody has any right to represent his goods as the goods of somebody else. How far the use of particular words, signs, or pictures does or does not come up to the proposition. .in each particular case must always be a question of evidence..." 50. Lord Halsbury L. C. says in ReJdaway v. Banham-(Camel Hair Belting Case)-(1896] A. C. 199,204): "...nobody has any right to represent his goods as the goods of somebody else. How far the use of particular words, signs, or pictures does or does not come up to the proposition. .in each particular case must always be a question of evidence..." 50. It is a question of evidence whether in a particular case there is a false representation or not. The court has to look at the goods in question and see whether the defendant has by the use of names, mark, letters or other indicia attempted to or succeeded in inducing the purchasers to believe that the( goods which he is selling are the manufacture of another person. 51. The cause of action against passing off arises from a combination of the distinctiveness of the plaintiff's name, mark, sign or get-up and an injurious use of the same by the defendant. To create a valid cause of action, Lord Diplock identifies five characteristics: "(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or in a quie timet action) will probably do so " (See Erven Warnink Besloten Vennootschap and another v. J. Townend & Sons (Hull) Ltd. & another (The advocate case, (House of Lords, June 21, 1979) (1979) 3 WLR 68 at 74. The law of passing off is concerned with unfair competition between traders. Unlike an ordinary action for deceit which lies at the suit of the person to whom a fraudulent representation has been made and who has suffered damage as a result of it, a passing off action is instituted by the trader himself whose trade is likely to suffer as a result of the deception practised by the defendant, although the trader himself has not been deceived. In appropriate cases the protection of the law will extend to a defined class of traders against colourable imitation of a name or description under which their products of a particular character or composition have gained a public reputation which distinguishes them from competing products of different composition (The advocaat case, supra). The law is wide enough in such cases to prevent a person from attaching to "his product a name or description with which it has no natural association so as to make use of the reputation and goodwill which has been gained by a product genuinely indicated by the name or description Bellinger v. Costa Brava Wine Company, Ltd., (The champagne case) [1959] 3 All E. R.800 at 811. 52. Goods are generally passed off by imitating the plaintiff's mark or the get-up or the general appearance of his goods. Where the plaintiff's case is based on imitation of his mark he must establish, as in the case of an infringement action, that the defendant has adopted a mark which is identical or deceptively similar to the plaintiff's mark. But the plaintiff must further prove that the use of his mark is likely or calculated to misrepresent the defendant's goods as the plaintiff's goods. To do this, the plaintiff must show that his mark is capable of carrying a misrepresentation when used by anybody else If the mark is only descriptive of the goods, or has become commonly used, it may not have any distinctiveness about it and its use cannot mislead anybody. 53 Any imitation of a distinctive mark gives rise to a presumption of deceit, for no man would ordinarily want to imitate such a mark unless he has the intention to deceive the public In cases where a mark has no meaning except as an indication of it- origin, the mere proof of its violation would entitle the plaintiff to an injunction, as if he had property in the mark. This is the position of a fancy name which has no meaning by itself, except as a means of identifying the maker of the goods. Such mark, although unregistered, may in many cases be as efficacious as a registered mark. (See the judgment of Lord Merechell in Reddaway v. Ranliam [18961 A. C. 199 at 210). 54. Descriptive expressions may come to acquire a distinctive character. Such mark, although unregistered, may in many cases be as efficacious as a registered mark. (See the judgment of Lord Merechell in Reddaway v. Ranliam [18961 A. C. 199 at 210). 54. Descriptive expressions may come to acquire a distinctive character. See "The champagne" case [1959] 3 All ER 800 at 811, and "The advocaat" case [1979] 3 WLR 68 at 74 (HL). Certain names or words "forming part of the common stock of language' may have become so closely associated with a particular manufacturer that an imitation of them by themselves without explanation or qualification by another manufacturer will be deceptive. In this kind of user, the plaintiff must establish -the burden may indeed be heavy in here cases-that such names or words have become distinctive. (Reddaway v. Banham ibid at 210); See also The Cellular Clothing Co. Ltd. v. Maxton & Murray (1899) AC. 326. 55 A word may have acquired in a trade a secondary meaning and significance differing from the primary meaning, and if it is used and intended to be understood in its secondary sense it will be misleading to persons in the trade, although in its primary sense it may be true. In such circumstances and to such persons truth can be deceptive. (Reddaway v. Banham, op cit. p. 213). 56.This is what Buckley L J. says in John Brinsmead & Sons, Ltd. v. Brinsmead & Waddington & Sons, Ltd. ( (1913), 30 RPC. 493 (quoted in (1958) 2 All. ER. 113 at 116): "if a man makes a statement which is true, but which carries with it a false representation and induces the belief that his goods are the plaintiffs' goods, he will be restrained by injunction. 493 (quoted in (1958) 2 All. ER. 113 at 116): "if a man makes a statement which is true, but which carries with it a false representation and induces the belief that his goods are the plaintiffs' goods, he will be restrained by injunction. He cannot rely on the fact that his statement is literally and accurately true, if, notwithstanding its truth, it carries with it a false representation if a trader takes a name which is not his own name, but is that of a rival trader, and uses it in his trade, no doubt that is very strong evidence that he intends to deceive, and the court will fasten upon that in any case in which it occurs; but if that is not so, if he is simply using his own name and it is proved that its use results in deception, he will be restrained even from using his own name, without taking such steps as will preclude the deception which by hypothesis, is engendered by his using his own name" 57. There is no exception to the rule that no man is entitled so to describe his goods as to mislead the public. As stated by Rorner J. in Joseph Rodgers & Sons, Ltd. v. W. N. Rodgers & Co., (1924), 41 RPC. 277 (cited in (1958) 2 All E R.113 at 116) "I think there is no exception at all; that is, that a man is not entitled so to describe his goods as to lead to the belief that they are the goods of somebody else" The plaintiff must establish deceptive similarity. While in an infringement action the similarity is with reference to the two marks which are borne on their respective packages, in a passing off action, the similarity is with reference to the general appearance of the packages themselves. Similarity may arise because of the imitation of the mark, if any, or the general features of the carton or wrapper. The words, the drawings, the colour and the other symbols on the wrapper, the size of the commodities, and similar points of general get-up, are matters of great significance. While looking at the points of similarity, the judge will have regard to the type of consumers among whom the goods are likely to be sold, and the general conditions prevailing in the market, as he would in an infringement action. 58. While looking at the points of similarity, the judge will have regard to the type of consumers among whom the goods are likely to be sold, and the general conditions prevailing in the market, as he would in an infringement action. 58. The law assumes that interference with the goodwill of a man's business through misrepresentation results in damage. It is unnecessary for the plaintiff in a passing off action to show that the damage has in fact resulted. When the fact of misrepresentation is established the law would presume that the plaintiff has suffered damage. Draper v. Trist [1939]-3 All. E. R.513). 59. It' the goods of the plaintiff have become associated with him either because of the mark or the general get-up, an imitation of such mark or get-up is likely or calculated to deceive the buyers into thinking that they purchase the goods of a particular manufacturer when they in fact buy goods made by someone else. Poor and illiterate people who buy the goods may not distinguish them by the label or the mark, but by the general appearance and get-up of the articles. The plaintiff's goods may have acquired such a reputation and the public may have come to associate the goods with such reputation, although the name of the plaintiff himself is unknown to them, that the tort of passing off is committed by a person who, by imitating the plaintiff's style or get-up, misleads the public: Per Lord Corell in William Edge &. Sons Ltd. v. William Niccolles & Sons, Ltd. (1971 AC. 693, 705). 60. In such cases it is unnecessary for the plaintiff to establish that the ultimate consumers are aware of his name, so long as the goods are identified in their minds as those of a particular source or manufacture. In the words Lord Halsbury: "It fray be true that the customer does not know or care who the manufacturer is, but it is a particular manufacture that he desires ...This thing which is put into the hands of the intended customer is not...the original manufacture. It is not made by the person who invented it. Under these circumstances it is a fraud upon the person who purchases to give him the one thing in place of the other." (The Birmingham Vinegar Brewery Company, Limited v. Powell, [1897] A.C. 710,713, 714. It is not made by the person who invented it. Under these circumstances it is a fraud upon the person who purchases to give him the one thing in place of the other." (The Birmingham Vinegar Brewery Company, Limited v. Powell, [1897] A.C. 710,713, 714. As Lord Herschell says: "It seems to me that one man may quite well pass off his goods as the goods of another if he passes them off to people who will accept them as the manufacture of another, though they do not know that other by name at all." (Ibid & i p. 715). 61. Even when persons might be indifferent to the differences existing between the two commodities, if they knew that one of the commodities was made by the original maker of it, and the other was an imitation, they would prefer to buy the commodity which was made by the original maker. An imitation of the get-up of the goods made by the original maker is calculated to make people believe that both the goods are made by the original maker. This may be a matter of indifference to the actual consumer, but it is of great concern to the manufacturer himself, for it is his business interest or property in the goodwill of his business that is damnified. In all such cases the law comes to the aid of the person with whom the goods are generally identified in the public mind: Ford v. Foster (1872} 41 L. j. Ch. (New series) 682 at 689-690. 62. An effective defence to a passing off action is that a mark has become public juris. This defence is not ordinarily available in an infringement action, for, as I stated earlier, except where a rectification is sought by means of the procedure referred to in Ss.107 and 111, registration of the trade-mark is proof of its validity and that an infringement of the same entitles the plaintiff to obtain relief. But where there is no registration, the mark loses its efficacy if it becomes public juris as a result of which all the world is entitled to use it. But where there is no registration, the mark loses its efficacy if it becomes public juris as a result of which all the world is entitled to use it. A mark may be public juris among a certain class of people, such as between the wholesale and retail dealers, for they are not likely to be misled by it; but as between the retail dealers and the ultimate customers, the mark may not have become public juris: Ford v. Foster-(1872) 41 L. J. Ch. (New series) 682, 689 Referring to an unregistered trade mark, Mellish L. J says, ibid at 688: "...a word which was originally a trade mark, to the exclusive use of which a particular trader or his successors in trade may have been entitled, may possibly subsequently become public juris, as in the case before us of Harvey's Sauce. It was admitted that although that had originally been a name of a sauce made by a particular individual it had become public juris, and that all the world were entitled to call the sauce they made Harvey's sauce if they pleased." He then goes on to ask: 'Then what is the test by which a decision is to be arrived at whether a word which was originally a trade mark has become public juris'1. I think the test must be whether it still continues to be calculated to deceive the public or any part of the public; whether the use of it by other persons may still have the effect of inducing them to buy goods not made by the trader entitled to the trade mark as if they were his goods." 63 This is what Lord Parker in Spalding and Brothers v. A. W. Gamage, Lim. (1915)84 Q. Ch 449, calls the transitory nature of an unregistered trade mark. (1915)84 Q. Ch 449, calls the transitory nature of an unregistered trade mark. He says: "Even in the case of what are sometimes referred to as common law trade marks, the property, if any of the so-called owner is in its nature transitory, and only exists so long as the mark is distinctive of his own goods in the eyes of the public or a class of the public Indeed, the necessity of proving this distinctiveness in each case as a step in the proof of the false representation relied on was one of the evils sought to be remedied by the Trade marks Act, 1875, which confers a real right of property on the owner of a registered mark." This is the evil that was remedied by the Act, and the protection that the Act affords to the owner of a registered mark. Registration is proof of its validity, and the owner of the mark need not establish distinctiveness. Where the defendant questions the validity or the continued efficacy of the mark, the burden falls fairly and squarely upon him to establish invalidity of the registration or the loss of distinctiveness of the mark. For this the Act has provided a special procedure. 64. In a passing off action the test to determine whether the similarity between the two goods was deceptive was laid down by Lindley L. J. in the following words in Lever v. Goodwin-(1887) 36 L. J. Ch. 1 "As to the main question, I think the case is plain and easy, and it may be rested upon the Defendants' own evidence and upon the appearance of the packages. What is called the general 'get-up', which is an expression used by some of the witnesses, is so similar that obviously the one might easily be mistaken for the other. Of course, in all these cases there are differences as well as resemblances, and the question, so far as the packages are concerned, must always be decided by contrasting the striking resemblances with the striking differences. Now, the only difference which strikes me at all is this: that Goodwin has substituted the word 'Goodwin', in large letters for 'Sunlight'. That is the whole difference which catches the eye. Now, the only difference which strikes me at all is this: that Goodwin has substituted the word 'Goodwin', in large letters for 'Sunlight'. That is the whole difference which catches the eye. Then look at the resemblance; look at the paper; look at the printing; look at the blank space, and the catch-words; look at the whole thing, and it is impossible not to arrive at the conclusion, not only that one was intended to pa s for the other, but that that intention has been realised. I say that apart from the evidence. Then if you look' at the evidence, it comes out clearly and strongly that the Defendants' soap is often bought under the belief that it is the Plaintiffs' soap, and it is of no use to point out the differences, which of course may be perceived when attention is drawn to them." In a passing off action the question must always be decided by contrasting the striking resemblances with the striking differences. If the differences are more striking than the resemblances, the plaintiff will fail, but he will succeed if the converse is true The test here is whether the differences are sufficiently striking as to warn the public against deceit This, I think, is the fundamental difference between the test applicable to a passing off action and that which applies to an infringement action. In an action for infringement one does not count the points of resemblances as well as the differences to determine the question, but only look at the striking resemblances. Once the two marks are found to bear striking resemblances to each other, there the enquiry ends and the differences do not count. In an action for infringement one does not count the points of resemblances as well as the differences to determine the question, but only look at the striking resemblances. Once the two marks are found to bear striking resemblances to each other, there the enquiry ends and the differences do not count. The rationale of this fundamental distinction is that, while in the case of an infringement action, the only question is whether the registered mark has been imitated; in the case of a passing off action, the question really is whether the imitation of the unregistered mark or the get-up of the packages is likely or calculated to deceive the public into thinking that the goods of the one are the manufacture of another In the case of the former, the likelihood of deceit as to the identity of the goods need not be established once the mark is proved to have been infringed; whereas, in the case of the latter, the essential test is the likelihood of deceit as to the identity or the origin of the packages Unlike in an infringement action where the Act has obviated the need to establish the distinctiveness of the mark, that is one of the essential requirements in a passing off action. What is sought to be protected in an infringement action is the property in the mark; while in a passing off action, the protection sought is for the property in the goodwill of the business which has adopted a mark or a style for its goods to distinguish their manufactory. Although infringement ultimately results in goods being passed off, and, in the final analysis, the purpose of infringement is to pass off, the cause of action in such cases is not the passing off but infringement of the mark itself. These are the essential differences between the two actions, and failure to realise their implications leads to, what Lord (Allen borough calls in a different context, much confusion arising from "similitudinary reasoning on the subject." (Waring v. Cox.-1 Camp. 369, quoted in R. Johnston & Co. v. Archibald Orr Swing & Co. -(1881-82) 7 AC. 219 at 228). 65. Referring to this distinction, the Supreme Court observed in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, (AIR. 1965 SC. 980 at 989 (para. 369, quoted in R. Johnston & Co. v. Archibald Orr Swing & Co. -(1881-82) 7 AC. 219 at 228). 65. Referring to this distinction, the Supreme Court observed in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, (AIR. 1965 SC. 980 at 989 (para. 28) ): "While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark for the vindication of the exclusive right to the use of the trademark in relation to those goods 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 the 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." (See also Ruston & Hornby Ltd. v. Z. Engineering Co. (.AIR. 1970 SC. 1649) ). 66. Shri Menon placed much reliance upon the decision of the Supreme Courtin Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR. 1960 SC. 142) and submitted that there have been so many imitations of the plaintiff's mark by various manufacturers that it has lost its efficacy. A careful reading of that decision shows that the Supreme Court did not express itself in the manner suggested by Shri Menon. In that case the Court was concerned with an application for registration of a trade-mark and the opposition to such application by the owner of a registered trade-mark. A careful reading of that decision shows that the Supreme Court did not express itself in the manner suggested by Shri Menon. In that case the Court was concerned with an application for registration of a trade-mark and the opposition to such application by the owner of a registered trade-mark. The applicant contended that the opponent could not oppose registration of his mark because his registered trade-mark and the mark which was sought to be registered by the applicant contained a common element which was also contained in a number of other marks in use in the same market, and the purchaser tended to pay more attention to the other features of the respective marks and to distinguish between them by those features. Referring to In re. Harrods' Application, (1934) 52 R.P.C. 65, the Court stated: "The series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us. led no evidence as to the user of marks with the common element." The principle stated in that decision has no application to the facts of this case, for, here the two question are: (1) Whether the plaintiff's registered trade-mark has been infringed by the defendant's mark; and, (2) Whether the defendant by adopting his mark misrepresents his goods as the goods of the plaintiff. In regard to the first question, the fact that there have been many infringements of the plaintiff's mark and that it has lost its efficacy, even if established, cannot be of any relevance so long as the validity of the registration, or the need for rectification of the register, is not an issue in the present proceedings. The defendant did not seek rectification under S.46 or 56 or directly raise the question of validity in the suit. As regards the second point the question would have assumed importance had the defendant a case that the plaintiff's mark or the get-up of his goods has become public juris and that it has therefore no distinguishing value. The defendant did not seek rectification under S.46 or 56 or directly raise the question of validity in the suit. As regards the second point the question would have assumed importance had the defendant a case that the plaintiff's mark or the get-up of his goods has become public juris and that it has therefore no distinguishing value. It was categorically and repeatedly stated by Shri Menon at the bar that his client had no contention based on public juris and that be was not addressing any argument to that effect. If that is so, the decision in AIR. I960 SC. 142 can have no relevance to the present case. In any view, there is no evidence that the plaintiff has acquiesced in the use of his mark by other persons. In order to show that the plaintiff's mark has lost its efficacy as a result of constant unopposed piracy, it has to be established - and the burden is upon the defendant to do so-that the plaintiff slept over his rights, and acquiesced in the use of his mark by others. Here the evidence is to the contrary. As soon as the plaintiff came to know of the violation of his mark by the defendant, he protested and called upon the defendant to stop the infringement. Since the defendant did not comply with the demand, prompt legal action was brought. In the circumstances I see no substance in the contention. 67. Shri Menon points out that 'Panama' is a geographical name and in respect of such name the plaintiff is not entitled to any protection. It is true that 'Panama' is the name of a country, but it is not used here in its geographical sense in relation to the plaintiff's goods. At any rate there is no such evidence or contention. The evidence suggests that it is used in an arbitrary or fanciful way to indicate the origin or ownership of the goods, and not as having any connection with any particular place or country. The name is not in any sense descriptive of the nature or location of the goods but only distinctive of its origin The object of the plaintiff in adopting the name is only to distinguish his goods from those of other traders : AIR. 1977 Calcutta 413, 422; Corpos Juris Secundum, Vol. 87, p. 274, para. 43. 68. The name is not in any sense descriptive of the nature or location of the goods but only distinctive of its origin The object of the plaintiff in adopting the name is only to distinguish his goods from those of other traders : AIR. 1977 Calcutta 413, 422; Corpos Juris Secundum, Vol. 87, p. 274, para. 43. 68. Shri Menon further contends that "Prameela" is the name of the 1st defendant's daughter, and it cannot therefore be objectionable. The plaintiff has no objection to the use of the name 'Prameela' provided it is not used in the form, get-up, style, design and colour in which it appears in Exts. A41 and A42. 'Prameela' as a name cannot be objectionable to the plaintiff except when it is used in such a manner as to carry with it a false representation. It is true, as Shri Menon contends, that the plaintiff has no monopoly of a colour; but when colour is impressed in a particular design or used in connection with other characters, it may amount to an element in the imitation of another mark, and thus carry with it a misrepresentation. The nature of the wrapper, the mode in which the goods are made up, its style, colour and get-up; when all these elements are combined with the name or sign "Prameela", written in a peculiar form, they can go to make up a false representation. Truth is nonetheless a misrepresentation if it is presented in a form, style, get-up and colour so as to mislead. (See [1896] A C.199, 213 (HL ); [1899] AC. 326 (HL.); 11872] 41 L. J. Ch. 682). The question is, does it mislead in the present case? 69. Bearing the above principles in mind, I shall first consider the question whether in fact the plaintiff's mark has been infringed by the defendant, and then proceed to determine whether or not the defendant has misrepresented his goods as the plaintiff's goods and has thus committed the tort of passing off. 70. The plaintiff has been carrying on his business of manufacturing Panama soaps long prior to 18-6-1974 which is the admitted date on which the defendant started production of his Prameela soaps. The plaintiff's business, as found by the judge, has been very much more successful and prosperous than the defendant's which may be a reason for imitation of the mark. The plaintiff has been carrying on his business of manufacturing Panama soaps long prior to 18-6-1974 which is the admitted date on which the defendant started production of his Prameela soaps. The plaintiff's business, as found by the judge, has been very much more successful and prosperous than the defendant's which may be a reason for imitation of the mark. Pleadings show that there is close similarly between the two marks. This is admitted by Dw.1. The evidence of the plaintiff as Pw.1 and that of Pw. 4 is clear on this point. 71. I shall now look at the striking resemblances between the plaintiff's wrapper Ext A6 (bearing Ext. A53 mark) and the 1st defendant's wrapper. Ext. A41 and the 2nd defendant's wrapper, Ext. A42. They are: (1) the get-up, style, size and form of letters; (2) the drawings, such as the parallelogram, the segment of circle, the rectangle; (3) the colour scheme; (4) the type of paper; (5) the spacing of letters; and (6) the size of words. The resemblances look even more striking when the soaps are seen wrapped in their respective wrappers MOs.1 and 2 belonging to the defendant and the plaintiff respectively, look strikingly similar and are of in dentical shape, colour and size. They are also in the same range of price and weight. In the circumstances, it is unnecessary, from the point of view of an infringement action, to look at the differences which exist between the marks appearing on the respective wrappers of the parties: See Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR. 1965 SC. 980, 989). The defendant's marks in the form and style in which they appear in Exts. A41 and A42 have thus infringed the plaintiff's registered trade-mark as shown in Ext. A53 and as printed on Ext A6 wrapper. 72. To determine the question of passing off, I shall have to, as stated earlier, contrast the striking resemblances with the striking differences. (Lever v. Goodwin -(1887) 36 Q. Ch. I, at 8; Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR. 1965 SC. 980, 989). The striking differences are: (1) In the place of "Panama" in Ext A6, Exts. A41 and A42 contain "Prameela" in identical form and style. (2) In the place of flowers in the segments of circle in Ext. I, at 8; Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR. 1965 SC. 980, 989). The striking differences are: (1) In the place of "Panama" in Ext A6, Exts. A41 and A42 contain "Prameela" in identical form and style. (2) In the place of flowers in the segments of circle in Ext. A6, there appear the figure "315" in Ext A41, and the Sanskrit letter ' OM" in Devanagiri script in Ext. A42 in their respective segments of circle. (3) Instead of "A Panama Product" in the rectangle on the left hand side at the bottom of Ext. A6, there appear the words "A Puthiyara Product" in Ext. A41 and "A Prameela Product" in Ext A42, at the same places and in the same style. (4) Instead of "Panama" in white letters on black back-ground in Ext. A6, "Prameela" in the same form and style appears in Exts. A41 and A42 (5) Instead of the weight and price contained in the rectangle on the left hand side on the top of Ext. A6, the words "A Puthiyara Product" in Ext. A41 and "A Prameela Product" in Ext. A42 appear in the same style and in the same places. Are these differences sufficient to warn the public against deception? 73. The evidence in this case shows that the customers have come to identify the name, mark, general appearance and get-up of Ext. A6 with the plaintiff or at any rate with a particular source of manufacture: 1897 AC. 710. These symbols have become so distinctive as to the origin and identity of the goods that any imitation of the same will be injurious to the trade interests of the plaintiff. As I stated earlier, the plaintiff has no objection to the name "Prameela" being adopted by the defendants in any other get-up, form and style. The plaintiff's complaint is that these names are shown in their wrappers in a get-up or style identical to or deceptively similar to that of the plaintiff's wrapper. It is true that there is no striking phonetic similarity between them, although a small degree of phonetic similarity cannot be ruled out when "Panama" is pronounced in the manner in which it is locally pronounced with the accent on the second syllable (instead of the accent being put on the first syllable as it is done abroad). It is true that there is no striking phonetic similarity between them, although a small degree of phonetic similarity cannot be ruled out when "Panama" is pronounced in the manner in which it is locally pronounced with the accent on the second syllable (instead of the accent being put on the first syllable as it is done abroad). The similarity will be greater when the names are at once heard and seen by illiterate persons who cannot read the letters This is particularly so when the letters are in the form and style in which they are printed in the respective wrappers. When the wrappers are looked at as a whole, as they must be, and particularly when the soaps are seen with the wrappers on, they look, notwithstanding the differences, almost identical The similarity is so striking that even to the trained eyes used to English letters, the defendants' wrappers look deceptively similar to the plaintiff's wrapper When soaps such as Panama and Prameela are stacked together in shops, as they usually are, as seen from the evidence of Pw. 4, it is most likely that even persons familiar with English language will be struck more by the similarities than by the dissimilarities. To persons who do not know English, the similarities are indeed much more striking. When the similarities and the dissimilarities are thus contrasted, I have no doubt that the defendants' wrappers are so strikingly similar to the plaintiff's wrapper that the customers are likely to be deceived. Even if it is possible for the retail dealer to notice the difference, it is most unlikely the this staff would always notice the difference. This is the view expressed by Pw. 4 who is an experienced retail trader and I have no reason to disbelieve him. [Similar evidence was accepted by Romer L. J. in a similar situation and injunction was granted. [1958]-2 All. E. R.113,118] Even if it is possible to say that neither the retail dealers nor their staff will be misled by the similarities, Ext. A4I and A42 in the present form and style are means of deceit in their hands to induce the ultimate buyers to believe that they are buying the plaintiff's goods when in fact the defendant's good are sold to them: [1887] 36 L. J Ch. D.1; [1872] 41 L. J. Ch. (New series) p. 682. A4I and A42 in the present form and style are means of deceit in their hands to induce the ultimate buyers to believe that they are buying the plaintiff's goods when in fact the defendant's good are sold to them: [1887] 36 L. J Ch. D.1; [1872] 41 L. J. Ch. (New series) p. 682. This has actually happened, although not deliberately, as stated by Pw. 4. The soaps are sold, as Dw.1 himself admits, mostly among the villagers. These soaps are in the same range of price and weight and they are of identical shape and colour. The bulk of the customers are labourers who are unfamiliar with the English language and incapable of noticing the dissimilarities in the midst of the more striking similarities. Even if it is possible to say that the ultimate customers may care little for the difference between these soaps, and they would be equally satisfied if Prameela soaps are supplied to them instead of Panama soaps, the possibility of deception is sufficient to warrant the conclusion that the business interests of the plaintiff are jeopardised: (1872)41 L. J. Ch. (New series) P. 682. The pleadings in this case, supported as they are by evidence, leave no doubt as to the striking similarities between these two marks. The mark, design, style, get-up, colour, shape and the general features, as adopted by the defendants, form a combination which, in the words of Cotton L. J., "is calculated to induce people to believe that what they were buying, which was the defendants' soap, was what they had known and appreciated, namely, the plaintiff's soap". (1887) 36 Ch. D.1, 6. The name Prameela which in truth is the 1st defendant's daughter's name has been printed on the defendants' wrappers in such form, get-up, style, design and colour that it is calculated to misrepresent and mislead. (1896) AC. 199, 213). In these circumstances I am of the view that the defendants by adopting Exts. A41 and A42 committed the tort of passing off. 74. The learned judge did not, as [ stated earlier, consider the facts from the angle of infringement as he wrongly held that registration did not protect the design in Ext. A53. (1896) AC. 199, 213). In these circumstances I am of the view that the defendants by adopting Exts. A41 and A42 committed the tort of passing off. 74. The learned judge did not, as [ stated earlier, consider the facts from the angle of infringement as he wrongly held that registration did not protect the design in Ext. A53. The judge, however, categorically found "that the defendants have attempted to pass off their goods as alleged in the plaint." This is the type of finding which was criticised by the Privy Council in Lee Kar Choo v. Lee Lian Choon (1967) AC. 602 at p. 616, where their Lordships said: "There is no necessary inconsistency between a finding of no infringement and a finding of passing off, though, these findings are not so easy to reconcile where as here the court of first instance has placed its finding as to passing off on the central circumstance that the respondent has used an essential feature of the appellant's mark." Here also on principle and on authority as well as in the light of the pleadings and the evidence, I am of the view that the judge was wrong on the question of infringement and right in regard to passing off. 75. Accordingly I hold that the plaintiff is entitled to a decree for perpetual injunction restraining the defendants from infringing the plaintiff's registered trade-mark, and from using wrappers such as Exts. A41 and A42 containing marks, designs or get-up; or colour in combination therewith, which are calculated or likely to pass off the defendants' goods as the plaintiffs' goods. 76. The plaintiff's appeal, A. S. No. 71 of 1978, is allowed with costs. The defendant's appeal A. S. No. 73 of 1978, is dismissed and the parties therein will bear their respective costs.