JUDGMENT The Brooke Bond India Ltd., the plaintiff herein, hereinafter referred to as the "Brooke Bond" has filed this snit for infringement of trade mark and passing off against the defendant, K. Manibhai & Co. In the said suit an application has been made for appointment of Receiver and for injunction. 2. The case of the plaintiff is that the plaintiff is a well-known company carrying on business of manufacturer and seller of tea both in India as well as abroad. It is claimed that one of the well known trade marks and levels of the Brooke Bond contains as the permenent feature the words "Red Label" having a distinctive style and get-up and colour scheme of red and yellow. The said trade mark and/or label is primarily used by the Brooke Bond for export of tea which are exported cartons and packets with such distinctive style get-up and colour scheme of red and yellow. The Brooke Bond also exports tea in the Arabian Gulf countries (hereinafter referred to as "Gulf States"). It is alleged that the plaintiff has been exporting tea in the said distinctive packets and/or cartons to the Gulf States for the last 17 years and is a major the exporter from India to those areas. 3. The Brooke Bond is claiming distinctiveness and a reputation in the entire get up colour and style. It is alleged that the said trade mark and/or label contains the following distinctive feature :– a) Distinctive Colour scheme of red and yellow with a yellow outline border and a near yellow outline. b) The words "Pure Indian Tea" in red over a yellow brand across the main panel; c) Writing in Arabic of the words "Red Lebel" in regard to the tea export to the Gulf countries. 4. The Brooke Bond has also claimed to have added two distinctive features i. e. a) A Logo and/or monogram and red written on a yellow square; b) Writing in yellow on the red regarding the quality of tea. 5. It is also alleged that the trade mark in respect of the said 'Red Label' tea was registered under the Trade & Merchandise Act, 1958. 6. By reason of the aforesaid Brooke Bond is claiming a reputation and/or exclusive ownership in respect of the marked 'Red Label' with the aforesaid distinctive features. 5. It is also alleged that the trade mark in respect of the said 'Red Label' tea was registered under the Trade & Merchandise Act, 1958. 6. By reason of the aforesaid Brooke Bond is claiming a reputation and/or exclusive ownership in respect of the marked 'Red Label' with the aforesaid distinctive features. It is also the case of Brook Bond that since 1979 the Brooke Bond has sold 21, 142 Mt. of its said 'Red Label' tea in the said distinctive packets and/or cartons of the total value of Rs. 77.46 crores. 7. The Brooke Bond has also sold in India 'Red Label' tea since 1980 of the total value of Rs. 296.89 crores. During the last 10 years the Brooke Bond has spent an average sum of Rs. 30 lakhs on account of advertisement and publicity of the said 'Red Label' tea. It further alleges that in the latter part of 1986 there is reduction in its sale of tea to the Gulf countries and accordingly it was put upon enquiry in January, 1987 when for the first time it carne to learn that the defendant and others were shipping tea to the Gulf States in packets and cartons deceptively and confusingly similar to those of Brooke Bond. The defendant is one of such exporters and was exporting tea under the name or mark 'Red Apple' in packets and/or cartons practically identical and/or in any even deceptively and confusingly similar to the Brooke Bond packets and/or cartons. 8. It is also the case that the words 'Red Apple' in Arabic is Phonetically similar to the words 'Red Label' being pronounced as 'Red Apple'. 9. Brooke Bond has also alleged that label on the cartons and/or packets of the defendant is a colourable and deceptively imitation of the said label of Brooke Bond. It is further alleged that the choice of the 'Red Apple' as also the said label by the defendants is calculated to deceive and confuse the consuming public to appropriate the market reputation of Brook Bond by the defendant. 10. It is further alleged that the choice of the 'Red Apple' as also the said label by the defendants is calculated to deceive and confuse the consuming public to appropriate the market reputation of Brook Bond by the defendant. 10. On the basis of the aforesaid allegations the Brooke Bond filed this suit and made an interlocutory application against the defendant, inter alia, on the ground that the defendant had been passing-off its tea as and for those of the Brooke Bond and causing substantial loss and injury to the business and the goodwill of the Brooke Bond. The Brooke Bond has also claimed a copy right in the distinctive and fanciful get up colour scheme and artistic work of the said packets and/or cartons which were also allegedly being infringed by the defendant. 11. On an ex parte interlocutory application moved by Brooke Bond on February 19, 1987 Mrs. Bose, J. appointed a Receiver for the purpose of making inventory of the packets and/or cartons and/or labels with the mark 'Red Apple, lying with the defendant and also passed an order of injunction in terms of prayer (d) of the Notice of Motion, which is set out below :– "(d) Injunction restraining the respondent whether by itself or its servants or agents or otherwise howsoever from selling or offering for sale or marketing the said 'Red Apple' tea and from passing of or attempting to pass off or causing, enabling or assisting others to pass of tea not of the petitioner's manufacturer as and for the manufacture of the petitioner by the use or in connection therewith in the course of trade of the said mark 'Red Lebel' and packets or cartons containing the labels, style, get-up and colour Scheme of the petitioner or any substantial production or colourable imitation thereof." 12. After the affidavits have been completed the matter has come for hearing and elaborate arguments have been made by the learned Counsel appearing for the parties. 13. The case of the defendant is that the defendant is not the proprietor of the mark 'Red Apple'. On Chunilal Purushottom & Co. of Dubai is the proprietor of the said mark who sends the cartons to the defendant. The defendant has an import licence for importing the said cartons on condition that the defendant exports tea for the same or stated value as in the import licence. On Chunilal Purushottom & Co. of Dubai is the proprietor of the said mark who sends the cartons to the defendant. The defendant has an import licence for importing the said cartons on condition that the defendant exports tea for the same or stated value as in the import licence. The import licence gives the value of the cartons as also the value of the tea to be exported in it. There is a condition sheet attached to the import licence issued by and/or on behalf of the Controller of imports and exports. It is a condition of the said licence as stated in the said sheet that upon the importer i. e. the defendant, failing to fulfill the export obligation within the time prescribed in the licence and the said condition sheet, the short-fall in the export obligation shall be adjusted against the defendant's A.U/R.E P entitlement. The licence is for 1986-87 and was issued on 20th February, 1987. The 'Red Apple' was launched on 19th April, 1985 by Chunilal Purushottom & Co. 14. Every time export is made, a certificate is given by Tea Board for entitling the exporter to claim export incentive. There is a specific approval of the brand name, nature of packet and nett weight of each packet. It is also a condition prescribed therein that the packets would bear Tea Board Marketing Symbol. For every export there are similar documents. 15. According to the defendant it has been so importing the cartons and exporting the tea in the same cartons to Dubai since 1985. Import licence and the condition sheet are dated 20th February, 1987 being the date of issue, having been applied for on 12th January, 1987. 16. The further case of the defendant is that it has been exporting tea to the Gulf State since 1969 and to the said Chunilal Purushottom & Co., Dubai in the said 'Red Apple' packets and/or cartons since 1985. 17. The said Red Apple tea packets were introduced by the said Chunilal Purushottom & Co. in May, 1985 in the Gulf market as would appear from the news items published in Gulf News, Dubai in its issue dated 30th May, 1985. Consumers of the Gulf market were familiarised with the Red Apple Brand by means of various advertisements in Gulf News Paper. Insertions have been made in the following newspapers :– i) Khaleej Times, June 1986. Consumers of the Gulf market were familiarised with the Red Apple Brand by means of various advertisements in Gulf News Paper. Insertions have been made in the following newspapers :– i) Khaleej Times, June 1986. ii) Gulf News, June 1986 iii) Khaleej Times, August 1986. iv) Arabic News Paper in Dubai-Al Bayan dated 26.1.86. v) Khaleej Times, May 1985. 18. Dubai Business Directory of 1986 also carried over advertisement of Red Apple Tea. Besides, various stickers and posters were also released in the market for popularizing 'Red Apple' Tea. 19. It is also the case of the defendant that the colour scheme of Red Lebel is not distinctive of the goods of Brooke Bond. The alleged Colour scheme of Red and Yellow is common to the tea trade in the gulf. There are other brands on sale in the gulf markets also in packets/cartons having a combination of same colours. Some such cartons have been produced before this Court. (a) Gold Medal Tea of Jayshree Tea Company Limited, Calcutta. (b) Hiltop Red Cup Tea of Santilal & Bhansali of Bombay. (c) Red Eagle Tea of tea packets (India) Pvt. Ltd. 20. The defendant has also relied on packets/cartons of the London Brand Tea of Ceylon which is on sale in the market. The said Ceylon Carton/Packets has the same colours and/or combination. 21. Other brands available in the gulf markets include Red Pot Label, Red Bank Label, Red Ban, Red Leaf, Royal Delite. 22. I shall advert to the certain other facts at the appropriate stage. The contention of Mr. Dipankar Gupta, learned Counsel appearing for the petitioner is that the packets or cartons of plaintiff has distinctive features Brooke Bond is claiming distinctiveness and/or reputation in the entire get-up, colour scheme and style of its packets or cartons. The cartons and/or packets in the distinctive get-up, style, colour scheme have become distinctive of the tea of the plaintiff and the tea has acquired a substantial reputation. The defendant, by exporting tea, with the mark Red Apple in packets and/or cartons practically identical and/or in any event deceptively and confusingly similar to the plaintiff's packets and/or cartons, has been passing off its tea as and for that of the petitioner. The words 'Red Apple' in Arabic is phonetically similar to the words 'Red Label' being pronounced as 'Red Apple'. The words 'Red Apple' in Arabic is phonetically similar to the words 'Red Label' being pronounced as 'Red Apple'. He, therefore submits that the interim order of injunction should be confirmed and the defendant should not be allowed to export any further in the cartons or packets which are identical or deceptively and confusingly similar to the packets and/or cartons of the plaintiff. He has relied on several authorities on the question how the Court should approach the problem regarding the deception and similarly in a passing off action. He has relied on Kerly's law of Trade Marks and Trade Names (11th Edition) at p. 418 Article 17-23 where the learned Author had said : "It is clear that the Tribunal ought not merely to look at the mark as they stand side by side, for, from the nature of the case, they will not be so put before any customer whom it is sought to deceive by means of either of them. He can only contrast the mark upon the goods offered to him with his recollection of the mark used upon those he is seeking to buy and allowance must be made for this in estimating the probability of deception. Any other rule would be of no practical use. It has to be borne in mind that the ordinary purchaser has only "and ordinary memory." "The question is not whether if a person is looking at two trade-marks side by side there would be a possibility of confusion ; the question is whether the person who sees the proposed trade-mark in the absence of the other trade mark and in view only of his general recollection of what the nature of the other trade-mark was, would be liable to be deceived and to think that the trade-mark before him is the same as the other, of which he has a general recollection." 23. He has relied on a decision of the Supreme Court in the case of (1) Ruston & Hornby Ltd. v. Zamindara Engineering Co. reported in AIR 1970 SC 1649 . 24. In that case the appellant, was a limited liability company incorporated under the English Companies Act with its registered office at Lincoln, England. It carried on business in the manufacture and sale of diesel internal combustion engines and their parts and accessories. reported in AIR 1970 SC 1649 . 24. In that case the appellant, was a limited liability company incorporated under the English Companies Act with its registered office at Lincoln, England. It carried on business in the manufacture and sale of diesel internal combustion engines and their parts and accessories. Ruston Hornby (India) Ltd., a company registered in India under the Companies Act, 1956 is a subsidiary of the appellant. The respondent is a firm carrying on business in the manufacture and sale of diesel internal combustion engines and their parts. The appellant was a registered proprietory of the registered trade-mark Ruston being Registration No. 5120 in Class 7 in respect of internal combustion engines. Ruston and Hornby (India) Ltd. is the registered user of the said trade-mark and manufacturers in India and sales in India internal combustion engines under the trade mark "RUSTON". Sometimes in June, 1955 the appellant came to learn that the respondent was manufacturing and selling diesel internal combustion engines under the trade mark "RUSTON". On July 8, 1955 the appellant wrote through its attorneys a letter to the respondent and called upon it to desist from using the trade mark "RUSTAN" on its engines as it was an infringement of the registered trade mark "RUSTAN". The defendant replied that "RUSTAM" was not an infringement of "RUSTON" as the words "RUSTAM INDIA" was used. On February 17, 1956 the appellant instituted a suit praying for a permanent injunction restraining the respondent and its agents from infringing the trademark "RUSTON". On January 3, 1958 the Additional District Judge, Meerut, dismissed the suit holding that there was no visual or holding that there was no visual or phonetic similarity between "RUSTON" and "RUSTAM". The appellant took the matter in appeal in the Allahabad High Court. By its judgment dated November 23, 1956 the High Court held that the use of the word RUSTAM by the respondent constituted infringement of the appellant's trade mark "RUSTON" and the respondent should be prohibited from using the trade mark "RUSTAM". But the High Court proceeded to hold that the use of the word "RUSTAM". But the High Court proceeded to hold "INDIA" was not an infringement manufactured in England and the defendant's engines were manufactured in India. But the High Court proceeded to hold that the use of the word "RUSTAM". But the High Court proceeded to hold "INDIA" was not an infringement manufactured in England and the defendant's engines were manufactured in India. The suffix "India" would be a sufficient warning that the engine sold was not a "RUSTON" engine manufactured in England and the respondent may be permitted to use the combination "RUSTAM INDIA", There the Supreme Court held :– "But in an infringement action the issue is as follows :– "Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark ?" It very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get-up of the defendant's goods may be so different from the get-up of the plaintiff's goods and the prices also may be so different that there would no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, as injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark." The Supreme Court then proceeded to hold as follows : "In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it the test of infringement is the same as in an action for passing-off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions. In the present case the High Court has found that there is a deceptive resemblance between the word "RUSTON" and the word" RUSTAM' and therefore the use of the bare word' RUSTAM' constituted infringement of the plaintiff's trade mark "RUSTON". In the present case the High Court has found that there is a deceptive resemblance between the word "RUSTON" and the word" RUSTAM' and therefore the use of the bare word' RUSTAM' constituted infringement of the plaintiff's trade mark "RUSTON". The respondent has not brought an appeal against the judgment of the High Court on this point and it is, therefore, not open to him to challenge that finding. If the respondent's trade mark is deceptively similar to that of the appellant the fact that the word "INDIA" is added to the respondent's trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark." 25. The plaintiff has relied on a decision of the Court of Appeal in the case of (2) Lever v. Goodwin reported in 36 Chancery Division 1. In that case the plaintiffs, who were manufacturers of Soap, sued the defendants, who were also soap manufacturers, for alleged infringement of the Plaintiff's trade-mark and for selling soap in such wrappers as to pass it off as of the plaintiff's manufacture. The case as to the trade-mark failed, the Court holding that the words "Self-washer" and "Self-washing" were descriptions of the action of the Plaintiffs' Soap, and did not constitute a good trade-mark. The Plaintiff’s however, distinctly brought forward that the Defendants had put their soap on the market in a form which was calculated to leap purchasers to believe that they were purchasing the Plaintiff’s soap. The Plaintiffs had sold their soap to retail dealers in packets not bearing their name, but wrapped up in paper of a peculiar kind called “parchment paper”, the use of which was almost entirely confined to them, with spaced printing intituling the soap “Sunlight Self-washer”, or “Sunlight Self-washing.” About the beginning of 1885 the Defendants, who did not sell by retail, began to bring out their soap in packets of the same size and shape, in wrappers of the same kind of paper, with spaced printing of the same colour as that of Plaintiffs, describing the soap as “Goodwin’s Self-washing Soap.” The packets were very similar in general appearance to those of the Plaintiffs, though there was no difficulty in distinguishing one form the other in they were put aside by side. Cotton, L. J. held thus :– “Now what was the contention on behalf of the Defendants ? Cotton, L. J. held thus :– “Now what was the contention on behalf of the Defendants ? Looking at the two tablets, one cannot but see that there is a strong general resemblance between them and especially to the eyes of people who cannot read. But Mr. Aston's contention was this : there is no trade-mark in "Self-washing" or "Self-washer, "there is no monopoly in this parchment paper : there is no monopoly in the spaced printing then why should we be restrained, in carrying on business, from using those things as to which the Plaintiffs cannot claim any monopoly? That is an obvious fallacy. There may be no monopoly at the in the individual things, but if they are so combined by the defendants as to pass of the defendants' goods as the plaintiffs' then the Defendants have brought themselves within the old common law doctrine in respect of which equity will give to the aggrieved party in injunction in order to restrain the Defendants from passing off their goods as those of the plaintiffs." "The principal argument on the part of Mr. Aston was this :– That the essential marks in the two packets are "Sunlight Self-washer" in the one case, 'Goodwin's Self-washing Soap' in the other ; and that the name is that which would guide every one who bought this soap. In my opinion, that will not hold. It is very true that Goodwin's name appears as the maker or the wholesale seller of this particular soap, but it is quite contrary to experience, and quite contrary to the evidence, to suppose that every one, when, buying a packet of tabular soap, would look to the name for the purpose of determining whether what he has bought is that which he has been accustomed to buy in a very similar packet. I do not for a moment suggest that the plaintiffs could have absolutely restrained the use of the words "Self-washing," nor do I say that they could absolutely have restrained the Defendants from having the spaced printing, or from the use of parchment paper ; but when we find that, as regards soap for sale they were almost exclusively used by the Plaintiffs, we cannot but see that this combination is calculated to induce people to believe that what they were buying, which was the Defendant's soap was what they had known and appreciated, namely, the Plaintiffs' soap." Lindley, L. J. held thus :– "As to the main question, I think the case is plain and easy, and it may be rested upon the defendants' own endence and upon the appearance of the packages. What is called the general "get-up", which is an expression used by some of them witnesses, is so similar that obviously the one might easily be mistaken for the other. Of course, in all these cases there ale 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 most all is this : that Goodwin has substituted the word "Goodwin," in large letters, for "Sunlight." That resemblances ; 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 pass for the other, but that intention has been realized. 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." 26. Reliance was also placed in the decision of Delhi High Court in the case of (3) Glaxo Operations UK Ltd. Middlesex (England) and Others v. Samrat Pharmaceuticals, Kanpur, reported in AIR 1984 Delhi 265. 27. Reliance was also placed in the decision of Delhi High Court in the case of (3) Glaxo Operations UK Ltd. Middlesex (England) and Others v. Samrat Pharmaceuticals, Kanpur, reported in AIR 1984 Delhi 265. 27. In that case the suit was for issue of perpetual injunction restraining the defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with Glucose Powder or any other medicinal or food preparation in cartons as are a substantial reproduction of or colourable imitation of the cartons of the product Glaxose D and/or Glucon D. In the case the Court held as follows :– "The plaintiff have placed on record photostat copies of the certificate of registration of the trade marks as well as copyright. The plaintiffs have further placed on record a carton in which the defendant is selling his product Glucose-D. The plaintiffs have also filed the cartons of their produce Glucon-D under which the words written are Glucose-D. On a comparison of the two, it is clear that they are similar and the resemblance is to the extent that any product in the carton of the defendant can be taken to be that of the plaintiff. The background of each of them is green. There are criss-cross squres at the same place on both of the cartons. In the carton of the plaintiff word 'GL' is written and in that of the defendant word 'SP' is written, but the printing is so small that anybody while purchasing will overlook these small words and he is likely to confuse the product of the defendant as that of the plaintiff. Then there (is) also resemblance of inverted triangles with a diamond at the same place. In the carton of the plaintiff, the words written in inverted triangle are Glucon-D and Glucose-D. In the carton of the defendant, the words written are Glucose-D powder in an inverted triangle. Then there is diamond also at the lower angle of the triangle is similar fashion. In nutshell the colour, get-up and general appearance of both the cartons are the same. It is well-known that it is basis of the background colour get-up and general appearance of the cartons that the articles contained therein are purchased and that being so, a customer is likely to be deceived and he can buy the product of the defendant taking the same for that of the plaintiff." 28. It is well-known that it is basis of the background colour get-up and general appearance of the cartons that the articles contained therein are purchased and that being so, a customer is likely to be deceived and he can buy the product of the defendant taking the same for that of the plaintiff." 28. Reliance has been placed on the judgment of the Division Bench of Bombay High Court in the case of (4) M/s. Hiralal Prabhudas v. M/s. Ganesh Trading Co. reported in AIR 1984 Bombay 218. 29. The facts of that case are that the appellants are bidi manufacturers and are the proprietors of four label marks registered in Part A in the Trade Marks Register in April 1943, May 1950, August 1950 and September 1956. For the moment, broadly stated, the appellants' labels comprise of the bust of a man and the name Hiralal in Devnagri script over the bust Respondents who carryon like business, applied on 7th January, 1970 for registration of their label which for the moment, broadly stated, comprises of the bust of a man and the name Himatlal in Devnagri script over the bust. The application was signed by the 1st respondent's partner Vallabhdas laljibhai Patel. The respondent's label was registered relating back to 29th January, 1970 in Class A restricted to Gujarat Territory. On 7th October, 1970 the respondents applied for amendment of their registration application, to it, that on their lable the name 'Himatlal' should be read as Vallabhdas' alias 'Himatlal' on 11th January, 1973 the appellants applied for rectification of the register on the ground that the respondents' label was deceptively similar to the appellants' registered trade mark. That application was rejected by the Deputy Register of Trade Marks. The appellants petition in this Court for setting aside the Deputy Registrar's order was also dismissed by the learned single Judge on the ground that the labels are not deceptively similar with no probability of causing confusion, Hence the present appeal. 30. After considering various authorities (English and Indian) the Bombay High Court held as follow : – "5. The appellants petition in this Court for setting aside the Deputy Registrar's order was also dismissed by the learned single Judge on the ground that the labels are not deceptively similar with no probability of causing confusion, Hence the present appeal. 30. After considering various authorities (English and Indian) the Bombay High Court held as follow : – "5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances." 31. Reliance has also been placed in the case of (5) East End Hosiery Mills Private Ltd. v M/s. Agarwal Textiles Mills reported in AIR 1971 Calcutta 3. 32. There an application was filed by the plaintiff, inter alia, for an injunction restraining the defendant from passing off Gangies which are not of the petitioner's manufacture as and for those of the petitioner and from selling or offering for sale under the trade mark or name "SACHA MOTI" Gangies not of the petitioner's manufacture. The application is also for an injunction restraining the defendant from displaying or causing to be displayed sign boards or posters inscribed with the mark "SACHA MOTI" in relation to Gangies or such other mark which are colourable imitation of the petitioner's trade mark "MOTI". The Court held thus :– "In an action in passing off for injunction the plaintiff must prove that his name, mark, sign or get-up has become distinctive of his goods. The Court held thus :– "In an action in passing off for injunction the plaintiff must prove that his name, mark, sign or get-up has become distinctive of his goods. Substantial number of members or public must understand the name or sign or mark or get-up to mean or signify goods manufactured by the plaintiff. (See Article 998 page 597 Halsbury 3rd Edn.). The plaintiff must further show that the defendant's use of the disputed name or mark was likely or calculated to deceive or cause confusion or injury actual or probable to the goodwill of the plaintiff's business. In an action for passing off, it is important to consider– (i) Who are the persons whom the resemblance would likely to deceive or confuse and (ii) What rules of comparison are to be adopted in ascertaining the existence of such resemblance. The confusion is likely to be created in the minds of customers who may not be certain on seeing a mark as to whether they had bought goods bearing those marks previously. Supreme Court has said that the question has to be approached from the point of view of a man of "average intelligence and imperfect recollection". Overall structural and phonetic similarity has also to be considered, as was observed by Farewell, J. in (6) William Bailey (Barmingham) Ltd.'s Application, (1935) 52 RPC 136. "I do not think it is right to take a part of the word and compare it with a part of the other words. One word must be considered as a whole and compare it with the other word as a whole. I think it is dangerous method to adopt to divide the word up and seek to distinguish a portion of it with a portion of the other word." In such an action actual fraudulent intention is not necessary but its existence certainly tilts the scale. Mr. Das, relied on the case of (7) Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Marks, AIR 1968 SC 582. According to Mr. Das the petitioner has not been able to establish distinctiveness of the mark "MOTI" in relation to Gangies in the trade. But to my mind distinctiveness will appear from mainly the result of the sales although sales may not be conclusive in all cases. of India Ltd. v. Registrar of Trade Marks, AIR 1968 SC 582. According to Mr. Das the petitioner has not been able to establish distinctiveness of the mark "MOTI" in relation to Gangies in the trade. But to my mind distinctiveness will appear from mainly the result of the sales although sales may not be conclusive in all cases. There are many cogent factors in coming to the conclusion as to whether the goods of a trader has acquired distinctiveness in the market. Mr. Das relied on the observation of P. B. Mukherji, J. (as His Lordship then was) in the said case and submitted that distinctiveness of goods in trade by its association with a particular name requires normally a hard labourious and time consuming process in business. There can be no hard and fast rule that any particular minimum period of time is required to a acquire distinctiveness. In some cases the time to acquire distinctiveness may be larger than in others." "In the instant case the use of the said trade mark by the plaintiff and the gradual increase in volume of sales of said goods since 1958, i. e., about 15 years prima fade seems to show that these goods have acquired distinctiveness in the market." "It has been held by P. B. Mukherji, J. (as His Lordship then was) in the case of (8) Prem Nath Mayor v. Registrar of Trade Marks, AIR 1969 Calcutta 80, as follows :– "Distinctiveness being primarily a matter of fact. Evidence can be given regarding distinctiveness in fact. There are no narrow or regid rule about distinctiveness. Such feature or in general arrangement. A mark should therefore be considered as a whole on its total impression and as a general rule. Attempts to dissect a mark in order to destroy distinctiveness have been disapproved. Its totality of the impression, phonetically and visually which is the test. If that totality of impression is likely to cause deception or confusion then the identity is established. If not, then they are dissimilar." "Resemblance in the respective get-up of the two marks and the phonetical similarity of "MOTI" and "SACHA MOTI" seems to me to be likely to mislead purchasers in our country by whom the said goods would normally be bought. If not, then they are dissimilar." "Resemblance in the respective get-up of the two marks and the phonetical similarity of "MOTI" and "SACHA MOTI" seems to me to be likely to mislead purchasers in our country by whom the said goods would normally be bought. In this connection it should be noted that the word 'SACHA' is a qualitative word and would signify merely purer quality of the same goods. In this connection it should be noted that the word "SACHA" is written or printed above the word "MOTI" in similar letters and importance has to be attached to the size of the letters used in different parts of the same name. See in (9) Mitzler v. Wood, (1878) 8 Chancery Division 606 at Page 610. It also appears that the defendant has no mill for manufacturing those goods. The defendants carries on business in a shop room in Calcutta which is its registered place of business." 33. Reliance has also been placed also in the case of (10) F. Hoftmann La-Roch v. D.D.S.A. Pharmaceuticals Ltd. reported in 1972 RPC I. In that case, the defendants manufactured a drug in black and green capsules similar to those of the plaintiff. The Court held that there was a case of passing off and granted an injunction although the drug could not be bought except on the prescription of a medical practitioner and the Court was satisfied that there was no likelihood of significant confusion on the part of a Doctor or pharmacist. The Court found it significant that the plaintiff had been the only person producing capsules in the get-up over the last 10 years and that the defendant attached a very high financial value to the said get-up so as to copy the same. Herman, L.J. observed : "Now, I myself never received from the defendants a satisfactory answer to the plain question why do they with to mark their goods in green and black ? I can only answer that they wish so to do in order to attract to themselves some part of the plaintiff's goodwill and trade on their reputation and in fact to represent to the public that their goods are the goods of the plaintiffs. I can only answer that they wish so to do in order to attract to themselves some part of the plaintiff's goodwill and trade on their reputation and in fact to represent to the public that their goods are the goods of the plaintiffs. That, in my judgment, is exactly the classic case of passing off so that, inspite of the unusual circumstances, inspite of the fact that there is no choice, or little choice, in the public, that the drug is prescribed by the doctor, I do not think that the defendants, by putting it up in this form, would be trying to filch some part of the plaintiffs' reputation, and that, in my judgment, they are not entitled to do." 34. Relying on those decisions, and referring to the cartons used by the plaintiff and the defendant Mr. Gupta has submitted that in the instant case also the defendant is obviously attaching great significance to the financial value of the cartons in the distinctive get-up, colour scheme and style the defendant has not offered any explanation whatsoever as to why they should imitate or copy the same, although it appears from a newspaper relied on by the defendant at page 45 of the affidavit-in-opposition that Chunilal Purushottom & Co. have been selling C. P. Tea, tea bag and Crossed Sword tea packets with great popularity in Dubai. It is also significant that not only has the plaintiff's cartons and packets being imitated and copied, in the case of packet tea where the plaintiff is the brand leader, but also Lipton's cartons and packets have been imitated and copied in the case of tea bags where Lipton is the brand leader. Moreover, the defendant has mentioned its export figures of packet tea to various countries in the world including the Gulf countries since 1981 and no explanation or reason has been offered as to why the defendant should suddenly switch to the infringing cartons and/or packets. 35. Mr. Gupta has, therefore, contended that this is a factor which should be taken into account inasmuch as the defendant has fraudulent intention in imitating the colour and get-up of the leading sellers of tea or tea packets as the case may be. 35. Mr. Gupta has, therefore, contended that this is a factor which should be taken into account inasmuch as the defendant has fraudulent intention in imitating the colour and get-up of the leading sellers of tea or tea packets as the case may be. He has further submitted that the entirety of the circumstances will point out to the fact that there has been a deliberate imitation of the get-up and scheme adopted by the defendant are confusingly similar and likely to deceive the public. Therefore he submits that interim order of injunction should be confirmed. 36. Mr. Gautam Chakraborty, learned Counsel appearing for the respondent without disputing the principles of the cases cited by the learned Counsel for the petitioner has submitted, firstly, that there is no passing off in India. If there is any tort it has been committed in Dubai and there is no evidence that the tort in question violated the laws of Dubai. He has also submitted that there is no sale in India which was an essential requirement of passing off. In this connection Mr. Chakraborty has relied on several decisions. 37. Reliance has been placed by Mr. Gautam Chakraborty, learned Counsel on behalf of the defendants in the case of (11) Erven Warnink B. V. and Another v. J. Townend & Sons (Hull) Ltd. and Another reported in 1980 RPC 31, commonly referred to as Advocaat case to emphasise the essentials of passing off action. 38. In that case the plaintiffs had been selling a drink called Advocate in the U. K. since 1911. In 1976, their sales accounted for 75 per cent. of the total market. Prior to 1974 practically all advocaat sold in the U. K. was made in Holland and consisted of eggs spirit and sugar but no wine. The spirit was called brandewijn, a Dutch spirit based on grain or molasses. The Judge found as a fact that a substantial reputation and goodwill had been acquired by the nake Advocaat as that of a drink with recognisable qualities of appearance taste, strength and satisfaction, In 1974, the defendants began to manufacture and sell a drink which they called "Old English Advocaat." It was made out of eggs and a fortified Cyprus wine and proved to be a commercial success. The plaintiffs were worried about their business. They complained about the defendants use of the name Advocaat. The plaintiffs were worried about their business. They complained about the defendants use of the name Advocaat. They contended that Advocaat could not properly be so called unless its alcoholic content consisted of spirit, and they claimed an injunction to restrain the defendants selling' under the name Advocaat, a drink which was not in fact Advocaat. They alleged passing off and unfair trading. However, they did not prove that any purchaser of the defendant's product supposed it to be the plaintiff's product or to be Dutch Advocaat of any make. Goulding, J. granted the injunction and held that there was no doubt that members of the public believed, and had been deliberately induced to believe that in buying Old English Advocaat, they were in fact buying Advocaat, that is a drink of the type sold by the plaintiffs. 39. On the defendant's appeal, the Court of Appeal discharged , the injunction, holding that the trade name of a product can only be protected by a passing off action if it is distinctive of the goods of one particular producer, or a number of identified producers of whom the plaintiff is one, if for some reason the products of that class of producers have a character and reputation peculiar to their products; that the name "Advocaat" was a generic and publici juris description of a type of drink which anyone was free to make and that as such anyone was free to use the name ; and that accordingly there was no proprietory right in the name. The plaintiffs appealed. 40. Lord Diplock, enumerated five characteristics which may be present in order to create a valid cause of action for passing off : (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 quia timet action) will probably do so. 41. (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 quia timet action) will probably do so. 41. Lord Fraser of Tullybelton in his judgment indicated that it is essential for the plaintiff in a passing off action to show atleast the following facts : (1) That his business consists of, or includes, selling in England a class of goods to which the particular trade name applies. (2) That the class of goods is clearly defined, and that in the minds of the public, or a section of the public, in England, the trade name distinguishes that class from other similar goods. (3) That because of the reputation of the goods' there is goodwill attached to the name. (4) That he, the plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value ; (5) That he has suffered, or is really likely to suffer substantial damage to his property in the goodwill by reason of the defendant selling goods which are falsely described by the trade name to which the goodwill is attached. 42. Mr. Chakraborty, has relied on Dicey and Morris on 'The Conflict of Laws', 10th Edition. He has relied on Rule 172 which is as follows :– Rule 172 (i) As a general rule, an act done in a foreign country is a tort and actionable as such in England only if it is both. (a) Actionable as a tort according to English law or in other words is an act which, if done in England, would be a tort, and (b) Actionable according to the law of foreign country where it was done. 43. He has therefore, submitted that to found a suit in India for a wrong alleged to have been committed in Dubai not only wrong must be of such a character that it would have been actionable if committed in India but also the Act must not have been justifiable by law of Dubai where it is allegedly done. His submission is that the Act complained of by the plaintiff is not actionable in Dubai. His submission is that the Act complained of by the plaintiff is not actionable in Dubai. In any event, the plaintiff has not proved whether this is actionable in Dubai or not. He has heavily relied in the case of (12) John Walker & Sons Limited and Others v. Henry Ost and Company Limited and Another reported in 1970 RPC 489 commonly referred to as Scotch Whisky case. The facts of the case are that passing off action was brought by ten plaintiffs, all blenders and exporters of Scotch Whisky, against an English Company, Henry Ost & Co. Ltd. (the first defendant), and an Ecuadorian Company, Vinalco S. A. Productora Ecuatorina de Licores (the second defendant). The plaintiffs claimed that two torts had been committed; first, the sale in England by the first to the second defendant of instruments of deception, including labels, to enable the second defendant to pass off in Ecquador as Scotch Whisky liquor which was in fact a mixture of single malty whisky from Scotland and local cane spirit; and secondly, the passing off in Ecquador by the first defendant in collaboration with the second defendant of such a mixture as Scotch Whisky. The defence of the second defendant had previously been struck out and a motion for judgment in default was stood over pending judgment in the action. Each of the plaintiffs had for many years blended and bottled liquor distilled in Scotland and had exported such liquor to Ecquador under the description Scotch Whisky, and that liquor had been advertised in Ecquador under that description. Total shipment of Scotch Whisky to Ecquador from 1959 to 1965 were 11/2 million bottles, of which the plaintiff's exported about half. Substantially all the share's in the first defendant, which was incorporated in 1948 were owned by its managing director, Mr. Jindrich Ost. In 1951 it registered under the Registration of Business Names Act, 1916, the name "Glenvale Distillery", and in 1952 it registered in England in respect of Scotch Whisky the trade mark "Scottish Archer". In 1947 another company in which Mr. Jindrich Ost was largely interested had registered "White Abbet". The second defendant was incorporated in Ecquador in 1963 by Mr. Wappenstein, who had previously carried on a similar business under the Vinalco Exportation/Importation. In 1947 another company in which Mr. Jindrich Ost was largely interested had registered "White Abbet". The second defendant was incorporated in Ecquador in 1963 by Mr. Wappenstein, who had previously carried on a similar business under the Vinalco Exportation/Importation. In 1959 and subsequently bottles of liquor were sold in Ecquador with one or other of two lables bearing respectively the trade marks "Scottish Archer" and "White Abbey" Both labels included in English the words "Whisky" and "Scotch" these words being bigger than other words on the labels, The first label stated in Spanish, "Prepared in Ecquador by Henry ost and Co. Ltd. Glasgow and London branch Quito. Between 1959 and 1965 the first defendant had shipped to Vinalco Exportation and Importation and after its incorporation, the second defendant 276,000 empty bottles, 22,000 cartons containing the bottles, 150,000 Scottish Archer labels and nearly 25,000 proof gallons of a single malt whisky. It was not however admitted that the first defendant had actually supplied White Abbey labels. In the absence of rebutting evidence, counsel for the first defendant was forced to admit that the court must proceed on the footing that the first defendant never had an address in Glasgow that Glenvale Distillery never existed as a distillery but was simply a business name and that the first defendant never had a branch in Quito and never prepared anything there. The evidence was that the first defendant purchases single malt whiskies from various distilleries and resold and shipped them to the second defendant in Ecquador. There was evidence that the first defendants were really brokers and nothing to suggest that they ever saw, touched or blended the whisky sold to the second defendant. 44. As to the first alleged tort the plaintiff's relied, inter alia, on the decision in (13) Bollinger v. Costa Brava Wine Co. (the Champagne case), (1960) Chancery 262 : (1960) RPC 16. The first defendant contended that case was wrongly decided and that in any event the plaintiffs did not fall within the principles of the case since there was no suggestion that blenders of Scotch Whisky must come from Scotland, and in fact some were situated in England. The plaintiffs also contended that they had no committed a tort actionable in England since the articles supplied by them could be used quite legitimately. The plaintiffs also contended that they had no committed a tort actionable in England since the articles supplied by them could be used quite legitimately. As regards the plaintiffs contention that the tort of passing off is committed when the defendant supplies the means to enable another to pass off the first defendant contended that on the cases cited the goods supplied must themselves be wrongly marked. They also said that there could be no claim for damages except where fraud was pleaded as it was not and proved. 45. As to the second alleged tort the first defendant contended that it had done nothing in Ecquador that the proper forum in which to bring the action was Ecquador and that in any case the labels had been approved by the Directorate of State Monopolies in Ecquador and for that reason and others the matter was not actionable in Ecquador and hence not actionable in this country. It was inter alia, held– (i) that the plaintiffs had proved conclusively that Scotch Whisky had been well-known in Ecquador for many years and meant a blend of Scotch Whiskies; the description had not become debased in Ecquador by reason of sale thereof admixtures with local spirits. Mr. Jindrich Ost knew that the liquor being sold in Ecqador by the second defendant under the White Abbey and Scottish Archer labels was an admixture and appreciated that there would be a deception in Ecquador and the labels were not only liable to deceive but had actually deceived. (ii) that having regard to the knowledge and intention of Mr. Ost the sale by the first defendant in England of goods and labels was tortious. (iii) that the acts complained of by the plaintiffs were actionable in Ecquador, and the plaintiffs succeeded in respect of the second tort. The acts had originated from acts of the first defendant in England which included shipment of materials to Ecquador and causing them to be landed there and there was no reason why the English Court was not the proper forum for the matter to be litigated Foster, J. held as follows :– "I turn to the plaintiffs' submissions of law. These submissions may be summarized as follows : (1) To maintain an action for passing-off, the particular plaintiffs need not be the only persons with the right to the trade description. These submissions may be summarized as follows : (1) To maintain an action for passing-off, the particular plaintiffs need not be the only persons with the right to the trade description. (2) The geographical expression "Scotch Whisky" constitutes a trade description because the geographical expression is sufficiently precise and it includes the origin of the goods. (3) The first defendant commits the tort of passing off when it supplies to the second defendant the means whereby the second, defendant can pass off under a false trade description as the plaintiffs' goods products which are not the plaintiffs' goods. (4) The plaintiffs are entitled to an injunction to restrain the supply of goods in England calculated to lead to a passing off abroad under a false trade description as the plaintiffs' goods products which are not the plaintiffs, goods and the foreign law is irrelevant. (5) In the case of the sale of instruments of deception to a middleman, the tort of passing off is complete when the instruments of deception are sold to the middleman and not when the deception occurs in the market ; and last it is tortious to supply any article or product for the purpose of furthering a deception. "The first defendant's submissions were these : (1) The Champagne case was wrongly decided and I should not follow it. It opens far too wide a field of action and proceeds on the footing that where there ought to be a remedy, therefore there is a remedy. In that case visually all the Champagne producers were the plaintiffs. (2) If the Bollinger case is rightly decided, the facts of this case do not bring the plaintiffs within the principle of that case. In both the Champagne case and the Sherry case it was the producers of the commodity who were seeking to uphold the description and in a particular area. In this case it is not the distilleries who bring the action but the blenders, and they may be anywhere. There is no suggestion that the blenders must come from Scotland and in fact the evidence was that there are some in England. The first defendant has not committed a tort actionable in England. The first defendant has never presented anything in the United Kingdom. There is no suggestion that the blenders must come from Scotland and in fact the evidence was that there are some in England. The first defendant has not committed a tort actionable in England. The first defendant has never presented anything in the United Kingdom. The first defendant has supplied to the second defendant whisky, 50,000 Scottish Archer labels and cartons for both the Scottish Archer and White Abbey, but the wrong depends on how these are used at a later state in Ecquador. They could be used quite legitimately there, as in the case of Scott's Scotch Whisky. In all the English and Irish cases relied on by the plaintiffs, the goods themselves were wrongly marked. It is true that the American case might cover the present case, but that is not an authority in an English Court and the English law does not know of the principle of unfair competition and lastly there can be no claim for damages except where fraud is pleaded and proved and reliance was placed on Draper v. Trist, and (14) Marengo v. Daily Sketch and Sunday Graphic Ltd., (1948) 65 RPC 242." 46. Mr. Chakraborty, has also relied on a judgment of the House of Lords in the case of (15) Chaplin v. Boys reported in 1971 AC 356 The issue raised in the said appeal was where an action is brought in England in respect of a tort committed abroad what law is to be applied in determining the heads or measure of damage to be awarded to the plaintiff. The respondent was injured in a road accident in Malta caused by the admitted negligence of the appellant. Both the respondent and the appellant were normally resident in England and at the time of the accident stationed in Malta. As a result of the accident the respondent sustained serious injury and suit for damages. The sole question was whether the issue of damages was to be assessed according to the Law of England or Malta. There Lord Guest observed : "I propose to decide this case upon a very narrow ground. The difficulties arising from the decision of (16) Phillips v. Eyre, LR 6 Queens Bench. I have already been referred to by my noble and learned friends. I prefer to leave these question to those of your Lordships who are more familiar with this aspect of English law. The difficulties arising from the decision of (16) Phillips v. Eyre, LR 6 Queens Bench. I have already been referred to by my noble and learned friends. I prefer to leave these question to those of your Lordships who are more familiar with this aspect of English law. I am content to accept the position that to justify an action in England for a tort committed abroad the conduct must be actionable by English law and by the laws of the country in which the conduct occurred, the lex loci delicti. Both these conditions are satisfied in this case as the negligent driving of the appellant was actionable both by the laws of England and by the law of Malta. This line of reasoning would be in accord with the principles of the Scottish decision of (17) Naftalin v. London Midland and Scottish Railway Ca., 1933 SC 259 and (18) M. Elroy v. M. Allister, 1949 SC 110. And nothing which I have to say hereafter is intended to throw any doubt on these cases which I think were rightly decided." 47. Mr. Chakraborty has, therefore, contended that unless it can be shown by the plaintiff that the alleged act is also actionable in Dubai no action will lie in this Court. 48. Mr. Chakraborty then contends referring to the various cartons used by different traders in Dubai that if there is any resemblance between the cartons used by the plaintiff and the cartons used by the defendant it is because those features are common to the trade. He has relied on several decisions in support of his contention. 49. The first decision cited by him is in the case of (19) Jamieson and Co. v. Jamieson reported in 15 RPC 169. In that case the Plaintiff, who carried on business as Jamieson and Co., at Aberdeen, as a manufacturer of harness composition, brought this action to restrain George Jamieson, who was also a manufacturer of harness composition at Aberdeen, from passing of his goods the goods of the plaintiff. It appeared, at the trial, that there were two other manufacturers of harness composition named Jamieson at Aberdeen, one being Peter Jamieson, who was prior in date to all the others. It appeared, at the trial, that there were two other manufacturers of harness composition named Jamieson at Aberdeen, one being Peter Jamieson, who was prior in date to all the others. The evidence was to the effect that the tins used by the Defendant were, as regards size and shape and that the labels thereon were, as regards their colour and the colour of the printing, similar to the Plaintiff's and to Peter Jamieson's, but were common to the trade. In 1882, the Plaintiff, in consequence of proceedings taken by Peter Jamieson, agreed with him that he, the Plaintiff should put on his tins, "Jamieson and Co.," diagonally in writing and a registered Trade Mark consisting of a horse. The defendant, when be first started business at Aberdeen, put "G. Jamieson" on his tins, but subsequently, on the complaint of Peter Jamieson, substituted "George Jamieson". "Aberdeen'' appeared on all the labels above referred to. Lord Lindley, M. R. held thus :– "Now if we look at the Defendant's get-up we find that it is similar to the Plaintiff's, in all those respects in which the Plaintiff's is similar to other people's; that is to say, there is nothing in particular to distinguish the Defendant's good, whether they are the small boxes or the flat boxes, or the brown paper parcels, from that which is common to the trade. So far there is community of appearance, and so far one may be mistaken for the other. But as regards that which distinguishes the Plaintiff's goods from other people's, there is absolutely no similarity at all, and nobody pretends for one moment to say that, if you look to that which distinguishes the Plaintiff's goods from, other people's, the Defendant's can be, or ever is, mistaken for the Plaintiff's. The evidence in favour of the Plaintiff's, and the evidence which presses the evidence must be dealt with of course. The evidence is that, if Mr. Lincoln or other people go and ask for "Jamieson's company," they do, in fact, get supplied with the Defendant's goods, and that the orders Lincoln and others who prefer Jamieson's, do not notice that the Defendant's article is being supplied for what they ask. That is true ; but why is it true ? It is true only because the resemblances are confined to those features, which are common to the trade. That is true ; but why is it true ? It is true only because the resemblances are confined to those features, which are common to the trade. It is not true that one is passed off for the, other, because the Defendant has taken that which distinguishes, the Plaintiff's goods from other makers. That is not true, and it is admitted on all bands that the moment attention is paid to the differences between the Plaintiff's and the Defendant's nobody is, or is likely to be mistaken." "I think the learned Judge's view of the law was correct, and I think his view of the facts was correct so far as they are material for my consideration, except in this, that I think he did not give sufficient weight to the fact that the Defendant's get-up is like the Plaintiff's get-up, simply because of the features common to the Plaintiff's and to other vendors of this composition. The Defendant is not proved to have copied anything whatever which is peculiar to the Plaintiffs. There, I think the learned Judge failed to attribute sufficient weight to that fact which is all important. If the plaintiffs had been the only vendors of thinks get-up in this way, and the Defendant choose to get-up his in precisely the same way, I should have thought the Plaintiff's case a very strong one. But that is not so. There is nothing peculiar in that at all. There is nothing peculiar to the Plaintiffs in that which is not common to other people, and all that, the Defendant has done is to get-up his things in the mode which is common to other people. You cannot infer from that, that he has tried to pass off his goods as those of the Plaintiffs. It appears to me, I confess, without going through the evidence at any great length, that this case is one of suspicion. You cannot infer from that, that he has tried to pass off his goods as those of the Plaintiffs. It appears to me, I confess, without going through the evidence at any great length, that this case is one of suspicion. I am not in the least surprised at the Plaintiff's being very much annoyed, and I am not surprised even at their trying to restrain this; but, of course, we must look at it from legal principles, and looking at it from legal principles it appears to me that we cannot affirm this decision without saying that the Defendant has done that which is legally wrong ; but that which is legally wrong is not proved or brought home to him to the satisfaction of this Court." 50. Reliance has been placed in the case of (20) Imperial Tobacco Company (of Great Britain and Ireland), ID v. Purnell and Co. reported in 21 RPC 368. 51. The predecessors of the Plaintiff's, who were cigar manufacturers in 1888 Commenced to sell cigars under the name "Marcella," and having round them a narrow band of red paper five thirty-seconds of an inch in width, with the name of the branch printed thereon in white. They contended that these cigars were so well-known and so much asked for as "narrow red band" cigars, as to entitle them to an injunction restraining the sale by the Defendants of cigars bearing similar bands three-sixteenth of an inch in width, and sold under the name "Purnella." It appeared that the Plaintiff's first know, of the Defendants cigars in 1901, although the Defendants alleged that they had sold "Purnella" cigars, since 1882 in large quantities, and other cigars bearing similar bands since 1878. Evidence was also given of other long uses of cigar-bands of parctically the same width and style. It was (1) that a plain red band for cigars of whatever width and common and upon to the trade; (2) that the Defendants' red band was sufficiently distinguished from all other red bands, by the name "Purnella"; and (3) that even if the plaintiffs had used a narrow red band to a greater extent than any other manufacturer, that gave them so exclusive right the reto. The action was dismissed, with costs. The action was dismissed, with costs. Joyce, J. held thus :– "I am of opinion that the Plaintiffs have not and cannot have a monopoly in any particular width, or length if you please, of a plain red band, the use of such band a plain red band being common and open to the trade. Secondly, I am of opinion that the red bands of the Defendant, each of which is plainly stamped with the word "Purnella" are well and sufficiently distinguished from all other red bands, including the somewhat narrower band of the Plaintiff who as a matter of fact, plainly stamp all their bands with the word "Marcella". Every cigar manufacturer or tobacconist in this country is entitled to make or sell cigars of any size or shape he pleases, and no one can entitled to make or sell cigars of any size or shape he pleases, and no one can doubt that the practice of applying bands to cigar for sale is common and open to the trade. It was not contended before me, nor is it the fact, that any manufacturer or dealer is not entitled to apply to his cigars a band of every or any colour he may from time to prefer, just as much a grocer may wrap up and sell a pound of tea in paper of any colour he pleases." "The claim of the Plaintiffs is that no one but themselves is entitled to use for cigars a plain narrow red band like that used by them whatever may be the legend or letters upon it. This is the first time I have ever heard of such a thing as a right to a monopoly in any particular width in a common band or anything of the kind. The size or colour of the band or particular width of the band is incapable of registration, and its use cannot be protected under any Statute in force in this country. The Plaintiffs to succeed mud make out that the use of a narrow red band by the Defendant was fraudulent in its origin or has become so since by reason of his having notice of what the Plaintiffs were doing. The Plaintiffs to succeed mud make out that the use of a narrow red band by the Defendant was fraudulent in its origin or has become so since by reason of his having notice of what the Plaintiffs were doing. The Statement of claim does not allege, nor in my opinion is there any ground for suggesting, that there, has been any actual fraud in the Defendant, or that there has been any attempt or intention on his part to steel the Plaintiffs' trade. In my opinion the Defendant is a perfectly honest trader. I do not doubt that the plaintiffs have used and do use a narrow red band to a greater extent than any other manufacturer ; but this does not confer any exclusive right upon them. The only shadow of a foundation for the Plaintiffs' claim is that the Plaintiffs cigars as it is alleged have been occasionally asked for, by persons sometimes in jest or sometimes though I doubt it because they were unacquainted or imperfectly acquainted with the proper designation of these cigars as a cigar with "a red band" or "narrow red bank" which no doubt it is. If and so far as the Plaintiffs cigars have been asked for by "a red band" I think that, is immaterial, for a red hand is open to the trade. If and so far as they have been asked for by "a narrow red bank" that is somewhat been very much exaggerated by some of the witnesses on behalf of plaintiffs, and the fact of an article being occasionally asked for by a characteristic common to itself and others which is open to the trade, gives no right to a monopoly of that characteristic." "It is more like the case of (21) The Celluar Clothing Company Ltd. v. Maxtion and Murray, 15 RPC 581 : LR 1899 App Cases 326 where it was held that the word "Celluar" was, an ordinary, English word which approximately and conveniently described the cloth by which the goods sold by the Respondents were manufactured, but the term had not been proved to have acquired a secondary or special meaning so as to denote only the goods of the Appellants. If I am bound to state my opinion I do state that it has not been proved in this case that the words "narrow red bach" in connection with cigars have acquired such a secondary or special meaning as to denote only the goods of the plaintiffs." In the present case no real instance of mistake or deception by reason of there being a similarity in the bands used by the plaintiffs and Defendant respectively has been proved, though both kinds of cigars have been sold for years ; In my opinion this is an attempt to acquire a monopoly to which the plaintiffs are not entitled and to oppress other people and I can come to no other conclusion on the whole case but that this action fails and must be dismissed with costs." 52. Reliance has also been placed on a decision of the Court of Appeal in the case of (22) Payton & Co. Ld. v. Snelling, Lampard & Co. Ltd. reported in 17 RPC 48. In that case the Plaintiffs in an action for passing off sold their coffee in circular tins surrounded by paper labels. The predominant colour of the label for one quality was red, for another quality blue, and for another quality, green. There were three sizes of the tins of each colour. The plaintiffs subsequently adopted enamelled tins in red and blue displaying a reproduction of the labels for the two larger sizes of the two higher qualities. The smaller tins of these qualities and all of the lowest quality were still used with paper labels. The brand "Royal" appeared on the back and front of all the Plaintiffs' tins. The defendants sold coffee in circular red, blue and green tins all of which were enamelled, resembling in general appearance but differing in details from the plaintiffs' tins. The brand "Flag" appeared upon the back and front of all the Defendants' tins, and their trade mark "Flag" in tricolour was on the front of each tin. The names and addresses of the plaintiffs and Defendants were not placed upon their respective tins. Held, that the plaintiffs were entitled to an injunction to restrain the use of the tins complained of. The defendants appealed. The Court of Appeal held that the Plaintiffs were not entitled to an injunction. The appeal was allowed with costs. The names and addresses of the plaintiffs and Defendants were not placed upon their respective tins. Held, that the plaintiffs were entitled to an injunction to restrain the use of the tins complained of. The defendants appealed. The Court of Appeal held that the Plaintiffs were not entitled to an injunction. The appeal was allowed with costs. There Romer, L. J. held thus :– "Now I should like to say this with regard to cases of this class. Too often it is supposed that the trial of that issue is the same thing as trying another question namely whether the plaintiff has not been the first person to adopt a novel get-up and it seems to be supposed by some that if the plaintiff establishes in a case like this, that he is the first person to adopt what is called a new get-up or a novel get-up, then the defendant could be restrained if the defendant being in the same trade adopts that novel get-up. Of course the two questions are really quite distinct. A trader by adopting novel get-up does not thereby acquire a monopoly in that get-up. Of course it may well be that if a Plaintiff has adopted a novel get-up for his goods that fact has to be borne in mind in considering, if the defendant adopts it, whether of or not what the Defendant is doing is calculated to deceive. The two questions are really district, and it has too often, I think, been obscured in the minds especially of trade witness in cases of this……………….. It is a notion that runs through the minds of a great many persons in trades that, if a trader once adopts a novel get-up, he acquires some proprietory right in that get-up. Of course he does not do anything of the kind." "Now the plaintiffs putting upon the market tins of the class I have indicated, with the well-known colours I have referred to, in shapes well-known, what are they bound to do if they wish to prevent persons selling tins which could be confused with their tins ? The plaintiffs would be bound to use some very distinguishing features, and if they do not choose to use any distinguishing features they cannot complain merely because their tins may resemble other persons tins in the common features I have indicated. The plaintiffs would be bound to use some very distinguishing features, and if they do not choose to use any distinguishing features they cannot complain merely because their tins may resemble other persons tins in the common features I have indicated. I cannot help feeling that really the plaintiffs' object in this action was, if possible, to establish some monopoly or right to the use of enamelled tins in those very ordinary but attractive colours, red, blue, and green, and that, of course, they are not entitled to do. The plaintiffs did, in fact, take means to specially identify their tins in some respects, and those distinguishing characteristics we have to consider." "Now, when I come to consider how they purported and tried to distinguish their tins really from tins which they must be taken to have known any person could use, what are the leading distinguishing characteristics of their tins ? I should say chiefly the use of the word "Royal." That was a name they purported to give their tins, and by which their tins really became known in the market. They had other features not of so great importance, but still distinguishing shields and so forth, prices put upon the tins and other features of that kind, and the question before us really is this : Assuming that the Defendants are entitled, as they were, to put on the market for their coffee enamelled tins in these colours, are the features by which the Defendants' tins differ from the Plaintiffs in the peculiar distinguishing characteristics so marked as to enable the Defendants' goods to be fairly distinguished from the Plaintiffs ? "I think the answer to that must be in the affirmative. I think that the Defendants have distinguished their tins from the Plaintiffs assuming the Defendants' right to use the tins with the colours they have done. "I think the answer to that must be in the affirmative. I think that the Defendants have distinguished their tins from the Plaintiffs assuming the Defendants' right to use the tins with the colours they have done. I quite agree that when one person has used certain leading features, though common to the trade, if another person is going to put goods on the market, having the same leading features, he should take extra care by the distinguishing features he is going to put on his goods, to see that the goods can be really distinguished, and I think that is what the Defendants really did do in this case, assuming that they were entitled, as they were, to use the enamelled tins with these special three colours." "I should like further to say this, that I cannot see that here the three colours were adopted with any special reference to the three colours of the Plaintiffs. We have it in evidence, from Mr. Pegg's evidence, which the learned Judge below thought was preferable to that of. Mr. Ash on this point (and I agree with him in thinking that is so, the discrepancies between the two being the very natural discrepancies, casting no discredit to my mind on the evidence of Mr. Ash), that when the colours were first suggested to Mr. Pegg who made these tins, the colours suggested were not red, blue and green but red, blue and white might clash with another trader's tin previously on the market. The change from white to green was made for that reason, and green was one of the common colours in the trade and one that any trader would very naturally adopt if he had to get another colour in addition to red and blue, and it was a colour which the Defendants themselves had previously used in their printed labels before they med the enamelled tins." "I should further like to say this. I quite agree that it is not unimportant in cases of this kind to try and find out with what motive the Defendant has adopted a get-up which is said to be similar to the get-up of the Plaintiff because if you establish that the motive was to try and imitate, you may well infer from that, that a man who was going to do a scoundrelly action for his own benefit would take care to do it effectually, and you might infer, therefore, that if the motive was to defraud, the person defrauding would take care to see that what he did was done effectually. But of course the issue is not the same with that which we have in this action. Even if the motive were bad it would not follow of necessity that the motive had been effectually carried out. But still, I think, it is right to enquire in this case into the question, whether or not the Defendants did adopt their tins with the object or intent to try and make them like the Plaintiffs or with any view of enabling their goods to be passed off in the market for the plaintiffs’. I can only say that I have come to the conclusion on the evidence that there is no sufficient evidence to justify and such finding, and indeed I do not see that Mr. Justice Byrne, in His judgment has come to that conclusion. The evidence to my mind shows really simply this. I think that the Defendants, when the were thinking of their new tins, had before than one of the plaintiff’s tins, the blue, amongst other tins and I have no doubt that they probably did look at the plaintiffs’ blue tin with the other tins in order to see what class of tin in order to see what class of tin they might put upon the market ; but that they would be perfectly entitled to do. If a trader is going to put a special tin upon the market, he is entitled to look at his neighbours goods for the purpose of seeing what is the most attractive form, what is the best form likely to attract customers so long as he takes care to distinguish his goods from the prior goods." "The plaintiffs' tins are known as the "Royal" ; the Defendants have taken a word, which could by no means be confused, to distinguish their tins, the "Flag" and it appears to me that the Defendants' tins would be perfectly, distinguishable in the market by any customer whose peculiarities could be rightly regarded by the Court in considering cases of this kind. "It seems to be a sort of popular notion of some witnesses that in considering whether customers are likely to be deceived you are to consider the case of an ignorant customer who knows nothing about or very 1ittle about the subject of the action. That is a great mistake. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the Plaintiff's goods ; those charactertics which distinguish his goods from other goods on the market so far as relates to general characteristics. The customer must be one who knowing what is fairly common to the trade, knows of the plaintiff's goods by reason of these distinguishing charactertics. If he does not know that he is not a customer whose views can properly or will be regarded by this Court." "Otherwise, see what would happen. There are many customers who have very little knowledge of goods on the market. In this case consider coffee tins. There is many a customer, for example, who deals at one particular small shop. He is accustomed to have his coffee sold to him in a round tin of one shape and in a red colour. He knows no other kind. In this case consider coffee tins. There is many a customer, for example, who deals at one particular small shop. He is accustomed to have his coffee sold to him in a round tin of one shape and in a red colour. He knows no other kind. Naturally if that man went to that same shop and was served with a tin of the same size and the same colour, knowing no other, he might well say, "I thought this coffee was the same as the "Coffee that had always been served to me in this shop," and yet it might turn out that if he knew the market the second tin was, perfectly distinguishable from the first, and that the only relation between the two, the shape of the tin and the colour, was perfectly common to the market. A customer like that must not be regarded or considered in dealing with cases of this class, and I think that Plaintiffs in cases of this kind are too fond of laying hold of customers of the class I have been referring to, persons of an ideal character, who either are particularly innocent or too easily deceived, but considering the customers who views ought to be regarded in a case of this kind, I cannot come to the conclusion that the Defendants' tins could be used for a moment to deceive those customers." 53. This judgment was approved by the House of Lords and the decision of the House of Lords is reported in 17 RPC 628. Lindley, M. R. said :– "After all said arid done, what have we to consider? What is it that the Plaintiffs must make out in order to entitle them to succeed in this action? They must make out that the Defendant's goods are calculated to be mistaken for the Plaintiff's, and, whereas in this case, the goods of the Plaintiff and the goods of the Defendant unquestionably resemble each other, but where the features in which they resemble each, other are common to the trade, what has the Plaintiff to make out? They must make out that the Defendant's goods are calculated to be mistaken for the Plaintiff's, and, whereas in this case, the goods of the Plaintiff and the goods of the Defendant unquestionably resemble each other, but where the features in which they resemble each, other are common to the trade, what has the Plaintiff to make out? He must make out not that the Defendant's are like his by reason of those features which are common to them and other people, but he must make out that the Defendant's are like his by reason of something peculiar to him, and by reason of the Defendant having adopted some mark, device, or label, or something of that kind, which distinguishes the Plaintiff's from other goods which have like his, the features common to the trade. Unless the Plaintiff can bring his case upto that he fails." "It appears to me that when once you get that clearly in your mind : when you eliminate those feature which are common to the trade and ask yourselves, not whether the Plaintiff's and the Defendant's things are alike, but whether the Defendant has copied that which distinguishes the Plaintiff's, the conclusion must be different from that at which the learned Judge arrived." "We have only to look at these things to see what they are. It appears that the Plaintiffs in 1897 or the end of 1896 took the opportunity of bringing out coffee, in enamelled tins, which were then being introduced by tin makers. We hear from the gentleman who went round for orders that these enamelled tins were a new thing at that times, and that they were being taken up by a good many people, and the plaintiffs were one of the who took them up. We know that before that time the Defendants had sold Coffee in Cylindricals tins, and with paper labels, red, blue and green. When the plaintiffs took to these enamelled tins they thought they would be nice and attractive things to put their coffee in ; they took, as they were at perfect liberty to do, red, blue and green and they took cylindrical tins in preference, to square tins. The plaintiffs knew perfectly well that these enamelled tins were being introduced and would be taken up by any one who took a fancy to them. The plaintiffs knew perfectly well that these enamelled tins were being introduced and would be taken up by any one who took a fancy to them. The Defendants had as much a right to take a fancy to them as the plaintiffs, and of course heaps of people did. What have the plaintiffs done? The plaintiffs have not taken the precaution to register a design, to protect themselves under the Registered Designs Act or the Registered Trade Marks Act ; they have done nothing of the sort ; but they have put upon this common ground what I will call their device, which is what One sees here. The word "Royal" is the conspicuous word, and the catchword. Then there is the round thing with the conspicuous word, and the catchword. Then there is the round thing with the price and "French Coffee" ; that is in shite and gold. It has a gold band round here, and a gold band round there, and on the other side the word "Royal". Then there is a crown and the price, and the "Coffee" in white. They have not registered anything : but this is their design, and unless the Defendants have taken that design, the mere fact that they have a round tin like this red one would not make them infringe the Plaintiffs' rights." "Now, what have the Defendants got? The" have a round thing ; they have some white, and they have some gold on it ; they have "Flag" then they have underneath a tricolour and "Trade Mark" (whether they have registered it or not I do not know ; I suppose they have as they have that on it), and then they have at the back a reverse which has the "Flag" as conspicuous as the "Royal" and they have "French Coffee" instead of "Coffee" and they the price." "Now just consider, how is it possible for the Plaintiffs to say that the Defendants are getting up their goods so as to infringe the Plaintiffs rights; that is to say, so as to poss off their goods, having regard to the distinctive marks on both, when the distinctive marks, the designs upon the common ground, are so utterly dissimilar. To say that "Royal" could be mistaken for "Flag" is what nobody says. To say that "Royal" could be mistaken for "Flag" is what nobody says. The evidence is very strong that one tin may be mistaken for the other; very likely; but why? Because of the features common to them and common to all." "That appears to me to be the short answer to this case, and without going through the evidence at any length (I do not think it is necessary to do it), I should well a little more upon it, perhaps, if we had not had so recently before us the case of Lever V Bedingfield, in which we took further time to consider, and in which we had a similar difficulty before us. The difficulty is very great where the resemblances are owing to the features common to the trade, and where the distinctive features of the plaintiff are not taken in the distinctive features of the Defendant." 54. On the question of delay Mr. Chakraborty has relied on a decision in the case of (23) Isancson v. Thompson reported in 41 LJ CH 101. In that case a suit was filed to restrain the user of names in a trade in a fraudulent manner. The right to interlocutory injunction was lost by delay in filing the suit by 9-10 months since the discovery of the user. There Becon, V. C. held thus. "It is one of the most wholesome rules that a person who comes for the extraordinary relief of an injunction, should come speedily." 55. He has also relied on a decision of (24) Bravingtons Ltd. v. Barrington Tennant reported in 1957 RPC 183. The plaintiffs Bravingtons Ltd. had traded as jewellers for over a century. In August, 1956, the Defendant Barrington Tennant, using the name Barrington, opened a jeweller's shop at 452, Strand, whose appearance was alleged to resemble that of a neighbouring shop of the plaintiff. The plaintiffs issued a writ in December, 1956, and moved for an interim injunction restraining the Defendant from carrying on business at 452, Strand except under his full name "Barrington Tennant." There it was held that undue delay by the plaintiff in taking action would disentitle them to get any interim relief. 56. I have given my anxious consideration to the, submissions made by the learned Counsel appearing for the parties. The principles are now well-settled. 56. I have given my anxious consideration to the, submissions made by the learned Counsel appearing for the parties. The principles are now well-settled. One however, has to deal with each case as it arises having regard to the circumstances of the particular case. It is usually true in some degree that a trader's goods are recognised as his by the general appearance or get-up. There can hardly be passing off by get-up alone unless the resemblance between the goods is extremely close. 57. It must be so close that it can hardly occur except by deliberate intimation. What importance to be attributed to the name words or marks and the get-up will depend on the facts and circumstances of this case. When a person comes forward to restrain imitation of get-up, he has to prove that the defendant has tried to 'steal his trade'. He has to make out beyond all questions that the goods are sold in such a get-up calculated to deceive the buyer. In the absence of deception or confusion it is not unlawful to copy another get-up. The decision which have been relied on by the defendant referred to above would show that the Courts have rejected the attempt to provent the copying of the get-up unless such get-up is calculated to deceive or confuse. One principle is however perfectly clear that no man is entitled to sell his goods as the goods of another person. 58. The case of the plaintiff is that it has certain distinctive features e. g. distinctive colour scheme of red and yellow with a yellow outline border and a near yellow outline; the words "Pure Indian Tea" in red over a yellow brand across the main panel; writing in Arabic of the words "Red Lebel" in regard to the tea exported to the Gulf countries, a logo and/or monogram and red written on a yellow square; writing in yellow on the red regarding the quality of tea. 59. 'Red Apple' tea cartons of Chunilal Purushottarn are rectangular in shape and in three dimensions, red and yellow are two very common colours, the Arabic writings, are distinctive, the quality of product is stated there is a distinct logo of 'Red Apple' and Tea Board symbol. Moreover the name of the proprietor of the said mark Red Apple, is distinctly printed on the said cartons. Moreover the name of the proprietor of the said mark Red Apple, is distinctly printed on the said cartons. Brooke Bond does not have a monopoly either in red or yellow nor in the word 'red' not in the particular size or shape of the carton. 60. In deciding as to the question of similarity of general get-up one has to rake both the differences as well as resemblance and the question so far as the packages are concerned must be decided by contrasting the striking resemblances with the striking differences. 61. A few other questions are also relevant. One of the questions is whether defendant's goods is often brought under the belief that it is the plaintiff's goods. Another question has to be asked whether a common buyer buying a packet of tea would look to the name for the purpose of determining whether what he has got which he had accustomed to buy in a very similar packets. This question assumes the colour, get-up and general appearance of both the cartons are same or similar. Not only the plaintiff has to establish the distinctive features but substantial user and wide reputation as well. The decisions cited from the bar lay down she principle that comparison must be made by looking into over all similarity and keeping in mind over all structure, phonetic similarity and similarity of idea and must be compared as a whole not with microscopic examination. The broad and salient features must be considered. Another question raised in such a case is who are the persons whom resemblances would like to deceive or confuse. In this case 'Red Label' carton and 'Red Apple' cartons have no doubt similarity but not a single instance cited to show that any person wishing to buy 'Red Label' buying 'Red Apple' instead through any mistake of any sort. In Payton & Co. Ltd. (Supra) in the House of Lords, Lord Macnaghten said that evidence of actual deception was necessary. The plaintiff has to prove that defendant has tried to steal his trade. Lord Macnaghten also emphasised that the main difference in that case was one is distinctly labelled 'Royal Coffee' and the other is distinctly labelled 'Flag Coffee'. Lord Macnaghten said : "The main distinction as I have said is between "Flag Coffee" and "Royal Coffee". Nobody has been deceived, and I do not think anyone will be deceived. Lord Macnaghten also emphasised that the main difference in that case was one is distinctly labelled 'Royal Coffee' and the other is distinctly labelled 'Flag Coffee'. Lord Macnaghten said : "The main distinction as I have said is between "Flag Coffee" and "Royal Coffee". Nobody has been deceived, and I do not think anyone will be deceived. Suppose a person goes into a shop with a vague idea of having been something, pretty and attractive at some time or other, if you could trade the history of that impression on his mind back to the very first moment it got there, it may be you would find that it was derived from "Royal Coffee" and not from "Flag Coffee"; but if he chooses to take "Flag Coffee" instead of "Royal Coffee" there is no deception on the part of the Defendants that I can see a tall." "One word with regard to the evidence I should like to say. I think, as I have said before, that a great deal of the evidence is absolutely irrelevant and I do not myself altogether approve of the way in which the questions were put to the witnesses. They were put in the form of leading questions and the witnesses were asked whether a person going into a shop as a customer would be likely to be deceived and they said they thought be would. But that is not a matter for the witness; it is for the Judge. The Judge, looking at the exhibits before him and also paying due attention to the evidence adduced, must not surrender is own independent judgment to any witness whatever." "Then my Lords, there is another remark I should like to make on the evidence. The witnesses were over and again asked whether, considering the get-up, of the "Royal Coffee" and the "Flag Coffee" was somewhat similar, or very similar, it would not enable a dishonest trader to pass off the one for the other, and the witness said, ''Oh yes, it could be done very easily; he could wrap it up in paper and put his hand over it." Now, in the first place I do not see why these wholesale traders should accuse retail traders of a fraud of that sort, or why one retail trader should imput to other retail traders fraud of that kind. And for fraud of that kind the Defendants are not responsible. I think the whole of that evidence may be put on one side, because we know what would happen if a man came into a shop and, asked for "Royal Coffee" and the tradesman had no "Royal Coffee" upon his shelf ; he would not take down "Flag Coffee" and wrap it up in paper, passing his hand over it, so as to conceal that he did so. What he would do would be to say :– "I have not got 'Royal Coffee', but I have some coffee quite as good ; will you take 'Flag Coffee' at just the same price, or a very little dearer ? "It is quite as good, or perhaps a little better." In 99 cases but of 100 the customer would take it. There is no deception there." 62. It appears to me on visual examination of the two cartons ‘Red Label’ and ‘Red Apple’ that although both have used yellow and red as the main colours but both have their own distinctiveness. I have already referred to hereinbefore the characterstic of the get-ups and the scheme of the two cartons. Brooke Bond does not have any monopoly either in read and yellow nor in the word ‘red’ nor in the particular size and shape of the cartons. If two cartons are examined side by side, no confusion would arise. Little variation here and there, difference in width or variation of a brand etc. cannot make the thing destructive in which that term is used in the cases cited from the bar. The plaintiff has specified the distinctive features of its cartons. Applying the same standard to the cartons ‘Red Apple’ it will appear that these cartons are equally, as such and to the same extent distinctive. 63. It is true that is has been held in some of the cases that evidence of actual deception may not be necessary but even then difference and similarity have to be taken into account. As a matter of fact, the plaintiff has alleged that due to the sale of ‘Red Apple’ amongst other the sale of the ‘Red Label’ was reduced. In fact actual deception has been alleged in alleging that sales have fallen due to sale of ‘Red Apple’ tea. As a matter of fact, the plaintiff has alleged that due to the sale of ‘Red Apple’ amongst other the sale of the ‘Red Label’ was reduced. In fact actual deception has been alleged in alleging that sales have fallen due to sale of ‘Red Apple’ tea. The basic distinction is that one is ‘Red Label’ tea of Brooke Bond and the other is Red Apple tea of Chunilal Purushottam. Although both the cartons have something in common like red and yellow colours and the word ‘Red’ but the design is different. The person who is interested in buying Brooke Bond tea cannot be confused by packets. He will ask for tea of Brooke Bond tea or Red Label tea as was in the case before the House of Lords in Payton & Co. Ltd. (Supra). 64. The distinctiveness is primarily a question of fact. It may be reflected through the sale but the sale is not conclusive. The totality of impression phonetically and visually is the test. If the totality of impression is likely to cause deception or confusion then identity is established and if not they are dissimilar. Although it is alleged by the petitioner that ‘Red Apple’ in Arabic phonetically is similar to the word ‘Red Label’ being pronounced as ‘Red Apple’ but no evidence has been adduced to establish that fact. 65. I shall now turn to the next question which has been argued at length. The contention of Mr. Chakraborty is that the ‘Red Labels’ which are circulated in India are altogether different from ‘Red Label’ in the Gulf and Red Apple does not circulate in India at all. There is no possibility of any confusion or deception in India. In other words the contention is that both ‘Red Label’ and ‘Red Apple’ tea must be sold in India to find out whether there is any passing off. In an action founded on alleged passing off in this country the plaintiff must prove that disputed badge has, by the user in this country, become distinctive of the goods of the plaintiff or his business. In an action founded on alleged passing off in this country the plaintiff must prove that disputed badge has, by the user in this country, become distinctive of the goods of the plaintiff or his business. Jenkins, L. J. in (25) Oertli A. G. Bowman (London) Ltd.'s Case reported in 1957 RPC 388 said : "It is of course essential to the success of any claim in respect of passing off based on the use of a given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the. plaintiff's goods so that the use in relation to any loads of the kind dealt in by the plaintiff of the mark or get-up will be understood by the trade and public in this country as meaning that the goods are the plaintiffs goods." Pennycuick, J. in (26) Alain Bernardin at cie v. Pavillion Properties reported in (1967) RPC 581 observed ( at page 584) : "The statement in the judgment of Jenkins, L. J. which I have just read unequivocally requires user to be in this country. That it seems to me what one would expect : that the trader cannot acquire goodwill in the country without some sort of user in this country. His user may take many forms and in certain cases very slight activities have been held to suffice to the other hand. I do not think that the mere sending to this country by a foreign trader of advertisements advertising his establishment abroad could fairly be treated as user in this country....... He may acquire a reputation in a wide sense in the sense of returning travellers speaking highly of that establishment, but it seems to me that those matters, although they may represent reputation in some wide sense, fall far short of user in this country and are not sufficient to establish reputation in the sense material for the purpose of a passing off action." 66. It is not the case of the plaintiff that the same cartons are used by the plaintiff in India as well as in Dubai. As a matter of fact it has not been alleged that the identical tea is sold in identical cartons by the plaintiff in Gulf states. The defendant admittedly is not the seller of tea at Dubai. It is not the case of the plaintiff that the same cartons are used by the plaintiff in India as well as in Dubai. As a matter of fact it has not been alleged that the identical tea is sold in identical cartons by the plaintiff in Gulf states. The defendant admittedly is not the seller of tea at Dubai. It is one Chunilal Purushottam who sells the tea in cartons known as 'Red Apple'. The cartons are imported from Gulf states and in those cartons tea is packed and exported for sale in Dubai. There is no question of passing off as much in this country, as I have said that tea of Chunilal Purushottam (Red Apple) is not sold in India. 67. In Sacha Moti Case ( AIR 1971 Cal 3 ) our Court has held that resemblance in the respective get-up of the two marks and phonetical similarly must be such as to be likely to mislead purchasers in our country. The purchasers in our country do not know about Red Apple tea. The question is who are the persons whom the resemblance would likely to deceive. 68. It is however contended by Mr. Dipankar Gupta, learned counsel for the plaintiff that in the instant case the user of the label, packets and cartons I India in relation to the goods to be exported amounts to user in India for sale in India and action for passing off lies in India. He has also contended that Scotch Whisky Case : John Walker & Sons Ltd. (Supra) clearly recognises this. 69. According to him the Scotch Whisky case clearly recognised two torts of passing off, the first being the user in India of the infringing labels, packets, or cartons for purpose of sale abroad where no foreign element or foreign law is involved and the second, the passing off in foreign country by a sale in the foreign country. Accordingly, there is a complete case for passing off as soon as the labels are used in India and tea is sold in the infringing packet to Chunilal Purushottam and no foreign element or foreign law is of any relevance. 70. Accordingly, there is a complete case for passing off as soon as the labels are used in India and tea is sold in the infringing packet to Chunilal Purushottam and no foreign element or foreign law is of any relevance. 70. He has also referred to the following observations from Scotch Whisky Case : “There is much force in the defendant’s submission that in all the cases relied on by the plaintiffs the wrongful mark was attached to the article sold, while in this case the wrong doing occurs when the second defendant admixes the single malt with the local cane spirit in Ecquador. But in the present case, as I have said, even if the second defendant had merely added water to the malt whisky and then bottled it, as in the case of Scott’s Scotch Whisky, several inaccuracies would remain. To take the White Abbey label, it would not have been blended malt whisky, the first defendant has no place of business in Glassgow or a branch in Quito, and it is not prepared by the first defendant in Quito. To take the Scottish Archer label, again it is not blended malt, nor does the Glenvale Distillery exist at all, let alone have a place of business or a branch in Quito where the whisky is prepared.” “I would be slow to decide that if a trader in England sells goods and labels which are true and has no knowledge of any improper use of those goods in a foreign country, such trader has committed a tort in England. But when I have already held as a fact that Mr. Jindrich Ost, the proprietor of the first defendant, not only knew that the second defendant was going to add cane spirit and sell it as Scotch Whisky but intended that the whisky which was supplied should be admixed, bottled and have the labels put on the bottle describing it as Scotch Whisky, then in my judgment the first defendant’s acts in selling those instruments amount to tortious acts done in England.” “I turn to the second tort alleged by the plaintiffs. The plaintiffs’ submissions are that there has been a passing-off by the first defendant in collaboration with the second defendant of an admixture of Scotch Whisky and local cane spirit as Scotch Whisky in Ecquador and that such passing-off can be the subject-matter of an action in England if it is actionable in England and not justifiable by the laws of Ecquador. The rule is stated in Dicey and Morris Conflict of Laws, Eight Edition, at page 919 in these terms : “Rule 158. An act done in a foreign country is a tort and actionable as such in England if it is both (1) actionable as a tort, according to English law or in other words is an act which is done in England would be a tort, and (2) not justifiable, according to the law of the foreign country where it was done.” “The words “not justifiable” in that rule have recently been considered by the House of Lords in the case of (27) Boys v. Chaplin, (1969) 3 WLR 322, the their Lordships took somewhat different views on whether these words should remain in the rule. Lord Donovan and Lord Pearson, accepted the rule as stated in Dicey. Lord Guest thought that the rule should be amended so as to substitute “not actionable” for “not justifiable”, and Lord Hodson and Lord Wilberforce thought that the test should be double actionability with some degree of flexibility to admit or exclude claims on the ground of public policy. Putting the rule at its worst against themselves, the plaintiff’s must show that the tort is actionable both in England and in Ecquador. Whether the tort is actionable in Ecquador under the law of Ecquador is a question of fact in this court and accordingly. I heard evidence of that law from Dr. Salazer, who was called by the plaintiffs, and D. Valls, who was called by the first defendant (PP 508-9)”. In my judgment, it has been satisfactorily proved as a fact before me that the acts complained of by the plaintiffs are actionable in Ecquador. On the submission by the first defendant that the plaintiffs’ are forum-shopping, al the acts complained of have originated from the acts of the first defendant in England, which include the shipment of materials to Ecquador and causing them to be landed there. On the submission by the first defendant that the plaintiffs’ are forum-shopping, al the acts complained of have originated from the acts of the first defendant in England, which include the shipment of materials to Ecquador and causing them to be landed there. I can see no reason why an English Court is not the proper forum for this matter to be litigated, particularly when the there was evidence that the first defendant was attempting to start similar activities in other Latin American States. In my judgment the plaintiffs also succeed on the second tort." 71. In this case, however, the cartons and labels have not been manufactured in India. They have been manufactured by the seller Chunilal Purusttottam. Tea is exported on those cartons to Dubai these cartons art imported from Dubai by the defendant. There is no sale as such in India of the tea of Chunilal Purushottam in 'Red Apple' cartons. In Scotch Whisky Case the act complained of originated in England. But here the act complained of originated in Dubai as the cartons were shipped from Dubai. Thus, if any tort was committed it was committed at Dubai. Had the cartons been manufactured in India by the defendant a question might have arisen whether there is any passing off in India or not on the principles of Scorch Whisky Case. It is not that this court has no jurisdiction to entertain the action of passing-off having regard to the fact Brooke Bond and defendant are both amenable to jurisdiction of this court but the question is whether having regard to the facts of this case the court should be inclined to pass any order when admittedly the tea of the plaintiff and the Chunilal Purushottam are sold in Dubai, where the action should have been instituted. 72. It may however be mentioned that the "general rule" ennuntiated in Philips v. Eyre has an exception founded on the public policy appearing in the form of forum shopping. There is a problem of reconciling the principle of "forum shopping" with the law of natural forum. 73. Lindley, L.J. in (28) Peruvian Guano Co. 72. It may however be mentioned that the "general rule" ennuntiated in Philips v. Eyre has an exception founded on the public policy appearing in the form of forum shopping. There is a problem of reconciling the principle of "forum shopping" with the law of natural forum. 73. Lindley, L.J. in (28) Peruvian Guano Co. v. Buchwoldt, (1883) 23 Chancery Division 230 said– "I think the Court ought to be very cautious before it interfere in cases of that kind and for this reason, the court here is not and cannot be alive to all the advantages which a person may expect to derive from suing in a foreign court. This Court does not know with accuracy unless the matter is brought to its attention, what reasons there may be for preferring one court to another." Prof. Graveson in his Comparative Conflict of Laws observed :– "Forum shopping seems to call for a consideration of the independence or association of the questions of choice of law and choice of jurisdiction. Finally to treat forum shopping as contrary to public policy in cases of normal jurisdiction in personam is hard to reconcile with the right of parties to a contract to select an eventual forum." 74. It cannot, therefore, be said that the said Rule has been well-settled. It is yet to be finally established in England. 75. It is now necessary to advert to certain other facts. 76. In May, 1986 the agents of Brooke Bond one M/s. Paradise Trading Agency had made a complaint before the Dubai Municipality with regard to the alleged similarity as alleged by Brooke Bond in the present proceedings. The said Municipality and the Dubai Chamber of Commerce and Industry, which are bodies well-versed and well-acquainted with the ways, habits and inclination of the consuming public decided that apart from checking of contents for their quality the display of the names of the brands/trade names of teas on boards at business stores and groceries, was sufficient to help and guide the consumers in making their choice. The said order is as follows : "We inform you that M/s. Paradise Trading Agency, Agents of Brooke Bond & Distributors of tea (Red Label), have submitted to the Municipality a complaint regarding the similarity of your Mark for the tea which you are distributing with their mark which leads the consumer not to differentiate between the types of tea and this effects the distribution of their products. Therefore, a committee from the Municipality and Dubai Chamber of Commerce & Industry held two sessions on 20.3.86 and 22.3.86 to discuss this complaint and the committee decided the following : 1. The Municipality will check your imported consignments to see if it is suitable for human consumption. 2. To keep a suitable board on each type of tea in all the business stores and the groceries and this board to indicate the trade name of each type of tea enabling the consumer to know the type of product exactly. Please to be acknowledged and to take the necessary action. Thanking you, sd. (Illegible) Sid. Director of Municipality." 77. It is surprising that the said order of Dubai Municipality has not been mentioned at all in Brooke Bond's petition. In affidavit-in-reply in Paragraph 13 Brooke Bond has said as follows : "Significantly enough no complaint was made by Paradise Trading Agency before January 31, 1986, i. e., till the time when it was a distributor of the petitioner. It is absolutely clear that the said Paradise Trading Agency conspired and colluded with the said Chunilal Purushottam & Co., to make pretence of a complaint after the expiry of the distributorship when, in any even, it had no authority to represent the petitioner and could not do so. The petitioner never authorized or requested the said Paradise Trading Agency to make any complaint to Dubai Municipality. The petitioner is not even aware of the alleged order dated May 22, 1986 which has been annexed to the said affidavit, nor was the petitioner ever informed about the same. The petitioner is surprised to learn about the passing of the said order. It is obvious that some sort of pretended complaint was made and some order allegedly affecting the rights of the petitioner was passed through collusion and conspiracy between the Paradise Trading Agency and Chunilal Purushottam & Co. The petitioner is surprised to learn about the passing of the said order. It is obvious that some sort of pretended complaint was made and some order allegedly affecting the rights of the petitioner was passed through collusion and conspiracy between the Paradise Trading Agency and Chunilal Purushottam & Co. with the object of prejudicing the petitioner when Paradise Trading Agency was already hostile against the petitioner and was repeatedly making complaints to the Central Government against the petitioner." 78. It is not disputed that Paradise Trading Agency was the agent of Brooke Bond at least till January, 1986. No reason has been given why Chunilal Purushottam would anticipate an action by Brooke Bond and enter into a shady deal with Paradise. Rightly or wrongly, an action was initiated before Dubai Municipality and an order was made. It would be convenient for the competent authority at Dubai to determine whether having regard to the facts and circumstances of this case any tort of passing of has been committed by Chunilal Purushottam. The deception or confusion must be judged from the point of view of the people who would be buying those goods. The plaintiff must how that the ‘Red Label’ tea has acquired a distinctiveness amongst those who are purchasers of such tea in Dubai and Gulf states. They are the persons whom the resemblance, if any would likely to deceive or confuse. The language in Dubai is Arabic and it must be ascertained whether ‘Red Apple’ and ‘Red Label’ are phonetically similar. It is also necessary to ascertain whether those who would by buying are ignorant of English and would go by Arabic characters or not. If any deception or confusion is caused, it must have been caused to the buyers at Dubai. The onus of proving such deception and confusion is on the plaintiff. That must necessarily depend on the evidence to be tendered in the suit. Further it is not disputed that foreign law is a question of fact. Such foreign law can be proved more conveniently by the witnesses at Dubai. The contention of the plaintiff is that the plaintiff sought to produce a telex from Chunilal Purushottam & Co. That must necessarily depend on the evidence to be tendered in the suit. Further it is not disputed that foreign law is a question of fact. Such foreign law can be proved more conveniently by the witnesses at Dubai. The contention of the plaintiff is that the plaintiff sought to produce a telex from Chunilal Purushottam & Co. to the effect that trade mark or imitation of trade mark disputes are heard and settled by Dubai Chamber of Commerce and the courts did not take up such matters as there was no law in Dubai or in UAE for trade mark. According to the plaintiff the telex itself makes it clear that the matter is actionable which is also evident from the said order of Dubai Municipality sought to be relied on by the respondent. A telex from a practicing Attorney in Dubai was produced on behalf of the plaintiff to counteract this which according to the plaintiff clearly shows that the matters complained of formed part of the law of passing off and fraud of the law of Dubai and the telex contains the quotation from the said law. It is well-settled that in the case of proof of foreign law, the evidence of the legal practitioner has to be given and evidence given by the party is of no relevance or value at all. This question has to be considered in the appropriate forum at Dubai. Apart from the question of foreign port, it also pertains to the question of balance of convenience. But the fact remains that the agent of the plaintiff through its agents instituted certain proceedings in Dubai and in that proceedings certain orders have been passed giving certain directions and putting on certain restrictions. When an action has been initiated by the plaintiff in a foreign forum which is competent to decide whether in that country the use of the label or get-up constitutes any tort or not such action has to be concluded in that forum. Not only the proceeding was initiated but the plaintiff has suppressed that proceeding. It is hard to believe that the plaintiff did not know anything of the proceeding initiated by the agent. It has not been stated either what the plaintiff did after termination or the agency of the agent. 79. There is one other aspect of the matter. Not only the proceeding was initiated but the plaintiff has suppressed that proceeding. It is hard to believe that the plaintiff did not know anything of the proceeding initiated by the agent. It has not been stated either what the plaintiff did after termination or the agency of the agent. 79. There is one other aspect of the matter. It is admitted by the plaintiff in the affidavit-in-reply that the price at which packet tea is sold in the Gulf states by the petitioner is substantially higher than the price of any other packet of tea in similar from exported from this country. It has also been alleged by the petitioner that the Chunilal Purushottam has been selling at a lower price its tea which has adverse effect on the foreign exchange of this country. The price of the product is one of the factors which the purchaser would take into account apart from the get-up of the cartons. It would be known to the purchaser that there is marked difference in the price of the tea sold by Brooke Bond and the said Chunilal Purushottam and as such there is not likelihood of confusion or deception. 80. It may be mentioned at this stage that in the year 1986 Brooke Bond did not make any export at Dubai at all. It has been stated in the petitioner that in 1986 Brooke Bond’s sales fell in Gulf states when they were put upon enquiry and found as a result thereof only in January, 1987 that it was because of the tea exported, inter alia, by the respondent in packets and cartons allegedly similar to those of the petitioner that Brooke Bond's sale had diminished. In other words, the reduction in sale has been claimed to be one of the factors showing the distinctiveness. But the fact remains that Brooke Bond having not made any export to Dubai in 1986 cannot rely on the diminishing sale of tea. If there is no export there could not be any sale in Dubai. In 1986 there was no sale, consequently there was reduction in sale in comparison with other years. But the fact remains that Brooke Bond having not made any export to Dubai in 1986 cannot rely on the diminishing sale of tea. If there is no export there could not be any sale in Dubai. In 1986 there was no sale, consequently there was reduction in sale in comparison with other years. In the affidavit-in-reply Brooke Bond has made a case that because of disputes and differences with their agents, Paradise Trading Agency and the termination of the agency in January, 1986 Brooke Bond did not send any tea to Dubai but fed the market taking teas from their agents in other countries of the Emirates. The only document which has been annexed in the affidavit-in-reply is an order dated 12th July, 1986 for only 1,400 cartons for Dubai. It cannot be said that Brooke Bond did not know the advent of 'Red Apple' in 1985 which was launched by Chunilal Purushottam. A telex dated 25th March, 1987 from Chunilal Purushottam has alleged that Chunilal Purushottam had participated in Dubai Spring Fair in 1986. Just behind the stall of 'Red Apple' tea 'Red Label' tea had also a stall being Stall No. 264. In the International Trade Fair held at Dubai in 1987 Red Apple tea was sold but Brooke Bond did not take part in the said Fair at all. It is therefore, evident that Brooke Bond was not much concerned with Dubai market and the reduction of sale cannot be attributable to alleged distinctiveness of the packets of Brooke Bond. Further the petitioner has contended that the sale of Red Apple tea is negligible as compared to the sale of Brooke Bond. If that be the position, the 'Red Apple' is not a factor at all to be reckoned with. It did not in fact affect the sale of the plaintiff. 81. The next question is with regard to features common to the trade. Brooke Bond had no exclusive right to use the words 'Red Label' or a label of red colour. Neither has it monopoly in colours. The colours which had been adopted in this case are red and yellow Brooke Bond has not adopted any special colour. Red and yellow are well-known colours and are commonly used. The size and shape of the packets are not peculiar. There are various cartons of other sellers of tea using red and yellow colour. The colours which had been adopted in this case are red and yellow Brooke Bond has not adopted any special colour. Red and yellow are well-known colours and are commonly used. The size and shape of the packets are not peculiar. There are various cartons of other sellers of tea using red and yellow colour. It is indicative of the fact that in the market for packet tea, red and yellow are common colours in Dubai. Excepting one or two packets, all packets which have been shown to this court have used red and yellow. The petitioner produced the cartons of Lipton where yellow predominated but the combination again was red and yellow. The various other cartons e. g. Gold London Brand Tea of Ceylon tea, Hiltop Red Cup Tea, Red Eagle Tea, Red Pot Label, Red Band Label, Red Leaf, Royal Delite Tea have all used the combination of red and yellow. It appears from those cartons that every tea packet sold in Dubai clearly discloses in discernible print the origin of the tea viz. the manufacturer or blender as the case may be. Even if the allegation of the plaintiff is taken to be correct that it was first to introduce they cartons of red and yellow that does not give it to right to a monopoly. In the present case, assuming the plaintiff’s packets to be prior packets, ‘Red Apple’ has been sufficiently distinguished by the name, the logo, the Arabic writings, the positioning of the lettered portions, arrangement of the two colours, a distinctive logo, the border design, the number of flaps etc. It is to be noted that the names of the proprietor in two cases have been clearly stated on the carton. These principles relating to the features common to the trade have been well-settled by the decisions already referred to hereinbefore. Jamieson & Co. Jamieson ; Payton & Co. Ltd. (Supra). The class of consumers to be had in mind has been stated by Lord Justice Romer in Payton & Co. Ltd. (Supra). There Lord Justice Romer rejected the notion that if a trader adopts a novel get-up he acquires some proprietory right in that get-up. Jamieson & Co. Jamieson ; Payton & Co. Ltd. (Supra). The class of consumers to be had in mind has been stated by Lord Justice Romer in Payton & Co. Ltd. (Supra). There Lord Justice Romer rejected the notion that if a trader adopts a novel get-up he acquires some proprietory right in that get-up. Lord Justice Romer also pointed out that in considering whether customers are likely to be deceived, the court would not consider the case of the ignorant customers who knows nothing or very little about the subject of the action. The Court ought to think of a customer which who knows the distinguishing characteristic of the plaintiff’s goods, those characteristics which distinguished his goods from other goods on the market so far as relates to general characteristics. 82. It is the contention of Mr. Gupta, learned Counsel for the plaintiff that in order to establish the case common to the trade the onus is on the party who alleges it and the evidence must establish substantial use by other persons. In order that a distinctive mark may become common to the trade, there must be abandonment of right on the part of the owner. It has been contended that the defendant has failed to show either that everyone in the trade is using the same label or that there as been any substantial user. Apart from producing several other brands no other material has been produced. On the other hand the order of the municipality belies the case of the defendant. It is true that distinctiveness of a registered Trade Mark is not lost by neglect to proceed in respect of infringements which are not sufficient to affect the distinctiveness of the mark registered. But in a passing off action the mere existence of mark will not do. The distinctiveness has to be pleaded and proved. In a passing off action something common to the trade down not from part of the monopoly but in the case of infringement all that needs to be shown is deceptive similarly between the mark registered and the offending marks. 83. The distinctiveness has to be pleaded and proved. In a passing off action something common to the trade down not from part of the monopoly but in the case of infringement all that needs to be shown is deceptive similarly between the mark registered and the offending marks. 83. In my judgment the plaintiff’s tea and tea of Chunilal Purushottam are perfectly distinguishable be the market by as customer who knowing the colours and size and shape of packets, which are fairly common to the trade, is conscious of the plaintiff’s goods by reason of the distinguishing characteristics of the plaintiff’s goods, whose characteristics which distinguish the plaintiff’s goods from other goods. 84. The next question is with regard to the delay in making this application. The contention of the respondent is that Chunilal Purushottam was carrying on business in ‘Red Apple’ tea since 1985. There was inordinate delay in making the application and accordingly interlocutory injunction should be refused. The respondent has relied on newspaper advertisement made in several newspaper between May, 1985 and August, 1986. The respondent has also relied on certain figures of their sales in the United Arab Emirates. It is also the case of the respondent that the respondent has been exporting tea to the Gulf State since 1969 and to the said Chunilal Purushottam of Dubai. But the tea in Red Apple Packet/Carton was being exported since 1985. Brooke Bond however did not take any step in 1985. On the contrary the agent of Brooke Bond moved Dubai Municipality. 85. The contention of the petitioner however is that the petitioner has claimed knowledge of the sales of Red Apple and others only in January, 1987 and the respondent has not produced an evidence whatsoever to the contrary. The petitioner itself does not carry on any business in the Gulf States and there is no reason to suppose any knowledge on the part of the petitioner particularly since the sale figures produced by the respondent shows sales of negligence quantity as against the sales of the petitioner. It was only in January, 1987 that the sales of the Respondent has picked up a little. 86. The principles in relation to the question of delay defeating a prayer for interlocutory injunction in the case of infringement of Trade Mark and passing off have been laid down in several cases. It was only in January, 1987 that the sales of the Respondent has picked up a little. 86. The principles in relation to the question of delay defeating a prayer for interlocutory injunction in the case of infringement of Trade Mark and passing off have been laid down in several cases. According to Kerly “Interim injunctions are granted in passing off actions on the same terms and according to the same principles as an infringement action” (Page 397 Art. 16 102, 11th Edn.) “The older cases indicating that avoidable delay is an absolute bar to interlocutory relief, are in general not followed, but it remains true that all reasonable speed in making the application is desirable (Kerly p 298 Note 97).” 87. The question whether the delay would disentitle the plaintiff in getting an injunction on interlocutory application will depend on the facts of each case. The decisions relied on by the respondent would show that delay of a months has been considered to be fatal in getting an interlocutory injunction in a passing off action. The explanation given by the petitioner for not moving this Court earlier cannot be accepted. Until January, 1986 when the agency agreement with Paradise Trading Agency, the said Paradise Trading Agency was admittedly the agent of Brooke Bond. The Knowledge acquired by the agent in the circumstances of this case has to be imputed to the plaintiff. As I have already indicated that between May, 1985 and August, 1986 the advertisements appeared in Gulf Newspapers. At least one of the advertisements appeared in Khaleej Times in May, 1985 and another in Al Bayan dated 26th January, 1986 when the said Paradise Trading Agency was acting as the agent of the petitioner. The petitioner has not acted with promptness which was expected in such a case. In the petition it has been stated that from the reduction in sale in the later part of the year 1986 the petitioner was put up on enquiry in January, 1987 and moved this application on 17th February, 1987. I have already indicate that during 1986 the petitioner did not have any export to Dubai and accordingly there was no reason for the petitioner to be put on enquiry on the basis of the alleged reduction in sale. 88. I have already indicate that during 1986 the petitioner did not have any export to Dubai and accordingly there was no reason for the petitioner to be put on enquiry on the basis of the alleged reduction in sale. 88. In my view this delay in making this application is one of the factors which the Court ought to take into account in considering the prayer for interlocutory injunction. The decision of Glaxo Operation UK Ltd. v. Samrat Pharmaceuticals reported in AIR 1984 Delhi 265 which was relied on by the petitioner on the question of delay was concerned with a case of Trade Mark. In that case a suit was instituted in 1982 although the plaintiff admittedly came to know of the product of the defendant in the year 1980. Accordingly it was contended that the plaintiff was not entitled to any injunction on account of laches. There Delhi High Court observed thus– “On the question of delay following proposition of law was laid down in Zimmer Orthopaedic Ltd. v. Zimmer Manufacturing Co., 1968 RPC 362 : “The essence of the matter, as I understand it, is this. It is for the plaintiff and his legal advisers to get on with the action and to see that it is brought to trial with reasonable dispatch. The defendant is normally under no duty to stimulate him into action and the plaintiff cannot complain that the defendant gave him to warning before applying to have the action is dismissed for want of prosecution. But the Court will not take the drastic step of dismissing the action unless (a) the delay has been inordinate, (b) there was no excuse for it and (c) the defendant is likely to be seriously prejudiced by it if the action is allowed to go on.” In the present case, it cannot be said that the delay was inordinate. The plaintiff has placed on record the notices which were sent by the plaintiffs to the defendant requesting the latter to stop the impugned user. The suit was brought in November, 1982 which can be said to be within reasonable dispatch. Further, it is not clear as to how there was a serious prejudice, to the defendant on account of alleged delay caused by the plaintiff. The suit was brought in November, 1982 which can be said to be within reasonable dispatch. Further, it is not clear as to how there was a serious prejudice, to the defendant on account of alleged delay caused by the plaintiff. It was contended by the counsel for the defendant that the defendant had in the meantime built up very good sales and that therefore, issue of injunction will prejudice him. But the case of the plaintiff is that defendant was served with notice warning the later in respect of the impugned misuser. It could have very well stopped and not have tried to build up further sales.” 89. In that case since the plaintiff gave the warning to the defendant and inspite of the warning, the defendant did not discontinue the act of infringement and the defendant was aware that he might be restrained from carrying on the alleged misuser of the trade mark. This is not however, the case here. 90. Reliance was also placed in the case of (29) B. K. Engineering Co., Delhi v. U. B. H. I. Enterprises (Regd.), Ludhiana and Another reported in AIR 1985 Delhi 210. Delhi High Court held : “It was argued that the plaintiffs are guilty of delay and acquiescence. I cannot accept the argument. There is nothing to show that the plaintiff encouraged the defendant to go ahead with “B.K. 81” bells. They sued as soon as they learnt of the defendants activities. The defendant started business in 1981. The plaintiff brought the suit in February, 1984. The defendants have to show that knowingly the plaintiffs kept quiet and thereby encouraged them to geo ahead with their business. There is no such suggestion.” 91. This case does not also help the petitioner. Can it be said in this case that the plaintiff did not knowingly encourage Chunilal Purushottam to go ahead with their business ? It was within the knowledge of the agent and such knowledge has to be taken into account. In May, 1985 it was known to the plaintiff through its agent about the advert of ‘Red Label’ tea. But this action was brought in 1987. That apart, the plaintiffs’ agent also moved Dubai Municipality alleging passing off by Chunilal Purushottam. Whether that action was collusive or whether the agent exceed in his authority is another question which cannot be decided at this stage. But this action was brought in 1987. That apart, the plaintiffs’ agent also moved Dubai Municipality alleging passing off by Chunilal Purushottam. Whether that action was collusive or whether the agent exceed in his authority is another question which cannot be decided at this stage. But the fact remains that the Brooke Bond waited for two years in initiating the proceeding. That fact would go against them. 92. The last contention is with regard to the balance of convenience. It is contended that the respondent has taken all steps for exporting tea after obtaining licence from the Tea Board and valuable foreign exchange will be lost if the contracts are not allowed to be executed. The plaintiff’s own performance in Dubai markets or in the Emirates is not without any blemish. The defendant has been executing the contract since 1985. The failure to fulfill export obligation will be adjusted against the AU/REP entitlements. The defendant will be subjected to pay import duty if the cartons are not re-exported. The plaintiff being fully aware of the defendant’s sale of the tea waited for at least two years. 93. On the other hand the contention of the plaintiff is that the possibility of Chunilal Purushottamlal & Co. getting their tea packed by others is of no relevance or consequence since the petitioner is proceeding against the wrongful acts of the defendant and seeking to prevent the same regarding export obligation. The defendant has also disclosed two licences under which no import took place or could have taken place in view of the order of injunction dated February 18, 1987 except in violation of the order of injunction. The defendant wrongfully induced the shipment after the interim order was made as no shipment could have been taken place under licence dated 28th February, 1987. The defendant has not given the particulars of the cartons which has already arrived at to fulfill the export obligation. Even if the cartons are receive by the defendant no prejudice would be caused if they are sent back and which would also do away with the alleged export obligation. The fact that the petitioner did not make any export to Dubai in 1986 in of no relevance. In view of the petitioner’s dispute with Dubai Distributor. Even if the cartons are receive by the defendant no prejudice would be caused if they are sent back and which would also do away with the alleged export obligation. The fact that the petitioner did not make any export to Dubai in 1986 in of no relevance. In view of the petitioner’s dispute with Dubai Distributor. Although the petitioner could not directly ship to Dubai, it had carried out sales in Dubai market by distributing products to Abu Dhabi, Sharjah and other neighbouring places. 94. Mr. Dipankar Gupta, learned Counsel for the petitioner has relied on the decision in the case of (30) Century Traders v. Roshan Lal Duggar & Co. reported in AIR 1978 Delhi 250. There the Delhi High Court held as follow : “We now come to the question of balance of convenience. It has been urged on behalf of the respondents that the mark “RAJARANI” is common to the trade and for this purpose reliance has been placed on the registration in Andhra Pradesh and Amritsar. There is a distinction between a mark being “common on the register” and “common to the trade.” There is no evidence on record to show that there is actual user of this mark by any party other than the parties before us. Inasmuch as trade mark is property right to an invasion of it should be protected and the balance of convenience would obviously be in favour of the appellant who was admittedly the first user of this mark. We cannot accept that there is mark. We cannot accept that there is any prima facie evidence of respondent No.3 being the owner of the mark. Indeed, this is belied by the registration application filed by the respondent No.2. As was observed by Goddard, L.J. in (31) Draper V. Irist, (1939) 3 All ER 513– "In passing off cases, however, the true basis of the action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business........." This right is to be protected and the balance of convenience is in favour of the person who has established a prima facie right to property. 95. The other decision in the case of Glaxo Operations UK Ltd. Middlesex (England) & Ors. 95. The other decision in the case of Glaxo Operations UK Ltd. Middlesex (England) & Ors. v. Samrat Pharmaceuticals Kanpur reported in AIR 1984 Delhi 265. There the Court held as follows :– "The balance of convenience obviously favours the plaintiffs. The plaintiff will suffer irreparable injury inasmuch as firstly the sale of articles of the plaintiff will be decreased by that much by which the sale of the articles of the defendants take place and secondly if the article of defendant is inferior in quality to article of the plaintiffs, there is bound to be damage to the reputation of the plaintiff resulting in considerable decrease of sales of the articles of the plaintiff. There cannot be any injury to the defendant when he is not allowed to sell his articles in such a manner as to deceive the public and pass of his products as that of the plaintiffs." 96. Reliance has also been placed in the case of B. K. Engineering Company, Delhi v. U. B. H. I. Enterprises (Regd.) Ludhiana & Anr. reported in AIR 1985 Delhi 210. There the Delhi High Court held as follows :– "Nor do I agree with the learned Judge on the balance of convenience. In American Cyanamid v. Ethicon Ltd., (l975) AC 396 the House of Lords laid down the principles Governing the grant of injunction. The relative strength of each party's case as revealed by the affidavit evidence has to be seen. If the defendant's business is a recent venture, as in this case, it would be proper to grant an injunction to prevent the violation of the plaintiffs' rights if the defendant can be compensated in damages. It is the defendant's own case here that their first sale was made in November, 1981 while the plaintiffs started their business in 1971. We were shown their advertisement in trade journal of 1974 and 1979. It is true that evidence remains to be led by both parties. Of actual damage to the plaintiffs there mayor may not be much evidence. The improbability of their proving much is not the same thing as the legal certainty that they can prove nothing. The balance, on the whole, in my, opinion, tilts in favour of the plaintiffs. Mainly for the reason that the defendants are a newcomer as compared to an established trader. On balance I am inclined to grant injunction." 97. The improbability of their proving much is not the same thing as the legal certainty that they can prove nothing. The balance, on the whole, in my, opinion, tilts in favour of the plaintiffs. Mainly for the reason that the defendants are a newcomer as compared to an established trader. On balance I am inclined to grant injunction." 97. The decision cited by Mr. Gupta does not advance the case. In B. K. Engineering Co. (Supra) the Delhi High Court came to the finding that the defendants had appropriated to their use the trade name and the reputation of the plaintiff. Before that the defendants made the imitation of the get-up or appearance of the plaintiff's goods. The New Mischief was injury to the goodwill of the plaintiff. It is in that context the Delhi High Court observed that if the defendant's business is a recent venture it would be proper to grant an injunction even if the defendant is new comer as compared to an established trader. Unless a prima facie finding is arrived at that the defendant has been indulging in passing off of its goods as the goods of the plaintiff, no injunction can be issued. In Glaxo Operations U. K. (Supra) the Delhi High Court proceeded on the footing that sale of the articles of the plaintiff would be decreased by that much by which the sale of the articles of the defendants takes place and if the article of the defendant is inferior in quality to article of the plaintiff which is bound to damage the reputation of the plaintiff. There the Delhi High Court came to the finding that there was infringement of the trade mark and copy right of the plaintiff all well as the defendant was guilty of passing off of its goods as those of the plaintiff by using deceptively similar cartons and trade mark. In this case as I have already said that prima faice. I am satisfied that the cartons used by the defendant would not cause deception or confusion. Both have distinguishing features. That apart the price of the tea of the defendant is lower than that of the plaintiff. There was no sale in 1986 of the plaintiff's tea as the plaintiff did not export any tea in Dubai during 1986 because of the alleged dispute with its agent in Dubai. Both have distinguishing features. That apart the price of the tea of the defendant is lower than that of the plaintiff. There was no sale in 1986 of the plaintiff's tea as the plaintiff did not export any tea in Dubai during 1986 because of the alleged dispute with its agent in Dubai. It is also the case of the plaintiff that the sale of the defendant is negligible in comparison with the sale of the Brooke Bond. Accordingly the question of reduction in sale cannot arise. On the other hand by such export the country will earn foreign exchange. The object of the Tea Board in issuing licence to different exporters is to expand the market of Indian tea in the United Arab Emirates. If the defendant's sale of tea is so negligible there cannot be any reasonable apprehension in the mind of the plaintiff as regard is decline in the sale. On the other hand, whatever sale is affected by the defendant, it would ensure to the benefit of the country. 98. In Century Traders (Supra) the Delhi High Court proceeded on the footing that there was infringement of the trade mark and it was held that there was no evidence that the respondent No.3 was the owner of the mark. There was no evidence that there was actual user of the mark by any party other than the parties before the Delhi High Court and in that context it was observed that the balance of convenience was in favour of the person who has established the prima faice right the Trade Mark as the right in trade mark is a right to property. This question however does not arise in the instant case. There is no trade mark of the plaintiff either in the colour or in the get-up. As I said the colours are common to the trade and the size and shape of the cartons is not also peculiar. If the plaintiff has distinguishing features so also the defendant. 99. The defendant has imported the cartons in which the tea is exported. If the cartons are not exported to Dubai the defendant will have to pay import duty on that. The question of fulfilling the commitment would also arise. Since 1985 the respondent has been trying to establish itself. I have already indicated that the Red Apple tea is not sold in India. If the cartons are not exported to Dubai the defendant will have to pay import duty on that. The question of fulfilling the commitment would also arise. Since 1985 the respondent has been trying to establish itself. I have already indicated that the Red Apple tea is not sold in India. We are not concerned with the Indian market. We are concerned with the foreign market where the two Indians are trying to expand the market of India. One has to take a practical view of the matter. The sale of one does not necessary reduce the sale of the other that is not the evidence either. The sale of the Chunilal Purushottam & Co., (Red Apple) has not affected the sale of Brooke Bond. As admitted by the plaintiff itself that the sale of the defendant is negligible in comparison with the sale of the plaintiff. Whatever meant be the quantum of sale, it will earn foreign exchange. The defendant shall not be compelled, to commit a breach of the International obligation which will affect the International trade, apart from the payment of the import duty on the cartons. 100. The conduct of the plaintiff is also not above board. It has been specifically alleged in paragraph 16 of the affidavit-in-opposition as fallows :– "The petitioner itself was held up for violation of foreign exchange laws of the country and apologized in respect thereof. From the media reports at the relevant time to which I crave leave to refer, it appears that. (a) One Paradise Stores of Dubai was an agent of the petitioner for many years : (b) the petitioner wanted the said Dubai agent to pass Rs. 3/- per packet of tea imported by the said agent into Dubai to the petitioner's executive stationed in Dubai without any official receipt and the sum worked out to Rs. 43,200/- per container ; (c) the said agents of the petitioner were not willing to do the same without official receipts, when the petitioner raised the price for the Dubai market to Rs. 20/- per packet from Rs. 17/- per packet, thus creating a difference of Rs. 43,200/- per container ; (c) the said agents of the petitioner were not willing to do the same without official receipts, when the petitioner raised the price for the Dubai market to Rs. 20/- per packet from Rs. 17/- per packet, thus creating a difference of Rs. 3/- which was paid to the petitioner's executive in the said country ; (d) a dispute arose between Paradise Stores and the petitioner with regard to the attestation by the petitioner of the agency agreement, when the said Paradise, Stores floated a company in the name of Paradise Trading Agency; (e) since other persons were more willing to oblige the petitioner, the petitioner started operating through agents in the Northern Emirates, who taking advantage of the geographical location, started off loading their stock in Dubai market by under-cutting price with the active support of the petitioner ; (f) Following this illegal and unauthorised transfer in Dubai of valuable foreign exchange amounting to Rs. 29 lakhs the business premises of the petitioner were raised by the Enforcement Directorate on 20th February and 21st February, 1986 ; (g) the petitioner tendered an apology to the Government for violation of the Foreign Exchange Regulation Act assuring that the said practice would not be repeated in future. In this behalf I crave leave to refer inier alia, to the Economic Times, Delhi dated 16th May, 1986. No denial or reputation of the report appeared in the press by or at the instance of the petitioner or at all. Having regard to the disputes between the petitioner and its said Dubai agents, the petitioner has not for the last one year made any Shipments to Dubai as will also appear from a Telex message from Chunilal Purushottam & Co. to the Chairman, Tea Board and dated February 28, 1987." 101. The petitioner admitted that there was a violation of Foreign Exchange Regulation and the petitioner apologised as a good gesture as the petitioner had no desire to fight against the Government and the petitioner was exonerated from the charges relating to under invoicing. 102. The fact remains that the Brooke Bond has acted contrary to the provisions of the Foreign Exchange Regulation Act which resulted in the loss of Foreign Exchange. The conduct of the parties in the foreign market is a relevant factor to determine the question of balance of convenience. 102. The fact remains that the Brooke Bond has acted contrary to the provisions of the Foreign Exchange Regulation Act which resulted in the loss of Foreign Exchange. The conduct of the parties in the foreign market is a relevant factor to determine the question of balance of convenience. If any benefit is accrued to India by the sale of tea in Dubai through Brooke Bond It has been off-set by the conduct of the plaintiff resulting in loss of foreign exchange. It may not be the decisive factor but it is one of the factors to be taken into account in granting or refusing interlocutory relief. In the setting and context of the facts of the case I am of the view that the balance of convenience is in favour of not continuing the injunction which would only reduce the sale of Indian tea in the United Arab Emirates. The direction as to the filing of statement of sale would amply protect the interest of the plaintiff if ultimately suit succeeds. 103. For the reasons aforesaid the interim order is dissolved with the following direction:– The defendant and/or Chunilal Purushottam & Co., Dubai shall comply with the direction given by the Dubai Municipality on 22. 5. 86 corresponding to 14 Hizri until the disposal of the suit. The plaintiff will be at liberty to initiate proceedings in Dubai if they are so advised. Leave is given to the defendant to inform the Customs Authorities and Tea Board about this order. On behalf of the plaintiff stay has been asked for. There will be stay on the following conditions :– (a) The defendant will be at liberty to utilise those cartons which had been shipped prior to the interim order made on 19.2.87 on this proceeding but received afterwards. The defendant shall inform the advocate on record for the petitioner the quantity of the cartons and the shipment of the Tea in such cartons. (b) So far as the cartons which have already been shipped after the interim order was passed by this court and which have since been received by the defendants. Such cartons shall not be utilised for export for a period of fortnight from date. The particulars of such cartons which are lying in the Warehouse along with other cartons shall also be sent to the advocate on record for the petitioner. Such cartons shall not be utilised for export for a period of fortnight from date. The particulars of such cartons which are lying in the Warehouse along with other cartons shall also be sent to the advocate on record for the petitioner. The parties will act on a signed copy of the minutes of the operative part of this judgment and order.