JUDGMENT Prabir Kumar Majumdar 1. THE petitioner is the registered proprietor of the Trade-Mark ROTHMAN'S CAMBRIDGE label being No. 257625 dated June 24, 1969. THE said registration is limited to the colour white, gold, dark-blue, light blue and red. THE petitioner claims that the label as a whole is protected by the said registration, but the word 'CAMBRIDGE' is disclaimed. THE said registration is in respect of tobacco, cigarettes and cigars. 2. THE petitioner is also the registered proprietor of a Trade-Mark 'ROTHMAN'S INTERNATIONAL' label with a large size crest Device being No. 288012 dated May 9, 1973. THE said registration is in respect of cigarettes. The said two Registrations, according to the petitioner, were and are still valid and subsisting. It is the case of the petitioner that the crest appearing on the label of 'ROTHMAN's INTERNATIONAL' has become distinctive of the cigarettes of the petitioner's manufacture and is well known as the petitioner's crest. 3. IT is the allegation of the petitioner that the respondents in or about first week of November, 1986 commenced marketing a cigarette with the name 'CAMBRIDGE' and in a pack of blue and gold. IT is alleged by the petitioner that the said pack also contains the crest of the petitioner. IT is further alleged that the respondents are not authorised to manufacture the said cigarette even under the licensing arrangement with the petitioner. 4. THE petitioner's case is, therefore, that the sale and marketing of the said cigarettes by the respondent infringes the said Registered Trade Marks of the petitioner. THE said packets contain cigarettes not of the petitioner's manufacture or merchandise but the said packets contain labels which are a colourable and deceptive imitation of the well known label and mark of the petitioner as also the crest of the petitioner. It is also the case of the petitioner that the packets of the respondents contain dark-blue and gold combination as also the crest which is deceptively similar and is a colourable imitation of the petitioner's labels as also the crest. It is also the case of the petitioner that the packets of the respondents contain dark-blue and gold combination as also the crest which is deceptively similar and is a colourable imitation of the petitioner's labels as also the crest. It is alleged by the petitioner that the use by the respondents of the said label in connection with the cigarettes not of the petitioner's manufacture is an infringement of the petitioner's registered trade marks and is calculated to lead or has led to deception and to the belief that the respondent's cigarettes are the cigarettes of the petitioner and is further calculated to cause the cigarettes not of the petitioners to be passed off as and for cigarettes of the petitioner. It is also alleged by the petitioner that the sale and marketing of the said cigarettes is bound to lead to the belief amongst the consumers that the said cigarettes have been manufactured by the petitioner or by the respondents under some arrangement with the petitioner, when in particular the petitioner had no arrangement with the respondent No. 1 in the recent past. 5. THE petitioner through its Trade Mark agent Messrs Depenning and Depenning by a letter dated November 12, 1986 duly complained about the said infringement and called upon the respondent No. 1 to cease and desist from selling its 'CAMBRIDGE' cigarettes. It is alleged by the petitioner that the respondents regretted that they could not comply with the requisitions made by the petitioner in the said letter dated November 12, 1986 and disputed the rights of the petitioner. 6. THE petitioner thereupon instituted the present suit against the respondents claiming, inter alia, permanent injunction restraining the respondents, their servants or agents from infringing the said two registered trade marks of the plaintiff and from selling or offering for sale or marketing the said 'CAMBRIDGE' cigarettes or any cigarettes in packets or cartons containing the label or marks deceptively or confusingly similar to the plaintiff's said two registered Trade Marks; permanent injunction restraining the respondents, their servants or agents from passing off or attempting to pass off cigarettes not of plaintiff's manufacture as and for the manufacture of the plaintiff; and other reliefs. The petitioner takes out this Notice of Motion dated 22nd April 1987, inter alia, for orders for appointment of Receiver for taking possession of packets or cartons of cigarettes of the respondents with the label and mark 'CAMBRIDGE' and cause the said labels or marks to be destroyed; injunction restraining the respondents, their servants or agents from infringing the said two registered Trade-Marks; injunction restraining the respondents, their servants or agents from passing off or attempting to pass off cigarettes not of plaintiff's manufacture as and for the manufacture of the plaintiff by the use in course of trade of the said 'ROTHMAN'S CAMBRIDGE' lable and the 'ROTHMAN'S INTERNATIONAL' label or crest; and other reliefs. 7. THE petitioner obtained an ad-interim order in terms of prayers (c) and (d) of the said notice of motion dated 22nd April, 1987. By prayer (c) the petitioner asked for injunction restraining the respondents, their servants or agents from infringing the said two registered Trade Marks of the petitioner and by prayer (d) the petitioner asked for an injunction restraining the respondents, their servants or agents from passing off or attempting to pass off cigarettes not of plaintiff's manufacture as and for the manufacture of the plaintiff by use in course of trade of the said 'ROTHMAN'S 'CAMBRIDGE' label and the said 'ROTHMAN'S INTERNATIONAL' label or crest. On the returnable day the said ad-interim order was modified to the extent that the respondents could market the cigarettes so far manufactured upon furnishing of monthly statement of accounts to the plaintiff. 8. THE case of the respondent No. 1 as revealed in its affidavit-in-opposition in this proceeding affirmed on 30th April, 1987 is shortly as follows: THE plaintiff does not carry on any business or trade in India, nor does it have any commercial activity in India. THE plaintiff does not manufactured, market or sell cigarettes under its alleged marks "CAMBRIDGE" or " Rothman's International" in India. THE alleged goods of the plaintiff are not available under its said alleged marks in India. THE plaintiff did not acquire and has no goodwill or reputation in relation to the alleged goods under its said alleged marks in India. THE plaintiff abandoned its said alleged marks in relation to its goods in India. Further and in any event the said alleged labels or marks of the plaintiff ceased to be distinctive of its alleged goods. THE plaintiff did not acquire and has no goodwill or reputation in relation to the alleged goods under its said alleged marks in India. THE plaintiff abandoned its said alleged marks in relation to its goods in India. Further and in any event the said alleged labels or marks of the plaintiff ceased to be distinctive of its alleged goods. THE plaintiff never manufactured, marketed or sold any of its alleged products under the said alleged marks in India, and continuous period of five years and longer had elapsed during which there was no use of the said alleged marks of the plaintiff in relation to its goods. It is also the case of the respondents that crest is common, inter alia, in the cigarettes trade and the same has all along been and is being extensively used by the cigarettes manufacturers all over the world including India. THE respondents also state that a number of brands, such as, Silk Cut (Number 3), Silk cut, (extra mild) Lords (Kings) Dunhill (superior Mild) Gold Flake Filter Kings, Capstan Filter Kings etc. use crest on their labels. It is the further case of the respondent No. 1 that in or about 1986 respondent No. 2 granted the respondent No. 1 the right to use the said 'CAMBRIDGE'. It is also contended by the respondent No. 1 that its label and packet are distinct and different form those of the plaintiff. It is stated by the respondent No. 1 that the alleged get up, the colour scheme or work in the labels of the plaintiff's products, if any, are not original, and the same is common in tobacco and cigarette trade and extensively used in the said trade. It is also stated by the respondent No. 1 that the plaintiff does not have and cannot claim any copyright of the said get up or colour scheme, or in any event the alleged copyright is not registered under the Designs Act, 1911. In any event, the mark and the label of the defendant No. 1 or its design or get up are distinct, separate and different from those of the petitioner-plaintiff. It is alleged that the petitioner's cigarettes under the alleged mark 'ROTHMAN'S INTERNATIONAL', are not available in India. In any event, the mark and the label of the defendant No. 1 or its design or get up are distinct, separate and different from those of the petitioner-plaintiff. It is alleged that the petitioner's cigarettes under the alleged mark 'ROTHMAN'S INTERNATIONAL', are not available in India. It is the case of the respondents that the said mark Cambridge, its get up and label are not similar and the same are distinct and different from those of the petitioners. It is common knowledge that the smokers of cigarettes buy and use cigarettes and their choice are dependant upon the taste, strength, flavour and aroma of cigarettes, and not on the mark, label or colour scheme or get up of the packets containing the same. 9. THE case of the respondent No. 2 is more or less the same. 10. THE petitioner in its affidavit-in-reply affirmed on 4th May, 1987 states, inter alia, that the products of the petitioner are used in India by a large number of persons particularly in embassies and consulates and by those travelling abroad, and they are also available in duty free outlets in India, and the non user of any such product is not voluntary but only because of import restrictions. THE assertion of the respondent that the crest is common, inter alia, in the cigarette trade and same has been and is being extensively used by the cigarette manufactures all over the World including India has not been seriously disputed by the petitioner in the said affidavit- in-reply. It is also not denied that the get up or the colour scheme or the work on the labels of the plaintiff may amount to design with in the meaning of Designs Act and has not been registered under the Designs Act, 1911. Mr. Dipankar Gupta, learned counsel appearing for the petitioner with Mr. Sudipto Sarkar and Mr. S. Mukherjee, has submitted that this is an action for infringement of trade mark, and alternatively there is an averment relating to passing off in the plaint. It is the submission of Mr. Mr. Dipankar Gupta, learned counsel appearing for the petitioner with Mr. Sudipto Sarkar and Mr. S. Mukherjee, has submitted that this is an action for infringement of trade mark, and alternatively there is an averment relating to passing off in the plaint. It is the submission of Mr. Gupta that in an action for infringement the plaintiff must make out that the mark used by the defendants is identical to the plaintiff's registered marks in all respect and if the court comes to that conclusion then it will not be necessary for the Court to enquire whether the infringement is such as is likely to deceive or cause confusion. Further, unlike passing off action, the deception is only with reference to the marks and not to the goods. According to Mr. Gupta, if the essential feature has been copied and the broad idea has been borrowed then it will amount to infringement within the meaning of Section 29 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). He submits that under Section 29 of the Act, a registered trade mark is infringed by a person who uses in the course of trade a mark which is identical with, or deceptively similar to the trade mark, in relation to any goods in respect of which the trade mark, is registered. According to Mr. Gupta, the consideration in the case of an infringement of trade mark is not similar to that in an action for passing off. He has cited various decisions of the Supreme Court to indicate the difference between infringement action and passing off action. He submits that in an action for infringement where the defendant's marks are identical with the plaintiff's marks, it is not necessary to enquire further whether such infringement 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 any confusion or deception arising from similarity of marks is the same both in infringement and passing off actions. In other words, the test as to likelihood of any confusion or deception arising from similarity of marks is the same both in infringement and passing off actions. He further submits referring to various decisions of the Supreme Court that the main issue in an action for infringement is whether the mark used by the defendants is the same as or is a colourable imitation of the plaintiff's registered trade mark. The main issue in a passing off action would be whether the defendants are selling the goods so marked as to the designed or calculated to lead the purchaser to believe that they are the plaintiff's goods. 11. MR. Dipankar Gupta has cited a decision of the Supreme Court in the case of Durgadas Sharma v. M.N.P. Laboratories, AIR 1965 SC 980 . In this case the difference between an action for passing off and an action for infringement of trade mark is indicated. The Supreme Court indicates such difference in the following words (page 990 of the report): "In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive but where the similarity between the plaintiff and the defendant's marks is so close either visually or phonetically, or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's right are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff............where the two marks are identical, no further questions arise; then the infringement is make out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered." 12. THE next decision of Supreme Court cited by Mr. Dipankar Gupta is the case of Ruston and Hornsby Ltd. v. Zamindara Engineering Company Ltd., AIR 1970 SC 1649 . He relies on the quotation in paragraph 7 of the judgement. It is observed as follows. "In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion but where the alleged infringement consists of using not the exact mark on the Register, but something similar to it the test of infringement is the same as is 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 an action." The next decision of Supreme Court cited by Mr. Gupta is in the case of Parle Products Private Ltd. v. J.P. and Company, Mysore, AIR 1972 SC 1359 . Mr. Gupta relies on the observation of Supreme Court at paragraph 9 of the report. It is observed that it is clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would by likely to mislead a person usually dealing with one to accept the other if offered to him. 13. MR. Gupta has also cited a recent decision of the Supreme Court on the point in the case of American Home Products Corporation v. Mac. Laboratories Private Ltd., AIR 1986 SC 137 . MR. Gupta relies on a passage at page 155 of the report. 13. MR. Gupta has also cited a recent decision of the Supreme Court on the point in the case of American Home Products Corporation v. Mac. Laboratories Private Ltd., AIR 1986 SC 137 . MR. Gupta relies on a passage at page 155 of the report. "When a person gets his trade mark registered, he acquires valuable right by reason of such registration. Registration of his trade mark gives him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction, damages or an account of profits made by the other person. In such an action, the registration of a trade mark is prima facie evidence of its validity..........In a passing off action the plaintiff will have to prove that his mark has by user acquired such reputation as to become distinctive of the plaintiff's goods so that if it is used in relation to any goods of the kind dealt with by the plaintiff, it will be understood by the trade and public as meaning that the goods are the plaintiff's goods. In an infringement action, the plaintiff is not required to prove the reputation of his mark." 14. MR. Gupta also refers to a decision of Bombay High Court, reported in AIR 1984 Bombay 218 and a decision of Delhi High Court reported in AIR 1986 Delhi 145. Mr. Gupta submits that in an action for infringement of trade mark, which the present case is, if it is found by the Court that the two marks, one the registered trade mark of the plaintiff and the other the mark used by the defendant, are identical in all respects then the plaintiff is not required to prove anything further. Where, however, the infringement consists of using not the exact mark but something similar to it, the test of infringement is the same as in an action for passing off, that is, the test as to likelihood of confusion of deception arising from similarity of marks. Mr. Where, however, the infringement consists of using not the exact mark but something similar to it, the test of infringement is the same as in an action for passing off, that is, the test as to likelihood of confusion of deception arising from similarity of marks. Mr. Gupta submits that here the deception or confusion is only limited to the mark and not to the goods. Mr. Gupta further submits that in an action for infringement the question as to the user or reputation is immaterial. Those questions may by relevant in connection with passing off action. It is the submission of Mr. Gupta that if the basic design is copied or there is a colourable imitation containing the basic aspect then it is a case of infringement. The other addition of words or other consideration would be immaterial. 15. MR. Bachawat, learned counsel appearing with MR. R. P. Mitra, for the respondent No. 1 submits that in the present case the plaintiff's case is that the plaintiff is a registered proprietor of both the marks, namely, 'Rothman's Cambridge' and 'Rothman's International' and there has been an infringement of both the marks. MR. Bachawat points out that the letters 'RR' and the word 'CAMBRIDGE' are disclaimed. Similarly, the word 'INTERNATIONAL and the expression 'World Famous since 1980" and the expression "Over 80 years Fine Blending" are also disclaimed. Therefore, if these disclaimed words are used then that would not be a case of infringement of the petitioner's trade mark. MR. Bachawat further submits that 'Rothman's Cambridge', the brand of the petitioner, is not manufactured in any part of the World. He also submits that 'CAMBRIDGE' used by the defendants is totally dissimilar to 'Rohtman's Cambridge'. It is also his submission that the concept of trade mark is to identify the source of the goods. He also submits that 'Rothman's brand is not available in the market in India. In order to succeed in an action for infringement, the plaintiff must show that the two brands, namely, 'Rothman's Cambridge' and 'Rothman's international' are in the market in India and the consumers are likely to be deceived by the marks used by the defendants. 16. IT is submitted by Mr. In order to succeed in an action for infringement, the plaintiff must show that the two brands, namely, 'Rothman's Cambridge' and 'Rothman's international' are in the market in India and the consumers are likely to be deceived by the marks used by the defendants. 16. IT is submitted by Mr. Bachawat that in order to succeed in an action for infringement and also in this interlocutory application the plaintiff has to establish at least prima facie (i) that the plaintiff is a registered proprietor of the trade mark, and (ii) the defendant is using a mark which is identical to the mark of the plaintiff or if not so identical then there is a likelihood of confusion or deception arising from the similarity of marks. In the present case, Mr. Bachawat has further submitted that there is no doubt that the plaintiff is a proprietor of the said two registered marks. But from a comparison of the Annexure 'A' to the petition showing the plaintiff's mark 'Rothman's Cambridge' and Annexure 'B' showing 'Rothman's International, the marks are not identical to the mark used by the defendants. Therefore, there must be some evidence at least prima facie in this interlocutory proceeding that there is a likelihood of confusion or deception arising from the similarity of marks. Mr. Bachawat submits that it has been stated in clear terms in the affidavit of the defendants used in this proceeding that 'Rothman's Cambridge'or Rothman's International' are not in the market in India. According to Mr. Bachawat, the question whether the mark used by the defendants is deceptively similar or not would only be relevant when the two marks namely, the plaintiffs and the defendants are in the market in India. IT is the case of the plaintiff as made out in the affidavit in reply that the plaintiff's products are used in India in embassies and in duty free establishments and by the persons travelling abroad. IT is the case of the plaintiff that non-user of the said product in the market in India is due to import restrictions. Mr. Bachwat has also referred to a particular averment made by the respondent that for a continuous period of five years or more the said mark of the plaintiff are not in use in the markets in India. Mr. Bachawat has cited a case of Aristoc v. Rysta, 62 RPC 65. Citing this decision Mr. Mr. Bachwat has also referred to a particular averment made by the respondent that for a continuous period of five years or more the said mark of the plaintiff are not in use in the markets in India. Mr. Bachawat has cited a case of Aristoc v. Rysta, 62 RPC 65. Citing this decision Mr. Bachawat submits that the function of the trade mark is to indicate the origin of the goods or a connection in the course of trade between the goods. It is observed in the said case that the function of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods-to give an indication to his eye of the trade source from which the goods come or the trade hands through which they pass on their way to the market. According to Mr. Bachawat, people asking for 'Rothman's cambridge' or 'Rothman's International' are aware of the trade source of the products namely, 'Rothmen's products', but the people finding 'CAMBRIDGE' as marketed by the defendants in Indian Market would not in any manner take it to be the 'Rothman's product'. Further, the consumers in India have no recollection, perfect or imperfect, of the marks of the plaintiff since those marks are not seen in the Indian Market. 17. MR. Biswarup Gupta with MR. A Gupta appearing for the respondent No. 2 submits that in order to see whether there has been any infringement or not, the Court has to consider what is the essential feature in the mark and whether the defendant by using the mark has copied that essential feature of the plaintiff's mark. MR. Gupta submits that a consumer in India if interested in 'Rothman's Cambridge' or 'Rothman's International' would buy the packet whereon the word 'Rothmans's is distinctively inscribed. In the submission of MR. Gupta, the colour background is not the essential feature of the plaintiff's registered trade mark. According to him, the essential feature is 'ROTHMANS'. The Court has to consider the question taking the point of view of the smokers who use different brands of cigarettes. One who is used to a particular brand would always look for that brand by the name inscribed on it and would not go in for the other. According to him, the essential feature is 'ROTHMANS'. The Court has to consider the question taking the point of view of the smokers who use different brands of cigarettes. One who is used to a particular brand would always look for that brand by the name inscribed on it and would not go in for the other. If the particular consumer is interested in the Rothmans' product he will always take care to see that the expression 'Rothmans' is inscribed somewhere on the packet or the carton. If he does not find the said mark then he will not go in for that. MR. Biswarup Gupta further submits that 'CAMBRIDGE' is a disclaimed expression and if any one is using the mark 'CAMBRIDGE' on his product he would not thereby be committing any infringement of the plaintiff's trade mark. Therefore, according to MR. Gupta there is no question of any likelihood of confusion or deception in the mind of the smoking public in India if the expression Rothman's is not inscribed on the defendant's packet or carton and admittedly such mark has not been used on the packets or the cartons marketed by the defendants. MR. Gupta further submits that if a consumer is used to 'Rothman's Cambridge' or 'Rothman's International' he would have imperfect recollection of that sign or the mark 'Rothmans' and he will always insist to find that particular expression is on the packets or the cartons when he would ask for 'Rothman's Cambridge' or 'Rothman's International'. Further, he will not bother about the taste and colour or the other features. Therefore, in order to find out whether there is any imitation or colourable imitation the essential features has to be considered and looked into. In the submission of MR. Gupta neither the colour scheme nor the get up nor the crest is the essential feature of the plaintiff's mark. According to MR. Gupta the essential feature is 'Rothman's and the consumer in India are only likely to be confused or deceived if he has perfect or imperfect recollection of the Rothman's and such recollection can only arise if they are available in the Indian Market. According to MR. Gupta the essential feature is 'Rothman's and the consumer in India are only likely to be confused or deceived if he has perfect or imperfect recollection of the Rothman's and such recollection can only arise if they are available in the Indian Market. It is the specific case made out by the defendants that the plaintiff's said product 'Rothman's Cambridge or 'Rothman's International' is not in Indian Market and according to the plaintiff, the marks are found only in the duty-free establishments or in embassies. Therefore, the general smoking public in India is not familiar with the plaintiff's said mark or said brand of cigarettes. 18. MR. Biswarup Gupta has also cited several decisions reported in 41 Law Journal Chancery at page 101, Issacson v. Thomson, 1951 RPC 183. Barington v. Barington Trust. Both MR. Bachawat and MR. Biswarup Gupta have submitted that the plaintiff's application should also be rejected on the ground of delay. It is the specific case that the defendants had been manufacturing cigarettes under the trade mark since October, 1986 and the plaintiff has come to know about it in November, 1986 and the petition in this proceeding has been affirmed on 11th February, 1987. Both the Counsel of the respondents have also submitted that since the plaintiff has asked for relief for injunction, the Court will have also to take into consideration the balance of convenience. According to them, the balance of convenience is overwhelmingly in favour of the respondents. This fact the Court should take into consideration. particularly that the plaintiff has not been using the said two marks in India for five years or more, the said two marks of the plaintiff are not used in India, may by due to import restriction or other reasons. It is the fact that the plaintiff's marks are not in use in India as yet and the smoking public in India are getting familiar with the mark of the defendants. Therefore, according to them it would be unjust if the defendants are restrained from marketing the product in India admittedly when there is no similarity in any respect between the marks 'Rothman's Cambridge' being the mark of the plaintiff and 'CAMBRIDGE' being the mark of the defendants, neither in the get up nor in the colour. Therefore, according to them it would be unjust if the defendants are restrained from marketing the product in India admittedly when there is no similarity in any respect between the marks 'Rothman's Cambridge' being the mark of the plaintiff and 'CAMBRIDGE' being the mark of the defendants, neither in the get up nor in the colour. It is, therefore, their submission that the plaintiff is not entitled to any relief in this interlocutory application. 19. THE question in this application for interim injunction by the petitioner is as to whether the defendants' mark is identical with the plaintiff's mark, and if not, whether one is so similar to the other as to cause confusion or deception arising from the similarity of marks, to a consumer of average intelligence and of imperfect recollection. 20. THE expression "trade mark" is defined in Section 2(v) of the Act. Section 2(v) (ii) is material for the purpose of this application, which reads, "in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor or as registered user, to use the mark whether with or without any indication of the identity of the person, and includes a certification trade mark registered as such under the provisions of Chapter VIII." The 'mark' as defined in Section 2(j) of the Act includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. 21. THE expression "deceptively similar" has been defined in Section 2(d) of the Act as "a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion". 22. SECTION 29 of the Act says what is infringement of trade marks. SECTION 29(1) of the Act is material for the purpose of this application. 22. SECTION 29 of the Act says what is infringement of trade marks. SECTION 29(1) of the Act is material for the purpose of this application. It reads as follows: "A registered trade mark is infringement by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark". The certificate of registration in respect of the mark "Rothman's Cambridge' is Annexure 'A' to the petition. The said mark is registered under certificate No. 257625 in Part 'A' of the Register as of the date 24th June, 1969. The mark is limited to the colours white, gold, dark blue, light blue and red. The letter "RR" and the word "Cambridge" are disclaimed. The registration of the said trade mark would remain in force for a period of seven years from 24th June, 1969, and after renewal seven years from 24th June, 1983. 23. THE certificate of registration in respect of "Rothman's International" is Annexure 'B' to the petition. THE said mark is registered under certificate No. 288012 in Part 'A' of the Register as of the date 9th May, 1973. THE mark is limited to the colours blue, red and gold. THE word "International" and the expression "World famous since 1890" and "over 80 years Fine blending" are disclaimed. THE registration of the said trade mark would remain in force for seven years from 9th May, 1973. 24. IT is laid down by the Supreme Court in the decisions mentioned above that in an action for infringement where the defendants' mark is identical with the plaintiff's mark, then the Court is not put to any further inquiry as to whether the infringement is such as is likely to deceive or cause confusion. Where, however, the two marks are not identical then there should be further evidence that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion. Where, however, the two marks are not identical then there should be further evidence that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion. In other words, the plaintiff' has to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks. The persons who would be deceived are, of course, the purchasers of the goods and it is likelihood of their being deceived that is the subject of consideration. The purpose of comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. IT has also been observed by the Supreme Court in another case that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any difference in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. IT would be enough if the impugned mark bears such an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. According to Section 29 of the Act, a registered trade mark is infringed by a person who uses in the course of trade a mark which is identical with, or deceptively similar to the registered trade mark. A mark will be deceptively similar to the other if it so nearly resembles that other as to be likely to deceive or cause confusion. This is how the expression "deceptively similar" is defined in Section 2(d) of the Act. 25. THE case of the petitioner as sought to be made in the letter dated 12th November, 1986 of the petitioner's trade Mark Agents, Messrs. Depenning and Depenning addressed to the respondent No. 1 is that the petitioners "are the registered proprietors in India of a distinctive label comprising, inter alia, a crest device, the word 'ROTHMANS' and the word 'CAMBRIDGE' appearing most conspicuously thereon. Depenning and Depenning addressed to the respondent No. 1 is that the petitioners "are the registered proprietors in India of a distinctive label comprising, inter alia, a crest device, the word 'ROTHMANS' and the word 'CAMBRIDGE' appearing most conspicuously thereon. "THE letter further states that the petitioners "are also the registered proprietors of another distinctive label comprising an artistic crest device with the word 'ROTHMANS' appearing above the crest device and the word 'INTERNATIONAL' below." It is alleged in the said letter that the respondents have introduced a cigarette pack bearing the word 'CAMBRIDGE' as one of its leading features, and have also copied the identical crest device appearing in the petitioners 'ROTHMANS INTERNATIONAL' label. THE said letter is Annexure 'C' to the petition. 26. THEREFORE, it is the case of the petitioner that the respondents have copied 'CAMBRIDGE' from one of the petitioner's registered trade marks, and the identical crest device appearing in the other registered trade mark of the petitioner namely, "Rothman's International". It is, therefore the combination of the two: the word 'CAMBRIDGE' from the one, and the crest device in the background of a dark blue and gold combination from the other mark. Then, it cannot be said that the impugned mark is identical in toto to the mark of the plaintiff. Even from the comparison of two, i.e. the label appearing in Annexure 'A' to the petition and the label appearing in Annexure 'A' to the affidavit of N.K. Jain of respondent No. 1 affirmed on 30th April, 1987, the impugned mark and the registered trade mark of the petitioner 'Rothman's Cambridge' are entirely different both in colour combination and the get up. It may also be noted that the word 'Cambridge' is disclaimed. The use of disclaimed word does not amount to infringement. Now, whether the use of 'Cambridge' a disclaimed word in the background of a colour scheme, get up and with a crest device similar to the registered mark amounts to infringement or not would depend on the question whether the said crest device is a mark common to the trade. If a mark is common to the trade then, in my view, there cannot be a monopoly right in any one trader and, therefore, the mark which is common to the trade is not distinctive. If a mark is common to the trade then, in my view, there cannot be a monopoly right in any one trader and, therefore, the mark which is common to the trade is not distinctive. A mark is said to be common to the trade when it is in common use in the trade or when it is open to the trade to use. A mark or a part of the mark is so descriptive of the character or quality of the goods that it is incapable of ever becoming in fact distinctive of the goods of one proprietor. 27. AS I have indicated earlier, it is stated by the respondents in their affidavits that the crest is common to the cigarette trade and the same has all along been and is being extensively used by the cigarette manufacturers all over the world including India. The respondents have referred to a few such brands where there have been extensive use of a similar crest device as used by the plaintiff. The respondents produced in Court a few such packets of cigarette of different manufacturers which contain similar crest device as used by the petitioner. Therefore, there is some prima facie evidence of the said crest device being in common use in the trade. 28. THEREFORE, taking the two marks side by side, one cannot come to the conclusion that the one is identical to the other in all respects. New, if the two marks are not identical then the plaintiff has to establish at least prima facie for the purpose of this interlocutory application, that the impugned mark so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion. In other words, the impugned marks bears such an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with the one to accept the other if offered to him. 29. THIS deceptive similarity has to be viewed from the stand point of the persons, the purchasers of the cigarettes, and it is the likelihood of their being deceived that is the subject of consideration. The Court has to determine the question from the view- point of the consumers of average intelligence and imperfect recollection. 29. THIS deceptive similarity has to be viewed from the stand point of the persons, the purchasers of the cigarettes, and it is the likelihood of their being deceived that is the subject of consideration. The Court has to determine the question from the view- point of the consumers of average intelligence and imperfect recollection. It is common knowledge, that a smoker has a liking for a brand, and he will not accept the other brand if offered to him. It is the normal reaction of the majority of the smokers, the consumers of cigarettes. As has been observed by the Supreme Court, the purpose of comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in the mark used by the defendant. THIS is really a question of fact which can be properly be determined at the trial upon proper evidence. At this stage it can be said that a smoker used to the brand Rothman's Cambridge or Rothman's International, while buying a packet of cigarette, will always look for the word "Rothmans" inscribed on the packet and that is his recollection, imperfect or otherwise. So from a prima facie point of view, subject to other evidence which may be forthcoming at the trial, the essential feature is 'ROTHMANS' and neither the word' 'Cambridge' nor 'International' nor the colour scheme nor the get up. 30. IT is true that one ought not merely to look at the marks as they stand side by side, for, 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. Here in the present case I feel, that the consumers clear recollection, however faint, would be the inscription 'ROTHMANS' on the goods. Any brand without the said inscription, if offered, will not be accepted by a consumer having a liking for this particular brand. Further, it is an admitted position that the plaintiff's products are not marketed in India; therefore, there is no scope for any recollection, imperfect or otherwise, for a consumer of cigarettes in India. Therefore, at least prima facie, there is no likelihood of their being deceived if offered 'Cambridge' or other brand. Further, it is an admitted position that the plaintiff's products are not marketed in India; therefore, there is no scope for any recollection, imperfect or otherwise, for a consumer of cigarettes in India. Therefore, at least prima facie, there is no likelihood of their being deceived if offered 'Cambridge' or other brand. The smokers, in general, in India have no occasion to taste the flavour of the plaintiff's products as they are not in use in Indian market. It has, however, been suggested by the petitioners that their products are available in foreign embassies or duty free establishments in this Country. There is no evidence on record in this proceedings that those are really available in those establishments in India. Further, there is nothing on record that Rothman's Cambridge is now in use anywhere in the World including this country. 31. IT has been submitted on behalf of the petitioner that user is not a relevant consideration in an action for infringement of trade mark, but it is a consideration in an action for passing off. IT may be so where the impugned mark is identical with the registered trade mark of the plaintiff. I have already indicated earlier that either by a visual inspection of the two marks, impugned and the registered, or by applying any other test, it cannot be said that the two marks are identical. If they are not identical, them it has to be established by the plaintiff that there is a likelihood of confusion or deception arising from a similarity of marks, and the test is the same both in the infringement and passing off actions, that is, whether the mark used by defendant is likely to deceive the customers into buying the defendants' goods as if they were the plaintiff's goods. 32. IT has been submitted on behalf of the respondents that in an application for temporary injunction, balance of convenience is a factor to be taken into consideration. According to the respondents, it is overwhelmingly in favour of the respondents in as much as the plaintiff has not been able to market the goods in India for a continuous period of five years and more. According to the respondents, it is overwhelmingly in favour of the respondents in as much as the plaintiff has not been able to market the goods in India for a continuous period of five years and more. IT is submitted on behalf of the petitioners that non-use is owing to import restrictions, but as pointed out by the respondents that there is no indication whatsoever in the petition or affidavit in reply as to what steps; if at all, they have taken to obtain necessary permission to sell the products in Indian market. Further, it has been asserted by the respondents that the respondents have made substantial investments towards promotion, advertisement and marketing their said products under the mark 'Cambridge' and they should be allowed to use the said mark 'Cambridge', its colour scheme, get up, and cartons in relation to the said products, particularly in view of the fact that plaintiff never manufactured, sold or still does not manufacture and sell its alleged products under its said alleged marks in India. Having regard to the fact that the plaintiff' alleged products under the said marks are not available in the market, I think that the balance of convenience is in favour of the respondents. I am of the view that there is no evidence on record to hold that the impugned mark is identical with or deceptively similar to the said trade marks of the plaintiff. Further, since the plaintiff's products are not in the market in India, there is no business competition between two marks, Rothmans' Cambridge, and Cambridge. At this stage, the plaintiff's interest will be sufficiently protected if the defendants are directed to maintain a separate account in respect of the sale of the defendants' said products. 33. FOR the reasons aforesaid this application fails and is hereby dismissed. The interim order is vacated except that the respondents will keep a separate account in respect of sale of the respondents' product under the said mark 'Cambridge' and furnish a statement of accounts to the Advocate on record every month until the disposal of the suit. The respondents will file their respective written statements within 6 weeks, cross orders for discovery within 3 weeks thereafter, inspection forthwith, and the suit to appear in appropriate prospective list one week after long vacation. There will be no order as to costs.