Judgment :- The appellant herein filed C.S. No. 434 of 1984 for (1) a permanent injunction restraining the defendant/respondent from manufacturing and selling and offering for sale the offending trade mark 'RANI EYEVIX', which is deceptively similar to the plaintiff's registered trade mark 'EYETEX', (2) directing the defendants to render a true and faithful account of the profits earned by the defendant through the manufacture and sale of the offending trade mark "RANI EYEVIX" and directing such profits to be paid to the plaintiff by way of damages for the infringing and passing off committed by the defendant (3) directing the defendants to surrender to plaintiff the cartons, labels and any other printed matters containing or consisting of the offending 'RANI EYEVIX' trade mark together with the blocks used for the purpose of printing the same for destruction. 2. The trial court has granted the relief of injunction and directed the defendants to surrender to plaintiff all the cartons, labels and other printed materials containing the offending trade mark "RANI EYEVIX" together with blocks for destruction, but has however declined to grant any damages for the infringing and passing off committed by the defendant as it has found : "But the plaintiff has not let in any evidence regarding the extent of sales made by the defendant. Further the plaintiff has also not let in any evidence with reference to the damages though he prayed for such a relief in the plaint. In the absence of such evidence the plaintiff is not entitled to any relief in this regard". 3. The present appeal is accordingly preferred against the above finding and rejection of the prayer for accounting and recovery of profits earned by the defendant by way of damages, on account of infringement and passing off. 4. The Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), has made a provision under Section 106, thereof as to reliefs in suits for infringement or for passing off. 4. The Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), has made a provision under Section 106, thereof as to reliefs in suits for infringement or for passing off. Section 106 says that - "The relief which a court may grant in any suit for infringement or for passing off referred to in Sec. 105 includes an injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an accounts of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure". 5. The sub-section (2) of Section 106 of the Act provides that - "Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damage) or an account of profits in any case - (a) Where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification of trade mark; or (b) Where in a suit for infringement the defendant satisfies the court - (i) That at the time when the commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and (ii) That when he became aware of the existence and nature of the plaintiff's right in the trade mark, he forthwith eased to use the trade mark in relation to goods in respect of which it was registered; or c) Where in a suit for passing off the defendant satisfies the court- (i) that at the time when he commenced to use the trade mark complained of in the suit he was unaware and no reasonable ground for beliving that the trade ark of the plaintiff was in use; and (ii) that when he became aware of the existence and nature of the plaintiff trade mark, he forthwith ceased to use the trade mark complained of."* 6. The Plaintiff/Appellant, is the registered owner of 25 different types of products, known in the market by the trade mark "EYETEX", registered as early as 1946, under the Trade Mark Act, 1940. The Plaintiff/Appellant, is the registered owner of 25 different types of products, known in the market by the trade mark "EYETEX", registered as early as 1946, under the Trade Mark Act, 1940. The Defendant/Respondent has been found to have manufactured and sold its products under the trademark "RANI EYEVIX" deceptively similar to the registered trademark of the Plaintiff "EYETEX". It was in order when the appellant/plaintiff instituted the suit and asked for an injunction, he had an option either to ask for damages or an account of profits together with or without asking for delivery of infringed labels and printing materials for destruction and erasure. In its option, however, the plaintiff asked the court to direct the defendant to render a true and faithfull account of profits earned by the defendant through the manufacture and sale of the offending goods and to direct such profits to be paid to it, by way of damages for infringement and passing off by the defendant and asked for the delivery of infringing labels and marks and other printing materials consisting of the offending trademark "RANI EYEVIX" together with the blocks for destruction. 7. Before the 1940 Act, the Trade Mark violation suits for injunction, damages or accounts of profits were entertained under the common law. The Courts invariably accepted the principles applied in granting the relief by way of damages or accounts of profits in the cases of torts and other kind of infringements and action for passing off and that the plaintiff in his option should seek damages or an account of profits but not both, the distinction between an account of profits and damages being that by the former the infringer is required to give up his ill-gotten gains to the party whose rights he has infringed, by the latter he is required to compensate the party wronged for the loss he has suffered. 8. In JUGGI LAL, KAMALAPAT -v- SWADESHI MILLS COMPANY LTD. (1929 JLR. 8. In JUGGI LAL, KAMALAPAT -v- SWADESHI MILLS COMPANY LTD. (1929 JLR. Vol 51, Allahabad, P.182) the Privy Council had an occasion to consider a case of milling company, who dealt with largely in Indian cloth and who, in connection with the sale of that Indian cloth used certain trade marks, which were infringed by another trade and who filed a suit for injunction and for accounting of profits, but at the trial, the claim for accounting of profits was given up, and instead the claim for damages, was made. The Privy Council found that the evidence was not satisfactory to show any act of infringement and thus affirmed the relief of injunction. Turning to the question of damages, their Lordships observed that it cannot be said that there is any cut and tried rule which can be laid down by a Court of law for the estimation of damages in case like this....... 9. In DRAPER -vs.- TRIST AND TRISTBESTOS BRAKE LININGS LTD., (1939 Vol. LXI. RPC. Page-429), in the Court of Appeal, Goddard, L.J. in his concurring judgment with Clanson, J. said- "We are concerned in this case only with a claim for damages, which is essentially a legal claim, a claim at law. This class of action was well-known to the Common Law; and precedents have been cited in the course of the case, from works on pleading, as showing what it was necessary to plead." 10. I find it of some assistance in coming to a conclusion in this case, to analyse in my own mind what exactly is the cause of action and the rights of action which are two different things. The action is one of that case which is known as an action on the case, akin to and action of deceit. In an action on the case, the cause of action is the wrongful act or default of the defendant. The right to bring the action depends on the happening of damage to the plaintiff. A man, for instance, may be negligent; and the consequences of his negligency may not cause damage for twelve months. The cause of action is the breach of duty; the right to bring the action depends upon the happening of the damage. The right to bring the action depends on the happening of damage to the plaintiff. A man, for instance, may be negligent; and the consequences of his negligency may not cause damage for twelve months. The cause of action is the breach of duty; the right to bring the action depends upon the happening of the damage. But this class of case forms an exception, or an apparent exception, to the ordinary action of deceit; because, in an ordinary action of deceit, the plaintiff's cause of action is false representation, but he cannot bring the action until the damage has accrued to him by reason of that false representation. "But, in passing-off cases, the true basis of the action is that the passing-off by the defendant of his goods as the goods of the plaintiff injuries the right of property in the plaintiff, that right of property being his right to the goodwill of his business. The law assumes, or presumes, that if the goodwill of a man's business has been interfered with by the passing off of goods, damage results therefrom. He need not wait to show that damage has resulted, he can bring his action as soon as he can prove the passing off; because it is one of the class of cases in which the law presumes that the plaintiff has suffered damage. 12. It is in fact, I think, in the same category in this respect as an action for libel. We knew that for written defamation a plaintiff need prove no actual damage. He proves his defamation. So, with a trader; the laws has always been particularly tender to the reputation and goodwill of traders. If a trader is slandered in the way of his business, an action lies without proof of damage. That does not mean that the plaintiff cannot give evidence showing that he has suffered damage in fact. The more he can show that he has suffered damage in fact, the larger of damages he can recover. The more the defendant can show that he has suffered no damages in fact, the less he will recover. In the case of a libel published to a person who knows the true facts, and to him only, although the plaintiff would have a cause of action, the damage would probably be small. The more the defendant can show that he has suffered no damages in fact, the less he will recover. In the case of a libel published to a person who knows the true facts, and to him only, although the plaintiff would have a cause of action, the damage would probably be small. In the case of a libel published in a newspaper with a large circulation, the damages would naturally be larger. 13.The class of case to which I have referred in argument which is very nearly akin to this class of case, is one which is an exception to the law of damages for breach of contract, that is to say, the action by a trader for the wrongful dishonour of his cheque. In the case of MARZENITI -vs.- WILLIAMS, I BARNEWALL and ALDERSON, Page 415, it was decided that a person could bring an action for the wrongful dishonour of a cheque without proving actual damage. But it was latter decided, in the case of ROLIN V. STEWARD, reported in 14 Common Bench, page 595, that in the case of a trader substantial damages could be given for the wrongful dishonour of a cheque; because the act of a bank in dishonouring cheque must be detrimental to a trader. The proper direction to the jury, as laid down by Lord Campbal in that case, was this. "The jury ought not to" limit their verdict to nominal damages, but should give such temperate "damages as they may judge to be reasonable compensation for the injury" the plaintiff must have sustained from the dishonour of his cheque". 14. In GUJARAT G. & M. CO. -vs.- SWADESHI MILLS CO. 1939 AIR(Bombay) 118), a Division Bench of the Bombay High Court had an occasion to consider the question as to when injunction and damages, nominal or substantial, are granted in case of infringement of trade mark. Relying upon the decision of the Privy Council in 1929 AIR(PC) 11, the Bombay High Court has observed that- "As held in 1896 AC 199 and in the other cases cited in 18 Bom L.R. 206, it is sufficient if the plaintiffs show that defendants have put into the hands of an unscrupulous the means of deceiving the ultimate purchasers. In my opinion, the evidence does establish this. 15. There is also the other point which I have already mentioned. In my opinion, the evidence does establish this. 15. There is also the other point which I have already mentioned. It may well be that putting the No. 24, 410 on the defendants' 36" dhoties is only the first step in their campaign to capture the plaintiff's trade. If the same number were put on dhoties of the same size as plaintiff'. It cannot be disputed that the damage to plaintiffs' trade might be extremely serious. If there is any risk of damage as things are: and I am satisfied that there is-the plaintiffs are entitled to protection on once and need not wait untill the position gets worse. I think the trial Court was right in granting the injunction prayed for. 16. The position is different as regards the plaintiff's claim for an account. An injunction may be granted nominal damages awarded merely on proof of infringement of a trade mark and reasonable probability of damage to the plaintiff' trade. But substantial damages can only be awarded on proof of actual damages. The plaintiff has asked in the plaint for an account of the defendant's profits. It has been conceded in this case however that in view of the decision of the Privy Council in 51 All 182the criterion is whether there has been any falling off in the plaintiffs' own sales of these dhoties by reason of the defendants having pirated their number. But no serious attempt has been made to show by that so far there evidence has been any falling off at all. It is not even alleged by any witness, except Ex. 92 whose testimony is obviously worthless since he has never handled either the plaintiff's goods or the defendants'. The record does not support the suggestion of the learned counsel for the respondents that the evidence on the issue of damages was reserved. It is possible and on the whole I think rather probable, that the action taken by the plaintiffs in time to prevent their trade being materially affected, But however that may be they are not entitled to an account for the purpose of assessing substantial damages, because their evidence does not lay the foundation for that form of relief. They are entitled to nominal damages only which we assess at Rs. They are entitled to nominal damages only which we assess at Rs. 100/- In the result the decree of the trial court will be confirmed so far as the injunctions are concerned but the order directing an account will be set aside an instead the plaintiffs will be awarded Rs. 100/- nominal damages." 17. The circumstances under which the relief of accounting is granted and what are the principles therefore are stated in a judgment of the High Court of Australia in 156 COLEBEAM PALMER LIMITED AND ANOTHER -vs.- STOCK AFFILIATES PTY. LTD. (1972) R.P.C. 303). In the said judgment, it is observed :- "Damages or an account of profits are forms of relief which ordinarily are to be had in a trade mark case only as ancillary to an injunction................." " The distinction between an account of profits and damages is that by the former the infringer is required to give up his ill-gotten gains to the party whose rights he has infringed, by the latter he is required to compensate the party wronged for the loss he has suffered. The two computations can obviously yield different results, the plaintiff's loss is to be measured by the defendants' gain nor a defendants' gain by the plaintiff's loss. Either may be greater, or less, than the other. If a plaintiff selects to take an inquiry as to damages the loss to him of profits which he might have made may be a substantial element of his claims. See Mayne on Damages, 11th Edition 1946 p. 71. But what a plaintiff might have made had the defendant not invaded his rights is by no means the same thing as what the defendant did make by doing so. 18. It can hardly be said that a registered trade mark is not a species of property of the person whom the statue describes as its registered proprietor and which it permits him to assign. 19. Griffith, C.J. spoke of a trademark as, "the visible symbol of a particular kind of incorporeal or industrial property consisting in the right of a person engaged in trade to distinguish by a special mark goods in which he deals, or with which he has dealt, from the goods of other persons." 20. 19. Griffith, C.J. spoke of a trademark as, "the visible symbol of a particular kind of incorporeal or industrial property consisting in the right of a person engaged in trade to distinguish by a special mark goods in which he deals, or with which he has dealt, from the goods of other persons." 20. The remedy of injunction now provided by statue to prevent the infringement of registered trademark, reflects the history of the way in which equity protected and established a property in trade marks before they were recognised by statue. And the account of profits retains the characteristics of its origin in the court of Chancery. But a defendant is made to account for; he is then stripped of profits he has made which it would be inconceivable that he retains. These are profits made by him dishonestly, that is, by his knowingly infringing the rights of the proprietor of the trademark. This explains why the liability to account is still not necessarily co-extensive with acts of infringement. The account is limited to profits made by the defendant during the period when he knew of the plaintiff's rights. So it was in respect of common law trademarks. So it still is in respect of registered trade marks. Edelsten v. Edelsten (1863) De G J and S. 185; Slazenger and Sons v. Spalding and Brothers 1910 (1) Ch 257; Moet v. Couston (1864) 33 Beav 578. I think that it follows that it lies upon a plaintiff who seeks an account of profits to establish that profits were made by the defendant knowing that he was transgressing the plaintiff rights". 21. We are not required, in this case, to work out as to what is meant by profits and how are they to be ascertained or when a decree for accounting for profits is passed and how the Courts will ensure that accounts are properly held and profits are accordingly determined. The law as to damages, as we understand, is that on proof of infringement of a trade mark and reasonable probability of damage to the plaintiff's trade, the Court can grant injunction and award nominal damages, but substantial damages can only be awarded on proof of actual damages. The plaintiff in such a case will be required to lay a foundation by showing the extent of damages. The plaintiff in such a case will be required to lay a foundation by showing the extent of damages. The plaintiff may not have a case for the grant of substantial damage in case he is found to have taken action well in time to prevent his trade being materially affected. The accounts of profits retains the characteristics of its origin in the Court of Chancery as an absolute one in the case of COLEBEAM PALMER LIMITED & ANOTHER vs. STOCK AFFILIATES PLY. LTD. (1972 R.P.C. 303). But if a defendant is made to account for he is then stripped of profits he has made which would be inconceivable that he retains, but it will be required in such a situation that the plaintiff shows that the defendant made profit dishonestly and knowingly infringed the plaintiff's rights in the trade mark. The account is limited to profits made by the defendant during the period when he knew of the plaintiff's rights. In such a case it will be for the plaintiff who seeks an accounting of profits to establish that profits were made by the defendant knowing that he was transgressing the plaintiff's rights. 22. The contention of the learned counsel for the appellant is that the trial court was in error in saying that the plaintiff has not let in any evidence regarding the extent of sales made by the defendant to deny to the plaintiff the prayer for accounting of profits by way of damages. We do not find any force in this contention in a suit for infringement and for accounting of profits. It is on a finding that there has been an infringement of plaintiff's trademark; a preliminary decree for accounting should follow, as a matter of course. There is no evidence on record in this case to show that the defendants made any profit after it was subjected to notice by the plaintiff that it was violating its (plaintiff's) trade mark. The learned single Judge has found" According to PW. 1 after notice Ex. P. 6, the defendant has stopped marketing the product in the carton with the mark "Eyevix" but prefixed the mark with the syllable "Rani Eyevix". The case of PW.1 is that after the issue of Ex. P.6 the defendant's product was not available in the market for some time and had reappearance only prior to the suit. P. 6, the defendant has stopped marketing the product in the carton with the mark "Eyevix" but prefixed the mark with the syllable "Rani Eyevix". The case of PW.1 is that after the issue of Ex. P.6 the defendant's product was not available in the market for some time and had reappearance only prior to the suit. Under the circumstances, there is no proof adduced by the defendants that he had been adopting the marks for a considerable period. Further the defendant has not shown that by adopting the mark "Rani Eyevix" for considerable period he had made such progress in the business and that if he is prevented from using such mark he will be put to irreparable loss". 23. It therefore follows that when it was brought to the notice of the defendants that the plaintiffs' trademark was allegedly violated by it, it had stopped marketing its product and when it reappeared again, the plaintiff immediately came to this court. The rule, that we have noticed will require-for accounting of profits, the plaintiff should establish that profits were made by the defendant knowing that it was transgressing the plaintiffs' right. The rule as to substantial damages is that the plaintiff must lay foundation that on account of the defendant's trade, it suffered substantial injury in its trade and it has become entitled to the substantial damages. In other words, the plaintiff must lay the foundation of actual damage and give proof of it before a decree for any substantial damage is given to it. We are, however, satisfied that the view, which we have taken, is also supported by the provisions in sub-section (2) of Section 106 of the Trade and Merchandise Marks Act, 1958, as extracted above. True, the onus will be on the defendant to satisfy the court that he was unaware and had no reasonable ground of believing that the trade mark of the plaintiff was on the register or that the plaintiff was the registered user or that the trade mark of the plaintiff was in use and that when he became aware of the existence and nature of the plaintiff's right in the trade mark, he immediately stopped to use the trade mark complained of. But this onus will shift on the defendant only after the plaintiff discharged his burden by establishing that the defendant made profits by using a trademark in violation of the plaintiff's right. The plaintiff is required accordingly to establish that the defendant made profits knowing that he was transgressing the plaintiff's right. This the plaintiff has to do before the defendant is asked to established that he was unaware and had no reasonable ground for believing at the time when he commenced using the trade mark that the trade mark of the plaintiff was on the register or that the plaintiff was the registered user or that the trade mark of the plaintiff was in use from before and that he had stopped using the trade mark complained of. When he came to know of the existence and nature of the plaintiff's trademark. 24. No one has appeared for respondent in this appeal. We are satisfied that the plaintiff has substantially succeeded in this appeal. Consequent to the finding recorded by the trial court that the defendant has infringed the plaintiff's trademark; there will be a decree by way of nominal damages amounting to Rs. 500/-. Except the modification in the decree for nominal damages, as indicated above, the appeal is dismissed. Since no one has appeared for the respondent, there will be no order as costs in this appeal. Held : Held that the distinction between an account of profit and damages is that by the former the infringer is required to give up his ill gotten gains to the party whose rights he has infringed whereas by the latter he is required to compensate the party wronged for the loss he has suffered. An injunction may be granted and nominal damages awarded on proof of infringement of a trademark and reasonable probability of damage to the plaintiffs trade. But substantial damages can only be awarded on proof of actual damage, as the evidence led by the plaintiff does not lay the foundation for that form of relief, they are entitled to only nominal damages. It lies on the plaintiff who seeks an account of profits to establish that profits were made by the defendant knowing that he was transgressing the plaintiff's rights. It lies on the plaintiff who seeks an account of profits to establish that profits were made by the defendant knowing that he was transgressing the plaintiff's rights. Consequently there being a decree by the trial Court that the defendant has infringed the plaintiff's trade mark, there will be a decree by way of nominal damages amounting to Rs. 500/-. With this modification in the decree for nominal damages, the appeal is dismissed.