JUDGMENT Ms. S.R. Waghmare, J. This appeal has been filed against judgment and decree dated 28-4-1999, passed in Civil Suit No. 11-A/1997 by the Additional District Judge, Begumganj, District-Raisen decreeing the suit filed by the plaintiffs/respondents. Brief facts of the controversy are that the plaintiffs/respondents were members of Joint Hindu Family and in the year 1999 as member of the same, plaintiff/respondent Nos. 1 and 2 Ashok Kumar Jain, Gyan Chand Jain and Nikhil Kumar Jain started business of making and selling of 'bidis' and for the same had a trade mark of a 'tiger' as their mark on the 'bidis' and on the basis of the same, they obtained a licence from the Central Excise Department on 23-8-1990, which was renewed on 15-9-1997 bearing licence No. R.C. 09/2404.31/A/1/S.G/R/97. Sagar Division vide Sagar E.C.C. No. 27020/2074 again granted the 'tiger' label to Ashok Kumar Jain and Nikhil Kumar Jain, Begumganj, District Raisen for the production and sale of 'bidis'. The respondents/plaintiffs also contended that their application for registration of the trade mark was pending before the Mumbai Office since according to the provisions of Trade and Merchandise Marks Act, 1959, statutory registration was required. The said trade mark and business of 'bidis' was possessed by Ashok Kumar Jain and Nikhil Kumar Jain and they were entitled to protect their interest since 'bidis' were sold by merely displaying the label of the 'tiger' and nobody had the right to use the same trade mark. However, the defendant No. 1/appellant Manoj Kumar also started production of 'bidis' and defendant No. 4 Roop Singh Rajput was his Manager and sold the 'bidis' through defendant No. 2 Suresh Kumar Gupta and defendant No. 3 Rambabu Gupta. That as Manager defendant No. 4 Roop Singh Rajput was responsible for packing and defendant No. 2 Suresh Kumar Gupta and defendant No. 3 Rambabu Gupta were also responsible for the sale of said 'bidis'. 'Bidis' were sold under the trade name of tarzan. That as Manager defendant No. 4 Roop Singh Rajput was responsible for packing and defendant No. 2 Suresh Kumar Gupta and defendant No. 3 Rambabu Gupta were also responsible for the sale of said 'bidis'. 'Bidis' were sold under the trade name of tarzan. The plaintiffs/respondents on learning about the near identical trade mark and label granted to the defendants/appellant published an advertisement in the daily newspapers 'Dainik Bhaskar and Nav Bharat' for protecting their trade mark and also filed complaint at Police Station-Begumganj, District-Raisen on 2-11-1997 stating that the defendants/appellant were using their trade mark and were passing off their 'bidis' in place of the plaintiffs/respondents manufactured 'bidis', which resulted in financial loss and goodwill of the plaintiffs/respondents and, therefore, the plaintiffs/respondents filed suit and prayed for grant of permanent injunction against the defendants/appellant not to use their trade mark or label similar to that of the respondents/plaintiffs either by themselves or through others. The defendant Nos. 1 to 3 contested the suit on the grounds that although the names of Ashok Kumar Jain and Nikhil Kumar Jain were registered with the Central Excise Department, Nikhil Kumar Jain was not made a plaintiff. However, Gyan Chand Jain was made plaintiff No. 2 and hence, the suit suffered from non-joinder of parties. Besides the defendants also objected to the fact that the trade mark of the plaintiffs/respondents was not registered and the suit was not maintainable. Defendant No. 4 Roop Singh Rajput denied that he was Manager of defendant No. 1 Manoj Kumar and also stated that the trade mark of 'tiger' bidis and 'tarzan' bidis was entirely different and no confusion was created by the same. Defendant No. 4 Roop Singh Rajput also alleged that suit was fictitious, frivolous and prayed for its dismissal. The trial Court on admission framed as many as eleven issues and considering the evidence, written statement as well as defence witnesses came to a conclusion that the plaintiffs/respondents were unable to prove the case against defendant Nos. 2, 3 and 4 and decreed the suit against defendant No. 1, granting permanent injunction observing that defendant No. 1/appellant Manoj Kumar shall not use the trade mark of 'tarzan' bidis similar to that of the trade mark of 'tiger' bidis either by himself or through others and hence the present appeal. 2, 3 and 4 and decreed the suit against defendant No. 1, granting permanent injunction observing that defendant No. 1/appellant Manoj Kumar shall not use the trade mark of 'tarzan' bidis similar to that of the trade mark of 'tiger' bidis either by himself or through others and hence the present appeal. The present appeal has been filed mainly on the ground that the Trial Judge has erred in holding that it was a case of passing off under the Trade and Merchandise Mark Act, 1959. The suit also suffered from non-joinder of necessary parties since Gyan Chand Jain was not made a party to the suit. The judgment of the trial Court was based on non-appreciation of evidence and erroneous presumption. The Trial Judge has erred in holding that it was a case of passing off since none of the ingredients under the provisions of the Act were fulfilled. The Trial Judge had been confused between infringement and passing off and that the plaintiffs/respondents had failed to examine any consumer, the adverse findings regarding confusion created by the two identical marks could not have been arrived at. The plaintiffs/respondents had not led any evidence to prove the volume of sale and resultantly the actual loss incurred was also not proved. Counsel for appellant has submitted that the trade marks were quite distinct and could not be confused as made out that there was no deception being played and the plaintiffs/respondents had been unable to prove their case and they had a common law remedy available, which had not been utilised. So also it was the plaintiffs/respondents whose trade mark of 'tiger' bidis was not registered and their application for registration is still pending consideration, whereas the trade mark of tarzan bidis in respect of the defendant/appellant was registered. Relying on Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, counsel for appellant contended that while considering a similar case, the Apex Court as way back in 1965 held thus:-- The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. In the case of passing of the cause of action and relief had a limited role. Whereas in the case of an action of infringement of registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy for the event of the use by another of that mark or a colourable limitation thereof. While an action for passing off is a Common Law remedy being in substance in action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade to those good. Then under the circumstances, in the instant case, counsel for appellant contended that the plaintiffs/respondents had failed to mark-out the identical trade marks or labels used by the defendants/appellant neither examined any consumer as already stated above and there was sufficient matter to distinguish goods of the defendants/appellant from that of the plaintiffs/respondents. There was no confusion in the minds likely to deceive as is required under the law and hence at the most it could be termed an infringement but not passing off as held by the trial Court. Counsel for appellant also relied on a recent case of Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd., where the Apex Court while considering the distinction between infringement and passing off held that a domain name has all the characteristics of a trade mark and an action for passing off can be found where domain name are involved. However, the distinction between domain name and trade mark is essential for the protection of the right to use a trade mark. Counsel for appellant has relied on the observations of the Apex Court that three essential elements which were required to fulfil the ingredients of passing off. (i) The defendant must pass off its goods for service to the public as that of the plaintiff. Then the trader who is able to establish prior use will succeed. The plaintiff has to prove long user and it would depend on the volume of sale and extent of advertisement. (i) The defendant must pass off its goods for service to the public as that of the plaintiff. Then the trader who is able to establish prior use will succeed. The plaintiff has to prove long user and it would depend on the volume of sale and extent of advertisement. (ii) Question would be misrepresentation by the defendant to the public which is likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff. (iii) Passing off action is loss or likelihood of it. Whereas in the instant case, the counsel contended that the plaintiffs/respondents had been unable to prove all three; neither the volume of sale was established nor was the confusion established nor were the actual losses quantified and hence the injunction granted against the appellant was contrary to the said decisions as well as provisions of law and counsel for appellant has prayed for setting aside of the order for grant of permanent injunction to the plaintiffs/respondents. On perusing the impugned order, 1 find no infirmity in the order passed by the trial Court granting permanent injunction. The first contention of the defendant/appellant's counsel that the Trial Judge had erred in treating the case as one of passing off when actually the plaintiffs/respondents had pleaded infringement is belied by the fact that in para 7 of the plaint the plaintiffs/respondents has clearly pleaded that the defendant/appellant was guilty of passing off his bidis as those of the plaintiffs/respondents and practising fraud on the illiterate and rustic consumers. The plaintiffs/respondents have specifically pleaded that as a result loss is being occasioned to them. In the matter of M/s Victory Transport Company Private Limited vs. The District Judge and others, AIR 1981 Allahabad 421. The Court has held thus:-- In the cases of infringement of trade marks, the right is founded on registration of the mark which per se is property. It must be borne in mind that in the case of an action on infringement of a trade mark in view of the statutory provisions, a similarity in the trade marks in per se actionable. It must be borne in mind that in the case of an action on infringement of a trade mark in view of the statutory provisions, a similarity in the trade marks in per se actionable. In passing off actions, however, the plaintiff has to prove further that his trade name has by reputation and use, come to acquire a secondary meaning indicating distinctiveness and quality of the business being carried on by him. In the instant case, the trial Court has observed that in the matter of passing off the important criteria was to see and determine the long user of the trade name by the plaintiffs/respondents and whether the defendant/appellant had in the near future started its user and it was also to be seen whether the plaintiffs/respondents had made a distinct identity for themselves, which was likely to cause a confusion in the minds of the consumers, if a similar trade mark was used by the defendant/appellant. The plaintiffs/respondents have in the present case proved to the satisfaction of the trial Court that the plaintiffs/respondents had begun their production in 1990 according to statement of PW-2 Ashok Kumar much prior to that of the defendant/appellant, who began production in August, 1997 according to statement of DW-2 Manoj Gupta's confession himself and corroborated by PW-4 Vinod Kumar and PW-4 (wrongly numbered as PW-4 again) Gulam Rasool. Moreover, the plaintiffs/respondents have categorically stated that the defendant/appellant was making use of the goodwill created in the market and passing off their goods, which is amply proved by the statement of Babulal PW-5 a bidishop owner, who has stated that the label and getup of the wrapper of defendant/appellant's tarzan bidis was similar S.R.W. to that of the plaintiffs/respondents label tiger and the villagers were confused by the same. Then on the basis of the above and considering the submissions of the counsel on the anvil of judgment passed in the matter of Century Traders Vs. Roshan Lal Duggar Co., where the Court held that for grant of interim injunction in a passing off action registration of the mark is not relevant, what is essential is that the user of the mark must be prior in time then by the impugned judgment and order, the trial Court has already held that the plaintiffs/respondents had amply proved that their production was prior in time, 1989(2) Allahabad WC 980 (985) relied on. Further on perusal of Article A and B of the monograms of the plaintiffs/respondents and the defendant/appellant although phonetically the sound of the name tiger and tarzan differ, yet the monogram after perusal of the tiger and lion and the general getup appears to be similar and the trial Court has rightly concluded that the trade mark utilised by tarzan bidis was a copy of the trade mark of the plaintiffs/respondents. The Apex Court has in the matter of Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, held thus: In order to come to the conclusion whether one mark is deceptively similar to another the broad and essential features are to be considered. It would be enough if the impugned mark bears such an overall similarity in the registered mark as would be likely to mislead a person usually dealing with one to accept the other, if offered to him. Thus all the ingredients necessary for proving passing off have been proved by the plaintiffs/respondents and hence rightly held by the trial Court that the defendant/appellant was using a deceptively similar trade mark and granted permanent injunction. There is no confusion as tried to be made out by the counsel for defendant/appellant that the trial Court had erred in treating the matter as one of infringement. All the ingredients u/s 29 of the Trade Marks Act have been proved. In view of above, I do not find any infirmity in the order passed by the trial Court. It is based on sound and cogent reasons and proper marshalling of evidence as already discussed above. With aforesaid observations, the appeal is dismissed. No order as to costs. Final Result : Dismissed