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2011 DIGILAW 907 (KER)

Sakthi Ceramics v. Supreme Ceramics

2011-08-17

P.BHAVADASAN

body2011
Judgment :- 1. Defendants 1,3,4 and 6 in O.S.No.1/01 before the District Court, Trissur, are the appellants. The suit was one based on passing off action. The parties and facts are hereinafter referred to as they are available before the Trial Court. 2. According to the plaintiffs, the first plaintiff firm is engaged in the manufacture of flooring tiles, decorative tiles, pottery items etc. since 24.2.1992. They sell their products under the brand name “Kathakali” and Kathakali emblem is engrossed on their products. According to the plaintiffs, they have considerable reputation in the market and a goodwill among the customers. They claim that they alone are entitled to use the brand name “Kathakali” with the emblem engrossed on the product. The allegation in the plaint is that the plaintiff’s came to know that the defendants are also using the same trade name and mark and selling the same products as the first plaintiff firm does. According to the plaintiffs the brand name and the mark adopted by the defendants are deceptively similar to the brand name and emblem used by the plaintiffs. The plaintiffs say that they have applied for registration of the trademark and the application is pending. The differences if at all between the brand name and the emblem of the defendants and the plaintiffs are negligible. The plaintiffs would allege that the product manufactured by the defendants is of an inferior quality and the brand name and emblem of the plaintiffs’ firm has been adopted by the defendants to sell their goods as if they are the products of the plaintiffs. The plaintiffs have suffered loss to the tune of `25,000/-. On the basis of these contentions, the suit was laid for injunction. 3. The defendants resisted the suit. They disputed the claim of the plaintiffs that they are manufacturing products under the brand name “Kathakali” from 1992 onwards. Almost all the allegations in the plaint were specifically disputed. Added to this, they also contended that “Kathakali” is not capable of being adopted as a brand name and the plaintiffs cannot have exclusive use of the said word. They also contended that the products of the defendants and plaintiffs are easily distinguishable and the brand name and emblem do not cause any confusion in the minds of the customers. Added to this, they also contended that “Kathakali” is not capable of being adopted as a brand name and the plaintiffs cannot have exclusive use of the said word. They also contended that the products of the defendants and plaintiffs are easily distinguishable and the brand name and emblem do not cause any confusion in the minds of the customers. They also pointed out that their products are of a different quality and in the nature of the business, normally, the purchases are made by contractors or masons, who have knowledge about the product and therefore, there cannot be any confusion regarding the product that is being sold. They also claim that their products are of high quality and are in considerable demand. According to them, they have not done any act which would cause any injury to the plaintiffs and that the plaintiffs are not entitled to any reliefs. 4. On the above pleadings, issues were raised by the trial court. The evidence consists of the testimony of PWs 1 to 4 and Exts.A1 to A17 from the side of the plaintiffs. The defendants had DWs 1 and 2 examined and Exts.B1 to B14 marked. Ext.C1 is the Commissioners report. MO1 to 11 are the material objects marked in the case. 5. On an analysis of the evidence in the case, the trial court came to the conclusion that the brand name and the emblem adopted by the defendants is deceptively similar to the one that is used by the plaintiffs and the plaintiffs being the prior user in point of time, are entitled to the reliefs sought for in the plaint. Accordingly, the suit was decreed. The said judgment and decree are assailed in this appeal. 6. The only question that arises for consideration in this appeal is whether the finding of the court below that the defendants are guilty of passing off is justified or not. 7. The learned counsel for the appellants pointed out that the court below has not adverted to the necessary ingredients to constitute the mischief of passing off. Apart from the said fact, the word “Kathakali” could not be adopted as a brand name. The learned counsel went on to point out that there is absolutely no evidence to show that the plaintiffs’ firm have reputation and goodwill that could have been affected by the action of the defendants. Apart from the said fact, the word “Kathakali” could not be adopted as a brand name. The learned counsel went on to point out that there is absolutely no evidence to show that the plaintiffs’ firm have reputation and goodwill that could have been affected by the action of the defendants. There is also no proof of any damages having been caused to the plaintiffs even assuming that there is deceptive similarity between the brand name and emblem of the plaintiffs and the defendants. According to the learned counsel, the mere fact of infringement of trademark itself is sufficient to grant reliefs to the plaintiffs. In the case of passing off, they have necessarily to show that there are (1) deceptive similarity, (2) that the plaintiffs enjoyed good reputation and goodwill and (3) that they have suffered damages. The trial court has only considered whether the brand name and emblem adopted by the defendants is deceptively similar and having found so, decreed the suit. 8. According to the learned counsel, that is not sufficient. There should have been further proof of goodwill and reputation enjoyed by the plaintiffs so also the damages suffered by them. In support of his contentions, he relied on the decision reported in Mahavir Rice and Pulse Mills v. Jaikrishnan Trading Company (2009 (4) KLT 593). Reliance was also placed on the decisions in Durga Dutt Sharma v. N.P. Laboratories (AIR 1965 SC 980), S.M. Dyechem Ltd. v. Cadbury India Ltd. (IR 2000 SC 2114), Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 (3) KLT SN 3 (C.No.4) SC=AIR 2001 SC 1952) and Indo Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceuticals Ltd. (AIR 1998 Mad. 347). It was therefore, contended that the judgment and decree of the lower court are clearly unsustainable in law. 9. The learned counsel for the respondents, on the other hand, contended that the court below has, after considering the law on the point and the precedents, come to the conclusion that there is deceptive similarity between the brand name and emblem of the plaintiffs and the defendants and that the plaintiffs were prior user in point of time and were entitled to reliefs. The learned counsel drew attention of this court to the fact that it is normal practice of the defendants to adopt such brand name and emblem which is popular and has good reputation in the market at the relevant time and try to pass off their goods under that brand name and emblem. According to the learned counsel, once it is found that there is deceptive similarity in the emblem and name adopted by the defendants, thereby constituting passing off, the rest follow. It is not necessary, according to the learned counsel, to prove that actual damage has been caused. The question as to whether damage has been caused, depends upon the facts of each case and it could be damages that is likely to be caused in future also. The learned counsel went on to point out that the evidence of PWs 1 to 4 would clearly show that the plaintiffs’ firm has been producing goods from 1992 onwards and have goodwill and reputation in the market. The evidence adduced by these witnesses are sufficient to show that considerable confusion and deception is caused by the defendants’ adopting the same brand name and emblem for their products as that of the plaintiffs. According to the learned counsel, even assuming there is no strict proof of damages, it can be easily presumed that due to the deceitful act on the part of the defendants, damage has been caused to the plaintiffs. In support of the said contention, the learned counsel for the respondents relied on the decision reported in Preme v. Ambujakshan (2006 (1) KLT 905), Heinz Italia v. Dabur India Ltd. ((2007) 6 SCC 1) and T.V. Venugopal v. Ushodaya Enterprises Ltd. ((2011) 4 SCC 85). The learned counsel drew attention of this court to the fact that the plaintiffs have produced their statement of accounts for various years to show that the act of the defendants has caused considerable damage to them. It is pointed out that no grounds are made out to interfere with the judgment and decree of the court below and the appeal is only to be dismissed. 10. It is not in dispute that both the plaintiffs’ and the defendants’ concerns produce flooring tiles, decorative tiles, pottery items etc. The defendants have a case that their products are of a different nature and are of a superior quality. 10. It is not in dispute that both the plaintiffs’ and the defendants’ concerns produce flooring tiles, decorative tiles, pottery items etc. The defendants have a case that their products are of a different nature and are of a superior quality. The plaintiffs also make tall claims about their products. The lower court considered the grievance of passing of in paras. 16, 17 and 18 of its judgment. In para.19, it comes to the conclusion that the brand name and emblem used by the defendants is deceptively similar to that of the plaintiffs. It is observed in para.19 of the lower court judgment as follows: “The most important contention of the defendants was that the brand name and the emblem used by the defendants is totally different and distinct from the mark used by the plaintiffs. According to DW1, the name, address and the details of the company are prominently displayed on the face of MO2. It is further started that the product is a de-aired one. The emblem is provided in a circle in M.O.2, the ribs are wide, their numbers are few, the writing style is different and the size of the letters are also different. It was contended that from the above circumstance, MO1 is distinct and different from MO2 and no customer is likely to be deceived. It has to be noted that in all the M.Os. produced before the court, the name of the company and the addresses of the plaintiffs and the defendants are shown in detail to their respective tiles. Both the tiles have got ribe, even though the width and the number of ribe differ in each. The emblem is placed on the middle of both M.O.1 and M.O.2 and all the writings are in between the ribe in both M.Os. 1 and 2. The emblem of Kathakali is also engrossed towards middle. Even though, in M.O.2, it is within a square, in M.O.2 it is within a circle. However, both the emblems have got an inner circle which are common in both. Both the tiles admittedly have got uniform size and it is almost of the same colour. It is admitted by both sides that floor tiles have got a standard size, thickness and a common colour. It is pertinent to note that the differences between these two MOs. Viz. Both the tiles admittedly have got uniform size and it is almost of the same colour. It is admitted by both sides that floor tiles have got a standard size, thickness and a common colour. It is pertinent to note that the differences between these two MOs. Viz. M.O.1 and M.O.2 can be clearly understood only when both of them are kept side by side and viewed. Even DW2 who had been dealing with the products of the defendants could identify both the tiles only with reference to the brand emblem engrossed on it. Further, it has come out in evidence that normally one dealer will set only one brand tile in a given area.” 11. The main contention raised by the learned counsel for the appellants is that in order to constitute the mischief of passing off, it is not sufficient to establish that there is deceptive similarity. The plaintiffs have to establish that they have goodwill and reputation for their products and also that as a consequence of the deceptive act, they had suffered damage. 12. It will be first useful to understand the law regarding passing off. The action of passing off is based on the principle that a person may not sell his products under the pretext that they are the goods of another man. It is a limb of intellectual propriety which protects the owners and creators of work of the intellectual creativity. While infringement of trademark is a statutory remedy, passing off is a common law remedy. For the statutory remedy, the trademark has to be a registered one. Passing off is not considered as a proprietary right. That is the remedy available against the deceitful action of another person. The gist of the concept of passing off is that the goods are in effect telling falsehood about themselves. They are saying something about themselves which is calculated to mislead. The law seeks to protect the traders against such a form of unfair competition which involves making of false or misleading representations utilizing the reputation earned by somebody else. The law seeks to protect the intrusion of a rival upon the goodwill and reputation earned by another person in a business or in rendering services. It may take several decades for a person to acquire reputation and goodwill. The law seeks to protect the intrusion of a rival upon the goodwill and reputation earned by another person in a business or in rendering services. It may take several decades for a person to acquire reputation and goodwill. The true basis of action for passing off is that it seeks to protect the goodwill earned by a person over a period. 13. No man has a right to put his goods for sale, representing them as the goods of arrival trader. He, therefore, is precluded from using a trademark, names or letters which may induce the clients and consumers to believe that the goods which he is selling are actually the products of someone else. 14. In Halsbury’s Law of England IVth Edition Volume 48 at page 185 Note No.297, the elements of passing off action are enumerated as follows: “Elements of the action for passing off: The necessary elements of the action for passing off have been restated by the House of Lords as being three in number: (1) that the claimant’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature; (2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and (3) that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation. The restatement of the elements of passing off in the form of this classical trinity has been preferred as providing greater assistance in analysis and decision that the formulation of the elements of the action previously expressed by the House. This latest statement like the House’s previous statement, should not, however, be treated as akin to a statutory definition or as if the words used by the House constitute an exhaustive, literal definition of passing off and in particular, should not be used to exclude from the ambit of the tort recognised forms of the action for passing off which were not under consideration on the facts before the House.” The very same ingredients are seen mentioned in the Halsbury’s Laws of India Vol. 20 (1) at Note 185.1358. 20 (1) at Note 185.1358. The characteristics of a passing-off action are made mention of at Note 185.1357 in the Halsbury’s Laws of India Vol.20(1), which read as follows: “An action for passing-off is a common law remedy being an action in substance of deceit under the law of tort. The following five characteristics which must be present in order to create a valid cause of action for passing off are: (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate customers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader in the sense that there 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.” 15. As far as a customer is concerned, it is the quality of the product that he looks for. Therefore, the source of goods or origin of goods might have a significant role to pay. A customer links the goods and services to a range of personal expectations. The modern economy promotes the word “wide range and variety of goods and services.” It may not be possible in all cases to take efforts to gather appropriate information about the product. Under such circumstances, the brand name, trademark etc. may assume importance. 16. In the decision reported in Mahavir Rice and Pulse Mills v. Jaikrishnan Trading Company (2009 (4) KLT 593), the question as to what are the essential ingredients to be established in an action for passing off was considered and it was held as follows: “12. We may first consider as to what is meant by “passing off”. It means, as Lord Halsbury put in, ‘nobody has any right to represent his goods as the goods of somebody else’. The law protects through a passing off action the goodwill between a trader and its customers, which to them are help to sustain. In normal case of passing off, the plaintiff has to prove a reputation sufficient for members of the public to be misled by the defendant’s conduct into thinking that they are securing the goods or services of the plaintiff. In normal case of passing off, the plaintiff has to prove a reputation sufficient for members of the public to be misled by the defendant’s conduct into thinking that they are securing the goods or services of the plaintiff. It may not be enough for the public simply to be confused about whether it is getting the plaintiff’s or the defendant’s goods. The plaintiff will have to demonstrate the volume of sales and to supplement this by evidence from traders and public of the meaning that they attach to the distinguishing features of the plaintiffs’ goods. The plaintiff must have some badge of recognition upon which to found his reputation. It is the plaintiffs reputation as a source of goods or services that is in issue. The starting point for deciding whether there has been a misrepresentation amounting to passing off is the understanding that the plaintiff has built up with the public. In the decision reported in Laxmikant Patel v. Chetanbhai Shah (2002 (Vol.110) Com. Cases 518) it was held that the three elements of passing off action are the reputation of goods, the possibility of deception and the likelihood of damage to the plaintiff. It is also held that the same principle which apply to trade marks apply to trade names also. In the decision reported in Heiz Italia v. Dabur India Ltd. ((2007) 6 SCC 1), it was held that in an action for passing off, the plaintiff has to establish prior user to secure relief. There are five elements to be proved. They are i) misrepresentation, ii) made by a trader in the course of a trade, iii) prospective customers of his or ultimate consumers of goods or services supplied by him, iv) which is calculated to injure the business or goodwill of another trade in the sense that this is a reasonably foreseeable consequence, v) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia time action) will probably do so.” 17. As to what constitutes deceptive similarity, was considered in the decision reported in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd (2001 (3) KLT SN 3 (C.No.4) SC=AIR 2001 SC 1952) wherein it was observed as follows: “Broadly stated, in an action for passing off, on the basis of unregistered trade mark generally for deciding the question of deceptive similarity, the following factors to be considered: a) The nature of the marks, i.e., whether the marks are word marks or label marks or composite marks i.e., Both words and label works. b) The degree of resemblance between the marks, phonetically similar and hence similar in idea. c) The nature of the goods in respect of which they are used as trade marks. d) The similarity in the nature, character and performance of the goods of the rival traders. e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. f) The mode of purchasing the goods or placing the orders for the goods, and g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Weightageto be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.” 18. In the decision reported in Heinz Italia v. Dabur India Limited ((2007) 6 SCC 1), it was held as follows: “In an action for passing off, the plaintiff has to establish prior user to secure an injunction and the registration of the mark or similar mark in point of time is irrelevant. Modem tort of passing off has five elements i.e. (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 trade (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 time action) will probably do so.” 19. In Preme v. Ambujakshan (2006 (1) KLT 905), it is held as follows: “The principle of passing off action is that a person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time, such business or services associated with a person acquire a reputation or good will which becomes property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that names results in injury to the business of one who has the property in that name. the law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belong to someone else are his or are associated with it. It does not matter whether the latter person does so fraudulently or otherwise. Honesty and fair play are, and ought to be the basic policies in the world of business. When a person adopts or intends to adopt a name in connection with his business or services, which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. Plaintiff in a passing off action has to establish misrepresentation by the defendant to the public. It does not mean that plaintiff has to prove any mala fide intention on the part of the defendant. What has to be established is the likelihood of confusion in the minds of the public. In assessing the likelihood of such confusion courts must approach it from the point of average intelligence and imperfect recollection of an ordinary person.” In Durga Dutt Sharma v. N.P. Laboratories (AIR 1965 SC 980), it was held as follows: “28. The other ground of objection that the findings are inconsistent really proceeds on en 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. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under S.21 in respect of a registered, trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get up together with the circumstance that the name and address of the manufacturer of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent’s claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit. That is, a passing off by a person of his 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 mark in relation to those goods” (vide S.21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action, for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiffs and the defendant’s mark is so close either visually, 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 rights 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.” In the decision in M/s. S.M. Dyechem Ltd. v. M/s. Cadbury (India) Ltd. (AIR 2000 SC 2114), the difference between infringement and passing off was considered and it was held as follows: “Here, the point is in relation to relative strength of the parties on the question of passing off. As discussed under Point 5, the proof of resemblance or similarity in cases of passing off action additions get up or trade dress might be relevant to enable the defendant to escape. In infringement cases, such facts do not assume relevance. (See Durga Dutt Sharma v. Navaratna Pharmaceutical laboratories Ltd. (AIR 1965 SC 980); Ruston and Homsby Ltd. v. Zamindara Engineering Co., (AIR 1970 SC 1649) and Wander Ltd. v. Anotox India Pvt. Ltd. (1990 Suppl. SCC 727). 48. It is possible that on the same facts, a suit for passing off may fail but a suit for infringement may succeed because the additions, the get up and trade dress may enable a defendant to escape in a passing off action. A somewhat similar but interesting situation arose in a dispute between the two companies. In N.S.Thread Co. v. James Chadwick & Bros., (AIR 1948 Mad. 481), the passing off action failed. But, thereafter, James Chadwick Co. A somewhat similar but interesting situation arose in a dispute between the two companies. In N.S.Thread Co. v. James Chadwick & Bros., (AIR 1948 Mad. 481), the passing off action failed. But, thereafter, James Chadwick Co. succeeded in an appeal arising out of the registration proceedings and the said judgment was confirmed by this court in N.S.Thread Co.Ltd. v. James Chadwick & Bros. Ltd. (AIR 1953 SC 357). It was held that the judgment in the passing off case could not be relied upon by the opposite side in latter registration proceedings. 49. In the same tone, Halsbury (Trade Marks) 4th Ed. 1984 Vol.48 para 187) says that in a passing off action, the degree of similarity of the name, mark or other features concerned is important but not necessarily decisive, so that an action for infringement of a registered trade mark may succeed on the same facts where a passing off action fails or vice versa”. As to vice versa, Kerly says (para 16.12) an infringement action may fail where plaintiff cannot prove registration or that its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show that by imitating mark or otherwise, the defendant has done what is calculated to pass off his goods as those of plaintiff. 50. In Schweppes Ltd. v. Gibbens ((1905) 22 RPC 601) (HL), Lord Halsbury said, while dealing with a passing off action, that “the whole question in these cases is whether the thing-taken in its entirety, looking at the whole thing,-is such that in the ordinary course of things a person with reasonable comprehension and with proper insight would be deceived.” 20. Having thus understood the principles that are to be applied to ascertain whether the grievance of passing off action has been made out, an endeavour shall now be made to ascertain whether the evidence in the present case satisfy the requirements. 21. As already noticed, the complaint of the plaintiffs is that the defendants have adopted the trademark and trade name of the plaintiffs for their goods. At the risk of repetition, one may notice that it is not sufficient to prove deceptive similarity alone. 21. As already noticed, the complaint of the plaintiffs is that the defendants have adopted the trademark and trade name of the plaintiffs for their goods. At the risk of repetition, one may notice that it is not sufficient to prove deceptive similarity alone. It has to be established that the plaintiffs enjoyed reputation and goodwill among the customers and also that as a consequence of the act committed by the defendants, loss has been suffered or is likely to be suffered by the defendants. 22. PW1 is the Managing Partner of the plaintiffs firm. According to him, the firm manufacturers clay products like flooring tiles, decorative tiles, pottery items etc. they have been in the mark from 1992 onwards. Their brand name is “Kathakali” and their trademark is “Kathakali” face engrossed on the product. A sample of their product is marked as MO1. He would say that they have applied for registration of the trademark. According to him, their products enjoy reputation and goodwill in the market and the customers buy the products on the basis of the brand name. his complaint is that the defendants’ firm use the brand name of the plaintiffs for marketing the very same type of products, instead of using the word “Kathakali”, the defendants have spelt the word as “Kadhakali”. This insignificant difference is insufficient to warn the customers. MO2 is the product that is being marketed by the defendants’ firm. According to PW1, the defendants have been in the market only from 2000 onwards. The deceitful activity of the defendants, according to PW1, has affected the market of their products and eats into their profit that could be earned by the plaintiffs. He says that it is the usual practice of the defendants to adopt such brand names and trade mark of those concerns which are able to earn reputation and goodwill at the relevant time, to sell their products. The defendants have no permanent brand name or trade mark. He also says about the bill books he has produced relating to the years 1993 to 1996 and the audited accounts of the firm. His cross examination was mainly directed regarding the dissimilarities in the get-up of the two products. He admitted that the products of both the concern are sold in lots. However, he denied the suggestion that it was through the contractors that the purchases are always made. His cross examination was mainly directed regarding the dissimilarities in the get-up of the two products. He admitted that the products of both the concern are sold in lots. However, he denied the suggestion that it was through the contractors that the purchases are always made. He stated that mostly, the people are guided by the advice of masons. 23. PW2 is the Commissioner, who has visited the places and his evidence is not of much relevance. 24. PW3 is a person engaged in transport business. According to him, tile manufacturers often use his services for transporting their materials. He transports the products as per the orders received by him. He gets orders on the basis of brand name. he too supports PW1 regarding the deceitful method adopted by the defendants’ firm for marketing their products. He, however says that he transports the products of both the concerns. His opinion is that more importance is for the trade mark rather than the product itself. In cross examination, he says that when persons with requirement of the products approach him, he gets the products from the company. 25. PW4 is a dealer in tiles stationed at Thiruchirappailly. He says about the products of the plaintiffs. He identifies the tiles manufactured by the plaintiffs. According to him, by the activity of the defendants, customers are confused and they are deceived. He says that MO2 is the product of the defendants’ firm. His opinion is that MO4 is of poor quality. In his cross examination, he deposes that people purchase the tiles manufactured by the plaintiffs’ concern usually when they put up a new house. He would say that usually, the purchases are made with the help and advice of Engineers, Masons and contractors. He says that occasionally, individual customers also turn up to purchase tiles. He also says that normally, the contractor or engineer or mason gives the necessary advice and the purchase is made on that basis. He denies the suggestion that the product of the defendants is of a superior quality. 26. The lower court has considered the deceptive similarity concept in considerable detail. It has considered the law on the point and also the relevant decisions. Ultimately, it comes to the conclusion that the act committed by the defendants constitutes deceptive similarity. 27. This court also had a look at the two products. 26. The lower court has considered the deceptive similarity concept in considerable detail. It has considered the law on the point and also the relevant decisions. Ultimately, it comes to the conclusion that the act committed by the defendants constitutes deceptive similarity. 27. This court also had a look at the two products. The test to be adopted is whether a man of a verage intelligence with imperfect recollection is likely to be deceived. It has to be seen whether the colourable imitation is likely to deceive prospective customers. 28. Even assuming that the defendants are guilty of adopting a brand name and trade mark deceptively similar to that of the plaintiffs, the question is whether that by itself is sufficient. The evidence of PW4 indicates that on most of the occasions, the purchase is made with the aid of engineers, contractors or masons or at any rate, under their advice. The defendants have a case that their products are of a different quality and are superior in nature. They also have a case that a product is bought on the basis of its quality and not by the brand name. It is in the above context that one has to consider whether the act of the court below in stopping at a conclusion that there is deceptive similarity between the brand name and trade mark of the plaintiffs and defendants, is justified. It has already been noticed that in an action for passing of, it is necessary to establish that the person complaining of passing off enjoys goodwill and reputation attached to the goods or services as the case may be and he should also demonstrate that he suffered damage or that he is likely to suffer damage by the reason of erroneous belief caused by the act committed by the defendants. 29. The lower appellate court does not appear to have gone into the latter two aspects at all. Except for the interested testimony of PW1, evidence in regard to goodwill and reputation seems to be wanting. 30. The essential foundation of an action for passing off is the protection of the goodwill and the likelihood of the misrepresentation affecting the goodwill or reputation. It is, therefore, necessary for the plaintiffs to establish commercial reputation distinctly attached to their goods. 30. The essential foundation of an action for passing off is the protection of the goodwill and the likelihood of the misrepresentation affecting the goodwill or reputation. It is, therefore, necessary for the plaintiffs to establish commercial reputation distinctly attached to their goods. What is necessary is that it should be shown that reputation is attached to the trade mark and that it must appear that the products of the plaintiffs are associated with the trade mark. The acquisition of goodwill or reputation is always a question of fact. The test to be applied is whether the name and badge has become distinct. If it is established that it has become so, then that would be sufficient. 31. In fact, the starting point in an action for passing off is the establishing of goodwill or reputation. It is thereafter, one proceeds to consider the deceptive similarity concept. It may be recollected and reiterated here that in fact, passing of action is a remedy for the protection of the goodwill and reputation enjoyed by the manufacturer or provider of goods or services as the case may be. Although goodwill usually runs hand in hand with reputation, they are not identical concepts. 32. Apart from the above fact, fit is also necessary to show that by the act of the defendants either the plaintiffs have suffered damages or are likely to suffer damages. Under certain circumstances, loss or damage may be inferred or implied. However, that does not relieve the plaintiffs from establishing the said fact. It is not sufficient for him to merely sow the accounts and then rest, pointing out that there is deceptive similarity. If one recalls the evidence of PW4, who is a dealer of the products manufactured by the plaintiffs, there is nothing in his evidence to show that the there has been decrease in the volume of sale of the products of the plaintiffs’ firm. There is no finding also of the court below in that regard. There is nothing in his evidence to show that due to the deceitful action of the defendants, the goodwill and the reputation of the plaintiffs’ concern has been affected. It is true that PW1 has stated that he has received complaints about the misrepresentation made by the plaintiffs. But, they have not produced any of those complaints. There is nothing in his evidence to show that due to the deceitful action of the defendants, the goodwill and the reputation of the plaintiffs’ concern has been affected. It is true that PW1 has stated that he has received complaints about the misrepresentation made by the plaintiffs. But, they have not produced any of those complaints. There is nothing to show that they have complained to any authority also. There can be no dispute that the burden is on the plaintiffs to prove that the concern has a reputation. There should be evidence to that effect and there should be a finding in that regard by the court concerned in order to constitute an action for passing off. The determination of goodwill and reputation is a question of fact. Normally, the test applied is to see if the plaintiff has established a position among the people who are concerned, will buy the particular goods which are distinct of the plaintiffs’ goods. There must be some evidence to show the reputation and goodwill earned by the plaintiffs. 33. It is necessary for the plaintiff to show that due to the deceptive method adopted by the defendants, their business has been affected and also that due to the clandestine activities of the defendants, the reputation and goodwill of the business of the plaintiffs has been affected. It is not to be forgotten that while considering the above facts, one should also remember that the plaintiffs have no control over the activity of the defendants. 34. Various factors will have to be considered while attempting to ascertain if damages have been caused to the claimants’ business. It may be with regard to the actual business or may be with reference to a potential of expansion. There appears to be no straight jacket formality in such matters. It undergoes changes with the changing circumstances. 35. It is true that the plaintiffs and the defendants are in the common field of activity. But the defendants have a case that their products are of a different quality and nature and that there is no likelihood of deception. There appears to be no straight jacket formality in such matters. It undergoes changes with the changing circumstances. 35. It is true that the plaintiffs and the defendants are in the common field of activity. But the defendants have a case that their products are of a different quality and nature and that there is no likelihood of deception. It has to be established that the confusion caused must lead the public to believe that the goods or services offered by the defendants are the goods and services of the plaintiffs and by reason of that erroneous belief in the public, it is likely to cause damage to the goodwill and reputation of the plaintiffs’ business. The mere distinctness by itself may not be sufficient. 36. Factors like (1) nature of the mark (2) degree of resemblance of mark (3) nature and mode of purchase etc. (4) quality of goods (5) reputation and goodwill enjoyed by the plaintiffs are all factors to be taken into consideration while considering a complaint of passing off. 37. Coming back to the facts of the case, the trial court has stopped at confirming that there is deceptive similarity. It has not considered whether the plaintiffs concern has earned goodwill and reputation and whether actual damage has been caused or is likely to be caused by the activity of the defendants. Therefore, the two essential limbs to constitute an action for passing off have not been considered by the lower appellate court. So, it is felt in the facts and circumstances of the case that a reconsideration at the hands of the lower court is necessary in this regard. In the result, this appeal is allowed and the cross objection are allowed. The impugned judgment and decree are set aside and the matter is remanded to the trial court for fresh consideration in accordance with law and in the light of what has been stated above. The parties shall appear before the trial court on 06.09.2011. They will be at liberty to adduce further evidence if they so choose. The Trial Court may make every endeavour to dispose of the matter as expeditiously as possible, at any rate, within six months from the date of appearance of parties before the said court. There will be no order as to costs in this appeal. They will be at liberty to adduce further evidence if they so choose. The Trial Court may make every endeavour to dispose of the matter as expeditiously as possible, at any rate, within six months from the date of appearance of parties before the said court. There will be no order as to costs in this appeal. ORDER Dated this the 1st day of September 2011 (Corrected as per Order dated 1.9.2011 which is appended herewith) ORDER This appeal was disposed of by this court by Judgment dated 17th August 2011, allowing the appeal. There was a cross objection filed by the plaintiffs in the suit and it was posted along with the appeal. In the light of the fact that the appeal was allowed and the matter was remanded to the court below, the cross objection could have only been dismissed. However, erroneously, it was observed that the cross objection is allowed. Accordingly, the first sentence in the operative portion of the judgment will be corrected to read as “In the result, this appeal is allowed and the cross objection is dismissed.” It is made clear that the grievance of the respondents in this appeal i.e., the plaintiffs in the suit shall also be considered by the court below while taking a decision as directed by this court by judgment dated 17.08.2011. The date of appearance of parties before the trial court is re-fixed as 20.09.2011. The office will recall the copies of judgment already issued to parties, carry out the correction as noted above and issue fresh copies of the judgment to them.