Ruston & Hornsby Ltd. Vs. The
Zamindara Engineering Co  INSC 225 (8 September 1969)
08/09/1969 RAMASWAMI, V.
CITATION: 1970 AIR 1649 1970 SCR (2) 222 1969
SCC (2) 725
Trade Marks Act, 1940, s. 21--Trade mark
deceiptively similar-Whether addition of word 'India' distinguishes.
For the infringement of its registered trade
mark "RUSTON" by the respondent's trade mark "RUSTAM", the
appellant filed a suit for permanent injunction. The respondent pleaded that
"RUSTAM" was not an infringement of "RUSTON" and stated
that the words "RUSTAM INDIA" were used. The trial court dismissed
the suit holding that there was no visual or phonetic similarity between
"RUSTON" and "RUSTAM". The High Court in appeal, held that
there was deceptive resemblance between the words "RUSTON" and
"RUSTAM", but held that the use of "RUSTAM INDIA" did not
constitute an infringement because the appellant's engines were. manufactured
in England and the respondent's in India, and the suffix 'INDIA' was sufficient
warning that the engine sold was not the engine manufactured in England.
Allowing the appeal this Court,
HELD: In an action for infringement when 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 in an action for passing off.
In other words, the test as to the likelihood
of confusion or deception arising from similarity of marks is the same both in
infringement and, passing off actions. [225 H] In the present case the High
Court found that there was deceptive resemblance between the word
"RUSTON" and the word "RUSTAM" and therefore the use of the
bare word "RUSTAM" constituted infringement of the appellant's trade
mark "RUSTON". The respondent did not prefer an appeal against the
judgment of the High Court on this point and it was, therefore, not open to him
to challenge that finding. If the respondent's trade mark was deceptively
similar to that of the appellant the fact that the word "INDIA" was
added to the respondent's trade mark was of no consequence and the appellant
was entitled to succeed in its action for infringement of its trade mark. [226
B] Millington v. Fox, 3 MV & Cr. 338 and Savillo Perfumery June Perfect
Ltd., 58 R.P.C. 147 at 161, referred to.
CIVIL APPELLATE JURISDICTION: 1966. Civil
Appeal No. 1274 of 1966.
Appeal by special leave from the judgment and
decree dated November 23, 1965 of the Allahabad High Court in First Appeal No.
208 of 1958.
K.S. Shavaksha, R.A. Shah, 1. B. Dadachanji
arid Bhuvanesh Kumari, for the appellant.
223 S.K. Mehta, K.L. Mehta and Sona Bhatiani
The Judgment of the Court was delivered by
Ramaswami, J.--This appeal is brought by special leave from'; the judgment of
the Allahabad High Court dated NOvember 23,, 1965 in First Appeal No. 208 of
The appellant is a limited liability company
incorporated under the English Companies Act with its registered office at
Lincoln, England. It carries on business in the manufacture and sale of diesel
internal combustion engines and their parts and accessories. Ruston Hornsby
(India) Ltd., a company registered in India under the Companies Act, 1956 is a
subsidiary of the appellant.
The respondent is a firm carrying on business
in the manufacture and sale of diesel internal combustion engines and their
parts. The appellant was a registered proprietor of the registered trade mark
Ruston being registration No. 5120 in Class 7 in respect of internal combustion
engines. Ruston and' Hornsby (India) Ltd., is the registered user of the said
trade mark and manufactures in India and sells in India internal combustion.
engines under the trade mark "RUSTON". Sometime in June, 1955 the
appellant came to. learn that the respondent was manufacturing- and selling
diesel internal combustion engines under the trade mark "RUSTAM". On
July 8, 1955 the appellant wrote.. through its attorneys a letter to the
respondent and called upon it to desist from using the trade mark
"RUSTAM" on its. engines as it was an infringement of the registered
trade mark "RUSTON". The defendant replied that "RUSTAM"
was not an infringement of "RUSTON" as the words "RUSTAM INDIA"
was used. On February 17, 1956 the appellant instituted a suit praying for a
permanent injunction restraining the. respondent and its agents' from
infringing the trade mark "RUSTON". On January 3, 1958 the Additional
District Judge, Meerut, dismissed the suit holding that there was no visual or
phonetic similarity between "RUSTON" and "RUSTAM". The
appellant took the matter in appeal in the Allahabad High Court. By its
judgment dated November 23, 1965 the High Court held that the use of the word
RUSTAM by the respondent constituted infringement of the appellant's trade mark
"RUSTON" and the respondent should be. prohibited from using the
trade mark "RUSTAM". But the High Court proceeded to. hold that the
use of the words "RUSTAM' INDIA" was not an infringement because the
plaintiff's engines were manufactured in England and the defendant's engines
were manufactured in India. The suffix "India" would be a sufficient
warning that the engine sold was not a "RUSTON" engine manufactured
in England and the respondent may be permitted' to use the combination
224 Section 21 of the Trade Marks Act, 1940
states "Subject to the provisions of section 22, 25 and 26 the
registration of a person in the register as proprietor . of a trade mark in
respect of any goods shall, give to .that person the exclusive right to. the
use of the Trade mark in relation to those goods and, without prejudice to the
generality of the ,foregoing provision, that right shall be deemed to be
infringed' by any person who, not being the 'proprietor of the trade mark or a
registered user thereof using by way of the permitted use, uses a mark
identical with it or so nearly resembling it as to be likely to deceive or
cause confusion, in the course of trade, in relation to any goods in respect of
which it is registered, and in such manner as to render the use of the mark
likely to be taken either-- (a) as being used as a trade mark; or (b) to import
a reference to some person having the right either as a proprietor or as
registered user to use the trade mark or to goods with which such a person as
aforesaid is connected in the course of trade." The distinction between an
infringement action and a passing off action is important. Apart from the
question as to. the nature of trade mark the issue in an infringement ,action
is quite different from the issue in a passing off action. In a passing off
action the issue is as follows: .
"Is the defendant selling goods so
marked as to be designed or calculated to lead purchasers to believe that they
are the plantiff's goods ?" But in an infringement action the issue is as
"Is the defendant using a mark which is
the same as or which is a colourable imitation of the plaintiff's registered
trade mark ?" It very often happens that although the defendant is not
using the trade mark of the plaintiff, the get up of the defendant's goods may
be so much like the plaintiff's that a clear case of passing off would be
proved. It is on the contrary conceivable that although the defendant may be
using the plaintiff's mark the get up of the defendant's goods may be so
different from the get up. of the plaintiff's goods and the prices also may be
so different that there "would be no probability of deception of the
public. Nevertheless, in an action on the trade mark, that is to say, in an
infringement 225 action, an injunction would issue as soon as it is proved that
the: defendant is improperly using the plaintiff's mark.
The action for infringement is a statutory
right. It is dependent upon the validity of the registration and subject to.
other restrictions laid down in ss. 30, 34 and 35 of the Act. On the other hand
the gist of a passing off action iS that A is not entitled to represent his
goods as the goods of B but it is not necessary for B to prove that A did this
knowingly or with any intent to deceive. It is enough that the get-up of B's
goods has become distinctive of them and that there is. a probability of
confusion between them and the goods of A. No. case of actual deception nor any
actual damage need be proved.
At' common law the action was not
maintainable unless there had been fraud on As part. In equity, however, Lord
Cottenham L.C. in Millington v. Fox(1) held that it was immaterial whether the
defendant had. been fraudulent or not in using the plaintiff's trade mark and
granted an injunction accordingly. The common law courts, however, adhered to
their view that fraud was necessary until the Judicature Acts, by fusing law
and equity, gave the equitable rule the victory over the common law rule.
The two actions, however, are closely similar
in some respects, As was observed by the Master of the Rolls in Saville
Perfumery Ltd. v. June Perfect Ltd.(2).
"The Statute- law relating to
infringement of trademarks is. based on the same fundamental idea as the law
relating to passing-off. But it differs from that law in two particulars,
namely (I ) it is concerned' only with one method of passing-off, namely, the
use of a trade mark, and (2) the statutory protection is absolute in the sense
that once a mark is shown to offend, the user of it cannot escape by showing
that by something outside the actual mark itself he has distinguished his goods
from those of the registered proprietor. Accordingly, in considering the question
of infringement the Courts have held, and it is now expressly provided by the
Trade Marks Act, 1938, section 4, that infringement takes place not merely by
exact imitation but by the use of a mark so nearly resembling the registered
mark as to be likely to deceive." 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 (1)
3 My & Cr. 338. (2) 58 R.P.C. l47 at 161.
226 not the exact mark on the Register, but
something similar to. it, the test of infringement is the same as in an action
for passing off in other words, the test as to likelihood of confusion or
deception arising from similarity of .marks is the same both in infringement
and passing off actions.
In the present case the High Court has found
that there is a deceptive resemblance between the word "RUSTON" and
the 'word "RUSTAM" and therefore the use of the bare word
',RUSTAM" constituted infringement of the plaintiff's trade mark
"RUSTON". The respondent has not brought an appeal against the
judgment of the High Court on this point and it is, therefore, not open to. him
to challenge that finding.
If the respondent's trade mark is deceptively
that of the appellant the fact that the word
'INDIA' is added to the respondent's trade mark is of no consequence and the
appellant is entitled to succeed in its action for infringement of its trade
We are accordingly of the opinion that this
appeal should be allowed and the appellant should be granted a decree
restraining the respondents by a permanent injunction from infringing the
plaintiff's trade mark "RUSTON" and from using it in connection with
the engines machinery and accessories manufactured and sold by it under the
trade mark of "RUSTAM INDIA". The appellant is also entitled to an
injunction restraining the respondent and its agents from selling or
advertising for sale of engines, machinery or accessories under the-name of
"RUSTAM" or "'RUSTAM INDIA". The appellant 'is also.
granted a decree for nominal damages to the extent of Rs. 100/-. The appellant
is further entitled to an order calling 'upon the respondent to deliver the appellant
price-lists, bills, invoices and other advertising material bearing the mark
"'RUSTAM" or "RUSTAM INDIA". "The appeal is allowed
with costs to the above extent.
Y.P. Appeal allowed.