Holding

The appellant’s label is deceptively similar to the plaintiff’s earlier registered trade mark, and the appellant’s claim of prior use is untenable, so the appeal is dismissed.

Summary

The respondent owned the registered trade mark “Khargosh Chhap” (Reg. No. 112689) for bidis, registered in 1945. The appellant sold bidis under the label “Goat Cub”, which the respondent alleged was deceptively similar and amounted to passing off. The trial court dismissed the suit, but the High Court Single Judge and later a Division Bench held that the appellant’s label was identical in design, layout and colour scheme to the plaintiff’s mark and that the plaintiff’s mark pre‑dated any use by the appellant. The appellant’s claim of prior use from 1936 was disproved by his own affidavits showing use only from 1952. The Supreme Court found no error in the High Court findings and dismissed the appeal with costs.

Issues considered

Whether the appellant’s use of the label “Goat Cub” infringes the plaintiff’s earlier registered trade mark “Khargosh Chhap” under the Trade Marks Act, 1940.
Whether the appellant can establish prior use of the “Goat Cub” mark to defeat the plaintiff’s claim of infringement.
Whether the lower courts erred in finding deceptive similarity and granting injunction and damages.

Legislation cited

Trade Marks Act, 1940

Subjects

trade mark infringementpassing offdeceptive similarityinjunctiondamagesprior useletters patent appeal

Judgment

i. MANMOHAN GARG A
v.
MIS RADHA KRISHNA NARAYAN DAS
THROUGH ITS PARTNERS

FEBRUARY 19, 1998
B
:r [DR. A.S. ANAND, B.N. KIRPAL ANDS. RAJENDRA BABU, JJ.]

Trade and Merchandise Marks Act, I 940 :

Trade Mark-Violation of-Suit for if!iunction and damages against- c
Suit filed by respondent against appellant-Allegations that the appellant
was using a deceptively similar labels and passing off the Bidis manufactured
by him as the Bidis manufactured by the respondent-Suit dismissed by Trial
Court-Decreed by first Appellate Court-Order of appellate Court upheld
'. by single Judge as well as Division Bench of the High Court-Finding that
appellant's labels used on the Bidis manufactured and sold by him were D
deceptively similar and identical to the respondent's labels on the Bidis-
Respondent's trade mark registered prior to that of appellant-Held single
Judge as well Division Bench committed no error-Their judgments suffer
from no flaw.
E
CIVIL APPELATE JURISDICTION: Civil Appeal No.14200 of
1996.

From the Judgment and order dated 20.12.95 of the Madhya Pradesh
High Court in LP.A. No. 5 of 1991.
F
Yogeshwer Prasad and Mrs. Rachna Gupta for the Appellants.

Shiv Sagar Tiwari for the Respondent.

The following Order of the Court was delivered :

The respondent filed a Civil Suit in the Court of the District Judge, G
~ Bhopal seeking relief of permanent injunction and damages on the allegations
that the appellant/defendant was using a deceptively similar label and passing
off the Bidis manufactured by him as the Bidis manufactured by the plaintiff.
The plaintiff claimed damages besides permanent injunction and an order to
restrain the defendant/appellant to sell the Bidis with the label Khargosh H
1027
1028 SUPREME COURT REPORTS [1998] 1 S.C.R.

A Chhap. A decree for accounts was also prayed for. The trial court dismissed
the suit on 16th March, 1981. The first appeal filed by the respondent against
the judgment and decree dated 16th March, 1981 succeeded before the learned
Single Judge of the High Court on 19th February, 1991. The learned Single
Judge held that the plaintiff had established infringement of his registered
trade mark No. 112689 by the defendant by reason of deceptive similarity
B between the mark used by the defendant and the plaintiffs registered trade '"·
mark. Against the order of the learned Single Judge, the appellant herein filed
a Letters Patent Appeal. A Division Bench of the High Court dismissed the
Letters Patent Appeal on 20th December, 1985. Hence this appeal by special
leave.
c
Briefly stated, the facts are :-

Trade Mark of Bidis, Khargosh Chhap, was first registered with the
Sub-Registrar of Bombay on 26th January, 1928 and thereafter it was registered
under the Trade Marks Act, 1940 on 14th August, 1945 in favour of the
D plaintiff/respondent in respect of the Bid is to be sold under that Trade Mark
throughout the territories of India except Madras and Mysore. The Trade
Mark was registered under Registration No. 112689. It appears that the plaintiff-
respondent subsequently also got registered the Jhilli (tissue paper wrapper)
on 2nd July, 1954 under registration No. 164797. According to the plaintiff/
E respondent, looking to the popularity, reputation and sale of the plaintiffs
Khargosh Chhap Bidis, the defendant/appellant started selling Bidis using a
label which was deceptively similar to and was a colourable imitation of the
plaintiffs Khargosh Chhap Bi dies, both ill respect of the design, layout, get
up and the colour scheme. It was on these allegations that the plaintiff/
respondent had filed the suit seeking relief of permanent injunction and
F damages etc.

The learned Single Judge as well as the Division Bench of the High
Court, on the basis of the evidence on the record, have recorded categorical
findings that the appellant's labels used on the Bidis manufactured and sold
G by him were deceptively similar and identical to the plaintiff-respondent's
label on the Bidis bearing trade mark Khargosh Chhap. It has also been found
by the High Court that the trade mark Khargosh Chhap had been registered
prior in point of time than the trade mark Goat Cub of the appellant.

From the material on the record, we find that the appellant had filed an
H affidavit on 3.0th January, 1964 (Ext.P/16) wherein he had deposed that the
MANMOHAN GARG v. R.K.N.DAS 1029
trade mark "Goat Cub" was conceived by his firm in 1952 and that he started A
selling his Bidies under that trade name. The appellant's documents Ext.p/16
and P/17 also unmistakably show that the trade mark Goat Cub was conceived
and put into use by him since 1952 only. This documentary evidence of the
appellant gives a complete lie to the stand of the appellant that he was using
the trade mark Goat Cub since 1936. That being the position, no fault can be
found with the findings recorded by the learned Single Judge and the Division B
Bench of the High Court to the effect that the plaintiff/respondent's trade
mark was registered in 1945 and the defendant's claim of prior user of the
label with Goat Cub was incorrect. In the light of this factual aspect of the
case, we find and the Division Bench committed no error and their judgments
suffer from no flaw whatsoever. This appeal, thus, has no merits. It is C
consequently dismissed with costs.

T.N.A. Appeal dismissed.