094-NLR-NLR-V-39-LEVER-BROS-v.-R.-M.-RENGANATHAN-PILLAI.pdf
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Lever Bros. v. R. M. Renganathan Pillai.
1937Present: Maartensz and Hearne JJ.
LEVER BROS. v. R. M.’ RENGANATHAN PILLAI.
202—-D. C. Colombo, 4,160
Trade mark—Action for infringement and passing off—Impression of
symbols—Similarity of impression—Calculated to deceive—Damages.
. The plaintiff was the proprietor of a trade mark in respect of perfumedtoilet soap. The trade mark consisted of a label having printed thereonthe word “ Lux ” and certain designs within a fancy border.'
The cake of soap had on one side the word " Lux ’ cut into it, below ita floral design followed by the words “ toilet soap ” on the other side werecut the words "Lever Bros. ”
The soap imported by the defendants, was contained in a wrapper, theprominent feature of which was the word “ Rex ” smaller in size -thanthe letters forming the word “ Lux ” and of a different shade.
To the left <S^the word “ Rex ” and below it .was the-picture of a man on acamel and some palm trees and pyramids in the distance, on one side ofthe-cake appeared the word “Rex” and a floral design similar to thedesign on the plaintiff’s soap, followed by the words “ made in Japan ”.
Held, that the marks of the wrapper on the soap imported by thedefendant were calculated to deceive and amounted to an infringement ofplaintiff’s trade mark.
Held also, by Hearne J. that the fact that the soap imported by thedefendant had been detained at the Customs and had not reached theCeylon market did not disentitle the plaintiff from bringing the action.
T
HE plaintiff is the'owner of a registered trade mark bearing No. 5,321and called “Lux”, used in connection with the sale of perfumed
soap. The plaintiff instituted this action against the. defendant allegingthat the latter had infringed the plaintiff’s trade mark by using a wrapperon the defendant’s soap called “Rex’.’ which wrapper bore a colourableimitation of the plaintiff’s mark.
MAARTENSZ J.—Lever Bros. v. R. M. Renganathan Pillai.
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The plaintiff also sued the defendant for an injunction restraining thedefendant from passing off his goods as those of the plaintiff, and fordamages.
The learned District Judge entered judgment for the plaintiff, andthe defendant appealed.
H. V. Perera, K.C. (with him N. Nadarajah and S. J. V. Chelvanaya-gam), for defendant, appellant.
A. Hayley, K.C. (with him N. K. Choksy) for plaintiffs, respondents.
Cur. adv. vult.
October 5, 1937. Maahtensz J.—
The plaintiffs who are the proprietors of a trade mark duly registeredin respect of perfumed toilet soaps have brought this action to restrainthe defendant from selling certain soaps imported by him on the groundthat the mark on the imported soap and on the wrapper is calculated todeceive, and amounts to an infringement of plaintiffs’ trade mark.
The plaintiff’s trade mark consists in the main of a label having printedthereon the word “ Lux ”, and certain designs within a fancy border.
The plaintiff’s soap is oblong in shape, with bevelled edges and whitein colour. On one side of the cake is cut in the word “ Lux ” ; in themiddle of the cake, below it, is'a floral design followed by the words“ Toilet Soap ”. On the other side is cut the words “ Lever Brothers ”enclosed within an oblong panel.
The cakes of soap imported by the- defendant are of the same shape andsize, with bevelled edges, but rather darker in colour.
On one side of the cakes appears the word “ Rex ” and a floral designsimilar to the design on plaintiffs’ soap, followed by the words “ Made inJapan ” and the number “ No. 4440 ’’. On the other side appear thewords “ Rilax Soap Factory ” within an oblong panel of exactly the samesize ar the panel on plaintiffs’ soap. Outside the panel appear the words“ Made in Japan
The salient feature on the cakes of. soap sold by the plaintiffs-andimported by the defendant is, in my opinion, the two words of threeletters, both of which end in the letter X. Both of them are Latin wordsand the letter E of the word “ Rex ” can be given the sound of the letterU, so that the word “ Rex ” can have a sound similar to the word “ Lux ”.The defendants’ mark of “ Rex ” and the floral design below it placedon a cake of soap of exactly the same size and shape as the soap sold bythe plaintiffs is, in my judgment, calculated to deceive. The two soapsare also similar in smell, which would add to the possibility of deception.
The plaintiffs’ soap is put up in a creamy wrapper of paper, patternedis- small squares. The word “ Lux ” is printed prominently on it indark mauve, each letter being made up of small squares. Under thisword appear the words “ Toilet Soap ” followed by a floral design.
On each edge of the wrapper there is an ornamental design in greenwith mauve knd yellow dots. The design is made of tiny squares.
The defendant’s soap is put up in wrappers of smooth paper, ratherdarker in colour. The prominent feature is the word “ Rex ”, smallerin size than the letters forming the word “ Lux ”, and of a different shadeof mauve. Tha letters forming the word “ Rex ” are built up in a slightlydifferent way to the word “ Lux ”.
334MAARTENSZ J.—Lever Bros. v. R. M. Renganathan Pillai.
To the left of the word “ Rex ” and below it there is the picture of aman on a camel, and some palm trees and pyramids in the distance.
On each side of the wrapper is an ornamental design in green withmauve and yellow dots. The design is of a different pattern to thedesign on plaintiffs’ wrapper, and is made up of circular dots. Placedside by side the difference in the patterns is obvious. Apart, however,there is every possibility of one pattern being mistaken for the other.
It was very strongly urged that the picture of the man on the cameland the pyramids and palm trees would enable a would be purchaser todistinguish the difference between the two wrappers, and that thereforethe defendant’s wrapper was not calculated to deceive. On the otherhand it was urged that a would be purchaser, seeing a wrapper verysimilar in appearance to the plaintiffs’ wrapper in other respects, mightwell think that1 the plaintiffs had merely made an alteration in the designof their wrapper.
We were referred to various cases by Counsel on both sides. But I donot think it necessary to examine them all. It is impossible to say fromthe decided cases what amount of resemblance is necessary for the Courtto hold that a mark is calculated to deceive. But the case of JohnGosnell & Co., Ltd. v. Sivaprakasam1 is of the greatest assistance to theplaintiff, as the Court in that case held that the use by the defendant ofthe word “ Farina ” with a certain device on the soap sold by him was aninfringement of plaintiffs’ mark, the essential features of which were theword “ Famora ” with a device which was different to the device ondefendant’s mark.
In an action for infringement the plaintiff can rely only upon the imita-tion of his trade mark. In the case of a colourable imitation, which iswhat the defendant’s mark is said to be/ the test is whether or not thedefendant’s mark is calculated to cause his goods to be taken by ordinarypurchasers for the goods of the plaintiff.
The marks must be compared as they are seen in ordinary use on thegoods they are used for, provided the plaintiff’s mark does not substan-tially differ from the mark on the register.
The plaintiffs’ mark, as used, does not differ from the registered mark,and the two marks as used do in my opinion so resemble each other thatdefendant’s mark is calculated to cause his soap to be taken for plaintiffs’soap.
As regards the second cause of action I agree with the District Judgethat there is sufficient material upon which to hold that the defendantintended to pass off his soap as the plaintiffs’ soap.
The grounds upon which damages were claimed are not set out in theplaint. I do not think that the plaintiff can claim as damages the amounthe had to pay the Customs for detaining.the goods which is the basis ofthe District Judge’s estimate of the damages. .
I do not think, however, that the sum awarded is more than nominaland I see no reason to/ interfere with the District Judge’s order as todamages.
I am of opinion that the appeal should be dismissed with costs anddirect accordingly.
» (1910) IS N. L. R. 33.
HE ARNE J.—Lever Bros. v. R. M. Renganathan Pillai.335
Hearne J.—
This is an appeal by the defendant from the judgment and decreepassed by the District Judge of Colombo in case No. 4,160 of hisCourt.
The plaintiffs first cause of action was one for infringement. The goods,the marks on which were alleged to be an infringement of the plaintiffs’mark, had been detained by the plaintiffs at the Customs and had notreached the Ceylon market. This, however, did not disentitle them tobring their action. There is authority for this Upmann v. Forrester *.The plaintiffs second cause of action was designed to prevent the goods inquestion reaching the Ceylon market. It was alleged in the alternativethat the “ get-up ” of the goods was calculated ter deceive and to enablegoods, not of the plaintiffs manufacture, to be passed off as and for theplaitiffs’ goods. It is clear that they were Entitled to the remedy of aninjunction assuming the facts pleaded could be established.
I have no doubt that in granting a perpetual injunction in terms of theplaintiff’s prayer the Judge acted wisely and properly. I agree with himthat the totality of resemblances in the “ get-up ” of the defendant’s soapto the plaintiffs’ soap was undoubtedly calculated to pass off or to causeto be passed off the defendant’s soap as and for the plaintiffs’ soap.
The alleged infringement of the plaintiffs’ mark in regard to which theJudge also found against the defendant is one that must be examinedwith greater care. For the plaintiffs can rely only upon the imitation ofa registered mark to which they are exclusively entitled and not “ thoseadditional things proved to be connected with his trade or goods ” uponwhich they may also rely in a “ passing off ” action.
The imitation by the defendant of the plaintiffs’ mark would not,I venture to think, be likely to deceive literate persons. Some of thedistinctive features of the plaintiffs’ mark, in particular the border on thewrapper, have been reproduced by the defendant with an exactness thatwould be calculated to lead the unwary into thinking that the. mark onthe defendant’s goods was the registered mark of the plaintiffs. But theword Rex (this is the name of the defendant’s soap) is so unlike Lux(the trade name of the plaintiffs’ soap) as to make deception in my opinionunlikely in the case of literate persons. On the other hand in the case ofilliterate persons it might very well, as the Judge has found, be otherwise.An illiterate person is not concerned with letters of which he has noknowledge. The impression he receives of the name of a soap printedon a wrapper is an impression of symbols. Where a three lettered wordis used in each case, the last of which “ X ” is one which, for reasonsgiven by the Judge, is known to him, this mental impression of symbols,similar as to number and identical as to one of them in shape, coupledwith the mental impression of the other features of the wrapper whichwere imitated to an extent that was only limited by the defendant’s ideasof safety, would most probably deceive an illiterate into mistaking thedefendant’s mark for that of the plaintiffs. The Judge directed himselfvery properly in answering the test question, “Is the spurious marklikely to deceive ? ”—in reference to the persons who are the probable
1 24 Ch. D. 231 ; (1883) 52 L.J. Ch. D. 946:- .
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HEARNE J.—Lever Bros. v. R. M. Renganathan Pillai.
purchasers of a cheap soap. The case of John Gosnell & Co., Ltd. v.Sivaprakasam is an illustration of the trend of decisions in this class ofcase.
The plaintiffs did not suffer any injury consequent on the infringementof the^r registered mark, and are only entitled to nominal damages.The Judge related the amount decreed in their favour (Rs. 500) to theactual out of pocket expenses incurred by the plaintiffs in seeking toprotect themselves. I am not at all sure that this is correct. But in allthe circumstances of the case I do not regard Rs. 500 as being anythingmore than nominal.
I would dismiss the appeal with costs.
Appeal dismissed. 1
1 (1910) 1SN.L. 12. 33.