MOHAMED et al. v. MOHAMED UVAIS

045-NLR-NLR-V-43-MOHAMED-et-al.-v.-MOHAMED-UVAIS.pdf


176
Mohamed v. Mohamed Uvais.
1942P resent : Wtjeycwardenc and Nihil! JJ.
MOHAMED et al. v. MOHAMED UVAIS.
277-—D. C. Colombo. 10,036.
Trade Mark—Action lor infringement and passing off—Distinct !nbe!s—Alleged phonetic similarity—Burden of proof—Injunction.
Where, in an action for the infringement of a trade mark, the label usedby the defendants on their goods was distinct from and incapable of' being mistaken or confused with the label of the plaintiffs, the burden isupon the latter to establish by evidence that their goods are known bysome name or description of such a nature that the use of the defendantslabel would cause people to think that the goods having that labelwere the goods of the plaintiff.
T
HIS was an action for infringement of a trade mark and for passingoff in which the District Court granted an injunction restraining
the defendant from the use of his unregistered trade mark. The plaintiffs,who were carrying on business in Colombo under the firm name of VallyNoor Mohamed & Company, alleged in their plaint that the defendants bythe use of their uhregistered trade mark had infringed their registeredTrade Mark No. 6,867, which was registered by them in September, 1937,
24 X. L. R loS.
– 14 .V. L. R. 441.
Mohamed v. Mohamed Vvias.
177
and was in use by them for ten years prior to that. The facts are fullyset out in the judgment. The defendants appealed against the order ofthe District Judge granting the injunction.
H. V. Perera, K.C. (with him D. W. Fernando), for the defendants,appellant.—This action was based on two causes of action, viz., (1)infringement, (2) passing-off. The evidence led to prove both the countsis the same. If the action, therefore, for infringement fails, the actionfor passing-off must also fail.
In an action for infringement the burden of proof is on the person whoalleges it—Eno v. Dunn,' Kerly on Trade Marks (5th ed.), p. 474. Formeaning of “ calculated to deceive ” see Kerly on Trade Marks, p. 270.The two designs are entirely distinct. They are neither pictorially norphonetically similar. See In re Trade Mark of La Societe Anonyme desVerreries de VEtoile ", Board & Son. v. Bagots, Hutton & Co., Ltd.," ReBritish Drug Houses Limited’s Trade Mark ', St. Mungo ManufacturingCo. v. Viper & Recovering Co:' Mohamed Noordin v. Abdul Kareem & Co.'.Hollandia & Anglo-Swiss Condensed Milk Co. v. The Nestle & Anglo-SivissCondensed Milk Co. The test of Easy to pass off ” applied by the DistrictJudge is wrong. There should, in a case like this, be positive and partic-ular evidence that people of a certain type were deceived—MalayanTobacco Distributors Ltd. v. United Kingdom Tobacco Co., Ltd.', SanntsCase", 46 Reports of Patent Cases 453, 40 Rep. Patent Cases 219, Venkates-waram on Trade & Merchandise Marks in India, p. 261.
The finding of fraudulent intention on the part of the defendant cannotbe justified. Fraud must be pleaded and put in issue before there couldbe a finding on it—Malayan Tobacco Distributors, Ltd. v. United KingdomTobacco Co., Ltd. (supra), V enkateswaram pp. 275—6, 29 Rep. PatentCases 465.
M. D. de Silva, K.C. (with him N. K. Choksy), for the plainti£frrespondent.—The nature and scope of a passing-off action are discussedin Reddaway v. Banham See also Kerlyon Trade Marks (5th ed.), p. 563.Action for passing-off is a generalized form of the action for infringement.The principles are the same in both actions—Kerly, p. 471. In regard toburden of proof and weight of evidence there is no difference between thetwo actions. It is sufficient to prove intention to deceive—Kerly, p. 270.An infringement may take place by the copying of one single substantialcharacteristic—Kerly, p. 468. That is the position in the present case.The chief and only characteristic of my mark was “ A. V.”, and itsadoption by the defendant constituted an infringement. The resemblancebetween two marks must be considered with regard to the ear as well asto the eye—Kerly, p. 279. My legal position is shortly put in Kerly, p. 287.i.e., “ Where the goods of a particular trader …. calculated todeceive ”. See also Reddaway v. Banham (supra), Iron-Ox Remedy Co.,Ltd. v. Co-operativeWholesale Society, Ltd."; Kerly, 623. 33 Rep. Patent cases
’ L. Jt. (1S90) 15 A. C. 252 at p.257.6 .1. I. if. (1931) P. C. 272.
L. if. (1394) > Ch. 20.' (1223) 24 X. L. if. 396.
L. if. (1916) 2 A. C. 3S2 at p. 392.6 A. J. if. (1934) P. C. 167.
J 107 L. T. (N. S.) 750.* (1937) 54 Rep. Patent Cases 341 at p. 343.
3 27 Reports oj Patent Cases 420.10 13 Rep. Patent Cases 21S.
" 24 if. P. C. 425.
178
NIHIUj J.—Mohamed v. Mohamed Uvais.
357; Sanitas Co., Ltd. v. Condy'; Mallagole Case"; Re Application ofPomril, Ltd. “; In re Dewhursts’ Application'; 32 Halsbury’s Laws ofEngland (2nd ed.), p. 617; 51 Rep. Patent Cases 129; 29 Rep. PatentCases 21.
Our banians were known as “A. V.” banians. Once that is establishedthe law gives us vast protection. The defendant’s mark is only a disguiseof the plaintiff’s mark.
H. V. Perera, K.C., in reply.—While in a registration case extrinsicevidence may not be necessary, in an infringement case independentevidence is necessary—Thomas Bear & Sons, Ltd. v. Prayagan Narain*;Mallagole Case
There is no resemblance between the two marks, whether pictorial orphonetic or with reference to the meaning by which our mark has cometo be known. It cannot even be said that the two kinds of banianscame from the same source—42 Rep. Patent Cases 63.
Cur. adv. vult.
January 5, 1942. Nihill J.—
. In this appeal the appellant who was the defendant in an infringementand passing off action in the District Court of Colombo seeks to have setaside art injunction granted by the learned District Judge restraininghim from the use of his unregistered Trade Mark. The plaintiffs in theaction who are the respondents to this appeal carry on business inColombo under the firm name of Vally Noor Mohamed and Company.They do or did a large wholesale business in various lines of wearingapparel imported for the most part from Japan. In their plaint theypleaded that the defendants by the use of a certain unregistered markhad infringed their registered Trade Mark No. 6,867 which was registeredby them as from September 9, 1937. It had been in use by them for atleast ten years prior to that. The defendants began using their markin January, 1939. It was admitted that the plaintiffs had used this markparticularly upon banians imported from Japan and that by its use theplaintiffs’ banians had become known in the market as “ AV ” banians.A banian is a vest worn next to the skin by a large section of the malepopulation of Ceylon. The defendant is a competitor of the plaintiffsin. the same line of business. The “ AV ” banian is retailed at 50 centseach and it is doubtless safe to assume as the learned trial Judge didthat they would be bought chiefly if not wholly “ by the ignorant andilliterate or the. poorer classes of the community ”.
It will perhaps be best at once to describe the two marks. . Therespondent’s mark consists of the letters “ AV ” in bold relief surroundedentirely by a leafy floral design. The colouring of both the letters andthe leaves is red. Underneath the mark also in red are the words “ Madein Japan ”. The mark was impressed upon a white tab sewn on to thebanian at the back of the neck in the-centre. Similarly placed on theappellant’s banians was his mark which consists of an orange background
< f B. P. C. 530.3 is B. P. C. 181.
– 33 B. P. C. SSI.4 13 B. P. C. 2S8.
* A. I. R. {1940) P. C. 86.
NIHII.T. J.—Mohamed v. Mohamed Uvais.
179
edged in red. At the top in red appears in English letters the words“ Mackies ” which is the trade name of the appellant. Then underneathin larger blue lettering are in Sinhalese letters the words “• scoO if 3 ”which has been translated “ Coming to-morrow Underneath thatagain are the words in English “ Made in Japan The tab used by theappellant is at least twice the size of that used by the respondent. Tothe eye alone therefore no possibility of confusion between the two markscould arise. The root of the trouble however lies in the words printed in'Sinhalese characters. To one who can read them and understand theSinhalese language these words when romanized become “ Heta Ave ”.It was the plaintiffs’ case in the action that the use of the word “ Ave ”even although in conjunction with the words “ Heta ” was calculated todeceive and would facilitate the passing off of the defendant’s goods forthose of the plaintiff.
A comparison of the two marks leads at once to certain conclusions.First, this is not a case where any Judge could without some evidencesay that the appellants’ mark was calculated to deceive. Secondly it isclear that a customer who had become familiar with the respondent’smark could not be deceived. Really the class of customer who mightfall a prey to the alleged wiles of the appellant’s mark would be restrictedto persons who had been told to buy the “ AV" banians and who onseeing or hearing of “ Heta Ave ” jumped to the erroneous conclusionthat he must have been told to buy “ Heta Ave ”, or alternatively thatwhen he was advised to buy “ AV ” his informant must have used aneconomy of speech and have meant to refer to “ Heta Ave ” or theremight be a class of customer who hearing or seeing “ Ave ” as a prefixwould conclude that the defendant’s goods came from the same sourceas the “ Ave ” banians.
•
During the course of a lengthy argument many cases have been cited tous. Some of these concerned actions in which as in the present casethere had been an injunction for an infringement, others arose out ofobjections made prior to the registration. Although the principleswhich would guide the Registrar of Trade Marks in making up his mindwhether a mark proferred for registration was “ calculated to deceive ”and clash with a mark already on the register must be the same as wouldactuate a Judge trying an issue of infringement, there is a differencebetween the two types of proceedings which it is important to bear inmind in studying these cases. In a registeration case the burden of proofis on the applicant to satisfy the Registrar that his mark is not calculatedto deceive. In an infringement action the burden is on the personwho says his rights in his mark have been infringed. That is a burdenthat can only be discharged by evidence. In cases of close pictorial orphonetic similarity there will be little difficulty, for the thing will speakfor itself.
On the other hand as was said by Viscount Maugham in the PrivyCouncil case of Thomas Bear and Sons (India), Limited v. PrayagNarain ’,—“ There are many trade mark and passing off cases whichcannot be decided by a visual comparison of the rival marks or names
1 (1940) All India Itcp., p. SC.
180NIHIL1. J.—Mohamed v. Mohamed Uvais.
and must depend on the evidence of witnesses. That indeed is nearlyalways the case where there are factors involved other than the mereresemblance of the marks or words
In another Privy Council case, Mohamed Noordin v. Abdul Kareem andCompany it was held that, where the labels used by the defendantswere distinct from and incapable of being mistaken for or 6onfused withthe lables of the plaintiffs, in an action for infringement of trade markthat they should establish by evidence that their goods were known bysome name or description of such nature that the use of the defendants’label would cause people to think that the goods bearing that label werethe goods of the plaintiff. I cite these cases not because a review of thefacts in either case will assist us in the determination of the matter beforeus but because they bring out the principle that where there is materialdissimilarity it is by evidence, difficult as that may be to come by, that aJudge must decide the issue. What then is wanted in the present caseto establish the infringement is evidence on which a Judge can reasonablydetermine that the mark objected to is calculated to deceive.
In the absence of such evidence it will not do for him to indulge inspeculation intelligent as it may be as to the possibilities of deceptionand confusion arising. As a Registrar considering an application hemight very well do so placing the burden on the applicant to resolve hisdoubts, but as Judge of an issue of fact as to whether there is an infringe-ment, if the material placed before him by the evidence of the plaintiffand his witnesses is insufficient for him to reach a conclusion, it followsthat the plaintiff must fail.
Now the evidence adduced for the plaintiff in this action consisted ofthree witnesses. The first Mohamed Vally Noor Mohamed, is a partnerin the plaintiff’s firm. This witness deposed to the fact that his firm’sbanians had become known in the market as “ AV ” banians. Heexplained that the letters “ AV ” were the initials of the senior partner inhis firm, a man who had established himself in the banian trade many yearsago and who was known by big business people as A. V. Noor Mohamed.He also said that his firm used other marks in other lines of baniansbut in none of these did the initials li- AV ” form a component part.This evidence does not touch the retail trade but it proved that theplaintiff’s banians had become known as “ AV ” banians. In cross-examination of this witness the interesting fact was elicited that thedefendant had continued to buy “ AV *’ banians from the plaintiff evenafter he had put the “ Heta Ave ” mark on the market.
This hardly seems consistent with a fraudulent intent to pass offbut I will consider this aspect of the case at a later stage.
The second witness, Ismail Kareem, is a partner in a firm of retailersdoing business in Kandy. He stated that many of his customers whocomprised both Sinhalese and Tamils were in the habit of asking for“ AV ” banians. Some of these people could read and some could not.Some of them looked at the banians and some did not. He thought thatit would be easy to cheat those who did not examine the banians bypassing off the defendant’s banians as “ AV ” banians but he was quickto add that his firm did not in fact do so. The last witness, A. S. Sakoor,a wholesale and retail trader from Matara, certainly did not carry the
1 Jffol All IwUa Sep.. 27:1.
NIHILL. J.—Mohamed v. Mohamed Uuais.181
plaintiffs case any further. He also said that his customers asked for“ AV ” banians but he added that the “ AV ” mark was well known tosuch customers. He knew ’ the “ Heta Ave ” mark as pertaining to thedefendant’s goods. He had never himself been deceived into believingthat “ Heta Ave ” pertained to the goods of the plaintiff.
It seems to me that put at its highest this evidence establishes onlythat the plaintiff’s banians were known in the trade as :i AV ” baniansand that in the opinion of one retailer the defendant's mark was capableof being used for purposes of deception.
The two retail witnesses were not able to say that they knew of aninstance where a customer had made the mistake of thinking that thedefendant’s goods were the plaintiffs nor was a witness called whoknowing of the plaintiffs mark hgd been deceived on seeing thedefendant’s.
Kerly on Trade Marks at page 270 of the fifth edition says—“ Calcula-ted to deceive ” may mean either “ intended to deceive ” or “ likely todeceive ” but the learned author adds “ the words are not equivalent tocapable of being used to deceive, for it must be assumed, until thecontrary is shown, that the applicant will make an honest use of hismark ”.
Let it be conceded then that the plaintiff has shown that his markin the English letters “ AV ” has resulted in the sound name “ Ave ”becoming attached to his goods. Does this fact bring the present withinthat class of case where the Court have held that the use of a well knownname in conjunction with 'another word either as suffix or prefix or withmore than one other word is calculated to deceive in the sense that itsuggests it to a customer who is well acquainted with the name that thecoods must come from the same source ?
An instructive case of this class is that known as the Sanrus Case '.Here the Trade Mark alleged to be infringed and which was held to beinfringed was the word “ Rus ” which had become attached to a goodquality brick manufactured by the plaintiff company. The defendantsput on the market a facing brick with the mark “ Sanrus ”. In thecourse of his judgment at page 343 Simonds J. said : —
" Now the evidence before me is cogent to this effect. Witnesses ofcandour, experience and obvious intergrity have come before me to tellme this, that if they saw the word “ Sanrus" in connection with abrick they would come to the conclusion that it was a manufacture ofthe plaintiff company, that it was a word invented by the plaintiffcompany to describe some new manufacture of theirs and, no doubt,some new manufacture upon the lines of the Rus ” brick which wasalready very familiar to the trade. Necessarily their opinion wasbased upon that hypothesis, because except, I think, in the case of oneof them, the word “ Sanrus ” had not, until they were invited toexpress an opinion in these proceedings, been brought to their notice.But there was one of them, a Mr. Marshall, who had actually heard ofthe word “ Sanrus ” outside these proceedings. He was a gentlemanof very large experience, a Fellow of the Royal Institute of BritishArchitects, and a lecturer in Liverpool in the School of Architecture,
1 (1937) 54 Rep. Patent Cases, p. 311.
182NIHIL.L, J.—Mohamed v. Mohamed Uvais.
and he was in charge of the Materials Gallery, so that he would bebrought into close touch and clearly would have intimate knowledge of,the materials used by builders. He had known the plaintiff companyfor a large number of years and was familiar with the “ Rus ” brickwhich had long been manufactured by them, and he was asked oneday, after a lecture, by a student who came to him, whether he knewthe name “ Sanrus ” brick and where it came from. I am not givinghis exact words, but he replied in effect that he did not know. Butat once he associated it with the plaintiff company. Now that isevidence which I am not entitled to disregard ; indeed it is evidencewhich I must regard as of the greatest assistance in coming to aconclusion as to whether or not the use of the word “ Sanrus ” by thedefendant company in connection with an article manufactured bythem is likely to cause confusion and to lead to the belief that thearticle bearing that name is an article manufactured not by thedefendant company but by the plaintiff company. ”
“ What Mr. Marshall said out of his actual experience is corroboratedby those other witnesses whom I have described, who expressed theview that they would have come to the same conclusion if the matterhad been put before them for conclusion. ”
I have quoted this lengthy passage in full because it seems to me clearlyto indicate the quantum and kind of evidence that is required in such acase, and if one compares the evidence there offered with the evidenceadduced by the plaintiff in the case before us the weakness of the latterbecomes to my mind very strikingly apparent.
As my analysis of the evidence will have shown the evidence of nowitness came within any measurable distance of the evidence which thewell known architect was able to give in the Sanrus Case (supra).
Was then the learned District Judge right in coming to a conclusion inthe absence of any such evidence that the appellants’ mark was calculatedto deceive ? In my opinion he was not. It seems to me from a perusalof the judgment that he reached that conclusion largely because thepossibility occurred to his mind that if the words “Heta Avee ” werepronounced at normal talking speed there would be a tendency for the“Heta” to be slurred or clipped and the accent to be placed on the“ Ave Not having a knowledge of the Sinhalese language this is apoint on which I would gladly defer to the opinion of the trial Judgealthough I confess I find it difficult to see how the sound “ Heta ” wouldbe lost in speech when the speaker was saying “ Coming to-morrow ”in Sinhalese. However, in this matter my learned brother will correctme if I am wrong. The learned District Judge in his judgment hasquoted the Pianola and Neola Case', but apart from its usefulness inlaying down the general principles which should guide a Registrar inaccepting or refusing registration it does not seem to me to be of assistancein application to the facts of this case. To an English ear the soundsPianola and Neola are very close and with clipping or slurring it isevident that the two might quite easily be confused. Yet Parker J.held, having regard to the fact that customers who were buying expensivemusical instrument are likely to know what they are about and no man
1 (Jf/OO) 2o Ren. Patent Ca*es p. 77-i.
NTTTTT.T. J.—Mohamed v. Mohamed Uvais.
183
of ordinary intelligence was likely to be deceived, the marks to be distinct,in the present case we must of course keep in mind that the class ofcustomer likely to buy cheap Japanese banians may be illiterate andunintelligent, but I do not think that that consideration will bridge thegap between the real dissimilarity of the sounds “ Heta Avee ” and“ Ave At any rate I do not think the trial Judge was justified inarriving at that assumption in the absence of any evidence. If the wordhad been “ Cave ” with evidence of a Latin pronunciation the mattermight be entirely different.
I think also that the learned District Judge’s judgment is open tocriticism also on another ground. He reached the view that the defendanthad deliberately made the marks to differ widely “ hoping that thesimilarity thereby in the sound of the two words would escape detectionNow that in effect is a finding of fraud against the defendant althoughthere was no issue of fraud raised by the plaintiff. No doubt if there hadbeen evidence of passing off by the defendant an inference of fraudwould be unescapable, but there was no such evidence, there was noteven evidence of passing off by a retailer and if there had been thatwould not have fastened fraud on the defendant.
In the Privy Council case of Malayan Tobacco Distributors, Limited v.United Kingdom Tobacco Company, Limited', their Lordships held thata finding of fraud could not be upheld where no plea of fraud was properlyraised on the pleadings and no fraud was opened and no question put tothe witnesses as to suggest that fraud was being charged. Mr. de Silvahas contended that a plea of fraud can be implied from the first issue“ Is the mark used by the defendant calculated to deceive ? ” but I cannotagree.
Although “ calculated to deceive ” may mean either “ intended todeceive ” or “ likely to deceive ”, I consider that the Privy Councildecision means that where “ intent is relied on, it should be specificallypleaded or in some way made clear to the other side. A mark “ likely todeceive ” may be put on the market with a perfectly innocent intention.
A better point may be that the plaintiff had no opportunity of suggest-ing fraud to the other side because they called no witnesses. That is so,but the defendant might well answer that in the absence of an issueimputing a dishonest intention to him there was no reason for him to gointo the witness-box. From the correspondence between the two partieswhich preceded the action it emerges that the defendant jrias alwayscontended that the marks are so dissimilar that under no circumstancescould they be calculated to deceive. That was the positiortf taken byhim at the trial. Neither was a dishonest intent put to him at any timein the letters sent to him.
If then the learned District Judge should not have inferred a dishonestintention without fraud being in issue or at least emerging from theevidence it is a matter of consequence because it must have affected hisdecision as to' the deceptive character of the defendant’s mark. Forwhere fraud is present there is not much else required to establish theproposition that a mark is calculated to deceive.
1 (1934) All India Rep. (PC), p. 167.
. 184WIJEYEWARDENE J.—Mohamed v. Mohamed Uvais.
Of the various English cases cited to us by Mr. de Silva in the course ofhis learned and helpful argument there are two which I think should bementioned, for they are cases on which the respondent placed somereliance. They are the Mallagole Case ’ and the Iron Ox and Iron OxideCase In the former case the Registrar refused to register the words“ Mallagole ” in the pen class on the grounds that it was calculated todeceive purchasers to believe that they were buying the goods of a wellknown French pen manufacturer whose name was J. B. Mallat. Thismanufacturer was the proprietor of several Trade Marks in which thename “ Mallat ” was the essential element. In appeal Astburv J.upheld the decision of the Registrar.
The Registrar based his objection on his belief that the word“ Mallegole ” would suggest the name “ Mallat ” at least to Englishmenwho were in the habit of pronouncing French names in the French wayand he refused registration because the applicants on their evidencefailed to convince him that there was no chance of confusion arising.The case is a valuable one for demonstrating where the burden of prooflies in a registration case. Although I think “ Heta Ave ” and “ Ave ”are not so near as “ Mallagole ” and “ Mallat ” when pronounced as“ Malla ” I am far from saying that this Court would be right to interferewith the discretion of the Registrar if he had rejected “ Heta Ave ” on anapplication to register.
The Iron Ox Case (supra) was a passing off action in which the pro-prietors of medicinal pills they called “ Iron Ox Tablets ” succeeded inobtaining an injunction against certain retailers who had bought“Compound Iron Oxide Tablets’’ from the Co-operative WholesaleSociety, Limited, and sold them in response to orders for “ Iron OxTablets ”.
After a very careful study of the facts of that case as reported, and thejudgment of Parker J., I have reached the conclusion that the learnedJudge’s decision in this case was based not so much on, or at least not'alone on. the fact of the possibility of the unwary customers beingdeceived but on the fact that the learned Judge, from the evidence, wasable to draw a clear and unmistakable inference that the defendantshad chosen the description “ Iron Oxide ’’ for their tablets preciselybecause they knew that it would lead to confusion and because theyknew that the plaintiffs, by an expensive advertising campaign, hadcreated a wide demand for “Iron Ox” tablets. In concluding hisjudgment the learned Judge said “ Under these circumstances it seemsto me that the plaintiffs have discharged the onus which was upon themand are entitled to an injunction.”
As I have already indicated I have reached the view that the plaintiffsin the action now before us did not discharge the onus which lay on themand that therefore the appellants must succeed.
I would allow this appeal and set aside the injunction. The defendantsare entitled to their costs here and in the Court below.
Wijeyewardene J.—I agree. I wish to add that I am unable toaccept the view of the learned District Judge that “ if the Sinhalese1 (1916) 33 Rep. Patent Cases, p. 281.- (1907) 24 Rep. Patent Cases, p. 425.
185
HE ARNE J.—Chinniah v. Fernando.
words Heta /^vee£fs) are pronounced at normal talking
speed …. one is apt to slur or clip the ,rheta *’ (isc-) and placethe accent on the “ avee ” (ifs) I do not think there is a “markedsimilarity in the two sound pictures ” as stated by the District Judge.
Appeal allowed.