067-NLR-NLR-V-36-VEERAVAGOOPILLAI-v.-SAIBO-et-al.pdf
AKBAR J.—VeeravagoopiUai v. So'bo.
317
1934Present: Garvin S. P. J. and Akbar J.
VEERAVAGOOPILLAI v. SAIBO et al.
D. C. (Inty.) Colombo, 2,033.
Trade mark—Application to register mark resembling respondents* trademark—Test to be applied in determining question—Whether ordinarypurchasers are likely to be misled—Burden of proof.
The appellant applied for the registration of a trade mark, in respect offlour, called the Hanumar brand consisting of the figure of a monkey ina standing position.
The respondents had registered a trade mark in 1913, also in respect offlour, called the Pahlwan, consisting of a strong man in a standing positionholding up a pair of dumb-bells. Respondents’ trade mark was knownin the trade as the man mark.
Held, that the trade mark proposed by the appellant so nearly re-sembled the respondents’ as to be calculated to deceive the public.
– Held, further, that in.the circumstances, the burden was on the appellantto satisfy the Court affirmatively that his mark was not calculated todeceive.
A PPEAL from an order of the District Judge of Colombo.
A. E. Keuneman (with him Choksy and D. W. Fernando), for applicantappellant.
H. V. Perera (with him Garvin), for opponents, respondents.
Cur, adv. vult. ■
December 4; 1934. Akbar J.—
This is an appeal from an order of the District Judge disallowing theapplication of the appellant to register a trade mark bearing No. 5.598called the “ Hanumar ” brand consisting of the figure of a monkey in a
■iC. W. R. 245.
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AKBAR J.—Veeravagoopillai v. Saibo.
standing position in respect of flour. The application was opposed bythe respondents on the ground that the applicant’s trade mark so nearlyresembled their registered trade mark No. 1,048 also in respect of flouras to be calculated to deceive the public. This latter trade mark wasregistered so far back as 1913 and consisted of a strong man in a standingposition holding up a pair of dumb-bells in his extended hands and wascalled the “ Pahlwan ” brand (the word Pahlwan meaning a championwrestler or strong man in Hindustani). On opposition before theRegistrar the application of the appellant was allowed, but on appeal tothe District Judge the Registrar’s order was reversed and order was maderefusing the registration of the appellant’s trade mark.
Evidence has been put in in the form of affidavits and it is clear fromthe respondents’ affidavits that they were doing a large business in flourboth wholesale and retail and that their trade mark had eome to be knownas “ the man mark ”. No evidence has been put in to the contrary, andthe respondents’ evidence on these two points has been accepted by theRegistrar and the District Judge. The Registrar held against therespondents because he was of opinion (1) that the designation “manmark ” used by the public was not a correct description of respondents'trade mark which was registered as “ the Pahlwan mark ”, and (2) thatthe two trade marks were readily distinguishable, as appellant’s figure hashair over body and a tail.
As regards the first point mentioned by the Registrar, in a case reportedin 53, L. T.t N. S. (1885) p. 23, a firm of distillers registered as a trademark for their cherry brandy a hunting scene in connection with the word“ Sportsman ” and their cherry brandy consequently became generallyknown as “The Sportsman’s” and also as “ Huntsman’s ” and “Hunters”Cherry Brandy. Some years afterwards another firm of distillers registereda trade mark also consisting of a hunting scene and the words “ Huntsman'scherry brandy ”, but there was no resemblance between the two huntingscenes. It was held that notwithstanding the dissimilarity in the designsthe latter trade mark was “ calculated to deceive Kay J. said asfollows: —“ I must take it as clearly established that before the defend-ants registered their trade mark the plaintiffs had acquired quite generallythe name of * Huntsman’s Cherry Brandy ’ for their brandy. I havevery little difficulty in adding to that the inference that the defendantswere perfectly well aware of that fact. If the defendants did not intendto pass off their cherry brandy as that of the plaintiffs, why did thedefendants choose a trade mark so similar to that of the plaintiffs andcalculated to induce people to buy cherry brandy under that name—aname which had become the distinguishing mark of the plaintiffs’ cherrybrandy? The name ‘ Huntsman ’ is not one which the plaintiffsthemselves had assumed, but it was one which the public have given totheir goods, because of the picture selected by them as a design. Thequestion resolves itself therefore into this simple proposition. Theplaintiffs having registered in 1876 a picture of a hunting field, and thename * Sportsman ’ on that account, the name of * Huntsman ’ has beenlargely given by the public to cherry brandy manufactured by the plain-tiffs. The defendants knowing that perfectly well, in 1884 put upon the
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AKBAR J.—Veeravagoopillai v. Saibo.
register, for cherry brandy made by them, a trade mark consisting also ofa picture of a hunting field; but instead of calling it * Sportsman CherryBrandy* they called it by that other name under which the plaintiffs*cherry brandy has become known, viz., ‘ Huntsman’s Cherry BrandyThe inference, to my mind, is irresistible that that has been done by thedefendants for the purpose of passing off their cherry brandy as that of theplaintiffs. 1 can only say that the strongest possible evidence that thedefendant’s trade mark is calculated to deceive is afforded by the defend-ants themselves, as they have adopted it for the very purpose. Theregister must, therefore, be rectified by striking out the defendants*trade mark, and the defendants must pay the costs of the motion
In the case before me the affidavits show that the respondents* trademark had been used even before 1913 and that it has been known to thepublic as “ the man mark ” brand of flour, and that the appellant was acustomer of the respondents’ firm and had bought flour for a number ofyears under this mark; and that respondents’ flour under this mark isvery well known in the market and has a very good reputation. In thewords of Kay J., “ the name ‘ Huntsman ’ is not one which the plaintiffsthemselves had assumed, but it was one which the public have given totheir goods, because of the picture selected by them as a design ”. Heretoo it is the public which has given the name “ man mark ” to respond-ents’ trade mark, although the word used by them in their trade markwas “ Pahlwan ”, and the name given by the public was due to the figureof a man in a standing position selected by them in their design.
It is the idea of the mark that has to be considered. In the words ofthe report of Lord Herschell’s Committee, “The tendency of the officehas been to construe the words of the Act more favourably towardsapplicants for new marks than the trade have thought right. We thinkthe difference has arisen in part from the wording of the Act. TheController has felt unable to say that two marks ‘ so nearly ’ resembleeach other as to be calculated to deceive. He has thus not consideredhimself at liberty to take into consideration to the extent he otherwisemight, the character of the market in which the mark is to serve itspurpose. Two marks, when placed side by side, may exhibit many andvarious differences, yet the main idea left on the mind by both may bethe same; so that a person acquainted with the mark first registered, andnot having the two side by side for comparison, might well be deceived,if the goods were allowed to be impressed with the second mark, into abelief that he was dealing with goods which bore the same mark as thatwith which he was acquainted. Take, for example, a mark representinga game of football; another mark may show players in a different dress,and in very different positions, and yet the idea conveyed by each mightbe simply a game of football. It would be too much to expect thatpersons dealing with trade-marked goods, and relying, as they frequentlydo, upon marks, should be able to remember the exact details of themarks upon the goods with which they are in the habit of dealing **.
In the words of Kerly on Trade Marks, “ when the goods of a particulartrader have become known by a name derived from his trade mark, anyother mark which would be likely to suggest the use of the same name forthe goods on which it is used so resembles the former as to be calculated
H20
J,—VeeraveuBoopulai v. Saibo.
r,*
—.-1p—
to deceive”. So that it will be sAen that the Registrar was wrong in hisfirst ground for allowing the registration of the appellant’s trade mark.What strikes one in this case is that the appellant in spite of the fact thathe had an infinite number of designs to select from chose a standingfigure of a man or monkey. The figure selected is not in a sitting postureor in a sleeping position. It is true that the appellant’s trade mark iscalled the “ Hanumar ” brand and it is meant to represent a monkey.There is a loop on its right side which is said to be the tail and a longflourish over its head which is Said to be the continuation of the tail. Butthe fact remains that both the trade marks consist of standing figuresfacing the person looking at them.
Nor does the second ground given by the Registrar appeal to me.There is no doubt that if the two figures are placed side by side, points ofdifference will be noted at once. But that is not the test applicable tocases of this nature. One has to consider the reactions of the appellant’strade mark on the minds of the public who buy such a common every-day necessity of life as flour, that is to say, goods which will in manyinstances be bought by persons who are illiterate, and who will have intheir minds the picture of the outline of a man in a standing position.
In the words of Lord Cranworth in Seixo v. Provezende “ If thequestion turned on the inquiry, whether a person having aa cask of theplaintiff’s and a cask of the defendants’ placed before his eyes couldmistake the one for the other, there could be no doubt as to the result, forthe marks on the one and the other are altogether different. But that isnot the question or not the sole question, to be considered. The principleon which relief is given in these cases is that one man cannot offer hisgoods for sale representing them to be the manufacture of a rival trader.Supposing the rival to have obtained celebrity in his manufacture, he isentitled to all the advantages of that celebrity, Whether, results fromthe greater demand for his goods or from the higher price which the publicare willing to give for them, rather than for the goods of other manu-facturers whose reputation is not so high …. It is obvious that,in these cases, questions of considerable nicety may. arise as to whetherthe mark adopted by one trader is or – is not the same' as that previouslyused by another trader complaining of its illegal use, and it is hardly ■necessary to say that, in order to entitle a party to relief, it is by no meansnecessary that there should be absolute identity.
“ What degree of resemblance is necessary from the nature of things, isa matter incapable of definition a priori. All that courts of justice cando is to say that no trader can adopt a trade mark so resembling, that of arival, as that ordinary purchasers, purchasing with ordinary caution, arelikely to be misled. It would be a mistake, however, to suppose that theresemblance must be such as would deceive persons who should see thetwo marks placed side by side. The rule so restricted would be of nopractical use.
” ** If a purchaser looking at the article offered to him would naturallybe led, from the,mark, impressed on it, to suppose it to be the productionof the rival manufacturer, and would purchase it in that belief, the court''ornidr the use of such a mark to be fraudulent. .But I go further. I
1 (1866) L. R. 1 Ch. 192.
321
AKRAR J.—Veeravagoojpillai: v. Saibo.
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do not consider the actual physical resemblance of. the two marks to bethe sole question for consideration. If thd goqds of a manufacturer have,from the mark or device he has used, bedome known in the market by aparticular name, I think that the adoption by a rival trader of any markwhich will cause his goods to bear the same name in the market, may beas much a violation of the rights of that rival as the actual copy of hisdevice. It is mainly on this ground that I have come to the conclusionthat the decision of the Vice-Chancellor in the present case was correct.”
In the case of Johnston v. Orr-Ewing where both the plaintiff's and thedefendant’s marks consisted of tickets bearing pictures of two elephantswith a banner between them, the figures being differently arranged, LordSelbourne said : “ Although the mere appearance of these two ticketscould not lead anyone to mistake one of them for the other, it might easilyhappen that they might both be taken by natives of Aden or of India,unable to read and understand the English language, as equally symbolicalof the plaintiff’s goods. To such persons, or at least to many of them,even if they took notice of the differences between the two labels, it mightprobably appear that they were only differences of ornamentation,posture, and other accessories, leaving the distinctive and characteristicsymbol substantially unchanged. Such variations might not unreason-ably be supposed to have been made by the owners of the plaintiff’s trademark themselves for reasons of their own ”.
Further in comparing the marks one has to have regard “ not only totheir form as they appear on the register but also to the appearance theywould present in actual use when fairly and honestly used ; to the natureof the goods upon which they are to be employed ; to the character andsize of the marks themselves ; and to the probability of their becomingpartially or wholly blurred or modified as ordinarily stamped or printedor by ordinary wear and tear ”. (See Kerly.)
The affidavits put in by the respondents show that these marks will beput on bags of flour and that owing to blurring effects and flour dust whatmay remain on the bags will generally be the outline of the figure. More-over there will be no restriction on the use of any colour in the printing ofthese designs on the bags, and as contended for by respondent’s counsel,the slight loop on the right of Hanumar’s waist and the hair on the bodymay be easily obliterated and what will catch the eye then will be theoutline of a human figure.
As remarked by the District Judge in a case of some doubt the burdenis on the applicant to satisfy the Court affirmatively that his mark is notcalculated to deceive (see Eno v. Dunn5).
On a review of the whole case I cannot say the District Judge came toa wrong conclusion and I would dismiss the appeal with costs.
Garvin S.P.J.—I agree.
* {1882) 7 App. Cases 219.
Appeal dismissed,
2 15 Appeal Cases 252.
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