Josco Jewellery and Others v. Payyappilly Antony Jose

**IN THE HIGH COURT OF KERALA AT ERNAKULAM PRESENT :** ## **THE HONOURABLE MR. JUSTICE P.BHAVADASAN** **THURSDAY, THE 22ND DECEMBER 2011 / 1ST POUSHA 1933** **RFA.No. 186 of 2005()** **---------------------** **OS.3/2004 of 1ST ADDL.DISTRICT COURT, THRISSUR** **....................** ## **APPELLANTS/DEFENDANTS** **--------------------------------** **1. M/S. JOSCO JEWELLERY, ROOM NO.42, JAI HIND MARKET BUILDING, MUNICIPAL OFFICE ROAD, THRISSUR, REPRESENTED BY PARTNERS, K.P.JOSE, S/O.PAVUNNY, AGED 58 YEARS, RESIDING AT KATTOOKKARAN HOUSE, MAIN ROAD, NEAR M.T.H.S., MURACHIRA, THRISSUR.** **2. K.J.ROY, S/O. K.P.JOSE, RESIDING AT KATTOOKKARAN HOUSE, DO.** **3. P.O.ROSY W/O. K.P.JOSE, RESIDING AT KATTOOKKARAN HOUSE, DO.** **4. K.P.JOSE, S/O. PAVUNNY, AGED 58 YEARS, RESIDING AT KATTOOKKARAN HOUSE, DO.** **5. K.J.ROY, S/O. K.P.JOSE, DO.** **6. MRS.P.O.ROSY, W/O. K.P.JOSE, DO.** **BY ADVS. SRI.VARGHESE C.KURIAKOSE SRI.JACOB SEBASTIAN SRI.PRAVEEN K. JOY** ## **RESPONDENT/PLAINTIFF** **-------------------------------** **PAYYAPPILLY ANTONY JOSE, AGED 56 YEARS, SOLE PROPRIETOR, JOSCO FASHION JEWELLERS, THRISSUR, KOTTAYAM, PATHANAMTHITTA, NOW RESIDING AT WARD NO.24, HOUSE NO.110, KURIYACHIRA, THRISSUR CORPORATION.** ## **R1BY ADVS. SRI.BABU KARUKAPADATH** **SMT.M.A.VAHEEDA BABU SRI.JAGAN GEORGE SRI.K.A.NOUSHAD SRI.P.G.PRAMOD** **THIS REGULAR FIRST APPEAL HAVING BEEN FINALLY HEARD ON 28.10.2011, THE COURT ON ON 22/12/2011 PASSED THE FOLLOWING:** **VK** ## **RFA.No. 186 of 2005()** **----------------------------** ## **PETITIONER'S EXHIBITS : NIL** **----------------------------** ## **RESPONDENT'S EXHIBIT** **---------------------------------** **ANNXURE R(1). COPY OF LETTER DATED 6.7.10 SENT BY ONE SANKARANARAYANAN** **/ TRUE COPY /** **P.A. TO JUDGE** **VK** ## **P. BHAVADASAN, J.** - - - - - - - - - - - - - - - - - - - - - - - - - - - R.F.A. No. 186 of 2005 - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Dated this the 22nd day of December, 20101. ## **JUDGMENT** The plaintiff, who spread his net wide, had the defendants caught for infringement of trade mark and passing off action. The aggrieved defendants have come up in appeal. The parties and facts are hereinafter referred to as they are available before the trial court. 2. The plaintiff is the proprietor of 'Josco Fashion Jewelleres' engaged in the business of gold jewellery business. The said trade name and trade mark have made a mark in the gold business and enjoys considerable goodwill and reputation. The concern has a registered trademark. The plaintiff gives wide publicity and has a considerable turn over in his business, which shows the faith of his customers. According to the plaintiff, the words 'Josco Fashion Jewellers' has achieved a distinctiveness and is associated with a trade in gold ornaments. They have branches both inside and R.F.A.186/2005. 2 outside India. Recently, the plaintiff came to know that the defendants have started a jewellery business under the name and style 'Josco Jewellery' at M.O.Road, Trichur. They had nothing to do with the concern of the plaintiff. By adopting a deceptively similar name, the defendants are passing off their goods as that of the plaintiff. The customers are driven to believe that 'Josco Jewellery' run by the defendants is a limb or closely associated with the concern of the plaintiff. The products marketed by the plaintiff are known for their quality and variety of ornaments. Complaining of infringement of trade mark and passing off, the suit was laid. 3. The defendants resisted the suit. They disputed the claims made by the plaintiff in the plaint. The fourth defendant started a proprietary concern by name 'Josco Jewellery' at M.O. Road, Thrichur. According to the defendants, the trade name 'Josco Jewellery' was invented by the fourth defendant from his name 'Jos' with the suffix 'co'. They have in no way infringed the right of plaintiff R.F.A.186/2005. 3 and at no point of time they have held out that they had any connection with the business run by the plaintiff or the words 'Josco Fashion Jewellers'. The allegations to the contrary are false. They also contended that they did not have large turn over. It is further asserted that most of the customers are from local area and they are persons known to the defendants and their relatives. It was claimed that the names are clearly distinguishable and there is no similarity in the name or in the logo of the two parties. It is also contended that the customers belong to well informed category and the gold or gold ornaments are not purchased like vegetable or provision. It is after much thought and enquiry that one goes to purchase gold ornaments. So before going for purchase, he would assure that he gets a right sort of information regarding the quality of the material to be purchased and the place from where it is to be purchased, so that he is not taken for a ride. Further, it is stated that nobody can prevent a person from using his own name for business purpose. If at all the plaintiff had gained R.F.A.186/2005. 4 any goodwill and reputation, the defendants have done nothing to affect the same. The suit arises out of business jealousy and not out of the need or desire to protect the trade mark or reputation. 4. On the above pleadings, issues were raised by the trial court. The evidence consists of the testimony of P.Ws. 1 to 7 and documents marked as Exts.A1 to A38 from the side of the plaintiff. The defendants had D.W.1 examined and Exts.B1 to B8 marked. Ext.C1 is the commission report and Exts.X1 to X6 are third party exhibits. Materials produced were marked as M.Os.1 to 8. On a consideration of the materials, the court below found that the defendants are guilty of both infringement of trade mark and mischief of passing off and accordingly the suit was decreed. 5. The questions that arise for consideration are : i) whether the court below was justified in coming to the conclusion that there is infringement of trade mark of the plaintiff? 5 R.F.A.186/2005. ii) Is the court below justified in coming to the conclusion that the defendants are guilty of passing off? iii) Do the judgment and decree of the court below call for an interference? ## Issues 1 and 2 6. As already stated, the short case put forward by the plaintiff is that by adopting a trade mark similar to the one that belongs to the plaintiff and got registration by the plaintiff under the Trade Marks Act by the defendants, his rights are infringed and also that the defendants are guilty of passing off their goods as if it belonged to the plaintiff. The defendants contended that 'Josco' is the invented name by them and the claims made by the plaintiff regarding infringement and passing off are without any basis. 7. The question that would arise for consideration are whether the plaintiff has exclusive right to use the name 'Josco' and whether the defendants are guilty of adopting R.F.A.186/2005. 6 the same name with a view to pass off and infringing the trade mark rights of the plaintiff. 8. Learned counsel appearing for the appellants contended that the lower court was wrong in its approach and conclusion. The trade name of the plaintiff was 'Josco Fashion Jewellers', whereas the trade name of the defendants was 'Josco jewellery'. There is absolutely no similarity between the two and it is quite unlikely that any confusion or deception will be caused. It was pointed out that the nature of the customers who purchase gold ornaments will have to be considered in considering whether there is infringement of trade mark and whether the defendants are guilty of passing off. It was contended that the plaintiffs cannot lay claim to the word 'Josco' alone because the registered trade mark is 'Josco Fashion Jewellers'. There is a clear distinction between the two. Considering the nature of the customers who purchase gold ornaments, and the conspicuous difference of the trade names, there is absolutely no likelihood or even a remote R.F.A.186/2005. 7 chance of causing any deception or confusion. It was also pointed out that the plaintiff has no consistent trade name. The registered trade name is 'Josco Fashion Jewellers'. In U.A.E. the registration is for the word 'Josco'. In India in all advertisements made by the plaintiff they styled themselves as 'Josco Jewellers' and also as 'Josco Fashion Jewellers'. Learned counsel also pointed out that the business of the defendants can in no way be a threat to the plaintiff since the defendants run a small scale business and are unable to compete with a reputed concern like 'Josco Fashion Jewellers'. It was further contended that the name of the fourth respondent is 'Jos' and it was his name that is used for naming the business run by the defendants by adding the suffix 'co'. The defendants are entitled to use the said name as their trade name and the plaintiff can take no manner of objection, so says the counsel. 9. On the other hand, learned counsel appearing for the contesting respondents pointed out that there is no merit in any of the contentions raised by the appellant. The 8 trade mark adopted by the plaintiff namely 'Josco Fashion Jewellers' is a registered trade mark and the plaintiff has exclusive right to use the said trade name. It is idle for the appellants to contend that there is no similarity between the two names, since any person can easily be led to believe that the two businesses are interlinked or connected. Learned counsel pointed out that the words 'Fashion Jewellery' is descriptive in nature and the real catch lies in the word 'Josco'. By adopting the name 'Josco', the defendants are trying to hold themselves out as a limb of the plaintiff or they are trying to pass off their goods as if it belonged to the plaintiff. At any rate, the conduct of the defendants affected the reputation of the plaintiff's business and goodwill. Learned counsel referred to the evidence in the case and pointed out that there have been instances where people believed the concern of the defendants to be a sister concern of the plaintiff. Persons who had purchased gold ornaments from the defendants' concern had approached the plaintiff with complaints. As far as the R.F.A.186/2005. 9 infringement of trade mark is concerned, once it is proved that the defendants have adopted a deceptively similar name, that would be sufficient and no further ingredients need to be proved. Learned counsel also pointed out that infact the licence obtained by the defendants is in relation to silver jewellery and under the guise of that licence, he is selling gold ornaments, which is illegal. Since the defendants have adopted a deceptively similar name, it is likely to cause confusion and deception in the minds of the general public and they are likely to be misled. The claim of the appellants that the customers are well informed group is without any basis. 10. Learned counsel also referred to the various provisions of the Trade Marks Act and pointed out that a fair reading of the provisions of the Act would clearly show that the defendants are guilty of infringement of registered trade mark. It is also pointed out that they are equally guilty of the mischief of passing off also. Learned counsel concluded by pointing out that the lower court has referred to various R.F.A.186/2005. 10 decisions regarding infringement of trade mark and passing off and has come to the conclusion that the defendants are guilty of both infringement of trademark and mischief of passing off. There is no reason or justification to interfere with the judgment and decree of the court below. 11. It is seen from the pleadings and evidence that the plaintiff has a registered trade mark namely'Josco Fashion Jewellers' and they are engaged in gold ornament business from 1978 onwards. The complaint of the plaintiff seems to be that recently the defendants have started business in gold ornaments adopting the name 'Josco Jewellery' at M.O.Road, Thrichur. The plaintiff has several branches both inside and outside India. In fact, the objection taken by the plaintiff is regarding the use of the word 'Josco' by the defendants as their trade name. The defendants would say that the registered trade name of the plaintiff is 'Josco Fashion Jewellers' and they cannot lay exclusive claim to the word 'Josco'. They further contended R.F.A.186/2005. 11 that there is absolutely no resemblance or similarity between 'Josco Fashion Jewellers' and 'Josco Jewellery'. 12. Before going into the details, it is necessary to understand what constitutes infringement of trade mark and passing off. 13. According to the Trade Mark Act, 1999, Mark is defined as follows:- _2(m)“mark” includes a device,brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;_ ## 14. Trade mark is defined as follows _:-_ _(zb)“trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and --_ - _(i) in relation to the Chapter XII (other than Section 107), a registered trade mark or_ R.F.A.186/2005. 12 - _a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and_ - _(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to the goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;”_ 15. Section 27 reads as follows:- _**“27. No action for infringement of unregistered trade mark.-** (1) No person shall be entitled to institute any proceeding to prevent,_ R.F.A.186/2005. 13 _or to recover damages for, the infringement of an unregistered trade mark._ _(2) Nothing in this Act be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another persn, or the remedies in respect thereof.”_ ## 16. Section 29 reads as follows:- “ _**29** ._ _**Infringement of registered trade marks:-** (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of mark likely to be taken as being used as a trade mark._ _(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way permitted use, uses in the course of trade, a mark which because of --_ R.F.A.186/2005. 14 - _(a) its identity with the registered trade mark and the similarity or the goods or services covered by such registered trade mark:, or_ - _(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark;,or_ - _(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trademark,_ _is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark._ - _(3) In any case falling under clause(c) sub-section (2), the court shall presume that is likely to cause confusion on the part of the public._ - _(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--_ - _(a)is identical with or similar to the registered trade mark;_ - _(b)is used in relation to goods or services_ R.F.A.186/2005. 15 _which are not similar to those for which the trade mark is registered; and_ _(c)the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair adavantage of or is detrimental to, the distinctive character of repute of the registered trade mark._ _(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered._ _(6) For the purpose of this section, a person uses a registered mark, if, in particular, he-_ _(a) affixes it to goods or packaging thereof:_ _(b) Offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;_ R.F.A.186/2005. 16 _(c) imports or exports goods under the mark;, or_ - _(d) uses the registered trade mark on business papers or in adverting._ _(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee._ _(8) A registered trade mark is infringed by any advertising--_ - _(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or_ - _(b) is detrimental to its distinctive character; or_ - _(c) is against the reputation of the trade mark._ _(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those_ R.F.A.186/2005. 17 _words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.”_ 17. In short, a trade mark is a word, symbol or phrase used to identify a particular manufacturer’s or seller’s products and distinguish them from the product of others. It is under certain circumstances, trade mark protection is extended beyond words, symbols, phrases includes other aspects of a product such as its colour and packaging. Trade mark makes it easier for consumers to quickly identify the source of a given product. Action for unregistered trademark is provided by Section 27 while action for infringement of registered trade mark is provided under Section 29 of the Trade Marks Act,1999 (hereinafter referred to Act 47 of 1999). Infact, till the inclusion of Section 27(2) in the Act passing off action was considered as a common law remedy. The said mischief has now been given statutory recognition. 18 R.F.A.186/2005. 18. Passing off and infringement of trade mark are actions relating to intellectual property rights. Intellectual property rights creates and tries to protect the rights of owners and creators of work, which had resulted in the creativity. Rights may relate to literature, music, inventions etc. The intellectual property laws assign exclusionary rights to the creators or inventors against any misappropriation or use of the work without prior knowledge of the creator of the work or inventor. 19. Modern capitalism is designed and devised to sell products and services by means of some mark, brand or name. This attitude has invaded into all fields. Trade marks arise to afford protection against unfair imitation of marks and names. The trade mark Act 1999, broadly offer two types of protection namely; 1. Infringement of registered trademark and 2. Passing off action. 20. **Kerly's Law of Trade Marks and Trade Name** s, 12[th] Edn. at page 292 draws distinction between infringement of trade mark and passing off as follows: R.F.A.186/2005. 19 _“Although many of the principles applicable are common to both forms of action (and the two are habitually combined in a single action), it is essential to deal separately with actions which are brought to prevent or to recover damages for the infringement of trade or service mark, and with those which are compendiously described as “passing -off actions.” In an action of the first class the plaintiff complains that the defendant has infringed his mark by taking it in its entirety, or by taking a substantial portion of it, or by colourably imitating it, and he relies on his statutory title to the exclusive use of the mark in question for goods or services of a specified kind; in an action of the second class the plaintiff's case is less specialised, for he complains that the defendant is using means which are calculated to pass-off, or to cause to be passed-off, the goods or business of the defendant as and for those of the plaintiff, and the means may or may not comprise or consist of the taking of a mark, either registered or not.”_ R.F.A.186/2005. 20 ## 21. In **Law of Trade Marks and Geographical** **Indications** by K.C.Kailasam and Ramu Vadaraman, 2003 Edn. at page 356 the distinction is drawn thus: _“The issue in a passing off action is: would the user of the defendants, either the actual user proved in evidence or the proposed user conceded for the purposes of action, be likely to lead person, either members of the trade or of the public, to suppose that the goods so sold were the product of the plaintiffs or that the business concerned in their production was the plaintiff or was associated with the plaintiff's business._ _The issue in an infringement action is: Are the defendants proposing to use a mark which is identical with the registered trademark of the plaintiff or which so nearly resembles it as to e likely in normal course of trade to deceive or cause confusion to persons who are brought into contact with it. In an infringement action, once it is found that the defendant's mark is used as a trademark, the fact that he makes it clear that the commercial origin of the goods indicated by the trademark in some business other than that of the plaintiffs, avails him nothing, since infringement_ R.F.A.186/2005. 21 _consists in using the mark as a trademark i.e. as indicating origin.”_ 22. In **Intellectual Property** by P. Narayanan, 3[rd] Edn. at page 222 the author tabulates the difference between infringement of trade mark and action for passing off. 23. It is usually stated that the action for infringement is a statutory remedy, while action for passing off is usually treated as a common law remedy intending to protect unregistered trade mark. 24. In the decision reported in **Jaleel Associates** **v. Hotel Sagar** (2005(1) K.L.T.757) this court has observed that in view of Section 27 of the Trade Marks act it could no longer be said that passing off action is a common law remedy. 25. There are umpteen number of decisions drawing the distinction between infringement and passing off. R.F.A.186/2005. 22 26. Some of the decisions are (1). **Durga Dutt Sharma V. N.P.Laboratories** [AIR 1965 SC 980], (2). **Parle Products V.J.P.&Co.Mysore** [AIR 1972 SC 1359], (3). **Moideen V. Vasu** [1980 KLT 325], (4). A **.C.Krishnan V. Nambisans Dairy Pvt.Ltd** [1997(1) KLT 163], (5). **SM Dychem Ltd V. Cadbury (India) Ltd** [AIR 2000 (5) SCC 573], (6). **Satyam Infoway Ltd V.Sifynet Solutions Pvt.Ltd** [AIR 2004 SC 3540], (7). **Preme V. Ambujakshan** [2006(1) KLT 905] 27. It is unnecessary to refer to the all the above decisions except the one reported Preme's case (supra), wherein the other the decisions on the point has been referred to. In the said decision, it is held as follows:- _“6. There is difference between an action for passing off and action for infringement of trade mark. An action for passing off is a common law remedy being in substance an action for deceipt. It is a passing off by a person of his own goods, as those of another. The action for infringement of trade mark is a statutory remedy conferred on the_ R.F.A.186/2005. 23 _registered proprietor of a registered trade mark for the vindication of his exclusive right to the use of the trade mark in relation to those goods as provided under the Trade Marks act. the use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. May be that where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. In an action for infringement, plaintiff must make out that the use of the defendant's mark is likely to deceive, where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise when the court reaches the conclusion that there is an imitation, no further evidence is required to establish that plaintiff's rights are violated. If the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the_ R.F.A.186/2005. 24 _get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial. But in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. Once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be in the course of trade the question whether there has been an infringement is to be decided by comparison of the two marks. Once the two marks are identical, the infringement is made out. Once two marks are not identical, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade as is likely to deceive or cause confusion in relation to goods in respect of which it is registered. But this question is not relevant in an action for passing off. The basis of an action for passing off is a false representation by the defendant. The purpose of an action for passing off is not only to protect the commerce and_ R.F.A.186/2005. 25 _goodwill, but also to ensure that the purchasers were not exploited and dishonest trading is prevented.”_ 28. It would appear from a reading of the decision that the two remedies available namely; the infringement of registered trade mark and passing off action are distinct and independent, but not mutually exclusive. As far as a registered trademark is concerned the applicant may able to seek remedy under both heads. But as far as infringement of unregistered trademark is concerned, the only remedy seems to be passing off action. First of all, in order to serve as a trademark, a mark must be distinctive. That means, it must be capable of identifying the source of a particular good. In distinguishing whether a mark is distinctive, the courts usually categorize the mark into four based on the relationship between the mark and the goods they intend to represent. They are:- 1. Arbitrary or fanciful 2. Suggestive 3. Descriptive 4.General. A trade mark which qualifies for protection is acquired in two ways. They are:-1. User in prior R.F.A.186/2005. 26 point of time and 2. Being the first in registering the mark. Registration of a trade mark constitutes nationwide constructive notice to others that the trade mark is owned by a party and it enables the holder to sue for infringement in appropriate forum. 29. When one seller is using and adopting a trade mark ie. confusingly similar to the prior adopted and used trademark or registered trade mark of another seller that amounts to infringement of trademark. The standard is ’likelyhood of confusion’. 30. To be more precise and specific the use of a trade mark in connection with the sale of a good constitutes infringement if it is likely to cause confusion in the minds of the consumers regarding the source of goods or as to the sponsorship or approval of such goods. The facts that usually taken into consideration while considering the case of infringement are 1. The strength of the mark 2. The proximity of the goods 3. Similarity of the marks 4. The evidence of actual confusion 5. Similarity of marketing 27 R.F.A.186/2005. channels used. 6. The degree of caution exercised by a typical purchaser 7. The defendants intend. 31. It is easy to understand as to why such practices are prohibited by law. If it was otherwise, it would cause confusion in the minds of the consumers and they could not be assured of the quality of the products they purchased. Further it is quite unfair for one person to take advantage of the money and effort spent by another person in building up goodwill and reputation for the trade mark. 32. In the case of passing off, it was considered to be common law tort intended to protect unregistered trademarks. True basis of the action is now held to be that passing off injures the right of property in the plaintiff. It affects his goodwill and business. The gist of concept of passing off is that the goods are telling falsehood and are telling something about themselves to mislead. The basic principle is that one man has no right to put his goods for sale as the goods of a rival trader. The characteristics of a passing off action are made mention of at note 185.1.357 in R.F.A.186/2005. 28 **Halsburry’s laws of India** Vol.20(1),wherein it is held as follows:- _“An action for passing-off is a common law remedy being an action in substance of deceit under the law of tort. The following five characteristics which must be present in order to create a valid cause of action for passing-off are:_ - _(1) misrepresentation,_ - _(2) made by a trader in the course of trade,_ - _(3) to prospective customers of his ultimate_ - _customers of goods or services supplied by him,_ _(4) which is calculated to injure the business or goodwill of another trader in the sense that there is a reasonably foreseeable consequence, and_ - _(5) which causes actual damage to a_ - _business or goodwill of the trader by whom the action is brought, or in a quia timet action, will probably do so.”_ 33. There are no. of decisions as to what constitutes passing off. Few among them are 1. **Cadila HealthCare Ltd V. Cadila Pharmaceuticals Ltd** [2001(5) SCC 73], (2). **Heinz Italia V.Babur India Ltd** [ 2007 (6) R.F.A.186/2005. 29 SCC 1] (3). **Lakshmikant Patel V. Chetanbhat Shah** [AIR 2002 SC 275] (4) **K.Narayanan V. S Murali** [2008(10) SCC 479] (5) **Premi V.Ambujakshan** [2006(1) KLT 905], (6) **Mahendra &Mahendra Paper Mills V. Mahendra & Mahendra Ltd** [AIR 2002 SC 117], (7) **Irvine V.Tallksport Ltd** [ 2002(2) All.E.R.414] 34. It is now become necessary to consider what one means by goodwill and reputation which is essential for establishing the mischief of passing off. 35. Goodwill of a business is recognized as a form of property. Goodwill of business must emanate from a particular centre or source. It has power of attraction sufficient to bring customers home to the source from which it emanates. It is composed of a variety of elements. It differs in its composition in different trades. It has no independent existence. It must be attached to a business, trade or service. It is considered to be an intangible property capable of being transferred. The term goodwill was considered in the decision reported in **Star Industrial** R.F.A.186/2005. 30 ## **v. Yap Kwee Kor** ((1976) FSR 256) wherein it was held as follows: _“Goodwill as the subject of proprietary right is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each. So when the business is abandoned in one country in which it has acquired a goodwill, the goodwill in that country perishes with it, although the business may continue to be carried on in other countries.”_ ## 36. Explaining what is meant by reputation, in **General Motors Corp V.Y Plon SA** [1999] All ER (EC)865] it was held as follows:- _“26 The degree of knowledge required must be considered to be reached when the earlier mark is known by significant part of the public concerned by the products or services covered by that trade mark._ _27 In examining whether this condition is fulfilled, the national court must take into_ R.F.A.186/2005. 31 _consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it”._ 37. There exists a clear distinction between reputation and goodwill. 38. One aspect that remains to be considered is the principle that is enunciated as per Section 29(4) of Act 47 of Act 1999. That infact gives statutory recognition to the concept of dilution which is a limb of infringement of trademark. _“The concept of of dilution was first thought by Frank I Scheckter, in “The Rational Basis of Trade Mark Protection”[1927] 40 Harvard Law Review 813. Judge Learned Hand”s famous opinion in Yale Electric Corp.V. Robertson, 26 F.2d 972 (2d Cir.1928) which approved injuntive releif against a defendant”s use of a mark similar to that of the plaintiff in connection with unrelated goods states, interalia, that:_ R.F.A.186/2005. 32 _“[I]t has of recent years been recognised that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill If another uses it, he borrows the owner's reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unles the borrower's use is so foreign to the owner's as to insure against any identification of the two, it is unlawful.”_ 39. Having thus understood the principles regarding infringement of trade mark and passing off, one may now make an attempt to ascertain whether the complaints made by the plaintiff are genuine. 40. There cannot be and there is not much dispute regarding the volume of business run by the plaintiff R.F.A.186/2005. 33 and the huge investment made by them including for exclusive advertisement to gain publicity. The evidence is clear to the effect that the plaintiff has earned a good reputation and goodwill in gold jewellery business. At the same time, even going by the averments in the written statement and also the evidence adduced by D.W.1, the investment of the defendants in their business is much less and their field of operation is also restricted and limited and so also the customers. 41. The lower court has adverted to the evidence of P.W.1 in detail and it is unnecessary to reproduce them in this judgment. It appears that the court below was greatly impressed by the testimony of P.W.1 regarding the registration of trade mark and the possibility of causing deception and confusion by the defendants adopting the name 'Josco Jewellery' as their trade name. The court below was inclined to accept the evidence on record produced by the plaintiff to show that they have a large turn over and they established reputation in the field of sale of gold R.F.A.186/2005. 34 ornaments. After having gone through the evidence of P.W.1, it does not appear that a different view is possible. The plaintiff has adduced evidence to show that the customers were misled by the similarity in name and confusion was caused in their minds. 42. As regards the principles of infringement, it is well settled and the golden rules are (i) in deciding whether the alleged trade mark is likely to cause confusion or not, it is the totality of the circumstances which is to be kept in view, (ii) the initial burden to show that the defendant's mark is likely to cause confusion lies on the plaintiff, who wants to restrain the use of alleged infringing mark. If any resemblance is found to exist between the two marks, it is then for the defendant to show that the marks are so dissimilar that there is no reasonable probability of any considerable section of the public being deceived, (iii) For deciding the dispute about infringement of trade mark, the court has to have regard to the way in which the infringing trade mark will appear, when it is placed on the goods of the R.F.A.186/2005. 35 owner of the registered trade mark. If the courts came to the conclusion that an ordinary purchaser of goods in question is not able to distinguish between the offending mark and the registered mark, the court will be justified in coming to the conclusion in favour of the registered owner of the trade mark, (iv) The question of possibility of confusion is not to be decided on the basis of a person's looking at the two trade marks side by side but on the basis that normally a customer will see one trade mark in the absence of another and will have to make up his mind about the trade mark before him, being one he is looking for or not in the light of his general recollection or what nature of trade mark sought for by him was. In deciding the question of similarity between the marks, the court has to approach the subject from the point of view of a man of average intelligence and imperfect recollection. The trade mark is the whole thing, that is the total thing registered and it is the whole thing or the whole word that has to be considered (iv) The resemblance between the two may be phonetic, may be R.F.A.186/2005. 36 visual, may be auditory or may be in the meaning of the word mark. 43. In the case on hand, it is not in dispute that 'Josco Fashion Jewellers' is a registered trade mark. Going by the principles regarding the infringement of trade mark the whole set of words namely, 'Josco Fashion Jewellers' will have to be taken into consideration. The trade name adopted by the defendants is 'Josco Jewellery'. As regards the words 'fashion' and 'jewellery', they cannot convey any distinctiveness since they are descriptive in nature. Therefore the catch words is 'Josco'. It is true that the plaintiffs have not separately registered the word 'Josco' as their trade name. But the common element in the two trade names is 'Josco'. 44. The evidence clearly shows that the plaintiff commenced his business at Kottayam prefixing the name 'Josco' to his business in gold ornaments. It may be true that the branch at Trichur was opened much later. But that is not the determining factor. It may also be that at Trichur R.F.A.186/2005. 37 the defendants might have adopted the name 'Josco' earlier than the branch opened by the plaintiff in relation to his business in gold ornaments. There were valiant attempts from the side of the defendants to show that they have started the business in the name 'Josco' in 1945. The claim of D.W.1 was that his father had coined the name 'Josco'. This was contrary to the pleadings in the written statement. The definite stand in the written statement was that the fourth defendant invented the word Josco by suffixing the word 'co' to his name 'Jos'. The averments in the written statement are to the effect that the defendants started a proprietary concern bearing the name 'Josco Jewellery', which later became a partnership business. 45. It is clear from the evidence produced by the defendants that there is nothing to show that prior to 1989 the defendants were conducting business in the name and style 'Josco Jewellery'. 46. It is interesting to note that infact the licence obtained by the defendants is for the purpose of conducting R.F.A.186/2005. 38 business in silver jewellery. The court below has noticed that no documents whatsoever have been produced by the defendants to show that they were entitled to carry on business in gold ornaments. 47. The above conduct of the defendants apart from being illegal also has the effect of injuring the reputation and goodwill of the plaintiff. Even though the Gold Control Act was abolished in 1990, still the defendants were unable to carry on business in gold ornaments and they were not entitled to do so. The court below on a consideration of the evidence came to the conclusion that the defendants have made an attempt to expand their business and they started gold business only recently. The view taken by the lower court appears to be fully justified. 48. True, there is similarity in the trade name of both the plaintiff and defendants. The plaintiff carries on the business under the registered trade name 'Josco Fashion Jewellers' while the defendants are carrying on the business R.F.A.186/2005. 39 under the name and style 'Josco Jewellery'. As rightly noticed by the court below, the importance is to the word 'Josco'. The visual representation of the trade name is also slightly different, but the fact remains that there is considerable similarity between the trade names adopted by both the parties and it cannot be said that the trade name adopted by the defendants is not deceptively similar to the registered trade mark of the plaintiff. 49. The contention of the defendants that the nature of customers is such that they are unlikely to be deceived is without basis. Apart from the fact that there is no evidence in this regard, the plaintiff has adduced evidence to show there are complaints about the defendants' concern by the persons who believed that it was either the sister concern or has something to do with the concern run by the plaintiff. There is no reason to disbelieve the evidence so furnished by the plaintiff. On the evidence on record, the court below was perfectly justified in coming R.F.A.186/2005. 40 to the conclusion that the defendants are guilty of infringement of trade mark of the plaintiff. 50. As far as the issue regarding passing off is concerned, it is well established that three elements will have to be established, namely, (i) goodwill and reputation attached to the goods and services of the plaintiff, (ii) misrepresentation of the goods or services offered by the defendants as that of the plaintiff, (iii) plaintiff has suffered damages or likely to suffer damages. The above are the three elements which have to be established in order to succeed in a case of passing off. It is well established that even assuming that the plaintiff may fail to establish infringement of trade mark, still he may succeed in a claim for passing off. From the evidence, it is clear that people have been misled to believe and that there has been confusion in the mind of the people regarding the business carried on by the defendants and atleast a few of the people were led to believe that the business run by the defendants was closely associated with the business of the plaintiff. As R.F.A.186/2005. 41 already noticed, there is considerable evidence on record to show that the plaintiff has earned goodwill and reputation in relation to his business by adopting the trade name almost similar to that of the plaintiff. It follows that the defendants were trying to pass off their goods as if it belong to the plaintiff. This is more so in the light of the fact that there is nothing to show that initially the defendants had any authority to deal in gold business and also the fact that the court below has found that the defendants had entered into gold business only recently. 51. It is true that the plaintiff has not proved any damage as such. But that is a matter for inference and it is well established that in all cases it is not absolutely necessary to establish actual damages. 52. The likelihood of confusion and deception is determined by ascertaining the manner in which the names are exhibited and also whether the activities of the rival contestant occupy a common field. As already noticed, the plaintiff has succeeded in establishing that his business R.F.A.186/2005. 42 under the trade name 'Josco Fashion Jewellers' has established a commercial reputation distinctively attached to his goods. 53. At the risk of repetition one may notice that the plaintiff has produced documents to show his volume of business and also the investments that have been made by him under various heads. 54. It could thus be seen that the evidence on record clearly shows that the defendant is guilty of infringement of registered trade mark and so also passing off. The court below has considered all the aspects in considerable detail and has analysed the evidence on record and has applied the correct principles of law. It does not appear that the findings of the court below suffer from any legal or factual infirmity. Issue No.3 55. In the light of the above finding, no grounds are made out to interfere with the judgment and decree of the court below. R.F.A.186/2005. 43 This appeal is without merits and it is accordingly dismissed. However, there will be no order as to costs. **P. BHAVADASAN, JUDGE** sb.