Pavunny and Kalan Pharmaceuticals vs Lonappan and others

IN THE HIGH COURT OF KERALA AT ERNAKULAM PRESENT : THE HONOURABLE MR. JUSTICE P.BHAVADASAN TUESDAY, THE 18TH OCTOBER 2011 / 26TH ASWINA 1933 AS.No. 17 of 1988() ------------------OS.4/1978 of ADDL.DISTRICT COURT, THRISSUR .................... APPELLANT(S)/DEFENDANTS: ------------------------------------------ 1. PAVUNNY, SON OF OUSEPH, (DIED) KALANS HOUSE, NELLAI, TRICHUR DISTRICT. 2. KALAN PHARMACEUTICALS, NELLAI, TRICHUR DISTRICT. THE IMPEADMENT OF THE LEGAL HEIR OF DECEASED 1ST APPELLANT IN A.F.A.64/97 (1ST APPELLANT IN A.S. 17/88) AS ADDL.A3 ENURES TO THEIR BENEFIT TO ALL STAGES OF LITIGATION AS PER ORDER DATED 30.3.201 IN MEMO DTD. 23.3.2012 WITH C.F. 2169/2012. THE NAME OF ADDITIONAL 3RD APPELLANT INCORPORATED. ADDL. A3 : VARGHESE, S/O. LATE PAVUNNY, KALAN HOUSE, NELLAI, TRICHUR (DT). THE CAUSE TITLE OF APPEAL IS AMENDED BY INCORPORATING THE NAME OF ADDITIONAL 3RD APPELLANT AS PER ORDER DATED 8.4.2013 IN I.A. 708/2013. ## ASSISTANT REGISTRAR BY ADV. SRI. V. CHITAMBARESH (SR.) SRI.SAIGI JACOB PALATTY RESPONDENT(S)/PLAINTIFF: ---------------------------------------- LONAPPAN, SON OF OUSEPH, KALAN NELLAI, TRICHUR DISTRICT. (DIED) ADDL.R2 TO R7 IMPLEADED. ADDL.R2. ANNAM, WIFE OF LAE KALATH LONAPPAN, KALAN HOUSE, NELLAI P.O. - 680 305, TRICHUR DISTRICT. ADDL.R3. K.L. JOSEPH, C/O. ANNA AYURVEDIC NURSING HOME VELENCIA, MANGALORE - 575 002, KARNATAKA. ADDL.R4. ROSY SUNNY, THOTTUNGAL HOUSE, VILANGAN P.O., TRICHUR DISTRICT. ADDL.R5. CHERIYAN, SON OF LATE K.D. LONAPPAN, NELLAI P.O., 680 305, TRICHUR DISTRICT. ADDL.R6. VARGHESE -DO- -DO- ADDL.R7. PAULI, -DO- -DO- ADDL. R2 TO R7 IMPLEADED AS THE LEAL HEIRS OF THE DECEASED SOLE RESPONDENT AS PER ORDER DATED 25.6.1997 IN C.M.P. 6995 OF 1991. ADV. SRI.S.V.BALAKRISHNA IYER, SENIOR ADVOCATE FOR R7 SRI.K.JAYAKUMAR (SR) FOR R7 SRI.P.B.KRISHNAN FOR R7 SRI. V.O. JOHN FOR R1 & R6 THIS APPEAL SUIT HAVING BEEN FINALLY HEARD ON 07/09/2011, ALONG WITH AS NO. 483 OF 2000 AS NO. 355 OF 2000 CMA NO. 59 OF 2000 THE COURT ON 18.10.2011 DELIVERED THE FOLLOWING: ## **P. BHAVADASAN, J.** - - - - - - - - - - - - - - - - - - - - - - - - - - - A.S. Nos.17 of 1988, 355 of 2000, 483 of 2000 & C.M.A. No.59 of 2000 - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Dated this the 18th day of October, 2011. ## **JUDGMENT** A.S. No.17 of 1988 arises out of the judgment and decree in O.S. 4 of 1978 and the defendants are the appellants. A.S. 355 of 2000 and 483 of 2000 arise from O.S. 11 of 1997 and O.S. 4 of 1993 respectively, which were jointly tried and disposed of by a common judgment, whereby both the suits were dismissed. Plaintiff is the appellant in those cases. C.M.A.59 of 2000 arises out of the order in I.A.271 of 1997 in O.S.3 of 1997, a petition for interim injunction which was dismissed by the court below thereby bringing the petitioners before this court in appeal. 2. Though the suits were tried independently and parties may also be different, the issue involved is common and the decision in A.S.17 of 1988 to a great extent will determine the fate of the disputes in the other matters A.S.17/1988 & con.cases . 2 also. Therefore, these appeals are being jointly heard and disposed of by a common judgment. 3. Nearly six decades have elapsed since the descendants of late Ouseph Vaidyan, a renowned Ayurvedic Physician and manufacturer of a large number of Ayurvedic preparations, have been at war with each other. More than concentrating on their avocation and business, they seem to be far more concerned in litigating on issues which are trivial in nature resulting in depletion of reputation, finance and credibility. The fight that has been going on for all these years is mainly regarding the use of certain words like 'Kalan', 'Kalans', 'Kalan Nellayi', 'Ouseph Vaidyan' etc. One of the descendants of late Ouseph Vaidyan lays exclusive claim to the use of the said words. His grievance consistently seems to be against the use of those words by others. He takes objection in using the word 'Kalan' independently, and he also takes objection to the naming of any establishment by any other person by the name A.S.17/1988 & con.cases . 3 'Kalan' or use of the word 'Kalan' in association with other words to name any establishment that others might start or they are running for the purpose of manufacturing Ayurvedic medicines. He however spares three concerns which are being run by his brothers at the time of execution of Ext.A2 in O.S.4 of 1978. 4. Lonappan, the eldest son of late Ouseph Vaidyan, a renowned Ayurvedic physician is the plaintiff in O.S. 4 of 1978 and who is the claimant already made mention of. After his death, his son Poly comes up with the same claim in O.S. 11 of 1997 and O.S. 4 of 1993. 5. Tracing the history may not be totally irrelevant in this context. Late Pavunny had three sons, namely, late Ouseph Vaidyan, the renowned physician, late Kochu Vareed and late Lonappan. Late Ouseph Vaidyan had six sons, namely, Lonappan, Pavunny, Thomas, Kochu Vareed, Jose and Anto. Lonappan, the eldest son of late Ouseph Vaidyan had four sons, Jose, Cherian, Varghese and Poly. Late A.S.17/1988 & con.cases . 4 Pavunny, the son of late Ouseph Vaidyan, had three sons, Jose, Antony and James. Kochu Vareed, the son of late Ouseph Vaidyan had three sons, Pavunny, Johny and Jose. Pavunny, son of Kochu Vareed, brother of late Ouseph Vaidyan, had four sons, George, Lonappan, Jose and Thomas. 6. O.S. 4 of 1993 is by Poly, son of Lonappan against Smt. Flyci, wife of James, son of Pavunny, Sunny, son of Thomas and against the firm run by Smt.Flyci, namely, Kalan Drugs and Remedies. He complains of misuse of the word Kalan and the mischief of passing off played by the defendants. O.S.11 of 1997 is filed by Poly against the State officials and officers of the Drugs Department against granting any license to any person using the name Kalan for establishing any concern or selling medicines. 7. O.S.4 of 1978, the earliest among the suits, is by Lonappan, as already mentioned, the eldest son of late A.S.17/1988 & con.cases . 5 Ouseph Vaidyan, against his brother Pavunny and against the firm run by him, namely Kalan Pharmaceuticals complaining that the defendants in the said suit are misusing the words 'Kalan', 'Kalan Nellayi', 'Kalans', 'സ�ക�ല Kalan' etc. He complained of passing off by the defendants. Late Ouseph Vaidyan earned a good reputation as an Ayurvedic physician. He later began to manufacture medicines, some of which were his own combinations. He established a manufacturing unit. He initially named it as Kerala Ayurvedic Pharmacy and later changed the name to 'Kalan'. 8. In the year 1965, to be precise, on 31.3.1965, by Ext.A1 in O.S. 4 of 1978, late Ouseph Vaidyan executed a sale deed in favour of his six sons. As per Ext.A1, he assigned the establishment, 'Kalan', address 'Kalan Nellayi' all depots of Kalan, rights to manufacture various medicines, namely, Nimbasavam, Dhakshagritham, Saribathylam, Gas trouble Samhari, Ushnaroga Samhari, A.S.17/1988 & con.cases . 6 Pancharoga Samhari, Neerveezcha Samhari and Daduposhakam to his six sons. They were his self acquisitions and assets. All debts and assets acquired by him were assigned in favour of his six sons. The house name made mention of in Ext.A1 is 'Kalath'. By Ext.A5 in O.S.4 of 1993 dated 1.4.1965 the six sons constituted a partnership firm. They entered into a partnership to run the establishment 'Kalan' for manufacture of medicines, rights for which were obtained by them under Ext.A1. Unfortunately the partnership did not last long. Difference of opinion and conflicts arose between the partners resulting in filing of two suits and a Receiver was appointed to manage the affairs of the firm. The report, namely, Ext.A6 in O.S.4 of 1993 dated 9.12.1970 shows the state of affairs of the firm and the Receiver in his report recommends the winding up of the business of the firm. It is the admitted fact that the partnership was dissolved and the partnership business ceased to exist. Thereafter, by virtue of Ext.A2 in A.S.17/1988 & con.cases . 7 O.S. 4 of 1993 dated 4.1.1973 the sons of late Ouseph Vaidyan entered into a partition deed whereby they partitioned the assets left behind by late Ouseph Vaidyan. 9. The claims of the plaintiff, Lonappan, the eldest son of late Ouseph Vaidyan in O.S.4 of 1978 and Poly, the son of Lonappan in O.S.4 of 1993 and O.S.11 of 1997 respectively are based on the terms of Ext.A2 and the rights obtained by Lonappan as per that deed. Details regarding various clauses in Ext.A2 shall be referred to later after narrating the facts. 10. One fact needs to be mentioned here. As per Ext.A17 dated 10.5.1967 in O.S. 4 of 1978, late Ouseph Vaidyan executed a sale deed in favour of Lonappan, the eldest son, who too is stated in the document to be a qualified Vaidyan. Ext.A17 refers to Ext.A1 already made mention of. By Ext.A17, the assingor, namely late Ouseph Vaidyan assigned the right to use his name and address and to receive the postal articles that came in his address after A.S.17/1988 & con.cases . 8 his death. That document also contains a schedule of the rights to be enjoyed by Lonappan. 11. Now we shall return to the facts of each case in detail. 12. In O.S.4 of 1978 is filed by the eldest son of late Ouseph Vaidyan, Lonappan. He complains of passing off by his brother Pavunny, who is another son of late Ouseph Vaidyan. Pavunny is the first defendant in the suit and Kalan Pharmaceuticals, the second defendant is the concern run by him, which is covered by Ext.A2 partition deed. The grievance of the plaintiff is that the manufacture and sales of Ayurvedic medicines under the trade name 'Kalan' and 'Kalan Nellayi', which was being carried on since 1947 exclusively belongs to him. He also claims to have exclusive right to manufacture some of the medicines which are the inventions of late Ouseph Vaidyan. He refers to Exts.A1 and A2 already made mention of. He claims to have acquired the goodwill enjoyed by late Ouseph Vaidyan and 9 A.S.17/1988 & con.cases . the business conducted by him. He has the exclusive right to use the words 'Kalan' and 'Kalan Nellayi' and the emblem shown in and stated in Ext.A2. He refers to Ext.A17 also. In short, he claims exclusive right to use the words Kalan, Kalan's, Kalan Vaidyan, സ�ക�ല Kalan Vaidyan, K.P.Ouseph Vaidyan, Kalath Pavunny Ouseph and സ�ക�ല Kalan Nellayi by virtue of Ext.A2 and other deeds in his favour. He complained that recently he came to know that defendants are passing off their products using the above words, as if it belongs to the plaintiff. He seeks to restrain the defendants from infringing his rights or impinging on his rights. 13. The defendants resisted the suit by denying the exclusive claim put forward by the plaintiff. It was disputed that the plaintiff was entitled to the exclusive use of the word 'Kalan' based on Ext.A2. According to the defendants, it was not correct to say that the terms of Ext.A2 prohibited the other executants from using the word Kalan. Even going by Ext.A2, the first defendant is entitled A.S.17/1988 & con.cases . 10 to continue the business concern 'Kalan Pharmaceuticals', which gets special protection under Ext.A2 and he also claimed that he is entitled to use the words 'സ�ക�ല Kalan'. He denied the allegation of passing off made against him. He also contended that since objections were taken by the plaintiffs to certain labels which he used for selling his medicinal preparations, he has stopped using such labels. He claimed that he has stopped using any label having deceptive similarity with the one used by the plaintiff. On the basis of these contentions, he prayed for a dismissal of the suit. 14. In O.S. 4 of 1993 Poly, son of Lonappan, who is the plaintiff in O.S.4 of 1978 and who was by then no more claimed rights through the Will of his father. His suit is one for injunction restraining the defendants from committing the mischief of passing off of Ayurvedic medicines and in infringing his right for exclusive use of the words 'Kalan, Kalan's, Kallan Nellayi, സ�ക�ല Kalan Ouseph Vaidyan, A.S.17/1988 & con.cases . 11 Kalan Vaidyan and സ�ക�ല Kalan Vaidyan etc. He also objects to the naming of the concern run by the first defendant in the suit as Kalan Drugs and Remedies since the use of the word Kalan is prohibited. He would also seek the remedy of restraining the defendants from adopting such other modes to pass off the goods. He has also filed O.S.11 of 1997 against the State and the Drugs Control authorities seeking to restrain them from issuing license or registration of any product to any person who applied the names Kalan, Kalan's either independently or in association with other words. 15. In O.S.4 of 1993 defendants 1 to 3 entered appearance and they denied the allegations against them. They disputed the claim of the plaintiff to have exclusive right to use the word Kalan. It was also pointed out that they are not bound by any of the deeds executed by the predecessors-in-interest of the plaintiff. They also contended that Kalan is the name of the family and A.S.17/1988 & con.cases . 12 therefore no exclusive right can be claimed by the plaintiff for the use of that word. They asserted their right to name the establishment as Kalan Drugs and Remedies and engage in the manufacture and sale of Ayurvedic medicines as they deem fit. According to them, the plaintiff cannot take objection to any of their activities and the suit is ill-advised and misconceived one. 16. In O.S.11 of 1997, the State and its officials, who were defendants 1 to 7, though had entered appearance, did not seek to contest the suit. However, additional defendants 8 to 15 came on record by themselves and they were allowed to come on the party array by the court. They also disputed that the plaintiff had exclusive right to use the words Kalan, Kalan's or Kalan Nellayi. They also pointed out that reliance placed by the plaintiff on the judgment in O.S.4 of 1978 is misplaced because that judgment had not become final and that is pending in appeal. They also pointed out that they are not parties to A.S.17/1988 & con.cases . 13 O.S.4 of 1978 and any decision in the said suit cannot bind them. On the basis of these contentions they prayed for a dismissal of the suit. 17. O.S.3 of 1997 was filed against Poly, who is the plaintiff in O.S.4 of 1993 and O.S.11 of 1997, accusing him of the offence of passing off. The plaintiff in the said suit filed I.A.271 of 1997 for interim injunction. 18. O.S.3 of 1997 was a suit for prohibitory injunction restraining the defendants from passing off their Ayurvedic products in the name of Kalan Pharmaceuticals or any trade name using the word Kalan, Kalan Pharmaceuticals, Kalan pharma and for other reliefs. 19. The defendants resisted the suit by pointing out that the plaintiffs are not entitled to any relief in view of the decree in O.S.4 of 1978, in which the plaintiffs in the said suit were parties. The matter is pending before the appellate court and therefore they also filed a petition to stop the trial of the present suit. A.S.17/1988 & con.cases . 14 20. Issues were raised in O.S.4 of 1978. The evidence in the said suit consists of the testimony of P.Ws. 1 to 4 and documents marked as Exts.A1 to A36 from the side of the plaintiffs. The defendants had D.Ws. 1 to 3 examined and Exts.B1 to B37 marked. Exts.X1 to X12 series were marked as third party exhibits. The court on an evaluation of the evidence came to the conclusion that the plaintiff in the said suit was entitled to succeed and passed a preliminary decree, which reads as follows: _“In the result, the suit is decreed permanently restraining the defendants from using the names Kalan, Kalan's, Kalan Nellayi, Sakshal, Sakshal Kalan, K.P.Ouseph Vaidyan, Kalan Vaidyan and Sakshal Kalan Vaidyan”, in any notice, advertisement, pamphlet, leaf-let, literature, or carton of any Ayurvedic preparations prepared by the defendants. The plaintiff is entitled to the costs of the suit also.”_ As already stated, the defendant in the said suit have come up in appeal as A.S. 17 of 1988. During the pendency of the A.S.17/1988 & con.cases . 15 appeal, the sole respondent died and his legal heirs have been brought on the party array as additional respondents 2 to 7. 21. As already stated, O.S.4 of 1993 and O.S.11 of 1997 were jointly tried and disposed of by a common judgment. It appears that O.S.4 of 1993 was tried as the leading case and evidence was adduced in the said case. The evidence consists of the testimony of P.Ws.1 to 3 and documents marked as Exts.A1 to A98 from the side of the plaintiff. The defendants had D.Ws. 1 to 9 and Exts.B1 to B145 marked. Exts.X1 and X2 are third party exhibits. On an evaluation of the evidence in the said case, the trial court came to the conclusion that the name 'Kalan' is a family name and therefore the plaintiff in the said suit could not claim exclusive right to use that name and any member of the family is entitled to use the said word in any form he or she likes. However, the court held in paragraph 45 that as far as the rights made mention of in the said paragraph is A.S.17/1988 & con.cases . 16 concerned, the plaintiff has exclusive rights. However, on the basis of the earlier finding, the suits were dismissed. That has brought the plaintiff in appeal before this court as already mentioned. 22. In O.S.3 of 1997, while considering the interlocutory application filed by the petitioners as I.A.271 of 1997 the trial court found that though the petitioners were not parties to O.S.4 of 1978, since the issue is covered by the said decision, the court declined to grant injunction. That brings the plaintiffs in that suit before this court in C.M.A. 23. It could thus be seen that the issues involved in all these appeals center around the use of the words 'Kalan', 'Kalan's', 'Kalan Nellayi' etc. There are two conflicting decisions, namely the decisions in O.S.4 of 1978 and in O.S.4 of 1993 and O.S.11 of 1997. In O.S.4 of 1978 the claim of the predecessor-in-interest of the plaintiff in O.S.4 of 1993 and O.S.11 of 1997 was accepted and the A.S.17/1988 & con.cases . 17 right of the plaintiff to exclusive use of the words, already made mention of while narrating the facts, was accepted. However, in O.S.4 of 1993 and O.S.11 of 1997 the very same court took the view that the word 'Kalan' is a family name and therefore the plaintiff, who is the successor-in-interest of the plaintiff in O.S.4 of 1978 and in whose favour the right to exclusive use of the words was held, was rejected. The claim in I.A.271 of 1997 in O.S.3 of 1997 proceeded almost on the basis of the decision rendered in O.S.4 of 1978. 24. In all these cases, essentially the terms of Ext.A2 marked in O.S.4 of 1978 arise for consideration. It is agreed by all parties at the time of hearing of these appeals that atleast to a great extent, the rights and liabilities of the parties are to be determined by the terms of Ext.A2, which is an admitted document. 25. The questions that would arise for consideration are: A.S.17/1988 & con.cases . 18 (i) Has the plaintiff in O.S.4 of 1978 and O.S.4 of 1993 and O.S.11 of 11 of 1997 exclusive right to use the words 'Kalan', 'Kalan's', 'Kalan Nellayi', 'സ�ക�ല ', 'സ�ക�ല Kalan', 'Ouseph Vaidyan', 'Kalan Vaidyan' etc.? - (ii) Are the defendants in the respective suits guilty of mischief of passing off? and (iii) Reliefs and costs. ## **Issues (i) to (iii)** 26. It may be observed at the outset itself that at the time of hearing of the appeal' the controversy got confined to the use of the words 'Kalan', 'സ�ക�ല ' and 'സ�ക�ല Kalan' by the defendants in O.S.4 of 1978 and O.S.4 of 1993, so also the plaintiffs in O.S.3 of 1997. However, O.S.3 of 1997 is yet to go for trial. One may remember and recollect here that it is a conceded and admitted fact that defendants in O.S.4 of 1978 have brought about sufficient modifications to their labels thereby A.S.17/1988 & con.cases . 19 dispelling any suspicion regarding any deceptive similarity with the labels of the plaintiffs in the said suit. 27. Adv. V.Chitambaresh, learned Senior counsel appearing for the appellants in A.S.17 of 1988, contended that the trial court fell into an error in prohibiting the use of the words 'Kalan', 'സ�ക�ല ', 'സ�ക�ല Kalan' by the defendants in the said suit. Learned counsel emphasized that going by the terms of Ext.A2 in O.S.4 of 1978, the document permits the use of the word 'Kalan' by the parties to that deed to which the plaintiff is also a party. According to the learned counsel, the trial court misread the provision regarding the use of the word 'Kalan'. Referring to the judgment in O.S.4 of 1993, learned Senior Counsel pointed out that the learned Judge, who rendered the judgment in O.S.4 of 1993, has clearly analysed the entire evidence and has come to the right conclusion that the plaintiff in O.S.4 of 1993 has not acquired exclusive right to use the word 'Kalan'. The reasoning in the said judgment should be A.S.17/1988 & con.cases . 20 adopted in the decision in this appeal also, so says the learned Senior Counsel. Learned Senior Counsel pointed out that it may be true that the plaintiff in O.S.4 of 1978 may have exclusive right to use the words 'Kalan', 'Kalan's' etc., and the emblems and marks made mention of in Ext.A2. But the plaintiff has no right to prevent the other executants in Ext.A2 or their successors-in-interest from using the word 'Kalan' in combination with other words. Learned Senior Counsel pointed out that it may be that the other executants in Ext.A2 other than the plaintiff in O.S.4 of 1978 may not be able to name the establishment as 'Kalan'. But they can certainly use the word in combination with other words, either preceding or succeeding that word. Learned counsel also contended that the finding of the trial court that the right to use the word 'സ�ക�ല ' belongs exclusively to the plaintiff is erroneous and cannot have support in law. It is a descriptive word and there is nothing to show that it has acquired secondary meaning as is understood in law. A.S.17/1988 & con.cases . 21 Absolutely there is no evidence, according to learned counsel, to show that the word 'സ�ക�ല ' had acquired the distinctive feature associated with the products of the plaintiff in O.S.4 of 1978. In short, the learned counsel went on to point out that the restrictions imposed by the decree in O.S.4 of 1978 regarding the use of the words 'Kalan', 'Kalan's', 'സ�ക�ല ' and 'സ�ക�ല Kalan' are clearly wrong and illegal and unsupportable in law. 28. Sri.S.V.Balakrishna Iyer, learned Senior Counsel appearing for the respondents in A.S.17 of 1988 referring extensively to the various documents and evidence in the case and also emphasizing on the recitals in Ext.A2 contended that the findings of the court below are correct and legal. According to learned counsel, the defendants in both the suits could use the word 'Kalan' only along with their personal address and cannot use that name for any of their establishments either independently or in conjunction with other words. Learned counsel went on to point out that A.S.17/1988 & con.cases 22 . this would be clear from an evaluation of the evidence in the case and also the recitals in Ext.A2. The right to name any establishment using the word Kalan along with other words rests exclusively with the plaintiff in O.S.4 of 1978. The word 'സ�ക�ല ', according to learned Senior Counsel, has been used even by late Ouseph Vaidyan for a long time and had acquired a distinctive feature. Learned counsel also took this court through the various labels printed by the defendants which bears deceptive similarity with those of the plaintiff justifying the grievance of the plaintiff. Learned counsel also drew the attention of this court to the fact that the lower court has found that the defendant is producing spurious goods and passing them off as that of the plaintiff. Learned counsel referred to various passages from _**Sarkar on Trade Marks** ,_ _**Winfield and Jolowicz on Tort** ,_ _**Salmond and Heuston on Law of Torts** and_ _**Halisbury's Laws of England**_ to enumerate the elements that constitute passing off and whether a descriptive word can A.S.17/1988 & con.cases . 23 form a trade mark in exceptional cases. In support of his contention, learned counsel relied on the decisions reported in **Corn Products v. Shangrila Food Product** s (AIR 1960 SC 142), **Moideen v. Vasu** (1980 K.L.T. 325), Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (AIR 2002 SC 117), **Laxmikant V. Patel v. Chetanbhat Shah** (AIR 2002 SC 275), **National Garments v. National Apparels** (1989(1) K.L.T. 855), **Santhigiri Ashram v. Moideen Haji** (1988(2) K.L.T.702), **Damodara Pai v. Manilal** ILR 1971 (1) Kerala 239, **Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.** (AIR 2004 SC 3540), **Dhariwal Industries Ltd. v. M/s. M.S.S. Food Products** (AIR 2005 SC 1999), **Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd.** ((2004) 5 SCC 257), **Jaleel Associates v. Hotel Sagar** (2005 (1) K.L.T. 757) and **A.C. Krishnan v. Nambisan's Dairy Pvt. Ltd.** (1997(1) K.L.T. 163). Learned counsel relying on the recitals in Ext.A2 contended that the fact that the three establishments then A.S.17/1988 & con.cases . 24 existing and run by the brothers of the plaintiff in O.S.4 of 1978, which contained the word 'Kalan' was protected, would indicate that there was prohibition in others except the plaintiff in O.S. 4 of 1978 in using the word 'Kalan' in future with regard to the establishments they or their successors may commence. The establishment which is known as 'Kalan' was set apart exclusively to the plaintiff in O.S. 4 of 1978. Learned counsel went on to point out that probably the parties did not want the executants other than the plaintiff in O.S. 4 of 1978 to be completely divested of the right to use the word 'Kalan' and that probably is the reason why a restricted use was permitted by Ext.A2. The intention was clear, according to learned counsel, and if there is any doubt regarding that aspect, that could be cleared by looking into the other items of evidence and attending circumstances disclosed from the evidence in the case. Thus, learned counsel concluded by pointing out that A.S.17/1988 & con.cases . 25 there are no grounds to interfere with the judgment and decree in O.S.4 of 1978. 29. Adv. Sri.T.R.Ravi, learned counsel appearing for the appellants in A.S.355 of 2000 and A.S.483 of 2000 contended that the trial court fell into an error in holding that 'Kalan' is a family name. Attention was drawn to the judgment in O.S.2 of 1957, which is marked as Ext.A14 in O.S.4 of 1993 wherein identical question was considered and it was held that the family name was 'Kalath' and 'Kalan' is the trade name. That suit was between late Ouseph Vaidyan, who was the defendant in that suit and his brother was the plaintiff. The judgment evidenced by Ext.A14 has become final. Learned counsel referred to several documents in the case in which the house name is shown as Kalath. According to learned counsel, a dispassionate reading of Ext.A2 will reveal that the use of the word 'Kalan' by parties other than the plaintiff in the suits is considerably restricted and learned counsel adopted the argument of A.S.17/1988 & con.cases . 26 Sri.S.V.Balakrishna Iyer in this regard. He contended that the court below ought to have adopted the reasoning in O.S.4 of 1978 and has fallen into legal and factual error in holding otherwise. 30. Replying to the arguments of the learned counsel for the appellants in A.S. Nos.355 and 483 of 2000, Sri.M.C.Sen, learned Senior Counsel appearing for the respondents supported Sri.V. Chitambaresh, learned Senior Counsel appearing for the appellants in A.S.17 of 1988. In addition to the said contention, learned counsel emphasized that in a passing off action, the claimant will have to prove misrepresentation, goodwill, reputation and damage suffered as a result of the act on the part of the defendants. There is absolutely no proof regarding the above matters in the case on hand. Referring to several documents produced by the defendants, learned counsel pointed out that there is clinching evidence to show that 'Kalan' was also used as the family name. What could be seen, according to learned A.S.17/1988 & con.cases . 27 counsel, is that both 'Kalath' and 'Kalan' were interchangeably used as family name and in such circumstances the lower court was fully justified in holding that 'Kalan' has to be treated as a family name. Learned counsel also attempted to show from the evidence that it would appear that the business carried on by late Ouseph Vaidyan, which was transferred to his son under Ext.A1 and which was continued by his son ceased to exist in 1970. Thereafter the predecessors-in-interest of the plaintiff in O.S.4 of 1993 commenced business only in 1992. Since there has been a long holiday in between, the plaintiff cannot tack on the earlier goodwill and complain of passing off in the present context. 31. Learned Senior Counsel in support of his contention relied on the decisions reported in **Moideen's case** (supra), **Satyam Infoway Ltd.'s case** (supra), unreported judgment in A.S.431 of 2002, **Carew Phipson Limited v. Deejay Distilleries Pvt. Ltd.** (AIR 1994 A.S.17/1988 & con.cases . 28 Bombay 231), **Khoday Distilleries Ltd. v. Scotch Whisky Assn.** ((2008) 10 SCC 723), **National Sewing Thread Co. v. James Chadwick & Bros.** (AIR 1948 Madras 481), **M/s. Malhotra Tyre Service Co. v. M/s. Malhotra Tyres Pvt. Ltd.** (AIR 1991 Delhi 94) and **Ruston & Hornsby Ltd. v. Zamindara Engineering Co.** ((1969) 2 SCC 727). 32. On hearing learned counsel for the parties and on going through the records, it becomes evident that the attack of the plaintiff in O.S.4 of 1978 and in O.S.4 of 1993 is against the use of certain words by others in the family, the privilege of which, according to them, rests exclusively with them. In fact in these appeals, the disputes relates to the use of the words 'Kalan' and 'സ�ക�ല . ' While restriction of the use of the word 'Kalan' is mainly traced to Ext.A2, the restriction in the use of the word 'സ�ക�ല ' is based on the fact that though a descriptive word, it had acquired a secondary meaning associated with the goods of the plaintiff. In fact a reading of the plaint and the evidence A.S.17/1988 & con.cases . 29 would indicate that the complaint is regarding both breach of contract as well as mischief of passing off. In fact the plaintiffs in the suits do not object to the use of the word 'Kalan' by the other parties to the suit, but their objection seems to be regarding the manner in which the said word could be used. Of course, in O.S.4 of 1978 there is an additional complaint regarding the deceptive similarity of the labels, logos etc, being used by the defendants in the said suit. 33. Passing off and infringement of trade mark are actions linked to intellectual property rights. Intellectual property right creates and tries to protect rights of owners and creators of work, which had resulted in their creativity. Rights may relate to literature, music, inventions etc. The intellectual property laws are designed and offers exclusionary rights to the creators or inventors against any misappropriation or use of the work without the prior knowledge of the creator or inventor. A.S.17/1988 & con.cases . 30 34. Almost every nation has its own intellectual property laws. On international level it is governed by the World Intellectual Property Organization (WIPO). The Paris Convention for the protection of industrial property in 1883 and the Berne Convention for protection of literary and artistic works in 1886 were the first contentions which sought to protect intellectual property rights. The laws and the Conventions seek to protect application of ideas, information, marks and such other devices that are of commercial value. Patent laws give temporary protection to technological inventions and design rights to appearance to the manner in which a particular thing is depicted. Copy right laws will give long lasting rights for instance literary, artistic and musical creations and trade mark are protected against imitation, so long as they continue to be employed in trade. 35. In the cases on hand, we are concerned with infringement of trade mark and the tort of passing off. A.S.17/1988 & con.cases . 31 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 mark rights afford protection against unfair imitation of mark and names. The Trade Mark Act, 1999 broadly offers two types of protection, they are i) infringement of trade mark and ii) passing off action. Infringement of trade mark is confined to registered trade marks while for unregistered trade mark, the law provides the action of passing off. 36. _**Kerly's Law of Trade Marks and Trade Names**_ , 12[th] Edn. at page 292 draws distinction between infringement of trade mark and passing off as follows: _“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_ A.S.17/1988 & con.cases . 32 _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._ ” 37. 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_ A.S.17/1988 & con.cases . 33 _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 consists in using the mark as a trademark i.e. as indicating origin.”_ 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. 38. It is usually stated that the action for infringement is a statutory remedy, while action for passing A.S.17/1988 & con.cases . 34 off is usually treated as a common law remedy intending to protect unregistered trade mark. 39. 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. 40. It will be useful to refer to some of the decisions, which draw distinction between infringement of trade mark and passing off action. 41. In the decision reported in **Durga Dutt Sharma v. N.P. Laboratories** (AIR 1965 SC 980), it was held as follows: “ _An action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade_ A.S.17/1988 & con.cases . 35 _mark for the vindication of “the exclusive right to the use of the trade mark in relation to those goods”. The use by the defendant of that 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. No doubt, 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. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff_ A.S.17/1988 & con.cases . 36 _have been adopted by the defendant, the fact that the get-up, packing and other writing or 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; whereas in the case of pass 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.”_ 42. In the decision reported in **Parle Products** ## **v. J.P. & Co. Mysore** (AIR 1972 SC 1359) it was held as follows: _“To decide the question as to whether the plaintiff's right to a trade has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. According to this Court in Durga Dutt v. Navratna Pharmaceutical Laborataries:_ “While an action for passing off is a common law remedy being in substance an action for deceit, that is, a passing off by a person of his own A.S.17/1988 & con.cases . 37 goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of “the exclusive right to the use of the trade mark in relation to those goods”. The use by the defendant of that 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.” _In the above case the court further pointed out:_ _“_ In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or A.S.17/1988 & con.cases . 38 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; whereas in the case of pass 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.”” ## 43. In the decision reported in **Moideen v. Vasu** (1980 K.L.T. 325) it was held as follows: _“In a passing off action the question must always be decided by contrasting the striking resemblances with the striking differences. If the differences are more striking than the resemblances, the plaintiff will fail, but he will succeed if the converse is true. The test here is whether the differences are sufficiently striking as to warn the public against deceit. This, is the fundamental difference between the test applicable to a passing off action and that which applies to an infringement action. In an action for infringement, one does not count the points of_ A.S.17/1988 & con.cases . 39 _resemblance as well as the differences to determine the question, but only look at the striking resemblances. Once the two marks are found to be bear striking resemblances to each other, there the enquiry ends and the differences do not count. The rationale of this fundamental distinction is that, while in the case of an infringement action, the only question is whether the registered mark has been imitated; in the case of a passing off action, the question really is whether the imitation of the unregistered mark or the get up of the package is likely or calculated to deceive the public into thinking that the goods of the one are the manufacture of another. In the case of the former, the likelihood of deceit as to the identity of the goods need not be established once the mark is proved to have been infringed; whereas, in the case of the latter, the essential test is the likelihood of deceit as to the identity or the origin of the packages. Unlike in an infringement action where the Act has obviated the need to establish the distinctiveness of the mark, that is one of the essential requirements in a passing off action. What is sought to be_ A.S.17/1988 & con.cases . 40 _protected in an infringement action is the property in the mark; while in a passing off action, the protection sought is for the property in the goodwill of the business which has adopted a mark or a style for its goods to distinguish their manufactory. Although infringement ultimately results, in goods being passed off, and, in the final analysis, the purpose of infringement is to pass off, the cause of action in such cases is not the passing off but infringement of the mark itself._ ” ## 44. In the decision reported in **A.C. Krishnan v. Nambisan's Dairy Pvt. Ltd.** (1997(1) K.L.T. 163) it was held as follows: “ _An action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. The gist of an action for infringement is different. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the indication of his exclusive right to the use of the trade mark in relation to his goods. The use by the defendant of that trade mark of_ A.S.17/1988 & con.cases . 41 _the plaintiff is not essential in action for passing off, but is the sine qua non in the case of an action for infringement. 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 may 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. But the correspondence between the two ceases there. And in an action for infringement, the plaintiff must not only make out that the use of the defendant's mark is likely to deceive. but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiff's rights are violated. The length of user of a trade mark will also be material factor for the mark to become distinctive and exclusively associated with the goods of the plaintiff. Supreme Court pointed out the distinction between infringement action and_ A.S.17/1988 & con.cases 42 . _passing off action. The former is a statutory right and if the trade mark of the defendant is identical with the plaintiff's mark the court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But, if the alleged infringement is not in using the exact mark, but something similar, then the test of infringement is the same as in an action for passing off. And the gist of the latter is that the defendant is not entitled to represent his goods as the goods of the plaintiff. But, it is not necessary for the plaintiff to prove that the defendant did this knowingly or with any intent to deceive. It is enough in a passing off action that the get up of the plaintiff's goods has become distinctive and that there is a possibility of confusion between them and the goods of the defendant. No case of actual deception need be proved.”_ 45. In the decision reported in **M/s. S.M.Dyechem Ltd. v. M/s. Cadbury (India) Ltd.** (AIR 2000 SC 2114) it was held as follows: _“49. In the same tone, Halsbury (Trade Marks, 4[th] Ed., 1984 Vol.48, para 187) says that in_ A.S.17/1988 & con.cases . 43 _a passing off action the “degree of similarity of the name, mark or other features concerned is important but not necessarily decisive, so that an action for infringement of a registered trade mark may succeed on the same facts where a passing of action fails or vice versa”. As to vice versa, Kerly says, an infringement action may fail where plaintiff cannot prove registration or that its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show that by imitating the mark or otherwise, the defendant has done what is calculated to pass off his goods as those of plaintiff.”_ ## 46. In the decision reported in **Satyam Infoway** ## **Ltd. v. Sifynet Solutions Pvt. Ltd.** (AIR 2004 SC 3540) it was held as follows: “ _26....... As we have already said, a passing off action is based on the goodwill that a trader has in his name unlike an action for infringement of a trademark where a trader's right is based on property in the name as such. Therefore unless_ A.S.17/1988 & con.cases . 44 _goodwill can be established by the appellant by showing that the public associates the name “Sify' with the services provided by the appellant, it cannot succeed.”_ 47. In the decision reported in **Preme v. Ambujakshan** (2006(1) K.L.T. 905) it was 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 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_ A.S.17/1988 & con.cases . 45 _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 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_ A.S.17/1988 & con.cases . 46 _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 goodwill, but also to ensure that the purchasers were not exploited and dishonest trading is prevented.”_ 48. A reading of the above decisions leaves one in no doubt that the two remedies are distinct and independent, but not mutually exclusive. As far as a A.S.17/1988 & con.cases . 47 registered trade mark is concerned, the claimant maybe entitled to seek remedy under both the provisions, namely, for infringement of trade mark and for passing off also. There may be instances where in his attempt he may fail to establish a case of infringement of trade mark, but still he may succeed in establishing passing off action. But one thing is clear that as far as unregistered trade marks are concerned, the only remedy is an action for passing off. In these cases we are concerned with unregistered trade marks. 49. That takes us to the question as to what is meant by passing off. Usually passing off is treated as a common law tort used to protect unregistered trade mark right. The legal and economic basis of this tort is to provide protection for the right of property which exists not in particular name, mark or style but in an established business or professional reputation or goodwill. The true basis of the action is now held to be that passing off injures the right of A.S.17/1988 & con.cases . 48 property in the plaintiff. It affects the goodwill and reputation of his business. The gist of the concept of passing off is that the goods are telling falsehood and are saying something about themselves to mislead. The law of passing off prevents a person from selling his goods as the goods of somebody else. What is protected by passing off action is an economic asset. The fundamental principle behind passing off is that one man has no right to put his goods for sale as the goods of a rival trader. It seeks to protect the traders from unfair competition which involves false or misleading representation using the reputation and goodwill earned by somebody else. It seeks to prevent the intrusion of rivals upon the goodwill and reputation earned by another in services. A person is therefore precluded from using the trade mark, letters or names which may induce the clients or consumers to believe that the goods which he is selling are actually of somebody else. In _**Halsbury's Laws**_ A.S.17/1988 & con.cases 49 . _**of England**_ , 4[th] Edition, Vol.48 at page 185 Note 297, the elements of passing off action are enumerated as follows: _“Elements of the action for passing off: The necessary elements of the action for passing off have been restated by the House of Lords as being three in number:_ _(1) that the claimant's goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;_ _(2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and_ _(3) that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation._ _The restatement of the elements of passing off in the form of this classical trinity has been preferred as providing greater assistance in analysis and decision that the formulation of the elements of the action previously expressed by_ A.S.17/1988 & con.cases . 50 _the House. This latest statement like the House's previous statement, should not, however, be treated as akin to a statutory definition or as if the words used by the House constitute an exhaustive, literal definition of passing off and in particular, should not be used to exclude from the ambit of the tort recognised forms of the action for passing off which were not under consideration on the facts before the House._ ” The very same ingredients are seen mentioned in Halsbury's Laws of India Vol.20(1) at note 185.1358. The characteristics of a passing-off action are made mention of at Note 185.1357 in _**Halsbury's Laws of India**_ Vol.20(1), read 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,_ A.S.17/1988 & con.cases . 51 - _(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.”_ ## 50. In _**Cornish and Llewelyn on Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights**_ , 6[th] Edn. Lord Halsbury is quoted: _“nobody has any right to represent his goods as the goods of somebody else.”_ The author says that the same principle applies to services also. It is pointed out that due to the misrepresentation of the defendant the claimant loses his customers. The author referred to the classic trinity to establish a passing of enunciated in what is popularly known as ' _Jif Lemon_ ' case. The author also referred to the five requirements A.S.17/1988 & con.cases . 52 enumerated by Lord Diplock in what is known as ' _Advocaat_ ' case. 51. **Sri. K.C. Kailasam and Sri.Ramu Vedaraman in the book** _**Law of Trade Marks and Geographical Indications**_ state that the law of passing off can be summarized in one short general proposition i.e., no man may pass off his goods as those of another. The authors also referred to the classic trinity mentioned enunciated in ((1990) RPC 341) (Rickitt & Colman's case). The authors also say that the burden to prove the elements to attract passing off is on the claimant. 52. In _**Kerly's Law of Trade Marks and Trade Name** s_ , 12[th] Edn. at page 343 it was noticed that passing off is a remedy provided to prevent 'unfair competition' between traders, The author also refers to International Industrial Property Convention. According to the author, it is an actionable wrong for the defendant to represent, for trading purposes, that his goods are those or that his A.S.17/1988 & con.cases . 53 business is that of the plaintiff. According to the author, the manner in which the misrepresentation is made may not be significant. 53. _**Sarkar on Trade Marks, Law and Practice**_ states that tort of passing off is an invasion of the right of property in goodwill or business and that goodwill exists independently of a business. The author refers to the decision reported in (1976) RPC 256 and AIR 2004 SC 3540. Here also, it is stated that the burden is on the claimant to establish the necessary ingredients and elements to attract the tort. 54. _**Winfield and Jolowicz on Tort**_ , 12[th] Edn. page 472 says that the essence of passing off action is that one trader represents his goods or his services as those of another and he commits the tort even if he does so innocently, that is, no intention to deceive. The author also says that the plaintiff undertakes no light burden of proof in A.S.17/1988 & con.cases . 54 trying to convince the court that a word in common use has become associated with his goods. ## 55. _**Salmond and Heuston on the Law of**_ _**Torts**_ , 20[th] Edn. at page 395 refers to passing off as a wrong wrong of injurious falsehood. According to the author, the basis of tort of passing off is to protect the right of property which is the goodwill of the business. The gist of the concept of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. 56. _**Street on Torts**_ , 11[th] Edn. at page 127 says that the action for deceit affords a remedy to businessmen who are direct target of fraudulent misrepresentation. The author refers to Advocaat case. The author also refers to various kinds of misrepresentation which are as follows: i) using the claimant's name. ii) Using the claimant's trade name. iii) Marketing a product as that of the claimant. A.S.17/1988 & con.cases 55 . iv) Using the claimant's trade mark. ## v) Imitating the appearance of the claimant's - vi) Selling goods inferior to claimant's goods, thereby misleading the purchaser. vii) False advertising. viii) Character merchandising. 57. One may now refer to the various decisions relied on by the learned counsel on either side. 58. In the decision reported in **Heinz Italia v. Dabur India Ltd.** ((2007) 6 SCC 1) it was held as follows: _“In an action for passing off, the plaintiff has to establish prior user to secure an injunction and the registration of the mark or similar mark in point of time is irrelevant. Modern tort of passing off has five elements i.e. (I) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate customers of goods or services supplied by him,_ A.S.17/1988 & con.cases . 56 _(4) which is calculated to injure the business or goodwill of another trader (in the sense that this 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._ _Further, before the use of a particular mark can be appropriated it is for the plaintiff to prove that the product that he is representing had earned a reputation in the market and that this reputation had been sought to be violated by the opposite party._ _Furthermore, the principle of similarity cannot be very rigidly applied and if it can be prima facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to court is not a ground to defeat the case of the plaintiff._ _Lastly, in the case of passing off action the similarities rather than the dissimilarities have to be taken note of by the court and the principle of phonetic “similarity” cannot be ignored and the_ A.S.17/1988 & con.cases . 57 _test is as to whether a particular mark has obtained acceptability in the market so as to confuse a buyer as to the nature of product he was purchasing.”_ 59. In the decision reported in **Santhigiri Ashram v. Moideen Haji** (1988(2) K.L.T. 702) it was held as follows: _“The essential characteristics which must be present in order to create a valid cause of action for passing off are :(1) misrepresentation, (2) made by a person in the course of trade, (3) to prospective customers of his or ultimate consumers of goods and services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably forseeable consequence) and (5) which causes actual damage to a business of goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.”_ A.S.17/1988 & con.cases 58 . ## 60. In the decision reported in **British Diabetic Association v. Diabetic Society** (((1995) 4 All.E.R. 812) it was observed as follows: “ _Mr. Thorley submits that the basic law as to passing off is quite simple (though there are, he says, some unusual features in this particular case) and that the case must really turn on findings of fact. The basic principle can indeed be stated quite shortly. In Erven Warnink BV v. J Towned & Sons (Hull) Ltd. at 932 Lord Diplock expressed it in a single sentence:_ _“........_ A G Spalding & Bros v. A W Gamage Ltd and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off:(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate customers of goods or services supplies by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by A.S.17/1988 & con.cases . 59 whom the action is brought or (in a quia timet action) will probably do so _.'”_ 61. In the decision reported in **Harrods Limited v. Harrodian School Limited** (1996 RPC 697) it was held as follows: _“The authoritative modern formulation of the tort of passing off is to be found in the speech of Lord Diplock in Erven Warninck BV v. Topwnend &Sons (Hull) (1979) AC 731 (Ithe Advocaat case”). At p.742 Lord Diplock stated that five elements must be present: (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of another trader in the sense that this 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. In Reckitt & Colman Products Ltd. v. Borden Inc. (1990) 1 WLR 491 (the “Jif” lemon juice case) at p.499 Lord Oliver reduced the elements of the_ A.S.17/1988 & con.cases 60 . _tort to three: (1) reputation (2)deception and (3) damage. The passage in which he did so repays close attention:_ _........... ............_ _It is well settled that (unless registered as a trade mark) no one has a monopoly in his brand name or get up, however familiar these may be. Passing off is a wrongful invasion of a right of property vested in the plaintiff; but the property which is protected by an action for passing off is not the plaintiff's proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant's misrepresentation: see Reddaway v Banham (1896) AC 199 per Lord Herschell; Spalding v. Gamage (1915) 32 RPC 273 at p.284 per Lord Parker; H.P. Bulmer Ltd. and Showerings Ltd. v. J.Bollinger sa and Champagne Lanson Pere et Fils (the Bollinger case)(1978) RPC 79 at p.93-4 per Byckley LJ.”_ A.S.17/1988 & con.cases . 61 ## 62. In the decision reported in **Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.** ((2001) 5 SCC 73), it was held as follows: _“ It applied three tests, they being: (I) is there any special aspect of the common feature which has been copied? (2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts? In examining the marks, the manner in which the two words were written and the peculiarity of the dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK”._ _........... ............_ _“_ In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where A.S.17/1988 & con.cases . 62 the similarity between the plaintiffs and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated _.”_ ## 63. In the decision reported in **Laxmikant v. Patel V. Chetanbhat Shah** (AIR 2002 SC 275) it was held as follows: _“A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time, such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in_ A.S.17/1988 & con.cases . 63 _believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are and ought to be, the basic policies in the work of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of some one else to himself and thereby resulting in injury._ _................................................................................_ _In Oertil v. Bowman (1957) RPC 388 (at page 397), the gist of passing off action was defined by stating that it was essential to the success of any claim to passing off based on the use given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods_ A.S.17/1988 & con.cases . 64 _are the plaintiff's goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get up or name in relation to goods not of plaintiff. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark is applicable to trade name. ................................................................................_ _In the present case, the plaintiff claims to have been running his business in the name and style of Muktajivan Colour Lab and Studio since 1982. He has produced material enabling a finding being arrived at in that regard. However, the trial court has found him using Muktajivan as part of his business name at least since 1995. The plaintiff is expanding his business and exploiting the reputation and goodwill associated with Muktajivan in the business of Colour Lab and_ A.S.17/1988 & con.cases . 65 _Photo by expanding the business through his wife and brother-in-law. On or about the date of the institution of the suit, the defendant was about to commence or had just commenced an identical business by adopting word Muktajivan as a part of his business name although till then his business was being run in the name and style of Gokul Studio. The intention of the defendant to make use of business name of the plaintiff so as to divert his business or customers to himself is apparent. It is not the case of the defendant that he was not aware of the word Muktajivan being the property of the plaintiff or the plaintiff running his business in that name though such a plea could only have indicated the innocence of the defendant and yet no difference would have resulted in the matter of grant of relief to the plaintiff because the likelihood of injury to the plaintiff was writ large. It is difficult to subscribe to the logic adopted by the Trial Court, as also the High Court, behind reasoning that the defendants' business was situated at a distance of 4 or 5 kms from the plaintiff's business and therefore, the plaintiff could not have sought for an injunction. In_ A.S.17/1988 & con.cases . 66 _a city, a difference of 4 or 5 kms does not matter much. In the event of the plaintiff having acquired a goodwill as to the quality of services being rendered by him, a resident of Ahemdabad city would not mind travelling a distance of a few kilometers for the purpose of availing a better quality of services. Once a case of passing off is made out, the practice is generally to grant a prompt ex parte injunction followed by appointment of local Commissioner, if necessary. In our opinion, the trial Court was fully justified in granting the ex parte injunction to the plaintiff based on the material made available by him to the Court. The trial court fell in error in vacating the injunction and similar error has crept in the order of the High Court. The reasons assigned by the Trial Court as also by the High Court for refusing the relief of injunction to the plaintiff are wholly unsustainable.”_ 64. In the decision reported in **Preme v. Ambujakshan** (2006(1) K.L.T. 905) after referring to the classic trinity, it was held as follows: A.S.17/1988 & con.cases 67 . _“The principle of passing off action is that a person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. That law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated with it. It does not matter whether the latter person does so fraudulently or otherwise. Honesty and fair play are, and ought to be the basic policies in the world of business. When a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone_ A.S.17/1988 & con.cases . 68 _else to himself and thereby resulting in injury. Plaintiff in a passing off action has to establish misrepresentation by the defendant to the public. It does not mean that plaintiff has to prove any malafide intention on the part of the defendant. What has to be established is the likelihood of confusion in the minds of the public. In assessing the likelihood of such confusion courts must approach it from the point of average intelligence and imperfect recollection of an ordinary person.”_ ## 65. In the decision reported in **Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahendra Ltd.** (AIR 2002 SC 117) it was held as follows: _“In an action for passing off whether there is a likelihood of deception or confusion arising is a matter for decision by the court and no witness is entitled to deceive or to cause confusion that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example, the nature of the market, itself, the class of customers, the extent of the reputation the trade_ A.S.17/1988 & con.cases . 69 _channels, the existence of any connection in course of trade and others.”_ 66. In the decision reported in **Irvine v. Talksport Ltd.** ((2002) 2 All.E.R.414) it was held as follows: _“Expressed in these terms, the purpose of a passing off action is to vindicate the claimant's exclusive right to goodwill and to protect it against damage. When a defendant sells his inferior goods in substitution for the claimant's, there is no difficulty in a court finding that there is passing off. The substitution damages the goodwill and therefore the value of it to the claimant. The passing off action is brought to protect the claimant's property. But goodwill will be protected even if there is no immediate damage in the above sense. For example, it has long been recognised that a defendant cannot avoid a finding of passing off by showing that his goods or services are of as good or better quality than the claimant's. In such a case, although the defendant may not damage the goodwill as such, what he dos is damage the value of the goodwill_ 70 ## A.S.17/1988 & con.cases . _to the claimant because, instead of benefiting from exclusive rights to his property, the latter now finds that someone else is squatting on it. It is for the owner of goodwill to maintain, raise or lower the quality of his reputation or to decide who, if anyone, can use it alongside him. The ability to do that is compromised if another can use the reputation or goodwill without his permission and as he likes.”_ 67. Thus having understood the basic principle relating to the passing off action, one has now to ascertain as to what is meant by goodwill and reputation. 68. 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 A.S.17/1988 & con.cases . 71 property capable of being transferred. The term goodwill was considered in the decision reported in **Star Industrial 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_ .” ## 69. In the decision reported in **Irvine's case** ## (supra) it was held as follows: _“What is protected is goodwill. The nature of goodwill was described by the House of Lords in IRC v. Muller & Co's Margarine Ltd.. The oft quoted passage from the speech of Lord Macnaghton reads:_ A.S.17/1988 & con.cases . 72 _'_ What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom _.'_ _However, there is another passage in that speech which is just as important and throws light on rights held by the owner of goodwill:_ _'_ It is very difficult, as it seems to me, to say that goodwill is not property. Goodwill is bought and sold every day. It may be acquired, I think, in any of the different ways in which property is usually acquired. When a man has got it he may keep it as his own. He may vindicate his exclusive right to it if necessary by process of law. He may dispose of it if he will-ofcourse under the conditions attaching to property of that nature _.'_ 70. It is necessary to distinguish the term reputation from goodwill, though both are used interchangeably. Reputation is the means by which something is recognized. It is the knowledge among a large number of people of the existence of something, a A.S.17/1988 & con.cases . 73 well-known product or a well-known person. It exists in the minds of customers who are aware of the good qualities or reliability of the goods or business concerned. In _**Halsbury's Laws of England,**_ 4[th] Edn. Vol.48 Note 308, it is mentioned as follows: _“308. Nature of goodwill. A passing-off action is now recognized as being a remedy for the invasion of a right of property, the property being in the business or goodwill likely to be injured by the misrepresentation rather than in the mark, name or get-up improperly used. 'Goodwill' has been defined as the benefit and advantage of the good name, reputation and connection of a business, the attractive force which brings in custom, and the one thing which distinguishes an old-established business from a new business at its first start. Although goodwill usually runs hand in hand with reputation, goodwill and reputation are not identical concepts.”_ 71. There is another important aspect which needs to be considered. In an action for passing off, it is A.S.17/1988 & con.cases . 74 necessary to establish the likelihood of deception or confusion among the public or customers as the case may be. The reputation required to be established in an action for passing off is that the name, mark or other feature has by use come to be regarded as identifying goods or services from a particular source known or unknown. The fact that only the claimant has in the past made use of the name, mark or other feature concerned is not conclusive. But then it has to be further proved that it had attained distinctiveness relating to the character or quality of the goods produced. Probably to a great extent, the test for deceptive similarity. i.e., as to the likelihood of confusion or deception arising from similarity of the marks, or the get-up, packing etc., is practically the same as in an action for infringement except for minor differences. The test is ofcourse whether the goods are passed off viewed from the angle of a man of average intelligence and imperfect memory of recollection. It is by now well established that in A.S.17/1988 & con.cases 75 . ## an action for passing off, the following factors are to be considered: _“(1) the nature of the marks, that is whether the marks are word marks or label marks or composite marks, or both words and labels;_ _(2) the degree of resemblance between the marks, phonetically similar and hence similar in idea;_ _(3) the nature of the goods in respect of which they are used as trade marks_ _(4) the similarity in the nature, character and performance of the goods of the rival traders;_ _(5) the class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods;_ _(6) the mode of purchasing the goods or placing orders for the goods; and_ _(7) any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.” (Halsbury's Laws of India Vol.20(1) para 185.1377)_ A.S.17/1988 & con.cases . 76 72. The issue was considered in the decision reported in **Roche & Co. v. G. Manners & Co** . (AIR 1970 SC 2062), wherein it was held as follows: _“In Parker Knoll Ltd. v. Knoll International Ltd., 1962 RPC 265 at p. 274, Lord Denning explained the words “to deceive” and the phrase “to cause confusion” as follows:_ _“_ Secondly, 'to deceive' is one thing. To 'cause confusion' is another. The difference is this: When you deceive man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or A.S.17/1988 & con.cases 77 . because he may not even take the trouble to do so.” _The tests for comparison of the two word marks were formulated by Lord Parker in Pianotist co. Ltd.'s application as follows:_ “You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to by those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public goods- then you may refuse the registration, or rather you must refuse the registration, in that case.” A.S.17/1988 & con.cases 78 . _It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. the House of Lords was considering the resemblance between the two words “Aristoc” and “Rysta”. The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maughum cited the following passage, he said, he completely accepted as the correct exposition of the law:_ “The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The A.S.17/1988 & con.cases . 79 court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants _.”_ _It is also important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case, Tokalon Ltd. v. Davidson and Co., Lord Johnston said:_ “.......we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop _.”_ A.S.17/1988 & con.cases 80 . ## 73. In the decision reported in **Harrods Limited v. Harrodian School Limited** (1996 RPC 697) it was held as follows: _“Deception is the gist of the tort of passing off, but it is not necessary for a plaintiff to establish that the defendant consciously intended to deceive the public if that is the probable result of his conduct. Nevertheless, the question why the defendant chose to adopt a particular name or get up is always highly relevant. It is “a question which falls to be asked and answered.” .........If it is shown that the defendant deliberately sought to take the benefit of the plaintiff's goodwill for himself, the court will not “be astute to say that he cannot succeed in doing that which he is straining every nerve to do.”_ ## 74. In the decision reported in **Khoday Distilleries Limited v. Scotch Whisky Association** ((2008) 10 SCC 723) it was held as follows: _“Thus, when and how a person would likely to be confused is a very relevant consideration._ A.S.17/1988 & con.cases 81 . _Where the class of buyers is quite educated and rich, the test to be applied is different from the one where the product would be purchased by the villages, illiterate and poor. Ordinarily, again they, like tobacco, would purchase alcoholic beverages by their brand name. When, however, the product is to be purchased both by villagers and town people, the test of a prudent man would necessarily be applied. It may be true that the tests which are to be applied in a country like India may be different from the tests applied either in a country like England, the United States of America or Australia. This does not mean however that in a case of this nature, the Heightened Scrutiny Test should be applied as urged on behalf of the appellant.”_ ## 75. In the decision reported in **Cadila Health Care Ltd.'s case** (supra) it was held as follows: _“Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:_ A.S.17/1988 & con.cases . 82 _a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works._ _b) The degree of resemblance between the marks, phonetically similar and hence similar in idea._ _c) The nature of the goods in respect of which they are used as trade marks._ _d) The similarity in the nature, character and performance of the goods of the rival traders._ _e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods._ _f) The mode of purchasing the goods or placing orders for the goods and_ _g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks._ _Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.”_ A.S.17/1988 & con.cases . 83 76. Though a misrepresentation to be established, it is not necessary to show that all the members of a class will be deceived. However, it is not sufficient that only careless, negligent or ignorant persons with little or no knowledge are likely to be confused. It is significant to notice that the words must be compared as a whole. It is not proper or right to take portions of the word and then find out the similarity and dissimilarity. In the case of passing off action what is relevant is the similarity between the marks and effort should be made to find out whether there is likelihood of deception causing confusion. 77. Resemblance is not determined by placing the two goods side by side. So, in comparing their visual appearance, it is necessary to allow for imperfect recollection by a person of ordinary memory. Normally a person cannot retain in mind every detail of the mark which he had seen once. The question whether one mark so A.S.17/1988 & con.cases . 84 nearly resembles another as to be likely to deceive or cause confusion is purely a question for the tribunal to decide and no evidence from the witnesses on this point will be admissible. Intention to deceive is a matter of inference to be drawn from the circumstances of the case. 78. In the decision reported in **Corn Products v. Shangrila Food Products** (AIR 1960 SC 142) it is held as follows: “ _The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by English men, which is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It is well recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole.”_ A.S.17/1988 & con.cases 85 . ## 79. In the decision reported in **Diageo v. Inter Continental Brands** ((2010) 3 ALL.E.R. 147) it was held as follows: _“It is well established that in claims for passing off it is for the court to decide whether the defendant's activities amount to a misrepresentation, that is to say, are likely to give rise to relevant confusion on the part of relevant consumers. Evidence of actual confusion is of assistance, but is not conclusive. Nor is the absence of evidence of actual confusion conclusive in the defendant's favour, but it may be significant if the defendant's product has been on the market for a substantial period. Evidence as to the likelihood of confusion, and the presence or absence of actual confusion, is most important in marginal cases. ......_ _In Neutrogena Corp. v. Golden Ltd. (1996) RPC 473 at 493 Morritt LJ (as he then was) said in the context of a conventional passing off claim that the correct legal test for the existence of a misrepresentation was as follows:_ A.S.17/1988 & con.cases . 86 _'_ As stated by Lord Oliver of aylmerton in Reckitt & Colman Products Ltd. v. Borden Inc. the question on the issue of deception or confusion is _“_ is it, on a balance of probabilities, likely that, if the appellants are not restrained as they have been, a substantial number of members of the public will be misled into purchasing the defendant's [product] in the belief that it is the respondent's [product]? _”_ _The same proposition is stated in Halsbury's Laws of England 4[th] Edn. Vol.48 para 148. The necessity for a substantial number is brought out also in Saville Perfumery Ltd. v. June Perfect Ltd. The same requirement that a substantial number of members of the public will be misled applies in the context of extended passing off.”_ 80. In the decision reported in **Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.** (AIR 2002 SC 117) after referring to some decisions held as follows: _“This question has been considered by different High courts and this Court in umpteen cases from time to time. On analysis, certain_ A.S.17/1988 & con.cases . 87 _recognised parameters relating to the matter have emerged. Without intending to be exhaustive some of the principles which are accepted as well settled may be stated thus; that whether there is a likelihood of deception or confusion arising is a matter for decision by the court, and no witness is entitled to say whether the mark is likely to deceive or to cause confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in_ c _ourse of trade, and others_ .” 81. One of the contentions taken is that the word 'സ�ക�ല ' being a descriptive term cannot form the basis for passing off. Normally, the geographical names, descriptive terms, family names etc., cannot form the subject matter of monopoly by a person. But there are A.S.17/1988 & con.cases 88 . ## exceptional circumstances where they can acquire a distinctive character. ## 82. In **Corpus Juris Secundum** , Vol.87 Note 90 at page 319 it is held a follows: _“Words or names which a primary meaning of their own, such as words descriptive of the goods, or the place where they are made, or the name of the maker, and which are not capable of exclusive appropriation as a trade-mark, may nevertheless by long use in connection with the goods or business of a particular trader come to be understood by the public as designating the goods or business of that particular trader. Such words have both a primary and a secondary meaning. In their primary descriptive sense, they are public juris, and all the world may use them, but they must be used in such a way as not falsely to convey the secondary meaning, since this would constitute unfair competition as tending directly to pass off the goods or business of one man as and for that of another. If the names or words have been so exclusively identified with plaintiff's goods of business as to have acquired a_ A.S.17/1988 & con.cases 89 . _secondary meaning, so as to indicate his goods or business and his alone, he is entitled to relief against another's deceptive use of such terms, but, if there is no such identification, he is not entitled to relief. This is what is known as the doctrine of secondary meaning, and its perception by the courts was the genesis of the law of unfair competition as distinguished from technical trade marks. There is an exclusive right to the secondary meaning of a name, which has been deemed a property right, although this exclusive right is strictly limited to the secondary meaning of the word. The extent of protection will vary with the necessities of the case.”_ 83. In **Halsbury's Laws of England** , 4[th] Edn,. at page 208 under Note 322 it is held as follows: _“It is possible for a word or phrase which is wholly descriptive of the goods or services concerned to become so associated with the goods or services of a particular trader that its use by another trader is capable of amounting to a representation that his goods or services are those of the first trader. In these circumstances it_ 90 A.S.17/1988 & con.cases . _is sometimes said that, although the primary meaning of the words is descriptive, they have acquired a secondary meaning as indicating the products of a particular trader and no other.”_ 84. The issue was considered in the decision reported in **T.V.Venugopal v. Ushodaya Enterprises Limited** ((2011) 4 SCC 85) wherein it was held as follows: _“In Halsbury's Laws of England, Vol.48. 4[th] Edn. at p.190, it is stated that it is possible for a word or phase, which is wholly descriptive of the goods or services concerned, to become so associated with the goods or services of a particular trader that its use by another trader is capable of amounting to a representation that his goods or services are those of the first trader and that although the primary meaning of the words is descriptive, they have acquired a secondary meaning as indicating the products of a particular trader._ _The contention of the defendant is that adjectives are normally descriptive words and nouns are generic word. However, McCarthy has said that the said “part of speech” test does not_ A.S.17/1988 & con.cases . 91 _accurately describe the case law results, therefore, such a criteria cannot be accepted as a safe and sound basis to ascertain as to whether a particular name is generic or descriptive. Besides, even assuming that the said word is generic yet if it is found by the court that such a mark has attained distinctiveness and is associated with the business of the plaintiff for considerable time and thereafter the defendant adopts a similar word as one of his two marks to induce innocent internet users to come to the website of the defendant, which establishes dishonest intention and bad faith, would the court still be not granting injunction to protect the business of the plaintiff? The answer to the said question has to be an emphatic “No”. User of similar word by a comptetitor coupled with dishonest intention and had faith would empower a court to restrain such user/misuser to do equitable justice to the aggrieved party.”_ A.S.17/1988 & con.cases 92 . 85. In the decision reported in **Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd.** ((2004) 5 SCC 257) it was held as follows: _“A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source.”_ 86. In the decision reported in **M/s. Aravind Laboratories v. Modicare** (2011(4) L.W. 55) it was held as follows: _“A descriptive mark is defined by McCarthy, on the following lines, based upon the decision of the 7[th] Circuit in G.Helleman Brewing Co. Vs. Anheuser-Busch Inc.: “A word, picture, or other symbol that directly describes something about the goods or services in connection with which it is used as a mark. Such a term may be descriptive of a desirable characteristic of the goods; the intended purpose, function, or use of the goods, the size or color of the goods; the class of users of the goods; or the end effect upon the user. The issue of descriptiveness is usually tested from the_ A.S.17/1988 & con.cases . 93 _view point of the hypothetical customer who has that basic amount of knowledge about the product which is conveyed by advertising and promotion currently available in the market place”._ _However, relying upon the judgment of the Delhi High Court in M/s. Kala Niketan v. M/s. Kala Niketan, the learned counsel for the plaintiff contended that the word “Dazller” is not descriptive. The relevant portions of the judgment of the Delhi High Court in the said case, read as follows:_ _“_ 16. It is settled law that if a trade name merely describes the goods or their characteristics then ordinarily the plaintiff cannot prevent others from using it. A trade name is opposed to a merely descriptive name. In Office Cleaning Services Ltd. v. Westminister window and General Cleaners Limited, Lord Simonds said:- “It comes in the end, I thing, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small A.S.17/1988 & con.cases . 94 differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of the words descriptive of the articles to be sold or to the services rendered.” ............ ................ 17. The test whether the words are descriptive has been laid down in Corpus Juris Secumdum Volume 87 in paragraph 34 at page 271 as follows: “The true test in determining whether a particular name or phrase is descriptive is whether, as it is commonly used, it is reasonably indicative and descriptive of the thing intended. In order to be descriptive within the condemnation of the rule, it is sufficient if information is afforded as to the general nature or character of the article, and it is not necessary that the words or marks used shall comprise a clear, complete, and accurate description. The meaning which should be given is the impression and signification which are conveyed to the public, whether words or marks claimed as public, whether words or marks A.S.17/1988 & con.cases 95 . claimed as trade marks are descriptive or whether they are suggestive or arbitrary and fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole.” _................ .................._ _There is no quarrel with the proposition of law indicated by the Delhi High court in Kala Niketan. As a matter of fact, para 16 of the decision of the Delhi High Court, begins with the accepted statement of law that if a trade name describes the goods or their characteristics, then ordinarily the plaintiff cannot prevent others from using it. Having said that, the Delhi High Court examined on facts as to whether any of the two words viz., “Kala” and “Niketan” was descriptive of the product in question viz., Sarees. Therefore, applying the very same test, what I have to see ultimately is whether the word “DAZLLER” is descriptive of the product nail polish and nail glitter. If so done, it is clear that the word “DAZLLER” is a derivative of the word “Dazzle” which indicates the intended purpose of the_ A.S.17/1988 & con.cases . 96 _product viz., nail polish and nail glitters, within the meaning of section 30(2)(a) of the Act.”_ ## 87. In the decision reported in **British Diabetic Association v. Diabetic Society** ((1995) All.E.R. 812)it was held as follows: _“The scope of passing off action was wide enough to include deception of the public by one fund-raising charity in a way that tended to appropriate and so damage another fund-raising charity's goodwill, namely the other charity's 'attractive force' in obtaining financial support from the public.”_ ## 88. In the decision reported in **Diageo v. ICB** ((200) 3 All.E.R. 147) it was held as follows: _“A claim for extended passing off was not only available in respect of terms that had a cacher. The principle which underlay the action for extended passing off was the protection of goodwill. If members of the public wished to purchase a particular class of products it was irrelevant whether the desire to purchase was_ A.S.17/1988 & con.cases . 97 _motivated by a perception that the class had a superior quality or by a liking for that class of product. Moreover, it was difficult to see in practice how products which were purchased because they were perceived as being of superior quality were to be distinguished from products which were purchased because consumers liked them. The cases on passing off by the misuse of geographic terms were illustrations of a wider principle that it could be passing off to misuse any sufficiently significant descriptive or generic term in relation to goods, services or a business for which it was inappropriate.”_ 89. The issue as to whether the mark adopted by the defendants or such other thing that may be adopted by the defendants is deceptionally similar to the one adopted by the plaintiff is a matter that is to be determined by the Tribunal or the court as the case may be. The test, as already noticed, is to see whether deception is caused or the similarity is likely to mislead the public. As already noticed, the test to see whether the goods are passed off is A.S.17/1988 & con.cases . 98 to approach it from the point of view of a man of average intelligence with imperfect recollection. 90. One contention that needs to be taken note of at this point of time is the contention raised by the learned counsel for the respondents in A.S. 355 of 2000 and A.S.483 of 2000. Learned counsel went on to point out that the business was put an end to in 1970 when the partnership was dissolved and thereafter the business commenced only in 1992. The long holiday defeat any claim of goodwill or reputation claimed by the plaintiff in the suit. 91. One has to necessarily examine that on facts whether the above plea is true. It is not always be necessary that on cessation of business, the goodwill or reputation of a business will come to an end. 92. In _**Halsbury's Laws of England**_ , Vol.48 page 196 at Note 310 it is observed as follows: _“_ _**310. Abandonment or suspension of trade** . The abandonment or suspension of trade, or of he use of a name, mark or other indicia in a trade,_ A.S.17/1988 & con.cases 99 . _will often leave a residual reputation and goodwill in the public mind which the trader may sue to protect, at any rate if it is intended to resume the trade after a temporary interruption. whether sufficient residual reputation still exists to maintain a passing-off action is a question of fact. It seems, however, that an action cannot be maintained when the goodwill is positively abandoned by the breaking up of the business; nor can an action be maintained by the former trader when the goodwill is assigned to another person.”_ 93. It is well established by now that the burden is on the plaintiff to show that the defendant is guilty of mischief of passing off. **Cornish and Llewelyn in the book** _**Intellectual Property: Patents, Copyright, Trade Marks and Allied Right**_ **s,** 6[th] Edn. at page 630 under the Note 17-07 it was observed as follows: _“Accordingly, the claimant will demonstrate the volume of his sales and advertising expenditure and will supplement this by evidence from traders and the public of the meaning that_ A.S.17/1988 & con.cases . 100 _they attach to the distinguishing features of the claimant's goods or business: saying, for instance, that they have long understood the trade mark “XXXX” to denote goods of the claimant's manufacture. At the end of the day, the claimant must show that it is his reputation that is being misappropriated by the defendant. Otherwise it may well be a case of “the unknown seeking remedies against the known”. Likewise, the court will not protect a goodwill of only trivial extent.”_ 94. In the decision reported in **Wyeth Holdings Corporation v. Burnet Pharmaceuticals (Pvt) Ltd.** (AIR 2008 Bombay 100) it was held as follows: _“Thirdly, before the Court can accept that the words incorporated in a mark are elements which are common to the trade or business, certain essential ingredients must demonstrably be established. The judgment of the Supreme Court in Corn Products:(AIR 1960 SC 142) categorically lays down the principle of law that before an application can assert the presence of a number of marks having one or more common features in the_ A.S.17/1988 & con.cases . 101 _trade “he has to prove that these marks had acquired a reputation by user in the market.””_ 95. In the decision reported in **Batchayi v. P.A.Ramaswami** (AIR 1936 Madras 8) it was held as follows: _“Before a dealer can restrain another from using a name or mark it is not sufficient to show that the article with that name or mark has acquired a reputation in the market but it must also be shown that the public have grown to associate that particular name or mark with himself as the manufacturer of or dealer in that article. Where there is absolutely no evidence to establish any such association in the public mind between the plaintiff's business and the goods bearing the mark in question, the suit must fail.”_ 96. In the decision reported in **D.D.A. v. Lala Amar Nath Education and Human Society** (AIR 1991 Delhi 96) it was held as follows: _“In the present case the plaintiff had only made a bald assertion in the plaint that it has been doing substantial business and has quoted_ A.S.17/1988 & con.cases . 102 _certain figures for the years 1967 to 86 but nothing has been placed on the record in support of these facts. The bills and vouchers produced by the plaintiff only show that the plaintiff has been carrying on the business of retreading tyres etc. and there is nothing on the record to show prima facie that the plaintiff had at any time manufactured or sold tyres and tubes. So it cannot be said that the plaintiff has acquired any proprietorship in the trade name 'Malhotra Tyres' in respect of its business or it has built up any goodwill or reputation so that any other person dealing in the same type of business under the said trade mark would be guilty of passing off his goods as the goods of the plaintiff. So in any view, the plaintiff has not been able to establish prima facie case in his favour so that a temporary injunction could be granted as prayed for by the plaintiff.”_ 97. Having thus understood the various aspects relating to the law of passing off, one may now venture to go into the facts and the evidence in the case to ascertain A.S.17/1988 & con.cases . 103 whether the grievances of the respective parties are genuine and well founded. 98. As already noticed, though the disputes began as early as in 1957, the subject matter of the present dispute is the scope of the recitals in Ext.A2 in O.S.4 of 1978 as well as in O.S.4 of 1993, which is a deed of partition entered into between the sons of late Kalan Ouseph Vaidyan. 99. It is well established that while interpreting a document, it has to be read as a whole and as far as possible all clauses in the document will have to be given effect to. It is only in the case of ambiguity or confusion caused by the various recitals in the deed, one is entitled to look into the surrounding circumstances and conduct of the parties. If the terms of the document are unambiguous and clear, effect will have to be given to those recitals irrespective of the consequences that may follow. A.S.17/1988 & con.cases . 104 ## 100. In the decision reported in **State Bank of India v. Mula Sahakari Sakhar Karkhana Ltd.** (AIR 2007 SC 2361) wherein it was held as follows: _“A document, as is well known, must primarily be construed on the basis of the terms and conditions contained therein. It is also trite that while construing a document the court shall not apply any words which the author thereof did not use._ _The document in question is a commercial document. it dos not on its face contain any ambiguity. The High Court itself said that ex facie the document appears to be a contract of indemnity. Surrounding circumstances are relevant for construction of a document only if any ambiguity exists therein and not otherwise.”_ 101. Ext.A2 is the partition deed entered into between the sons of late Ouseph Vaidyan. It is executed by six persons, namely, Lonappan, Pavunny, Thomas, Kochuvareed, Jose and Anto. It refers to a document dated 31.3.1965, which is Ext.A1 in O.S.4 of 1978. Since the main A.S.17/1988 & con.cases . 105 dispute centers around the clauses in Ext.A2, it is necessary to refer to those clauses. The following recitals are relevant: _“_ നമള അന�ഭവ�ച�വന�ര�നത�മ�യ ഉപയയ�ഗ�ച� വന�ര�നത�മ�യ ക�ളന എന സ�പനവ�� ക�ളന നനല�യ� എന വ�ല�സവ �� Goodwill ഉ� ട� സ�പനത�നനറ എല� ഡ�യ'�കള �� ക�ളനസ( ഔഷധങള�ക�ന ന��ബ�സവ�ദ/�ക�ദ0ത�ശ�ര�സ�, , തതല�, ഉഷ(3യര�ഗ സ�ഹ�ര�, ഗ5�സ( ദടബ�ള സ�ഹ�ര�, പഞയര�ഗ സ�ഹ�ര�, ന7രവ7ഴ(: സ�ഹ�ര�, ധ�ത�യപ�ഷക� എന�വയ �� 1.4.1965 നലയ�� 19.08.1967നലയ�� ട� രജ�സ( ദട�ര ഓഫ( യഫ�സ�ല രജ�സര ന:യ(ത പ�രG(3രഷ�' � ഡ7ഡ�കള�നട അട�സ�നത�ല നമള പ�രG(3രമ�ര� ര�യ� ബ�സ�നസ( നടത�വന�G�ളത�മ�ക�ന�. ( _Clause 1)_ നമളK( ത7റ�സ�ദ�ച�G �ള ആധ�രത�നല സ� പG�കയ�ല പറയ�ന എG( ഔഷധങള�� പ�ന7ട� നമള ക�ളന സ�പനത�ലന�ന( ഉണ�K� വ5�പര�ച�വന�ര�നവയ�മ�യ സ(നപഷല ന7ല�ഭO�ഗ�/� എണ, സ(നപഷല ന7ല�ഭO�ഗ�/� നവള�നചണ, സ(നപഷല /ശമQല�ര�ഷ�, സ(നപഷല :5വനദപ�ശ� A.S.17/1988 & con.cases . 106 എന�വയ�� നമള ആറ �യപരK�� ഉണ�K �വ�ന�� വ5�പര�K�വ�ന�� ഒര�യപ�നല അവക�ശമ�നണന�� നമള ത7ര�മ�ന�ച�ര�K �ന�. _(Clause 2)_ എന�ല 'ക�ളന സ�പനവ�� ക�ളന നനല�യ� വ�ല�സവ�� ഗ�ഡ( വ�ല�� ഭ�ഗത�ല ക�G7G �ള ഒന�� ന�പറ�ക�രന� മ�ദതനമ യലബല യബ�രഡ(, , ല0�യലഖ, പ�സ(തക� പരസ5� മ�തല�യവയ�ല മലയ�ള�ഇ�ഗ7ഷ(, , തമ�ഴ( മ �തല�യ ഭ�ഷകള�ല ക�ളന എന( സ�നയ'ര�യ�� ക�ളന നനല�യ� എന( വ�ല�സമ�യ�� ക�ളന സ�പനത�നനറ ക�ളന എന�� ഈ എ�ബ(ളങള ക�ളന സ�പനത�നനറ നദടയ�ഡ( മ�രK�യ�� ഈ എ�ബ(ളങള�നല KALAN എന വ�K�നക�ണ(മറ� രQപത�ല എ�ബ(ളങള�യ �� ഉപയയ�ഗ�'�ന അവക�ശവ�� അധ�ക�രവ�� ഉളQ എന�� മ�ന5മദ5സന�ര�നട സ�ന�ദ5ത�ല നമള സമത�ച( ത7ര�മ�ന�ച�ര�K �ന�. ക�ളന നനല�യ�യ �നട (ക�ളനസ�നനറ) ഇയ'�ള ന�ലവ�ല �ള ഔഷധങള ന��ബ�സവ�, ദ/�ക�0Oത�, ശ�ര�സ� തതല�, ഉഷ(3യര�ഗ സ�ഹ�ര�, ഗ5�സ( ദടബ�ള സ�ഹ�ര�, 107 A.S.17/1988 & con.cases . പഞയര�ഗ സ�ഹ�ര�, ന7രവ7ഴ(: സ�ഹ�ര�, ധ�ത�യപ�ഷക�, സ(നപഷല /ശമQല�ര�ഷ� സ(നപഷല ന7ല�ഭO�ഗ�/� എണ, സ(നപഷല ന7ല�ഭO�ഗ�/� നവള�നചണ എന7 ഔഷധങള�നട same label ....... .ക�ളനസ(എന വ�K�� ഈ മ�ദ/യ�� ഒഴ�ച( ഗ �ഡ( വ�ല ഭ�ഗദപക�ര� ക�G�ത ഏത � പ�രG(3രK�� ഉപയയ�ഗ�K�വ�നത�3(. _(Clause 3)_ എന�ല നമള ആറ�യപര�നടയ�� വ�ല�സത�ല യപര�കയള�ട� യ:രത � ക�ളന എന( . ഉപയയ�ഗ�K�വ�ന�ള അവക�ശ� ആറ�യപരK�� ഉണ( എന�ല നമള�ല ഒന�� ന�പറ�ക�രന ഒഴ�നകയ�ള അഞ�യപര�യടയ�� സ�പനങള�നട യപര�കള�നട ഒട�വ�ല ക�ളന നനല�യ� എന � യ:രK �വ�ന _(Clause 4)_ “ പ�ട�ളതല. Apart from the above recitals, there are recitals regarding the distribution of the various depots of the concern which are divided among the sharers. Those recitals are not very A.S.17/1988 & con.cases . 108 relevant for the present purpose and hence are not being referred to. 102. But one has to necessarily refer to the movable properties which are given to the first executant as per Ext.A2 document. Details of which are shown in a schedule as follows: 1. ക�ളന എന സ�പന� 2. ക�ളനസ( എന വ�K( 3. എന നദടയ�ഡ�മ�രK�കള ## 4. ക�ളനനനല�യ� എനവ�ല�സ� 5. ക�ളന എന സ�പനത�നനറയ�� ക�ളനനനല�യ�യ�നടയ�� ഗ�ഡ( വ�ല( 6. ക�ളനസ(ന�� ബ�സവ� 7. ക�ളനസ(ദ/�ക�0Oത� 8. ക�ളനസ( ശ�ര�സ� തതല� 9. ക�ളനസ(പഞയര�ഗ സ�ഹ�ര� 10. ക�ളനസ(ന7രവ7ഴ(: സ�ഹ�ര� 11. ക�ളനസ( ഗ5�സ( ദടബ�ള സ�ഹ�ര� A.S.17/1988 & con.cases . ## 109 12. ക�ളനസ( ഉഷ(3യര�ഗ സ�ഹ�ര� 13. ക�ളനസ( ധ�ത�യപ�ഷക� 4. ക�ളനസ( സ(നപഷല /ശമQല�ര�ഷ� 15. ക�ളനസ( സ(നപഷല :Oവനദപ�ശ� 16. ക�ളനസ( സ(നപഷല ന7ല�ഭO�ഗ�/� എണ 17. ക�ളനസ( സ(നപഷല ന7ല�ഭO�ഗ�/� നവള�നചണ 103. A reading of Ext.A2 will leave one in no doubt regarding the fact that none of the defendants either in O.S.4 of 1978 or defendants in O.S.4 of 1993 can use the labels or such pictures as would have deceptive similarity with that of the plaintiff. A reading of Ext.A2 would indicate that 'Kalan' is infact the name of an establishment and the address is 'Kalan Nellayi'. The emblem shown in Ext.A2 at page 4 is the trade mark of 'Kalan' establishment known by name 'Kalan'. The provisions in Ext.A2 enable the first executant namely, Lonappan, to use the emblem in any other method, mode or representation. These rights A.S.17/1988 & con.cases . 110 exclusively belong to Lonappan including the address 'Kalan Nellayi' and 'Kalan's'. But certain medicinal preparations, namely, ones obtained under Ext.A1 and others subsequently prepared by the firm can be manufactured by any of the executants who had not received the goodwill. However, the labels etc., reference to 'Kalan' and 'Kalan Nellayi' shall exclusively belong to the person who had been allotted with goodwill under Ext.A2. But all the six of the executants in their personal address along with their names are entitled to use the word 'Kalan'. The borne of contention between the parties herein is regarding the use ' of the words 'Kalan' and 'സ�ക�ല . 104. The dispute in these appeals narrows down to the words 'Kalan', 'സ�ക�ല ' and 'സ�ക�ല Kalan'. The plaintiff in O.S.4 of 1978 and O.S. 4 of 1993 claim that late Ouseph Vaidyan had adopted the name 'Kalan' and by passage of time it had acquired a distinctiveness attributable to the preparations of late Ouseph Vaidyan and A.S.17/1988 & con.cases . 111 as per Exts.A1 and A2 in O.S.4 of 1993, his eldest son Lonappan had acquired the right to use the words 'Kalan' 'Kalan's, and 'Kalan Nellayi' and the goodwill and reputation of 'Kalan'. They however concede that the defendants in O.S.4 of 1978 and defendants in O.S.4 of 1993 can use the word 'Kalan' to a limited extent. The contention is that they cannot use the word 'Kalan' to name their establishments either independently or in conjunction with other words. The stand of the plaintiff in the two suits is that the word 'Kalan' shall not appear in the name of the establishments to be commenced by any of the executants other than executant No.1 in Ext.A2 or their successors. However, they have no objection in using the same along with the personal address of the other executants, namely, executants 2 to 6. 105. The contesting defendants have two forth contentions. They are i) use of the word 'Kalan' is permitted under Ext.A2 itself and 'സ�ക�ല ' is a descriptive word which had not acquired a secondary meaning on the facts of this A.S.17/1988 & con.cases . 112 case to qualify for exclusiveness. and ii) 'Kalan' is a family name and any member of the family can use the same. 106. In O.S.4 of 1978 it was held that 'Kalan' was a trade name coined by late Ouseph Vaidyan and it belonged exclusively to him. It is further held that the same had been assigned to the plaintiff and the plaintiff acquired the same under Ext.A2. However, a reading of the judgment in O.S.4 of 1978, which is assailed in A.S.17 of 1988, it, it does appear that the other executants namely executants 2 to 6 in Ext.A2 can use the word 'Kalan' in a restricted manner. Therefore, the finding of the trial court that the defendants in O.S.4 of 1978 cannot use the word 'Kalan' at all or that there is total prohibition of the use of the word 'Kalan' by executants 2 to 6 in Ext.A2 cannot be sustained. 107. In O.S. 4 of 1993 the court took the view based on a consideration of the voluminous evidence in the case that 'Kalan' is a family name and all the members of A.S.17/1988 & con.cases . 113 the family have a right and entitlement to use that name in any manner that suited them. 108. A reading of Ext.A2 leaves one in no doubt that late Ouseph Vaidyan was running an establishment called 'Kalan' manufacturing and selling Ayurvedic products including the one which were his own inventions. That would be evident from Exts.A1 and A2 in O.S.4 of 1978. The said establishment was assigned in favour of the six sons of late Ouseph Vaidyan as per Ext.A1. They continued the business forming a partnership and that continued for a while. Later the partnership was dissolved and then comes Ext.A2 by which the sons of late Ouseph Vaidyan partitioned their assets. 109. One fact needs to be noticed. At the time of execution of Ext.A2 Pavunny (father of defendants 10 to 13 in O.S.4 of 1993), who is the first defendant in O.S.4 of 1978 was running an establishment by name Kalan Pharmaceuticals. Thomas, the third executant in Ext.A2 was A.S.17/1988 & con.cases . 114 running a firm by name Sakthi Pharmaceuticals. The fourth excutant in Ext.A2 namely, Kochuvareed, was conducting Kalan Distributors. By virtue of the following clause in Ext.A2 **“** ' ഇയ'�ള ന�ലവ�ല �ള രണ�� ന�ബറ �ക�രനനട ക�ളന ഫ�രമസ^�G�Kലസ( ' ന�ല�� ന�ബറ�ക�രനനട ക�ളന' ദബയ/ഴ(സ(' എന7 സ�പനയപര�കളന�ബന�ച( നമള�ല ആരK�� തരKനമ� ആയകപയമ� ഇല എന��ന�ശയ�ച� സമത�ച�ര�K�ന�.” these persons are allowed to retain the name 'Kalan' as used by them till then. In other words' no objection can be taken by anyone including the plaintiffs in O.S.4 of 1978 and O.S.4 of 1993 to those concerns continuing to function under the same names. 110. The appellant in A.S.483 of 2000, so also the respondent in A.S.17 of 1988 contended that the above clause in in Ext.A2 permitting the continuance of the use of the word 'Kalan' by three concerns then in existence is a clear indication of the fact that the use of the word 'Kalan' A.S.17/1988 & con.cases . 115 along with other words is limited to the three ongoing concerns and future use of the word 'Kalan', either independently or along with other words to name an establishment is strictly prohibited. However, they concede that the contesting parties can use the word 'Kalan' along with their personal address. 111. To understand the exact controversy involved an example may be taken. The contention of the appellant in A.S.483 of 2000 and the respondent in A.S.17 of 1988 is that (1) the other executants under Ext.A2 can use the word 'Kalan' as follows: (i) Kalan Pavunny or Kalan Kochuvareed etc. (2) but cannot use the word 'Kalan' to name a new establishment or use it along with other words for naming a new establishment. For example: Kalan Drugs and Pharmaceuticals etc as is done by the defendants in O.S.4 of 1993. According to the plaintiff in both the suits violation of the terms of Ext.A2 will affect the goodwill. A.S.17/1988 & con.cases . 116 112. The above argument is countered by the contesting defendants by pointing out that they are entitled to use the word 'Kalan' in conjunction with other words and it is not prohibited under Ext.A2. In support of their contention, they heavily rely on the Schedule to Ext.A2 by which certain specific rights are conferred on Lonappan, who is the plaintiff in O.S.4 of 1978. The movable assets assigned to Lonappan under Ext.A2, according to them, are specifically referred to in the schedule. They highlight that the word 'Kalan' is conspicuously absent in the schedule whereas the words like 'Kalan's' etc are specifically mentioned therein. They therefore contended that probably at best what the plaintiff in O.S.4 of 1978 could bargain for is that the other executants shall not use the word 'Kalan' by itself to name any of their establishments. But use of the word 'Kalan' in conjunction with other words is not at all prohibited by the provisions contained in Ext.A2. At the risk of repetition, one may notice that the court in O.S. 4 of 1993 A.S.17/1988 & con.cases 117 . seems to have accepted the case of the defendants that 'Kalan' is a family name. 113. It is the fact that the name of the family was directly in issue in O.S.2 of 1957 which was produced as Ext.A14 dated 2.12.1958 in O.S.4 of 1993, which was a suit between brothers namely Pavunny Vaidyan and Ouseph Vaidyan, the two brothers, who are the predecessors-in-interest of the parties herein. In that suit, the plaintiff, namely, Pavunny Vaidyan claimed to run 'Kalan Ayurveda Oushadhasala'. He claimed that 'Kalan' was a family name. That claim was negatived and it was found that it was a trade name. In fact in the suit the plaintiff sought to restrain Ouseph Vaidan from using the word 'Kalan'. Rejecting the claim of the plaintiff that 'Kalan' was a family name, it was found that the name of the family was 'Kalath'. 114. There are innumerable documents produced by the plaintiff in O.S.4 of 1993 like Exts.A23, A24, A25, A32 A.S.17/1988 & con.cases . 118 etc., which would show that the family name was 'Kalath'. However, the defendants in both the suits did not lag behind. They have produced innumerable documents to show that 'Kalan' was also adopted as the family name and quite a few members of the family had the prefix 'Kalan'. Exts.B5, B6, B7, B8 B16, B33, B34 etc are some of them. Heavy reliance was placed on Ext.A14 in O.S.4 of 1993 wherein it was held that the family name was 'Kalath' and not 'Kalan' does not appear to be true going by the present state of affairs. It would appear from the evidence on record that by passage of time 'Kalan' was also adopted as the family name. The irresistible conclusion in that regard flows from the various documents produced by the defendants in both the suits. At any rate, it is clear that 'Kalath' and 'Kalan' were interchangeably used as the family name. Therefore, the finding of the court below in O.S.4 of 1993 in this regard is only to be upheld. A.S.17/1988 & con.cases . 119 115. However, restriction found by the lower court in O.S.4 of 1993 on the use of the word 'Kalan' independently by others, the prohibition from using 'Kalan Nellayi' as observed in paragraph 37 of the judgment and the conclusion drawn in paragraph 47 of the judgment in O.S.4 of 1993 appears to be fully justified. 116. The court in O.S.4 of 1978 proceeds on the basis that the plaintiff therein had exclusive right to use the word 'Kalan'. It does not appear to be correct. The total prohibition is only against the use of the words 'Kalan's' and 'Kalan Nellayi'. The exclusive use of those words and address vest with the first executant under Ext.A2. He is given the establishment named 'Kalan'. He is also entitled to the use of the word 'Kalan's'. 117. One cannot omit to note that the word 'Kalan' does not find a place in the schedule to Ext.A2, which stipulates the assets set apart to the first executant Lonappan under Ext.A2. This aspect was highlighted by the A.S.17/1988 & con.cases . 120 appellant in A.S.17 of 1988 and respondent in A.S.483 of 2000 to substantiate their contention that parties to Ext.A2 did not consider that the first executant should have the exclusive privilege and right to use the word 'Kalan'. 118. The above contention is met by the respondents in A.S.17 of 1988 and the appellants in A.S.483 of 2000 pointing out that since the body of Ext.A2 described the manner in which the executants other than the first executant could use the word 'Kalan', it was not necessary to mention the word 'Kalan' again in the schedule. The fact that all other five executants in Ext.A2, except executant No.1, were allowed to use the word 'Kalan' in their personal address indicates that all parties to Ext.A2 were of the definite opinion that the word had some significance and importance. If 'Kalath' was the house name and it continued to be so, there was no necessity to show 'Kalan' as house name as is seen in the several documents referred to. It is evident that the word 'Kalan' was intended to be used and A.S.17/1988 & con.cases . 121 allowed to be used by Ext.A2 so as to indicate the pedigree. If that be so, the mentioning of the house name as 'Kalan' and prefixing the word 'Kalan' to the names of the members of the family clearly show that the word was intended and later used to denote the family itself. It had ceased to be a mere trade name as found in O.S.2 of 1957 evidenced by Ext.A14 by the passage of time and it got transformed as a family name as is referred to above. 119. Sri.T.R.Ravi, learned counsel appearing for the appellants in A.S.483 of 2000 cautioned this court that in a case of passing off relating to pharmaceutical items, the court usually adopts a strict standard. Learned counsel referred to the decision reported in **Milmet Oftho Industries v. Allergan Inc.** ((2004) 12 SCC 624) and **Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.** ((2001) 5 SCC 73). Learned counsel therefore drew the attention of this court the judgment in O.S.2 of 1957 and pointed out that there it was found that the defendant in A.S.17/1988 & con.cases . 122 the case was making spurious medicines and was trying to pass it off as it was the preparation of the plaintiff in the suit. Sri.T.R.Ravi in this regard got considerable support from Sri.S.V.Balakrishna Iyer, Senior Counsel, who is appearing for the respondents in A.S.17 of 1988. 120. In _**Halsbury's Laws of India**_ , Vol.20(1) at page 619 Note 185.1125 it is observed **as** follows: _“_ _**[185.1125] Special consideration when dealing with pharmaceutical trade marks** Special considerations are applicable where the product is a medicinal preparation, more so when the clinical composition of two competing products is different, not so much as to protect the reputation of the trader but to safeguard the public. In the interest of the public, there may not be two medicinal preparations bearing the same name from different sources and with different compositions.”_ ## 121. In the decision reported in **Milmet Oftho** **Industries's case** (supra) after referring to the decision in A.S.17/1988 & con.cases 123 . **Cadila Health care Ltd.'s case** (supra) it was observed as follows: _“Whilst considering the possibility of likelihood of deception or confusion, in present times and particularly in the field of medicine, the courts must also keep in mind the fact that nowadays the field of medicine is an international character.”_ 122. In the decision reported in **Cadila Health care Ltd.'s case** (supra) it was held as follows: _“Here, it will be useful to refer to the decision of Morgenstern Chemical Company's case (supra) where it has been held as under:_ “(5) in the field of medical products, it is particularly important that great care be taken to prevent any possibility of confusion in the use of trade marks. The test as to whether or not there is confusing similarity in these products even if prescribed and dispensed only by professionally trained individuals does not hinge on whether or not the medicines are designed for similar ailments. The rule enunciated by Judge Helen in A.S.17/1988 & con.cases . 124 Cole Chemical Co. vb. Cole Laboratories. D. C.Mo. is applicable here: “Plaintiff and defendant are engaged in the sale of medical preparations. They are for ultimate human consumption or use. They are particularly all for ailments of the human body. Confusion in such products can have serious consequences for the patient. Confusion in medicines must be avoided. ***** “Prevention of confusion and mistakes in medicines is too vital to be trifled with.” _The observations made by Assistant Commissioner Leeds of the Patent Office in R.J. Strasenburgh Co. v. Kenwood Laboratoris, are particularly apt, that_ “Physicians are not immune from confusion or mistake. Furthermore it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike A.S.17/1988 & con.cases 125 . when handwritten or sound too much alike when pronounced.” _The defendant concedes that physicians and pharmacists are not infallible but urges that the members of these professions are carefully trained to detect differences in the characteristics of pharmaceutical products. While this is doubtless true to dos not open the door to the adoption by manufacturers of medicines of trade marks or names which would be confusingly similar to anyone not exercising such great care. For physicians and pharmacists are human and in common with the rest of mankind are subject to human frailties. In the field of medicinal remedies the Courts may not speculate as to whether there is a probability of confusion between similar names. If there is any possibility of such confusion in the case of medicines public policy requires that the use of the confusingly similar name be enjoined.”_ _............. .............._ _Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as_ A.S.17/1988 & con.cases . 126 _against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Nothing the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. this view finds support from McCarthy on Trade Marks 3[rd] Edition para 23.12 of which reads as under._ “The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each A.S.17/1988 & con.cases . 127 with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints.” 123. One can have no quarrel with the above propositions. But the question is how far the above principles apply to the facts of the present case. It is elementary that the act of passing off does not protect a trade name. It seeks to protect the goodwill and reputation of the business. The gist of passing off is that the defendants adopt a method suggesting that the goods or products to be that of the plaintiff even though the goods have no connection with the plaintiff. 124. In the case on hand, the plaintiff in O.S.4 of 1978 and the plaintiff in O.S.4 of 1993 have rights A.S.17/1988 & con.cases . 128 conferred on them as per Ext.A2. They do not have nor do they claim independent goodwill or reputation. If it was intended that none other than the first executant in Ext.A2 should have anything to do with the word 'Kalan', the permission to use the said word atleast in a restricted manner going by the provisions of Ext.A2 would not have been granted. Viewed from that angle, it could be said that none of the parties to Ext.A2 intended or desired that Lonappan, the first executant in Ext.A2 alone should have the exclusive privilege to use the word 'Kalan' in any manner. Even assuming what the plaintiff in O.S.4 of 1978 and O.S.4 of 1993 say are true, the defendants can adopt methods to show that they have intimate connection or relationship with the word 'Kalan' as it originally stood and the object it intends to serve. By utilizing the word 'Kalan' even as suggested by the plaintiff, every executant in Ext.A2 could have the benefit of the word 'Kalan'. A.S.17/1988 & con.cases . 129 125. As it now stands, even if the defendants in the respective suits are prohibited from naming their establishments using the word 'Kalan' independently and in connection with other words, that will not suffice since they can still show the word in their personal address. Naturally, any use of the word 'Kalan' would trace its origin to late Ouseph Vaidyan. The defendants in the two suits are accused of doing the mischief of passing off with respect to their product. As long as the defendants are allowed to use the word 'Kalan' in one form or another, it could not be said that the use of the said word will result in deception. 126. It is true that asper the recitals in Ext.A2, the relevant clause which has already been extracted, the use of the word 'Kalan' is permitted as far as executants 2 to 6 are concerned in their personal address. But since the word 'Kalan' has not been specified in the schedule to Ext.A2, and since the evidence clearly show that by passage of time it was adopted as the family name, the claim made by the A.S.17/1988 & con.cases . 130 plaintiff in O.S.4 of 978 and O.S.4 of 1993 for restricting the use of the word 'Kalan' cannot be accepted. 127. At the risk of repetition, one may notice that in a passing off action, it is not the trade name, i.e., the word, sign or mark that is sought to be protected, but the goodwill of the products. Going by Ext.A2, the establishment by name 'Kalan' alone became the exclusive property of Lonappan. As of now, there is dearth of evidence to show that the products manufactured by the establishment 'Kalan' is also known as Kalan products. That is to say that the products manufactured by the establishment by name 'Kalan' contains the name 'Kalan'. On the other hand, going by Ext.A2 it would appear that the products are marketed under the name and style 'Kalan's'. That probably is the reason why the name 'Kalan' is not included in the schedule to Ext.A2 regarding the property set apart to Lonappan, who is executant No.1 in Ext.A2. Further down, certain products are made mention of, which are also A.S.17/1988 & con.cases . 131 prefixed with the word 'Kalan's' thereby further strengthening the view that the products were manufactured and sold in the name 'Kalan's'. 128. It must be due to that reason that the use of the word 'Kalan's' subsequent to the execution of Ext.A2 is vested solely with Lonappan, the first executant and other executants are precluded and prohibited from using the same. Naturally it would appear that the goodwill and reputation were of the products marketed under the name 'Kalan's'. 129. There is a feeble contention on behalf of the appellants in A.S.17 of 1988 and the respondent in A.S.483 of 2000 that 'Kalan' is a general word and it has no distinctiveness attached to it. That does not appear to be so. It could not be said that the word 'Kalan' is a general word. At any rate, its long usage by late Ouseph Vaidyan, it had achieved a distinctiveness thereby acquiring a A.S.17/1988 & con.cases . 132 secondary meaning. If that is so, it is entitled to be protected. 130. Family names too can be used as trade name and by passage of time achieve distinctiveness. The restriction of the use of the word 'Kalan' by executants 2 to 6 and their successors going by Ext.A2 had already been dealt with. It has already been found that the evidence would indicate that by passage of time the family came to be known both by the names 'Kalan' and 'Kalath'. If 'Kalan' is being used as the family name, then as rightly found by the trial court in O.S.4 of 1993, the plaintiff in O.S.4 of 1978 and O.S.4 of 1993 cannot lay exclusive claim to use that word. 131. What now remains to be considered is the use of the word 'സ�ക�ല ' and 'സ�ക�ല Kalan'. The trial court in O.S.4 of 1978 thought that the plaintiff had exclusive right to use that word. 132. 'സ�ക�ല ', no doubt, is a descriptive word. In ശബത�ര�വല� the meaning of 'സ�ക�ല ' is given as . 133 ## A.S.17/1988 & con.cases 'സതOമ�യ�, നതള�വ�യ�, ത�ലOമ�യ�, യനര�G(, ക�ണനക, ദപതOകത�ല( , (അകയത�ട�കQട�യത( സ�ക�; അത�നന അത�K�നത( എനരc�) എങ�� ക�3�വ�നസ�ദപസ�ദമ�യ. , '' In മലയ�ള� ഇ�ഗ7ഷ( ന�0ണ� by DC Books the corresponding English word is shown as real, genuine, true, unalloyed and original. It is certainly not an invented word. It is a word of common usage. There is nothing to indicate that the said word by itself has achieved a secondary meaning and distinctiveness. The finding therefore of the trial court in O.S.4 of 1978 that the plaintiff in the said suit is entitled to exclusive use of the word 'സ�ക�ല ' and 'സ�ക�ല Kalan' cannot be supported. 133. One may now refer to the oral evidence in both the cases. The plaintiff in O.S.4 of 1978 was examined as P.W.3. According to his evidence, initially the manufacture of Ayurvedic medicines started in 1952 onwards. The establishment was known as Kalan Nellayi. He would depose that his father assigned the establishment and other rights in favour of his sons and they ran the A.S.17/1988 & con.cases . 134 business constituting a partnership. They continued till 1968. When difference of opinion arose between the partners, a suit was filed for dissolution and the business was put an end. He referred to the terms of Ext.A2. He would depose that after the partnership was put an end, his brothers started several establishments and in their advertisement they mentioned the word Kalan Nellayi. According to him, the word അന�കര3� (imitation) mentioned in Ext.A2 refers to those aspects. He also deposed that from 1973 onwards he has been taking sufficient precautions to ensure that the products manufacturing and sold by him are not mistaken with the products that are produced by the other persons. He would depose that he had produced pamphlets and other materials to ensure that his products are identifiable from the products manufactured by others. Ext.A9 is one of them. Even though P.W.3 stated that due to the acts of the first defendant, he had incurred considerable loss, there is absolutely no evidence to establish the said A.S.17/1988 & con.cases . 135 fact. He would also say that due to the labels printed and used by the first defendant, he was given to understand that several people were misled and many had complained to him. But surprisingly enough he had not examined any one of them. He would say that several persons have written to him about the mischievous activity committed by the first defendant. But he has not produced any one of those communications. He would say that the first defendant in O.S.4 of 1978 does not even have the right to publish that he is the son of 'സ�ക�ല Kalan K.P. Ouseph'. He would also concede that in none of the labels produced by him before court, the word 'സ�ക�ല ' is available. He would concede that the first defendant in the suit runs an establishment by name Kalan Pharmaceuticals. Then in the next breath he would say that there is no such concern. Later he would revert back and concede that there is such an establishment. He would depose that for the last 29 years the word 'സ�ക�ല ' has been continuously used by Kalan A.S.17/1988 & con.cases . 136 Nellayi and therefore the word 'സ�ക�ല ' is associated with Kalan Nellayi. He would accept that he has no establishment by name 'സ�ക�ല . ' But he would say that since it is associated with the name of the concern, it has become a word which he is exclusively entitled to use. He would say that in Exts.B7 and B8 he has made certain directions to ensure that his products are not confused with other products. To a specific question whether by Ext.A2 he has been given the exclusive right to use the word 'സ�ക�ല ' his answer was hat it is contained in the goodwill. To a pointed question that none of the labels printed by the first defendant contains the name of Ouseph Vaidyan or the address as 'Kalan Nellayi', he would admit that it is so. 134. Certain things became very clear from his deposition. Going by Ext.A2, he can have no case that he is entitled to use the word 'സ�ക�ല ' exclusively. His case is that the said word has been associated with the address Kalan Nellayi and therefore he has got the monopoly to use A.S.17/1988 & con.cases . 137 the said word. It is significant here to notice that it is not associated with any goods, products or service as such. His claim that none of the other executants are entitled to use the name of their father and to say that their preparations are those of late Ouseph Vaidyan also cannot be countenanced. One can have no monopoly over one's father's name to the exclusion of other children. 135. Coming to the evidence of the plaintiff in O.S.4 of 1993, he is examined as P.W.1. By the time he was examined, it appears that the plaintiff in O.S.4 of 1978 was no more, who is none other than the father of the plaintiff in O.S.4 of 1993. He became the owner of the establishment by name 'Kalan'. He would admit that late Ouseph Vaidyan had assigned all his rights including the right to prepare certain medicines and the establishment to his six sons as per ext.A4, which is the same as Ext.A1 in O.S.4 of 1978. He would also admit that from 1.4.1965 onwards the six sons of late Ouseph Vaidyan continued the running of the A.S.17/1988 & con.cases . 138 establishment 'Kalan' after forming a partnership and then he speaks about the partition between the parties. His complaint is that the defendants in O.S.4 of 1993 obtained a license for running a concern by name Kalan Drugs and Pharmaceuticals. They advertised under that name and began to sell medicines carrying the label as Kalan Drugs and Remedies. This, according to him, is in violation of the terms of Ext.A2. He would also say that by doing so, they have misrepresented to the public and misled them. The advertisement and other acts committed by the defendants have given the impression to the public that the products are that of 'Kalan'. He would complaint that that affects his exclusive right. He would also say that he had suffered considerable loss as a result of the acts committed by the defendants. 136. In cross-examination he would say that there are atleast eight establishments functioning as on date carrying the name 'Kalan'. Among them, the concern by A.S.17/1988 & con.cases . 139 name Kalan Ayurveda Oushadhasala is run by an outsider and not by any one of the members of the family. In cross examination, he was confronted with several documents which would show that the word 'Kalan' was used as a family name. He evaded answering them. He would also say that the products manufactured by the establishment 'Kalan' are sold under the name Kalan's products. He would also say that he has got documents with him to show the turnover of sales and also materials to show that as a consequence of the acts committed by the defendants, he had suffered loss. 137. In his chief examination, he does not speak about the turnover of his sales. Though his claim was that he had sustained loss and he had got documents to show the same, he had not produced any documents to show the actual loss or fall in sales suffered by him. One may recall that the burden is on the plaintiff to show that he suffered as a consequence of the acts committed by the defendants. He has to demonstrate the volume of his sales and A.S.17/1988 & con.cases . 140 advertisement expenditure and will have to supplement this by evidence of traders and suppliers regarding his case. Though he complained that people have been misled by the advertisement given by the defendants and the name adopted by them for their concern, there is absolutely no evidence in this regard at all. 138. Even though P.W.1 would strongly deny that the family had the name Kalan, as already noticed, there is overwhelming evidence to show that the word 'Kalan' was used as a family name or atleast as a house name. 139. May be that it was initially used as a trade name. But by passage of time, it seems that it was adopted as a family name. At any rate, at the risk of repetition, one may notice that both 'Kalath' and 'Kalan' were used as the family name. 140. It is true that the plaintiff in O.S.4 of 1993 has produced a lot of materials to show the advertisement made by the defendants regarding their products and their A.S.17/1988 & con.cases . 141 concern. But surprisingly enough as already noticed he has not thought it necessary to produce documents to show that he has incurred expenses for advertisement and various other matters and that his business has suffered loss as a consequence of the act committed by the defendants. 141. In fact one would get the impression that the focus is more with regard to the breach on the terms of Ext.A2 rather than on the issue of passing off. It would appear that the issue of passing off is being agitated as an incidental issue. It is unnecessary to go further in this regard. 142. It could be argued that actual proof of damages or loss is not necessary and that it may be presumed. But the burden certainly rests on the plaintiff to show that he has earned goodwill and reputation and for that purpose he has to adduce some evidence. He has also the burden to show that as a consequence of the acts committed by the defendants, people were misled and A.S.17/1988 & con.cases . 142 deceived. One must notice that mere adoption of the name by the defendants will not automatically result in granting a relief to the claimant. The classic trinity will have to be established. 143. It could thus be seen that the claim of the plaintiff in O.s.4 of 1978 and O.S. 4 of 1993 was that they are entitled to exclusive use of the word 'Kalan', 'സ�ക�ല ' , 'സ�ക�ല Kalan Vaidyan' etc are without foundation. Both the plaintiffs in O.S.4 of 1978 and O.S.4 of 1993 have such right as are acquired by them under Ext.A2. It has been found that there is provision in Ext.A2 which enables the executants other than the first executant to use the word 'Kalan' in one form or other. It has also been found that going by the evidence in both the cases the word 'Kalan' is no longer a trade name, but it has been adopted as a family name. 144. In the light of the above facts, it becomes necessary to consider each of the cases independently. A.S.17/1988 & con.cases 143 . 145. In O.S.4 of 1978, from which A.S.17 of 1988 arises a decree has been granted in the following terms: _“In the result, the suit is decreed permanently restraining the defendants from using the names “Kalan, Kalans, Kalan Nellayi, Sakshal, Sakshal Kalan, K.P.Ouseph Vaidyan, Kalan Vaidyan and Sakshal Kalan Vaidyan”, in any notice, advertisement, pamphlet, leaf-let, literature, or carton of any Ayurvedic preparations prepared by the defendants. The plaintiff is entitled to the costs of the suit also.”_ 146. There can be no doubt that the words 'Kalan's', 'Kalan Nellayi' and the photo of late Ouseph Vaidyan can be used and appropriated only by the plaintiff in that case. But the other finding that the plaintiff is also entitled to the exclusive use of the words 'Kalan', 'സ�ക�ല ', 'സ�ക�ല Kalan', and 'K.P.Ouseph Vaidyan' cannot be accepted. To that extent the decree needs modification. 147. As far as the decree in O.S.4 of 1993 is concerned, the dismissal of the suit as a whole may not be A.S.17/1988 & con.cases . 144 proper. In paragraph 45 of the judgment of the court below in O.S.4 of 1993 it has been found that the plaintiff has the exclusive right to use the words 'Kalan', 'Kalan's' and 'Kalan Nellayi' by itself and the emblems in respect of the products manufactured by him as also the names of establishments. If any other persons were to use these names (by themselves) in the names of the establishments run by them, the plaintiff would undoubtedly have the right to prevent them from using such trade names/marks in respect of their products. If anyone uses words deceptively similar to the above words/emblems in respect of the products or names of the establishments, then again the plaintiff will have the right to restrain them from using the same. On the basis of that finding, to that extent a decree ought to have been granted in favour of the A.S.17/1988 & con.cases . 145 plaintiff. There is no ground to interfere with the dismissal of O.S.11 of 1997. 147. As far as C.M.A.59 of 2000 is concerned, a reading of the order of the court below shows that it was mainly guided by the judgment in O.S.4 of 1978. In the light of the finding of this court in A.S.17 of 1988, which arises from O.S.4 of 1978, it will be difficult to support the view of the lower court in dismissing I.A.271 of 1997. The order will have necessarily to be set aside. But one has to notice that the suit is of the year 1997 and it will be quite inappropriate to direct the lower court to reconsider the interlocutory application. It is felt that it is only proper that the court below be directed to dispose of the suit as expeditiously as possible untrammeled by the observations of the court below while disposing of the interlocutory application. In the result, the decrees in O.S.4 of 1978 and O.S.4 of 1993 are set aside and modified decrees are passed in O.S.4 of 1978 and O.S.4 of 1993 as follows: A.S.17/1988 & con.cases . 146 (i). O.S.4 of 1978 is decreed to the extent that the defendants are permanently restrained from using the word 'Kalan' (independently), and using the words 'Kalan's', 'Kalan Nellayi 'and the photo of late Ouseph Vaidyan in any notice, advertisement, pamphlet, leaf-let, literature or carton of any Ayurvedic preparation manufactured and sold by the defendants. The plaintiff in the said suit will be entitled to costs from the defendants. (ii). The judgment and decree in O.S.4 of 1993 is set aside and a decree for permanent prohibitory injunction is passed restraining the defendants from using the word 'Kalan' (independently) and using the words 'Kalan's' and 'Kalan Nellayi' in any notice, advertisement, pamphlet, leaf-let, literature or carton of any Ayurvedic preparation manufactured and sold by the defendants in the said suit and the emblems A.S.17/1988 & con.cases 147 . The plaintiff will be entitled to costs from the defendants in the case. (iii). Dismissal of O.S.11 of 1997 is confirmed. (iv) The court below is directed to dispose of O.S. 3 of 1997 as expeditiously as possible at any rate within a period of nine months from the date of receipt of a copy of this judgment. **P. BHAVADASAN, JUDGE** sb.