P L D 1959 (W (PLP)

YAQUB ALI, J.--‑This is defendant's appeal from the judgment and decree of Mr. David Fazl‑ud‑Din, District Judge, Shahpur at Sargodha, dated the 23rd of July 1958, restraining them from infringing plaintiff's trade‑mark.

2. The f acts giving rise to this litigation may be briefly stated thus : Lever Brothers Limited (plaintiffs) are the manu facturers of the famous Sunlight and Lifebuoy Soap. The defendant. Insaf Soap Factory, first started manufacturing "New Doctor Soap" in 1949 and offered it for sale in wrappers similar to Exh. P. E. which was a colourable imitation of the get‑up of the wrapper of Lifebuoy Soap. 'The plaintiff, thereupon served on the defendant a notice to refrain from the use of that wrapper and threatened to take legal action, in consequence of which the defendant gave a written undertaking to refrain from the use of that wrapper and acknowledged that its get‑up was a colourable imitation of the get‑up of the Lifebuoy wrapper and that "the use of zigzag device for saving life for preservation of health" the get‑up of relative tablet and the use of the slogan "free from any harmful adulterant" severally and jointly constituted an infringement of your (plaintiff's) trade mark, calculated to pass off our (defendant's) soap for your (plaintiff's) well‑known Lifebuoy Soap". This admission was followed by an apology for the infringement of the plaintiff's trade mark and an under taking that the defendant will not at any time thereafter import, sell, offer, or expose for sale, etc., any soap under any trade mark, name, or get‑up or packed in cartons and or wrappers calculated or intended to pass off the plaintiff's Lifebuoy Soap. The matter did not rest at that. Some time later, the defendant manu factured another variety of washing laundary soap under the name "Everuse" and offered it for sale in wrappers similar to Exh. B. I which the plaintiff claims is a colourable imitation of the wrappers of their Sunlight Soap. The change in the design of the wrapper of the "New Doctor Soap" also did not fulfil the above undertaking as in its get‑.up, device, letter press and design, it continued to be a close imitation of the wrapper of the Lifebuoy Soap. Aggrieved by the infringement of their trade‑mark the plaintiff instituted the present suit to restrain the defendant from the use of the aforesaid wrappers and claimed some other ancillary reliefs which are not material for the purposes of this appeal.

3. The defendant controverted the plaintiff's claim in the suit and on the pleadings of the parties, the learned trial Judge, framed the following issues :‑ (1) Does the use by the defendant of the New Doctor and Everuse Soap labels A‑1 and B‑1 ;n respect of soaps amount to infringement or passing‑off of the registered trade‑marks of the plaintiff ? (2) In case issue No. 1 is proved what loss has the plaintiff suffered ? (3) Is the suit barred by time ? (4) Is section 25 of the Trade Marks Act a bar to the filing of the suit ? (5) Is the defendant entitled to special costs under section 35, Civil Procedure Code ? (6) Relief.

4. Issues Nos. 1 and 4 were found in favour of the plaintiff and issue No. 2 and partly issue No. 3 in favour of the defendant. As the sale of the plaintiff's goods had not decreased in spite of the infringement of their trade‑mark by the defendant, they were not considered entitled to any damages, while the claim for compensation was found to be barred under Article 40 of the Limitation Act. In the light of the decision of issues Nos. 1 and 4 the defendant's claim for special costs did not call for any serious attention and the plaintiff's suit was decreed with costs directing the defendant to deliver up for destruction all blocks, dies, labels and advertising material used in respect of their "New Doctor" and "Everuse" Soaps.

5. In deciding issue No. 1, the trial Court mainly relied upon the similarity between the defendant's wrappers of the "New Doctor" and "Everuse" soaps, Exhs. A‑I and B‑1 with the wrappers of the plaintiff's soaps "Lifebuoy" and "Sunlight" Exhs. A and B. The various points of similarity as well as dissimilarity in these wrappers are detailed in paragraph 9 of the judgment under appeal and need not be recapitulated. The points of similarity are so overwhelming that Malik Muhammad Akram, the learned counsel for the defendant, felt constrained to argue before us that the proper criterion for the determination of this issue was whether an average customer of careful and observant habits would be deceived in purchasing the defendant's goods as that of the plaintiff and not that a careless or unwary customer would be so misled. It was further contended that in order to come to a correct conclusion for the determination of this issue it was not proper for the Court to examine the wrappers in question by placing them near each other which was seldom the case when a customer went to a shop for purchasing these goods and that there should be some independent evidence to prove the factuen of deception. In support of it, reliance was placed on a decision of this Court in Modi Sugar Mills v. Tata Oil Mills (A I R 1943 Lah 196) which rests on the decision of the Privy Council in Thomas Bear & Sons v. Pravag Narain and another (I L R 1940 All. 466).

6. In Modi Sugar Mills v. Tata Oil Mills, the plaintiff had by long user acquired the right to the use of the word‑mark "Cocogem" which was descriptive of the product for which it was used, namely, refined and deodorised coconut oil as a trade‑mark. The defendant introduced into the market his product under the word‑mark "Kotogem" which was hydro genated cotton‑seed oil and resembled ghee and was known as Venaspati. It was found that except that the two word‑marks had a phonetic similarity and both articles were used as cooking media there was complete dissimilarity between the two products in respect of their origin, manufacture, appearance, taste, smell, get‑up for the purpose of sale and method of advertisement. The two products were sold by different classes of dealers and they appealed to different classes of consumers. It was further found that the defendant had not adopted the word‑mark "Kotogem" `with the fraudulent intention of passing off his goods as those of the plaintiff and there was no evidence regarding actual deception. On these facts, while discussing the plaintiff's evidence, Tek Chand, J. made the following observations :‑ "Evidence of apprehended confusion is of no use, Payton & Co. v. Snelling, Lampart & Co. Ltd. 1901 A C

308. Further, in judging of the probability of deception the test is not whether the ignorant, the thoughtless, or the incautious, purchaser is likely to be misled, but we have to consider the average purchaser buying with ordinary caution. In some cases decided in this country, the former view had been expressed, but it is not necessary to discuss them in view of the recent authoritative pronouncement of their Lordships of the Privy Council in Thomas Bear and Sons v. Prayag Narain and another I L R 1940 All. 466 where it was held that it was not sufficient to prove that `some ignorant or indiscriminating person might be deceived' but that it must be shown that `persons exercising ordinary caution' would be likely to assume that the article sold by the defendants was that manufactured by the plaintiff." A little later, it is observed that in Thomas Bear and Sons v. Prayag Narain and another, their Lordships of the Privy Council had approved the test laid down by Niamat Ullah, J. in the case under appeal "that the standard to be borne in mind is neither that of a person who is devoid of al sense of discrimination nor of persons who are very careful observers of things around them. It is of an average man exercising ordinary caution." In support of this view, reliance was also placed on the following remarks of Romer L. J. in Payton & Co. v. Snelling, Lampart & Co. Ltd. ((1899) 17 R P C 48)‑ "It seems to be a sort of popular notion of some witnesses that in considering whether the customers are likely to be deceived, you are to consider the case of an ignorant customer who knows nothing about, or very little about, the subject of the action. That is a great mistake. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods on the market so far as relates to general character istics. The customer must be one who, knowing what is fairly common to the trade, knows of the plaintiff's goods by reason of these distinguishing characteristics. If he does not know that he is not a customer whose views can properly or will be regarded by this Court". Relying on the observations of their Lordships of the Privy Council in Thomas Bear & Sons v. Prayag Narain and another, and of Romer, L. J. in Payton & Co. v. Snelling, Lampart & Co. Ltd., Tek Chand. J., was pleased to hold that the plaintiff's claim for passing off had failed and reversing the decree of the lower Court the suit was dismissed with costs throughout.

7. With utmost respect to the profound learning of Tek Chand, J. and the weight to which his view is entitled we find ourselves unable to agree with the view that "in judging the probability of deception the test is not whether the ignorant, the thoughtless, or the incautious, purchaser is likely to be misled and that we have to consider the average purchaser buying with ordinary caution".' It is, therefore, necessary to examine more closely the judgments on which reliance has been placed by Tek Chand, J. in support of the above view. In Thomas Bear & Sons v. Prayag Narain and another (I L R 1940 All. 466) the plaintiffs were manufacturers and sellers of cigarettes and of tobacco described as "Virginia Bird's Eye" smoked in pipes. These goods were marketed in a European style. Both the said cigarettes arid the tobacco had from a date long before 1922 been sold in India in packets and in tins bearing a mark the distinguishing feature of which was the representation of an elephant and the packets and tins of cigarettes had also borne the designation "Elephant Cigarettes". Upon the tobacco the representation of the elephant had appeared in red and upon the cigarettes the representation of the elephant had appeared on a red background. These goods were well known and asked for throughout India as "Elephant Mark", "Hathi Markha" "Lal Hathi" and the like. The defendant had been manufacturing and selling chewing tobacco since 1926, which was sold in packets and in tins. The commodity in the packets was intended for use with lime and that in the tins for use as an addition to pan (betel). Both the packets and the tins had the picture of an elephant on them, not unlike the elephant used by the plaintiffs though there were differences, particularly in colour, which was black or red as used by the appellants and white as used by the respondent. In other respects the packets and the tins were quite unlike the containers in which the appellants' goods were put upon the market, and the respondent's labels bore the firm name "Rama & Company", while the appellants' goods bore their own name. The appellants did not contend that any persons would purchase the respondent's chewing tobacco in the belief that it was smoking tobacco manufactured by the appellants. Their contention, however, was that having regard to the reputation they had acquired in India in connection with smoking tobacco and cigarettes sold under the elephant trade‑mark and frequently asked for as "elephant" tobacco or "elephant" cigarettes, the use of the elephant on the respondent's chewing tobacco was calculated to lead persons buying that article to believe that it was manufactured or put upon the market by the appellants. It is of some importance to bear in mind the nature of the alleged infringement of the plaintiff's trade mark in this case in order to fully appreciate the dictum of their Lordships to be reproduced hereafter at the outset, their Lordships observed that there was no statutory law in British India relating to trade marks, and the law which is applied there on the subject was substantially the same as that applied in England before the Trade Marks Act, 1905. This was followed by the observation that it was, however, plain that conditions peculiar to India must be borne in mind in applying any doctrine of English Law, and that English decisions, which turned or partly turned on questions of fact‑as do most cases of common law trade marks and passing off‑could only be applied with care and circumspection, and the quotation from the judgment of James, L. J. in Singer Manufacturing Co. v. Loog ((1880) 18 Ch. D 395 at p. 412) that "No man" is entitled to represent his goods as being the goods of another man ; and no man is permitted to use any mark, sign or symbol, device or means, whereby without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate purchaser". It was further observed that the right of property that may be acquired in such a trade mark is based on the proved association in the market of the advice, name, sign, symbol or other means in question with the goods of the plaintiff, so that the use by the defendant on such goods of the trade mark will amount whether the defendant intended it or knew it or not‑to the false representation 4hat the goods were manufactured or put on the market by the plaintiff. On these terms, their Lordships proceeded to remark that a manufacturer of cigarettes under an undoubted trade mark such as an animal, or any other device, could not legally object to the use of the identical mark on, say, hats or soap, for the simple reason that purchasers or any of the latter kinds of goods could not reasonably suppose, even if they were all well acquainted with the mark as used on cigarettes, that is use on hats or soap denoted that those goods were manufactured or marketed by the cigarette manufacturer. But this was con sidered to be a simple case and "more difficult ones could be suggested, e.g., if a manufacturer of a special kind of smoking tobacco under a trade mark seeks to restrain the use of it on cigars, or on a very different kind of smoking tobacco, or on cigarettes or on snuff, or on chewing tobacco, or on tobacco in some form sold for use as a weed killer‑all these things being made of tobacco‑questions, sometimes of great difficulty, may arise, in the last category of cases, but the vital element in such cases is probability of deception". After dealing with the kind of evidence, which could be usefully led in proof of deception, their Lordships pointed out that "it is a remarkable feature of the present case that there was neither evidence of actual deception, nor any evidence from members of the public that they themselves would be deceived". It is to be observed that the important issue was not whether the use of the elephant on smoking tobacco or on cigarettes was likely to cause deception, but whether its use on chewing tobacco in the circumstances in which that article was sold by the respondent was likely to cause deception, that is, to cause ordinary purchaser to purchase the chewing tobacco of the respondent in the belief that it was manufactured by or put upon the market by the appellants. The difficulty of answering this question in the affirmative in the absence of evidence as to the probability of deception was apparent to their Lordships from the fact that, apart from the trial Judge, who was not satisfied that there was any point of resemblance between the trade mark used by the appellants and that used by the respondent, King, J. in the High Curt alone had thought that the probability of deception existed while lqbal Ahmad, J. had taken the other view, and Niamatullah, J. (to whom the matter was referred under clause 27, Letters Patent of the High Court) had come to the conclusion that "whilst some ignorant and indiscriminating persons might be deceived, persons exercising ordinary caution would not be likely to assume that the chewing tobacco sold by the respondent was manu factured by the appellant". After observing that they had no reason to doubt that the appellants in the case had acquired a proprietary right in respect of their elephant trade mark with reference to their cigarettes and Virginia Bird's Eye, their Lord ships added that "their right was not confined only to the sale of the same kind of cigarettes and of Virginia Bird's Eye tobacco ; for, in the absence of strong .evidence to the contrary, such a trade mark would ordinarily extend to protect goods so similar in kind to the goods actually put upon the market by the trader in connection with the trade mark that it is an almost inevitable inference that such goods would be manufactured or marketed by the trader. In other words, the probability of deception in the case of goods of a closely similar kind to those actually marketed by the plaintiff would be proved in the course of establishing the trade mark. No such inference could, be made in the present case as regards the respondent's goods, since the chewing tobacco he sells differs widely in appearance and in use from the goods sold by the appellants."

8. A careful examination of the judgment of their Lordships in Thomas Bear & Sons v. Prayag Narain and another would disclose that whatever has been said in it is referable to cases of widely dissimilar goods and it was in this context that Niamatullah, J. observed‑‑ "The standard to be borne in mind is neither that of a person who is devoid of all sense of discrimination nor of persons who are very careful observers of things around them. It is of an average man exercising ordinary caution". It is again in respect of this class of goods that their Lordships observed‑ "There are many trade mark and passing‑off cases which cannot be decided by a visual comparison of the rival marks or names and must depend on the evidence of witnesses".

9. In Modi Sugar Mills v. Tata Oil Mills, Tek Chand, J. has interpreted the observations of their Lordships in Thomas Bear's case as applicable to all classes of goods, howsoever similar in nature and use. At page 202 of the report is observed "In some cases decided in this country the former view had been expressed but it is not necessary to discuss them in view of the recent authoritative pronouncements of their Lordships of the Privy Council in Thomas Bear & Sons v. Prayag Narain and another where it was held that it was not sufficient to prove that some ignorant or indiscriminating person might be deceived but it must be shown that persons exercising ordinary caution would be likely to assume that the article sold by the defendants was that manufactured by the plaintiff". It was thus assumed that the view expressed by the various High Courts of the sub‑continent including this Court, e.g., in Ram Kumar Jalan v. R. J. Wood & Co. (A I R. 1941 Lah. 262) that the test in cases of infringement of trade mark is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark had been overruled or dissented from. In the light of the above analysis of the judgment in Thomas Bear's case the assumption is not correct and the test laid down in cases before Modi Sugar Mills' case continues to hold good.

10. Lever v. Goodwin ((1887) 36 Ch. D. 1) a case in which the present plaintiff was the aggrieved party, Cotton, L. J. while dealing with the issue whether the defendants' soap was represented as manufactured by the plaintiffs, observed as follows: "That being so, can we come to any other conclusion, than this, that the use of this paper and the use of this particular printing was intended to represent these goods as the goods of the plaintiffs, which had become known in the market, and would, in my opinion, induce people who do not when they buy an article look carefully to see what the particular mark or name upon it is, to consider when they got handed down to them one of the tablets of the Defendants in this new dress, that they were getting the same soap as they had been accustomed to buy in this kind of packet". The criterion laid down in this case was thus that of "customers who do not when they buy an article look carefully to see what the particular mark or name upon it is" and not that of "the average purchaser buying with ordinary caution".

11. In his well‑known book on Trade Marks, Kerly, at pages 617 and 618 has made the following observation which is based upon the dictum of their House of Lords in Lever v. Goodwin referred to above :‑ "It must not be assumed that a very careful or intelligent examination of the mark will be made, and if it were shown that the class of persons who bought the goods were illiterate, that would be a material fact in cases where printing entered into the marks". This is followed by the following quotation from lever v. Goodwin :‑ "The poorer classes, who buy this class of goods, do not seem to distinguish the goods by the label, but by the general appearance which the articles present".

12. It is needless to stress that in Pakistan nearly 80% citizens are illiterate and that the soaps in question are generally used by them for washing and laundry. As regards the decided cases in England and in this sub‑continent, it will be useful to recall the observations of their Lordships in Thomas Bear & Sons v. Prayag Narain and another "that conditions peculiar to India must be borne in mind in applying any doctrine of English Law', and that English decisions which turn or partly turn on questions E of fact as do most cases of common law trade marks and passing‑off‑can only be applied with care and circumspection". We are thus of the opinion that the criterion laid down by this High Court in Ram Kumar Jalan v. R. J. Wood & Co., that in cases of infringement of trade mark the test is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark still holds good. Not much weight can, therefore, be attached to the few points of dissimilarity between the plaintiff's and defendant's wrappers to which our attention has been drawn by the learned counsel for the appellant because the points of similarity in them are so great that an unwary purchaser is likely to be deceived in purchasing the defendant's goods as that of the plaintiff.

13. In the result, we find ourselves in agreement with the findings of the trial Court and dismiss this appeal with costs throughout. A. H. Appeal dismissed.