K.P.JAMES v. NONE

RFA No.476/20073was using the trade mark and logos with a view to indicatethat such goods are manufactured by him and also to showthat he was doing business under the said labels, trade marksand logos. Trade marks and logos are distinctive of the goodsmanufactured by the first plaintiff. He had also spentconsiderable amount for promoting the sale of goodsmanufactured by him and spent considerable amount forpublicity and advertisement. In the year 1999-2000 he spentmore than Rs.1,48,695/- for advertisement and salespromotion. The unwary purchasers and consumers refer andidentify the first plaintiff's business and goods manufacturedby him under the trade mark and logos By the constant use ofthe trade mark and logos they have become very distinct ofthe first plaintiff's business and the goods only and with noneelse. On 23.10.2000 the first plaintiff came to know that firstdefendant is making hasty plans to commence business usingtrade marks and logos of his business. Goods manufacturedby the first defendant were identical and deceptively similar tothat of the first plaintiff. With ulterior motives he hadstarted using the trade style and trade mark 'Kesamrutham'both in English and Malayalam and logos which are merecopies of the first plaintiff's trading style, trade marks and RFA No.476/20074logos. The first defendant is imitating and copying the firstplaintiff's trade mark and logos and the trade mark and logosused by the first defendant are deceptively similar to the oneused by the first plaintiff. First defendant is creatingconfusion in the market and public are misled to think thatthe goods/products of first defendant are the goods/productsof first plaintiff. On 23.10.2000, 17,000 packets and labelsof deceptively similar items were delivered to the premises ofthe first plaintiff mistakenly by the second defendant who isthe proprietor of M/s.Sri Shenba Print Pack, Sivakasi. Firstplaintiff made enquiries with the agent of the seconddefendant and understood that all those items were suppliedat the instance of the appellant/first defendant who placedorders with the second defendant at Sivakasi formanufacturing and printing of infringed labels and cartonswith a mala fide intention to create confusion in the market. Aperusal of the infringed cartons shows that the first defendantobtained drug licence in the year 2000. Since the seconddefendant is manufacturing and printing infringed labels andcartons he is also made a party to the suit. Hence the suit fora decree of permanent prohibitory injunction restraining thefirst defendant, his servants, employees or agents or any one RFA No.476/20075claiming through or under him from in any manner of passingoff trade/business as that of first plaintiff using the trade markKesamrutham both in English and Malayalam and the logos asseen in the label and packet in combination of colours, cyanand yellow and also for a decree of permanent prohibitoryinjunction restraining the second defendant frommanufacturing, printing and supplying of infringed labels andcartons to the first defendant which are deceptively similar tothat of the cartons used by the first plaintiff.4.Appellant/first defendant filed a written statementcontending that the averment that the first plaintiff honestlyconceived and adopted the trade mark Kesamrutham both inEnglish and Malayalam and logo is incorrect. There areseveral manufacturers of ayurvedic preparations who aremanufacturing and selling hair tonic under the same name'Kesamrutham'. It was contended that first defendant'sbrother Shri Varghese was manufacturing and selling hair tonicby name 'Kesakalpam' in a carton and first plaintiff hadimitated that carton. It was also contended that it was theappellant who started manufacturing of Kesakalpam in theyear 1984 which was subsequently transferred to his brother. RFA No.476/20076The cartons used by the first plaintiff itself is an imitation. Heis not the first user. The name Kesamrutham being used in themarket even before 1970 and hence it become a commonproperty. The averment that the first plaintiff had applied forregistration of the trade mark and logo was denied. Theaverment that the first plaintiff obtained the drug licence inthe year 1983 was not admitted. The further averment thatthe first plaintiff was exporting Kesamrutham to various Gulfcountries was not admitted. The figures given in the plaintare not the sales turnover of 'Kesamrutham'. The avermentthat the first plaintiff is using the trade name and logo andhence it become distinctive was denied. First plaintiff had notbeen using the trade name and logo as alleged. The trademark and logo of the first plaintiff is not distinctive as claimedby him. The averment that he was doing extensive businessand manufacture was also denied. First plaintiff was notactually using the trade mark and logo as alleged by him inrespect of the goods manufactured by him. The avermentthat the first plaintiff spent considerable amounts and andefforts for promoting the sales of the goods manufactured byhim using the trade mark and logo was denied. The furtheraverment that the unwary purchasers and consumers refer and RFA No.476/20077identify the first plaintiff's goods/products under that trademark and logo is incorrect and hence denied. The furtheraverment that due to continuous and extensive user of thetrade mark and logo they have become distinct of the firstplaintiff's business and the goods only and with none else wasnot correct. It was contended that the trade mark and logos ofthe first defendant is neither identical nor deceptively similarto the trade mark and logo used by the first plaintiff. Theword 'Kesamrutham' is a descriptive word meant to describethe nature of the product and also the word of common use.So many manufacturers are selling their products under thename 'Kesamrutham' much prior to the starting of thebusiness of the first plaintiff. The first plaintiff had startedmanufacturing only in the year 1996. The name of the productof the appellant/first defendant is 'Kerala Kesamrutham' andnot 'Kesamrutham' and the name of the establishment is'Kalans Products' and that name is also printed on the top andbottom of carton. There are other dissimilarities also. Thecartons produced by the first plaintiff claiming to be that ofhis is not the carton which he has actually marketing hisproducts. The averment that trade mark and logo used by thefirst defendant are deceptively similar to the trade mark and RFA No.476/20078logo of the first plaintiff is absolutely incorrect. The firstdefendant is having his own independent trading style, trademark and logo and he had not adopted the identical anddeceptively similar trade style, trade mark and logo of the firstplaintiff. On 23.10.2000 the bundles containing of firstdefendant's carton, viz., Kesakalpam and labels as also thebundles containing cartons of first plaintiff arrived by bus atThrissur. A person was entrusted with the bundles fordelivery to the first plaintiff as well as first defendant. He wasnot the person who used to do it in usual course. Theresidence and business of the first plaintiff are located in thesame compound and that is situated ahead of the firstdefendant's residence. The driver of the mini metadore vanwho brought the bundles went first to the first plaintiff'shouse for delivery, he enquired the first plaintiff as to wherethe first defendant was staying. With a mischievous motivethe first plaintiff took delivery of the parcel of the firstdefendant misrepresenting the facts to the driver though thename and address of the first defendant was clearly shown inthe bundle. The averment that those cartons and labels weremistakenly delivered by the first plaintiff was denied. Thoselabels and cartons are not deceptively similar to the cartons RFA No.476/20079and labels being used by the first plaintiff. First defendant hasnot ordered for manufacturing and printing any infringedlabels or cartons. He has no intention to create confusion inthe market and consuming public and not thinking that thegoods manufactured by the first defendant are the goodsmanufactured by the first plaintiff. The licence number of firstdefendant is 36/25/D/2000. Hence he prayed for dismissal ofthe suit.5.Second defendant who was the manufacturer ofthe cartons had filed a written statement contending that hewas an unnecessary party to the suit. It was contended thatmost of the averments in the plaint are not against him.He was not aware of the imitation and copying of plaintiff'strade style, trade mark and logo by the first defendant.The averments that the trade mark and logo used by thefirst defendant is deceptively similar to that of firstplaintiff's trade mark and logo and that the firstdefendant had copied the first plaintiff's well establishedtrading style, trade mark and logo with a view to enrichhimself unjustly were denied. It was further contended thathe had never used the offending trade mark and logo. The RFA No.476/200710second defendant is the proprietor of M/s.Sri Shenba PrintPack, Sivakasi. The averment that the second defendant isassisting the first defendant to pass off his goods as that ofthe first plaintiff was denied. In the written statement it isadmitted that the second defendant was printing labels andcartons for the first plaintiff from 1995 onwards. The labels ofKesamrutham were first printed in the year 1995. The colourcombination of labels are combination of cyan and yellow withphoto of cine actress Charmila. Second defendant was nothaving sales tax registration during 1995-96. So the entiretransaction with the first plaintiff was done through SriDevipala Colour Galaxy and another who had Central Sales Taxregistration. The colour combination was of 45% cyan withcolour majantha and this colour combination was selected andsuggested by the first plaintiff. The ratio of colours to bemixed to get that colour was also suggested by the firstplaintiff. The colour combination suggested by the firstplaintiff was printed by the second defendant. The firstplaintiff required two types of cartons and labels for hisproduct Kesamrutham, one was for export purpose andanother was for local sales in India. The cartons for exportpurpose were printed with combination of cyan colour with a RFA No.476/200711yellow border on the top side and the picture of cine actressCharmila was also printed on the cartons and labels. Inaddition to English and Malayalam words some Arabic wordsare also printed. Below the word 'hair tone' the word 'exportquality' is printed. In the cartons printed for local sales in theplace of 'export quality' it is printed as 'for sale in India only'and in two sides of cartons and labels instead of combinationof cyan, green colour was used. The details are printed inyellow colour. In addition to English and Malayalam, Tamilwords are also printed. Instead of the picture of Charmila thephoto of another model was printed. So from 1995 onwardssecond defendant has been printing two types of cartons andlabels for 'Kesamrutham', one for export and other for localsales. Few days prior to 28.10.1998 the first defendantapproached the second defendant and requested to printcartons and labels for a product named 'Kesakalpam' in thesame colour combination used by the first plaintiff for exportquality. Although the indications and instructions were copiedfrom first plaintiff's cartons and labels the name of theproduct, address of the manufacturer, picture of the modelswere different. There were several differences. So the seconddefendant printed the cartons and labels as demanded by the RFA No.476/200712first defendant. During the second week of August, 2000 thefirst defendant again approached the second defendant toprint labels and cartons for his product, Kalans Products'Kerala Kesamrutham' in the above colour combination andthe films for printing cartons and labels were bought by thefirst defendant from Kerala. First defendant requested thesecond defendant to print labels and cartons in the samecolour used by the first plaintiff for 'Kesamrutham' for exportquality. One of the major difference is that the yellow marginon the top side of the carton was a little wider. All the othercolour combinations were same. Since the first plaintiff had noparticular right over the said colour, the second defendantprinted the labels and cartons as requested by the firstdefendant. It was further contended that the first plaintiffnever informed the second defendant that the colourcombination is his private property. Printing of labels andcartons for the first defendant in the above colourcombination was started in October, 1998 only. Labels andcartons of 'Kerala Kesamrutham' was printed in the month ofAugust, 2000. During October, 2000 also he supplied thecartons and labels of 'Keralakalpam'. Unfortunately thosebundles were delivered to the first plaintiff and first plaintiff RFA No.476/200713accepted the same. Second defendant is entitled to get thecost of those products. It was further contended that both thebundles were addressed to Nellai and both the parties arecalled as 'Kalans' and the person who took the goods deliveredboth parcels to the first plaintiff. It was further contendedthat even though the colour combination is a product of firstplaintiff, he has no right to question the second defendant forprinting the same to the first defendant. So he also prayed fordismissal of the suit.6. First plaintiff filed a replication. It was reiteratedthat the word 'Kesamrutham' is not a generic word. It is acombination of two words - 'kesam' and 'amrutham'. Firstplaintiff had got exclusive right over the word 'Kesamrutham'.He also obtained registration under the Patents Act, 1970 forpreparation of 'Kesamrutham'. Father of the first plaintiffwas manufacturing a preparation by name 'Kesamrutham'. Sothe first plaintiff has got exclusive right over it. First plaintiffobtained drug licence on 30.3.1983. He obtained drug licenceto manufacture 'Kesamrutham' in the year 1984 and from theyear 1984 onwards the preparation by name 'Kesamrutham'was sold in a commercial basis in Kerala. From 1995 onwards RFA No.476/200714the first plaintiff marketed his business by advertising inweeklies and magazines within India and also out of India.The colour code, style and trade mark for the preparation of'Kesamrutham' was registered in the name of first plaintiffunder the provisions of Trade Mark and Merchandise Act. Theword 'Kesamrutham' was also registered with effect from20.12.1998. He had obtained the certificates on 9.3.2001.First defendant did not obtain any registration. Thedocuments produced by the first defendant are fabricated forthe purpose of suit. In the cartons marketed by the firstdefendant the word 'Kerala' is printed in a very small lettersand no ordinary person can read the same. It is with theintention to mislead the general public. First defendant is nothaving an independent trading style and logo and he isimitating and copying that of the first plaintiff. The colourcombination and labels are combination of cyan and yellow butit is usually called as combination of colour cyan. Technicallyspeaking this combination of cyan is also called as majantha.The contention that the first plaintiff had no particular rightover the trade mark is denied. 7.On the side of the plaintiffs PWs 1 to 5 were RFA No.476/200715examined. Exts.A1 to 109 proved and marked. MOs. 1 to 16identified. On the side of the defendants DWs.1 and 2 wereexamined. Exts.B1 to B78 proved and marked and B MOs.11 to44 identified. Trial court found that the suit is maintainableand the products manufactured by the first defendant isdeceptively similar to that of the first plaintiff and passed adecree of permanent prohibitory injunction restraining the firstdefendant, his servants, employees or agents or any oneclaiming through or under him from in any manner of passingoff trade/business as that of the first plaintiff by the firstdefendant by using the trade mark 'Kesamrutham' both inEnglish and in Malayalam and the logos as seen in the labelsand packets in combination of colours, cyan and yellow. It isalso directed to surrender the unused cartons. Challengingthat decree and judgment the first defendant has filed thisappeal. 8.Learned counsel appearing for the appellant/firstdefendant strenuously argued that the finding of the courtbelow that the suit is maintainable is illegal and perverse. Itis argued that the suit was filed by two plaintiffs, but duringthe pendency of the suit the alleged trade mark was assignedto a private limited company which is an entirely different RFA No.476/200716entity. It is argued that that company is not a party to theproceedings. It is further argued that the plaintiffs have nosubsisting interest in the matter and hence the trial courtought to have dismissed the suit on that simple ground. 9.The suit was filed by Dr. K.K.Johny, Proprietor ofM/s.J & J Kalan Pharmacy, Nellai and Kurunthottam AyurvedicAgencies, rep. by its partner. The suit was originally filedbefore the District Court, Ernakulam on 25.10.2000. By orderdated 24.11.2000 the plaint was returned and same waspresented before the First Additional District Court, Thrissuron 25.11.2000 and numbered as O.S.No.9/2000. It wasadmitted by the plaintiffs that the first plaintiff is the owner ofproprietary concern and the same was converted as a privatelimited company with four directors. The plaintiffs filedI.A.No.1935/2005 to implead the company as the thirdplaintiff. The name and address of the third plaintiff soughtto be impleaded is as follows:M/s.J & J Kalan Pharmacy (P)Limited, Nellai P.O., Thrissur District, rep. by DirectorDr.K.K.Johny, Aged 58, S/o.Kalan Kochuvareed Vaidyan, NellaiP.O., Thrissur Dt. That application was rejected on theground that if the same is allowed it will cause much prejudice RFA No.476/200717to the defendants. So, according to the appellant/firstdefendant it is admitted by the original plaintiffs that theyhave no subsisting interest over the subject matter of the suitand the company which claims that it is using the trade nameand logos is not before the court. It is argued that even if adecree is granted to the original plaintiffs, the assigneeplaintiff will not be in a position to execute the same.10.The first plaintiff claims exclusive right over thetrade mark, label and logo. The second plaintiff wasimpleaded as he was the distributor of the productsmanufactured by the first plaintiff. He did not make claim overthe trade mark, label and logo. Learned counsel for therespondents/plaintiffs relying on a Division Bench decision ofthis Court reported in Cherukutty v. Velappu (1987 (1) KLT565) argued that the dismissal of the application filed by theplaintiffs does not make any difference in this case. It isargued that this is not a case of an individual assigning hisrights under the Trade mark to a stranger company, but it is acase in which a proprietary concern itself was converted as aprivate limited company and the person who is authorised toconduct the case as the principal officer is none other than theoriginal first plaintiff himself. It is also argued that it is not RFA No.476/200718necessary to implead the assignee in all cases and if theoriginal plaintiffs are able to protect the interest of the samethey can be allowed to prosecute the proceedings.11.Ext.A92 is the certificate of incorporation of M/s. J &J Kalan Pharmacy and Ext.A100 is the memorandum of articles.A reading of Ext.A92 shows that the proprietary concern runby the first plaintiff was converted as a company with effectfrom 19.5.2003. Ext.A100 is the memorandum of articles ofassociation of M/s.J & J Kalan Pharmacy. There are only foursubscribers and directors. First plaintiff, his wife, his brotherand sister-in-law are the directors of the company.12.Learned counsel for the appellant/defendant relyingon the decisions reported in State Trading Corporation ofIndia Ltd. v. CTO and others (AIR 1963 SC 1811); TataEngineering and Locomotive Co. Ltd. v. State of Bihar (AIR1965 SC 40) and Raghu Lakshminarayanan v. Fine Tubes((2007) 5SCC103) has argued that a juristic person can be acompany within the meaning of the provisions of theCompanies Act, 1956 or a partnership within the meaning ofthe provisions of the Partnership Act, 1932 or an association ofpersons which ordinarily would mean a body of persons whichis not incorporated under any statute. It is further argued that RFA No.476/200719a proprietary concern however stands absolutely on a differentfooting. It is also argued that a person may carry on businessin the name of a business concern, but he being proprietorthereof, would be solely responsible for conduct of its affairsand a proprietary concern is not a company. It is true that aproprietary concern is different from a company in manyrespects. But, in this case the name of the proprietaryconcern itself was M/s.J & J Kalan Pharmacy. A reading ofExt.A100 shows that the name of the private limited companyis also the same . So the evidence in this case shows that abusiness concern of the first plaintiff which was a proprietaryconcern itself was converted into a private limited company.In Narayanan's 'Trade Marks and Passing-off' (III Edition) thelearned author had considered this aspect. In page 625 it wasdiscussed as follows:“Where a limited company isformed to take over an establishedbusiness lawfully carried on, it caninclude as part of its name the name ofthat business. No element of suspicionof fraud attaches to the man who hasestablished a business under his ownname if he turns that business into alimited company and applies to thatlimited company his own name with theword “Limited”, the reason for doing sobeing to retain the goodwill which he has RFA No.476/200720gained for that name.”So the evidence on record shows that an individual who wasdoing business of manufacturing and marketing'Kesamrutham' for a long period converted that proprietaryconcern into a private limited company using the very samename. 13.There is yet another aspect. In this case plaintiffsfiled I.A.No.1935/2005 to implead the private limited company.Trial court dismissed that application. Challenging that orderthe plaintiffs filed W.P.(C) No.21028/2005 before this Court. Alearned Single Judge of this Court took a view that theplaintiffs had no contention that they are not competent orcannot secure interest on the private limited company and theproposed plaintiff had no contention that the interest of theprivate limited company in the subject matter of the suit willnot be properly prosecuted or secured by the originalplaintiffs. The learned Judge relied on the decision reportedin Cherukutty's case (supra) in which it was held that it is notmandatory that the assignee should be substituted himself inthe place of assignor and if the assignee has confidence inthe assignor he may remain in the background and allow theassignor to continue in the proceedings. RFA No.476/20072114.In this case the first plaintiff himself is the directorwho is the principal officer to conduct the case for the privatelimited company which was formed during the pendency of thesuit. It is actually the trade name of the first plaintiff that isbeing sought to be protected. So the mere fact that thepetition filed by the company was dismissed is not a ground todismiss the suit on the ground of maintainability. I hold thatthe non-impleadment of the company is not fatal.15.Learned counsel for the plaintiffs has argued thatthe finding of the trial court on the question of maintainabilitywas also in favour of plaintiffs. So the respondents cansupport the finding without filing an appeal or cross-appeal inthis matter. It is argued that the respondents are entitled tocanvass the correctness of the decision of the trial court inI.A.No.1935/2005 in this appeal and is entitled to argue thattrial court ought to have allowed that petition. I haveabsolutely no doubt in my mind that the reasons stated by thelearned District Judge for dismissing I.A.No.1935/2005 wereneither legal nor proper. But, in view of my finding that evenwithout the proposed plaintiff the suit is maintainable, I amnot set aside the order passed by the trial court dismissing I.A.I hold that the finding of the trial court in the suit is RFA No.476/200722maintainable and perfectly correct.16.The next question arising for consideration iswhether the finding of the court below that the first defendantis passing off his goods as that of the first plaintiff and theproducts marketed by the first defendant are deceptivelysimilar to that of the first plaintiff is correct. As I have alreadystated, the suit was filed on 25.10.2000. On that day firstplaintiff was not the owner of the disputed registered trademark. In the suit he filed a replication on 19.6.2001. In thefurther pleadings he had averred that he had obtainedregistration of trade mark. Exhibits A93 to 98 are the trademark certificates of the first plaintiff. Exhibit A93 is for thetrade name 'Kesamrutham' with logo in English with Hindiletters in Class 5. It was obtained for all types of Ayurvedic,Sidha drugs and medicinal preparations included in Class 5.Application was filed on 10.1.2000 and Exhibit A93 trade markwas issued on 9.3.2001. In Exhibit A93 first plaintiff hadclaimed that he was using the trade mark from 30.3.1983.Exhibit A94 is also the trade mark and logo in English withHindi letters for 'Kesamrutham' in Class 3. That applicationwas filed on 10.1.2000 and the certificate was issued on9.3.2001. In Exhibit A94 also first plaintiff had claimed that RFA No.476/200723he was using the trade mark and logo with effect from30.3.1983. Exhibit A95 is also a trade mark with logo for'Kesamrutham' in Class 5 with Arabic letters also. Thatapplication was filed on 10.1.2001 and the certificate wasissued on 9.3.2001 and the user date noted is 30.3.1983.Exhibit A96 is a similar trade mark with logo for'Kesamrutham' in Class 3 with Arabic letters. That applicationwas filed on 10.1.2001 and the certificate was issued on9.3.2001. Exhibit A97 is the trade name for 'Kesamrutham' inClass 5. Exhibit A98 is the trade name for 'Kesamrutham' inClass 3. Both these certificates show that the applicationswere filed on 28.12.1998 and the certificates were issued on9.3.2001. In Exhibits A97 and A98 also the user date wasstated as 30.3.1983. So the evidence on record clearlyestablishes that the first plaintiff is the owner of theregistered trade mark on the date of filing of the suit.Evidence on record also shows that first plaintiff obtaineddrug licence in the year 1983. Exhibit A2 is specifically forpreparation of 'Kesamrutham' and its formula, combination,etc., approved on 12.9.1984. So the materials on record showthat first plaintiff had obtained necessary licenses formanufacturing ayurvedic products and the formula, RFA No.476/200724combination, method of preparation of 'Kesamrutham', etc.,are narrated in Exhibit A2 as early as in 12.9.1984. The case ofthe first plaintiff was that he started manufacturing andmarketing the hair oil from 1983 but he started marketing thesame in a large scale in the year 1996. So, at any rate, from1996 onwards first plaintiff is manufacturing and marketing'Kesamrutham' in India as well in Foreign countries. ExhibitA79 is the original export licence and Exhibit A8 is the Export-Import Code number issued by the Reserve Bank of India. Hehad also obtained sales tax registration for manufacturing theproduct. He had also produced documents to show that hewas exporting products from 1998 onwards. The seconddefendant who is supplying cartons and labels to the firstdefendant as well as first plaintiff had admitted in his writtenstatement that he started supplying cartons and labels to thefirst plaintiff from the year 1995 onwards and he supplied thedisputed cartons and labels to the first defendant fromAugust, 2000 only. Exhibit B20 licence produced by the firstdefendant shows that he had obtained licence formanufacturing drugs only from 17.7.2000.17.According the first defendant the first plaintiff hasnot invented this trade mark, but he himself had copied down RFA No.476/200725the same from Exhibit B9. Exhibit B9 is an advertisementappeared in Mathrubhoomi daily dated 14.10.1984 which wasfor a product by name 'Kesakalpam'. According to the firstdefendant he started manufacturing the same from theyear 1983 and subsequently permitted his brother Varghese touse that name. Exhibit B9 does not show the actual wordsused, colour combination, etc., of the carton. It only containsthe photographs of two Cine Artists, without any particulars.No carton of Exhibit B9 product was also produced. It is verydifficult to accept the contention of the first defendant thatfirst plaintiff imitated Exhibit B9. According to the firstplaintiff he himself designed the name, label, carton, etc. Hegave evidence to that effect also. In this connection thewritten statement filed by the second defendant is veryrelevant. The case put forward by the first plaintiff was thatfirst defendant started manufacturing and marketing of theproduct by name 'Kerala Kesamrutham' only from the year2000 and he came to know about the same accidently when aparcel containing the cartons and logos addressed to the firstdefendant was mistakenly delivered to him. The fact that aparcel meant to be delivered to the first defendant was takendelivery of by the first plaintiff is admitted by the first RFA No.476/200726defendant also. It is also admitted by him that that was sentby the second defendant from Sivakashi. He contended thatthough his name and address were clearly written in thebundle, the first plaintiff with a mischief motive took deliveryof the same. So the averment in the pliant that the seconddefendant was manufacturing and supplying the cartons, andlabels, etc., to the first defendant was admitted by him.Second defendant, who is the manufacturer and supplier ofcartons, labels, logos, etc., for the first defendant and firstplaintiff had admitted certain facts in his written statementwhich are very crucial for deciding the matter in issue. Inparagraph 11 of the written statement second defendant hadadmitted that he was printing labels and cartons for the firstplaintiff from 1995 onwards. The labels of Kesamrutham werefirst printed in the year 1995. The colour combination oflabels are combination of cyan and yellow with photographs ofCine Artist Charmila. Second defendant had produced a copyof the label and carton along with his written statement. Hehad also admitted that the colour combination was suggestedand selected by the first plaintiff. It was further admittedthat the first plaintiff required two types of cartons andlabels for his products; one for sale in India and the another RFA No.476/200727type for export. It was stated that there are slight variationsin both these cartons. It was stated that from 1995 onwardssecond defendant was printing two types of cartons andlabels for Kesamrutham of the first plaintiff; one for exportand the other for sale in India. It was further stated that fewdays before 28.10.1998 first defendant approached thesecond defendant and requested him to print cartons andlabels for the product Kesakalpam in the same colourcombination used by the first plaintiff for his product,Kesamrutham. It was also admitted that the indications andinstructions are copied from the first plaintiff's cartons, labels,etc. But it was contended that the name of product, addressof the manufacturer, picture of the models were different. Thestand taken by the second defendant was that as there wereseveral differences, he started printing of the cartons, labels,etc., for the first defendant also. It was stated that duringthe second week of August, 2000 first defendant againrequested him to print labels and cartons for his product,'Kalan's' product, Kerala Kesamrutham'. It was stated that thecolour combination and the films for printing cartons andlabels were brought by the first defendant from Kerala. It wasadmitted that the first defendant requested the second RFA No.476/200728defendant to print labels and cartons in the same colourcombination used by the first plaintiff for his product'Kesamrutham'. It was stated that one of the majordifferences was that the width of the yellow margin on the topside of the carton of the first plaintiff was more. All othercolour combinations were same. According to the seconddefendant he undertook to print cartons and labels for thefirst defendant only because the first plaintiff has noparticular right over the said colour combination. He againreiterated that he started printing labels, cartons, etc., for thefirst plaintiff from October, 1998, but the cartons and labelsfor 'Kerala Kesamrutham' of the first defendant were printedonly from August, 2000. The only justification of the seconddefendant for doing such an illegal act was that the firstplaintiff had no special right over that word and logo thoughthe colour combination, etc., used by the first defendant wereexactly similar as that of the first plaintiff. It was furtheradmitted that a parcel addressed to the first defendantcontaining cartons, labels, etc., of Kalan's Kesakalpam weresent to Thrissur on 23.10.2000. So the admissions made bythe second defendant show that he started printing of labels,cartons, etc., for Kesamrutham for the first plaintiff from 1995 RFA No.476/200729onwards. He was supplying two types of cartons. It was alsoadmitted by the second defendant that from August 2000cartons, labels, etc., for marketing 'Kerala Kesamrutham' werealso printed and supplied to the first defendant. Firstdefendant had no case that the second defendant colludedwith the first plaintiff. It is true that after filing the writtenstatement second defendant did not contest the case. Butthat will not take away the effect of admissions made by himin his written statement. First defendant must be fastenedwith the knowledge of the contents of the written statementfiled by the second defendant. He had not taken any steps toexamine second defendant. So the admissions made by thesecond defendant, who printed and supplied the cartons,labels, etc., to the first plaintiff as well as the first defendant,alone are sufficient to hold that first defendant wasmanufacturing and marketing products which are identical ordeceptively similar to the products of the first plaintiff. 18.It is argued that there were materials to show thatat least from 1969 onwards ayurvedic products with somemedicinal value were available in the market with the samename and hence the first plaintiff is not entitled to claim anyexclusive right. Reliance is placed on Exhibits B16 and B17 RFA No.476/200730advertisements which appeared in the Dakshina Bharati dailydated 25.4.1970 and 28.2.1969 respectively. Exhibits B16 andB17 show that an ayurvedic pharmacy in Thiruvananthapuramwas marketing a product by name Kesamrutham. P.W.2examined in the case is the son of the proprietor of thatpharmacy. He deposed that no such products weremanufactured or marketed by his pharmacy. Even assumingthat such a product was available from the year 1969 that willnot take away the right of the first plaintiff, who is the ownerof a registered trade mark. It is argued that there arevarious other persons who are manufacturing and marketingthe product by name 'Kesamrutham'. He produced a numberof bottles also. All those bottles were purchased and producedafter the institution of the suit. Relying on the inscriptions inthe labels, learned counsel for the first defendant has arguedthat these products are available in the market long prior tothe manufacturing of the product by the first plaintiff. Evenaccepting the contention of the first defendant that others aremarketing the products with the same name is not sufficient tohold that those products were manufactured from the dateshown in the cartons. As rightly pointed out by the counselfor the first plaintiff, there is no evidence to show from what RFA No.476/200731date onwards these products are being manufactured. In theabsence of material to show that from what date onwardsthese articles were available, it is not possible to accept thecontention of the first defendant that such articles wereavailable in the market long prior to the manufacturing ofKesamrutham by the first plaintiff. Exhibit A1 is the licenceobtained by the first plaintiff for manufacturing ayurvedicmedicines. Exhibit A2 is the formula for manufacturingKesamrutham which was obtained on 12.9.1984. He is theowner of the registered trade mark also. So even acceptingthe contention that others are also using the same name, thatis not a ground to dismiss the suit.19.Learned counsel for the first defendant has arguedthat the word 'Kesamrutham' is a generic word which isdescriptive in nature of the product and the first plaintiffcannot claim any exclusive right. As I have already stated, thefirst plaintiff had obtained certificate under the Trade MarksAct. So long as that certificate stands, he has got a right toprevent others from passing off their products as that onemanufactured by him. It is also to be noted that kesam meanshair and amrutham means elexier, something which makes aperson immortal. But when these two words are put together, RFA No.476/200732it becomes a meaning less word. So it is not a generic wordas contended by the counsel for the first defendant. Firstplaintiff gave evidence to the effect that it was he whosuggested the word and designed the logos and labels. Thataspect is admitted by the second defendant also. So there isabsolutely no merit in the contention raised by the firstdefendant that the word 'Kesamrutham' is a generic word.20.Evidence of P.W.1 shows that he obtained licencefor manufacturing Kesamrutham in the year 1984. Apart fromthe oral evidence, there was no material available on record toshow that he was manufacturing and marketing the productsin a large scale till 1994. Exhibits A7 to A75(a) show that from1995 onwards first plaintiff is doing substantial business andhe is spending a lot of amount for advertisement, etc. Thedetails of the business turn over is given in the plaint. He hasalso produced the trading and loss account and the BalanceSheet for the period ended 31.3.1998 and 31.3.1999 (ExhibitsA4 and A5). He had produced documents to show that he wasexporting Kesamrutham to various countries. 21.Learned counsel for the first defendant hasstrenuously argued before me that a comparison of the logos,cartons, labels, etc., of the first plaintiff with that of the first RFA No.476/200733defendant will show that they are entirely different. I havecarefully compared these two cartons. The cartons used bythe first plaintiff contains the word 'Kesamrutham' in Englishand Malayalam. The colour combination is cyan and majantha.In the carton intended for export, it contains the photographof Cine Artist Charmila and those cartons mentioned for salein India it contains the photograph of another model. Acomparison of the cartons used by the first defendant withthat of the first plaintiff shows that yellow boarder at the topis little bit wider in the carton of the first defendant. In thecarton of the first defendant before the word 'Kesamrutham'in English and Malayalam the words 'Kalans products' and'Kerala' are written in very small letters. It contains thephotograph of Cine Artist Kavya Madhavan. In all otherrespects, both cartons are similar and identical. 22.Learned counsel for the first defendant relied onthe decisions reported in J.R. Kapoor v. Micronix India(1994 Supp. (3) SCC 215), M/s. Bharat Enterprises(India) v. C. Lall Gopi Industrial Enterprises (AIR1999 P & H 231), M/s.Panacea Biotec Ltd. v. M/s.Recon Ltd. (AIR 1997 Del. 244) in support of his argument. RFA No.476/200734In J.R. Kapoor's case (supra) the Apex Court held that theword 'micro' is a part of micro-chip technology and no one canclaim monopoly over the word 'micro'. It was also held thatsince there was no phonetic or visual resemblance betweenthe words 'tel' and 'nix', the trade name 'Micronics' and'Microtel' are not similar. In that case even the visualimpression was different. One is in black and white in slimmerletters and the word 'microtel' is in thick bold letters in redcolour without any design around. In M/s. Bharat Enterprises(India)'s case (supra), a learned Single Jude of the Punjaband Haryana High Court took a view that the word 'heat-pillar'is generic word for room heaters and no manufacturer canhave exclusive right. In M/s. Panacea Boitec's case (supra)the plaintiff had adopted the trade mark 'nimulid' as a shortform of the word 'nimesulide', which is the name of a basicdrug. A learned Single Judge of the Delhi High Court took aview that no distinctiveness or exclusiveness can be claimedby the manufacturer of that drug. 23.The principles laid down in the aforesaid decisionscan have no application to the facts of this case. A mereperusal of the cartons used by the first defendant and that offirst plaintiff shows that both parties are using the word RFA No.476/200735'Kesamrutham' in the same colour combination, etc. In thecase of the first defendant, in the carton before the word'Kesamrutham' it is written as 'Kalan's products Kerala' in verysmall letters. It will not attract an unwary customer. In a caseof passing off goods, the intention to defraud need not beestablished. The question arising for consideration is whetheran unwary customer is likely to be misled by the appearance ofthe product marked by the appellant. Normally, a customerwho goes to the shop may not critically examine the product.24. In Parle Products v. J.P. & Co. Mysore (AIR1972 SC 1359) the Apex Court held as follows:“In order to come to the conclusionwhether one mark is deceptively similar toanother, the broad and essential featuresof the two are to be considered. Theyshould not be placed side by side to findout if there any differences in the designand if so, whether they are of suchcharacter as to prevent one design frombeing mistaken for the other. It would beenough if the impugned mark bears suchan overall similarity to the registeredmark as would be likely to mislead aperson usually dealing with one to acceptthe other if offered to him. It is of no useto note on how many points there issimilarity and in how many others there isabsence of it”. RFA No.476/20073625.In Roche & Co. v. G. Manners & Co. (AIR1970 SC 2062) it was held as follows:“The marks must be compared aswhole. It is not right to take portion ofthe word and say that because thatportion of the word differs from thecorresponding portion of the word in theother case there is no sufficient similarityto cause confusion. The true test iswhether the totality of the proposedtrade mark is such that it is likely tocause deception or confusion or mistakein the minds of persons accumstomed tothe existing trade mark”. 26.In Cadila Health Care Ltd. v. CadilaPharmaceuticals Ltd. (2001) 5 SCC 73) a three JudgesBench of the Supreme Court had considered the test todetermine the deceptive similarity. It was held as follows:“Broadly stated, in an action forpassing off on the basis of unregisteredtrade mark generally for deciding thequestion of deceptive similarity thefollowing factors are to be considered:(a)The nature of themarks i.e. whether the marksare word marks or label marksor composite marks i.e. bothwords and label works.(b)The degree ofresembleness between themarks, phonetically similar and RFA No.476/200737hence similar in idea.(c)The nature of thegoods in respect of which theyare used as trade marks.(d)The similarly in thenature, character andperformance of the goods ofthe rival traders.(e)The class ofpurchasers who are likely tobuy the goods bearing themarks they require, theireducation and intelligence andthe degree of care they arelikely to exercise in purchasingand/or using the goods.(f)The mode ofpurchasing the goods or placingorders for the goods.(g)Any othersurrounding circumstanceswhich may be relevant in theextent of dissimilarity betweenthe competing marks.Weightage to be given to each of theaforesaid factors depending upon facts ofeach case and the same weightage cannotbe given to each factor in every case”.27.So the oral and documentary evidence adduced inthis case shows that at least from 1995 onwards the first RFA No.476/200738plaintiff was marketing the product Kesamrutham. ExhibitsA97 and A98 shows that he applied for registration of thetrade mark in the year 1998. First defendant startedmanufacturing Kesamrutham and marketing the same inidentical or deceptively similar carton or label as used by thefirst plaintiff from August 2000 onwards.28.The learned counsel for the first defendant hasargued that the first defendant has obtained registered trademarks for the cartons and logos owned by him and hence thefirst plaintiff is not entitled to any relief. The certificateproduced shows that the first defendant applied forregistration only on 5.3.2003 and the certificate was issuedonly on 22.2.2008 after filing this appeal. It is trite law thatthe first defendant also is a holder of a registered trade markis not an answer or defence in an action against passing off. 29.The evidence discussed above clearly establishesthat the findings of the court below that the first defendant ispassing off his goods as that of the first plaintiff and firstplaintiff is entitled to get a decree of permanent prohibitoryinjunction are perfectly correct and does not call for any RFA No.476/200739interference. The appeal is without any merit and the sameis only to be dismissed. Appellant is given two months time tosurrender the unused cartons and labels of the offending trademark.In the result, appeal is dismissed.I.A.No.3476 of 2007 shall stand dismissed.K. PADMANABHAN NAIR, JUDGE.vsv