Civil Appeal No 1274 of 1966
Appeal by special leave from the judgment and decree dated November 23 1965 of the Allahabad High Court in First Appeal No 208 of 1958
KS Shavaksha RA Shah 1
B Dadachanji arid Bhuvanesh Kumari for the appellant
223 SK Mehta KL Mehta and Sona Bhatiani for respondent
The Judgment of the Court was delivered by Ramaswami J
This appeal is brought by special leave from  the judgment of the Allahabad High Court dated NOvember 23 1965 in First Appeal No 208 of 1958
The appellant is a limited liability company incorporated under the English Companies Act with its registered office at Lincoln England
It carries on business in the manufacture and sale of diesel internal combustion engines and their parts and accessories
Ruston Hornsby India Ltd a company registered in India under the is a subsidiary of the appellant
The respondent is a firm carrying on business in the manufacture and sale of diesel internal combustion engines and their parts
The appellant was a registered proprietor of the registered trade mark Ruston being registration No 5120 in Class 7 in respect of internal combustion engines
Ruston and  Hornsby India Ltd is the registered user of the said trade mark and manufactures in India and sells in India internal combustion
engines under the trade mark RUSTON
Sometime in June 1955 the appellant came to
learn that the respondent was manufacturing and selling diesel internal combustion engines under the trade mark RUSTAM
On July 8 1955 the appellant wrote through its attorneys a letter to the respondent and called upon it to desist from using the trade mark RUSTAM on its engines as it was an infringement of the registered trade mark RUSTON
The defendant replied that RUSTAM was not an infringement of RUSTON as the words RUSTAM INDIA was used
On February 17 1956 the appellant instituted a suit praying for a permanent injunction restraining the
respondent and its agents  from infringing the trade mark RUSTON
On January 3 1958 the Additional District Judge Meerut dismissed the suit holding that there was no visual or phonetic similarity between RUSTON and RUSTAM
The appellant took the matter in appeal in the Allahabad High Court
By its judgment dated November 23 1965 the High Court held that the use of the word RUSTAM by the respondent constituted infringement of the appellant s trade mark RUSTON and the respondent should be
prohibited from using the trade mark RUSTAM
But the High Court proceeded to
hold that the use of the words RUSTAM  INDIA was not an infringement because the plaintiff s engines were manufactured in England and the defendant s engines were manufactured in India
The suffix India would be a sufficient warning that the engine sold was not a RUSTON engine manufactured in England and the respondent may be permitted  to use the combination RUSTAM INDIA
224 Section 21 of the states Subject to the provisions of section 22 25 and 26 the registration of a person in the register as proprietor 
of a trade mark in respect of any goods shall give to that person the exclusive right to
the use of the Trade mark in relation to those goods and without prejudice to the generality of the foregoing provision that right shall be deemed to be infringed  by any person who not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered and in such manner as to render the use of the mark likely to be taken either a as being used as a trade mark or b to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade
 The distinction between an infringement action and a passing off action is important
Apart from the question as to
the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action
In a passing off action the issue is as follows 
Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plantiff s goods  But in an infringement action the issue is as follows Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff s registered trade mark  It very often happens that although the defendant is not using the trade mark of the plaintiff the get up of the defendant s goods may be so much like the plaintiff s that a clear case of passing off would be proved
It is on the contrary conceivable that although the defendant may be using the plaintiff s mark the get up of the defendant s goods may be so different from the get up
of the plaintiff s goods and the prices also may be so different that there would be no probability of deception of the public
Nevertheless in an action on the trade mark that is to say in an infringement 225 action an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff s mark
The action for infringement is a statutory right
It is dependent upon the validity of the registration and subject to
other restrictions laid down in sections 30 34 and 35 of the Act
On the other hand the gist of a passing off action iS that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive
It is enough that the get up of B s goods has become distinctive of them and that there is
a probability of confusion between them and the goods of A No case of actual deception nor any actual damage need be proved
At  common law the action was not maintainable unless there had been fraud on As part
In equity however Lord Cottenham LC in Millington vs Fox1 held that it was immaterial whether the defendant had
been fraudulent or not in using the plaintiff s trade mark and granted an injunction accordingly
The common law courts however adhered to their view that fraud was necessary until the Judicature Acts by fusing law and equity gave the equitable rule the victory over the common law rule
The two actions however are closely similar in some respects As was observed by the Master of the Rolls in Saville Perfumery Ltd vs June Perfect Ltd2
The Statute law relating to infringement of trade marks is
based on the same fundamental idea as the law relating to passing off
But it differs from that law in two particulars namely I  it is concerned  only with one method of passing off namely the use of a trade mark and 2 the statutory protection is absolute in the sense that once a mark is shown to offend the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor
Accordingly in considering the question of infringement the Courts have held and it is now expressly provided by the Trade Marks Act 1938 section 4 that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive
 In an action for infringement where the defendant s trade mark 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 where the alleged infringement consists of using 1  2 58 RPC l47 at 161
226 not the exact mark on the Register but something similar to
it the test of infringement is the same as in an action for passing off in other words the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions
In the present case the High Court has found that there is a deceptive resemblance between the word RUSTON and the word RUSTAM and therefore the use of the bare word RUSTAM constituted infringement of the plaintiff s trade mark RUSTON
The respondent has not brought an appeal against the judgment of the High Court on this point and it is therefore not open to
him to challenge that finding
If the respondent s trade mark is deceptively similar to
that of the appellant the fact that the word INDIA  is added to the respondent s trade mark is of no consequence and the appellant is enitled to succeed in its actionn for infringement of its trade mark
We are accordingly of the opinion that this appeal should be allowed and the appellant should be granted a decree restraining the respondents by a permanent injunction from infringing the plaintiff s trade mark RUSTON and from using it in connection with the engines machinery and accessories manufactured and sold by it under the trade mark of RUSTAM INDIA
The appellant is also entitled to an injunction restraining the respondent and its agents from selling or advertising for sale of engines machinery or accessories under the name of RUSTAM or  RUSTAM INDIA
The appellant is also
granted a decree for nominal damages to the extent of Rs 100 
The appellant is further entitled to an order calling upon the respondent to deliver the appellant price lists bills invoices and other advertising material bearing the mark  RUSTAM or RUSTAM INDIA
The appeal is allowed with costs to the above extent
YP Appeal allowed


Summary:
For the infringement of its registered trade mark RUSTON by the respondent s trade mark RUSTAM the appellant filed a suit for permanent injunction
The respondent pleaded that RUSTAM was not an infringement of RUSTON and stated that the words RUSTAM INDIA were used
The trial court dismissed the suit holding that there was no visual or phonetic similarity between RUSTON and RUSTAM
The High Court in appeal held that there was deceptive resemblance between the words RUSTON and RUSTAM but held that the use of RUSTAM INDIA did not constitute an infringement because the appellant s engines were
manufactured in England and the respondent s in India and the suffix INDIA  was sufficient warning that the engine sold was not the engine manufactured in England
Allowing the appeal this Court HELD In an action for infringement when the defendant s trade mark 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 where the alleged infringement consists of using not the exact mark on the Register but something similar to it the test of infringement is the same as in an action for passing off
In other words the test as to the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions
225 H In the present case the High Court found that there was deceptive resemblance between the word RUSTON and the word RUSTAM and therefore the use of the bare word RUSTAM constituted infringement of the appellant s trade mark RUSTON
The respondent did not prefer an appeal against the judgment of the High Court on this point and it was therefore not open to him to challenge that finding
If the respondent s trade mark was deceptively similar to that of the appellant the fact that the word INDIA was added to the respondent s trade mark was of no consequence and the appellant was entitled to succeed in its action for infringement of its trade mark
226 B Millington vs Fox 3 MV  Cr 338 and Savillo Perfumery June Perfect Ltd at 161 referred to