Case Note & Summary
The appellant, Ruston & Hornsby Ltd., a company incorporated in England, engaged in manufacturing and selling diesel internal combustion engines, was the registered proprietor of the trade mark 'RUSTON' in India. Its Indian subsidiary, Ruston Hornsby (India) Ltd., was the registered user. The respondent, The Zamindara Engineering Co., an Indian firm, manufactured and sold diesel engines under the mark 'RUSTAM' and later 'RUSTAM INDIA'. In June 1955, the appellant discovered the respondent's use of 'RUSTAM' and, through a letter dated 8 July 1955, called upon the respondent to desist, alleging infringement. The respondent contended that 'RUSTAM INDIA' was sufficiently distinct due to the suffix 'INDIA'. On 17 February 1956, the appellant filed a suit for permanent injunction to restrain the respondent from infringing its trade mark. The trial court dismissed the suit on 3 January 1958, holding no visual or phonetic similarity between 'RUSTON' and 'RUSTAM'. On appeal, the Allahabad High Court, in its judgment dated 23 November 1965, found that there was deceptive resemblance between the two marks and that the use of the bare word 'RUSTAM' constituted infringement. However, the High Court held that the use of 'RUSTAM INDIA' did not infringe because the appellant's engines were manufactured in England and the respondent's in India, and the suffix 'INDIA' was sufficient warning to purchasers. The appellant appealed to the Supreme Court by special leave. The core legal issue was whether the addition of 'INDIA' to a deceptively similar mark could avoid infringement under the Trade Marks Act, 1940. The Court examined the distinction between infringement and passing off actions, noting that when the defendant's mark is not identical but similar, the test is whether it is likely to deceive or cause confusion—the same standard as in passing off. The Supreme Court held that since the High Court's finding of deceptive resemblance between 'RUSTON' and 'RUSTAM' had not been challenged by the respondent, it was binding. Consequently, the use of 'RUSTAM' alone was infringing. Further, the Court held that the addition of the word 'INDIA' was of no consequence because once a mark is deceptively similar, the statutory protection is absolute, and the infringer cannot escape by showing that an extraneous element distinguishes the goods. The Court referred to the principle that in infringement actions, the test is based on the mark itself, not on other circumstances. It cited the English cases of Millington v. Fox and Saville Perfumery Ltd. v. June Perfect Ltd. to emphasize that the statutory protection does not permit the infringer to rely on additional matter to avoid liability. Accordingly, the Supreme Court allowed the appeal, set aside the High Court's order to the extent it permitted 'RUSTAM INDIA', and granted a permanent injunction restraining the respondent from using 'RUSTAM' or 'RUSTAM INDIA'. The appellant was also awarded nominal damages of Rs. 100 and an order for delivery of infringing materials, with costs.
Headnote
A) Trade Marks - Infringement - Likelihood of Confusion Test - Trade Marks Act, 1940, Section 21 - Held that where the defendant's mark is not identical but similar to the registered trade mark, the test for infringement is whether the similarity is likely to deceive or cause confusion, which is the same test as in a passing off action. The High Court had found deceptive resemblance between 'RUSTON' and 'RUSTAM', and that finding was not appealed against. Therefore, the use of 'RUSTAM' alone constituted infringement. (Judgment pages 225-226) B) Trade Marks - Infringement - Addition of Distinctive Suffix - Trade Marks Act, 1940, Section 21 - Held that once a mark is found to be deceptively similar to a registered trade mark, the addition of the word 'INDIA' to the mark ('RUSTAM INDIA') does not avoid infringement. The law provides absolute protection, and the user cannot escape by showing that something outside the actual mark distinguishes the goods from those of the registered proprietor. (Judgment page 226)
Issue of Consideration
Whether the use of the trade mark 'RUSTAM INDIA' constitutes infringement of the registered trade mark 'RUSTON' when 'RUSTAM' alone is deceptively similar.
Final Decision
Appeal allowed. Permanent injunction granted restraining respondent from using 'RUSTAM' or 'RUSTAM INDIA'. Nominal damages of Rs. 100 awarded. Respondent directed to deliver all materials bearing the infringing marks. Costs to appellant.
Law Points
- Legal points not extracted
- In infringement action
- test of likelihood of confusion or deception from similarity of marks is same as in passing off
- once deceptive similarity is established
- addition of distinguishing word does not negate infringement
