Before the Delhi High Court (1973) ILR 1Delhi 393 Petitioner Atlas Cycle Industries Ltd. Respondent Hind Cycles Ltd. Date of Judgement 28.04.1972 Bench Justice S.N. Shankar and Justice T.V.R. Tatachari
The present case dwells around the Trade and Merchandise Act, 1958 to determine whether the use of the words like “Royal Star” by the respondent for his cycles would constitute an infringement of the Appellant’s registered trademark “Eastern Star”. The phonetic similarity between the two was considered for determining whether the respondent infringed on the appellant’s trademark. It was observed that a person of ordinary prudence and intelligence and of imperfect memory is likely to remember the last word “Star” which may deceive the buyer and create confusion. The look of both the marks was further taken into consideration and was seen that the essential feature in the mark is the position and representation of the star which would stay in the minds of the purchaser.
The Appellant (Atlas Cycle industries) was a company incorporated in 1950. A firm named Messrs Janki Das & Co. in 1938 started to import bicycles in India under the name “Eastern Star”. In 1943, the said firm obtained the registration of the Trade Mark under the name “Eastern Star” (Registration No. 11426), which were being used by the said firm in respect of the accessories and cycles. The said firm subsequently assigned the said trademarks to the appellant with effect from 12th July 1955. In February 1959 the Appellant came to know that Respondents (Hind Cycles Ltd.) were selling cycles and accessories under the trademark “Royal Star” and immediately moved to the Trademarks Registry at Bombay and found that the respondent applied for the registration of the same by application no. 177777 and before the acceptance, it has been advertised in the trademarks journal on 16th July 1957. The appellant immediately filed a notice along with the application of extension for filing the notice to the opposition on 17th April 1959. It has been alleged by the appellant that “Royal Star” closely resembled “Eastern Star” and can likely cause confusion and deception on the part of purchasers. The appellant sought a decree of a permanent injunction by filing a suit against Respondents for infringement of trademark “Eastern Star”.
Statue and Provisions Discussed:
- Trade and Merchandise Marks Act, 1958.
1. Whether the mark of the Respondent constituted an infringement of the registered mark of the appellant?
Arguments on behalf of the Petitioner:
It was contended by the petitioner that their trademark named “Eastern Star” acquired reputation and was often referred by the public as “Star Cycles” or “Tara Brand” cycles. It was alleged by the petitioner that the trademark of the respondent “Royal Star” was an infringement of his registered mark “Eastern Star”. In support of their contention, the petitioner presented many oral witnesses who were all businessmen and traded in various cycles. They said while the customers while demanding “Eastern Cycles” refer to them as “Star cycles”. The decision of Messrs Modi Sugar Mills Limited v. Tata Oil Mills Ltd,[i] was contended by the petitioners in which the Court held that the possibility of confusion among the customers was not important but the resemblance of the product must be taken into consideration which may deceive the purchasers. The petitioners also referred to the decision of Thomas Bear and Sons (India) Ltd. v. Pravag Narain,[ii] it was held while conducting the test on the probability of deception always a cautious and prudent purchaser must be taken into consideration and not the thoughtless or incautious purchaser. It was contended that the trademark of the respondent very closely resembled the petitioner’s trademark and was sufficient to deceive a cautious buyer.
Arguments on behalf of Respondent:
It was contended by the respondents that the petitioners had no exclusive right to use the word “Star” and it was only the part of the registered trademark. They were of the view that it was only the part of the registered name and the mark “Royal Star” was completely different from “Eastern Star” and the shape of the respondent’s monogram was completely different from the petitioner’s monogram.
It was held that the mark of the respondent “Royal Star” was an infringement to petitioner’s mark “Eastern Star”. The appeal of the appellant was allowed and the contention on behalf of the appellant that the respondents have been passing off cycles of the appellant was not taken into consideration. As there were no arguments regarding the relief, no damages were allotted.
The phonetic similarity was taken into consideration between the two marks “Eastern Star” and “Royal Star” and was observed that both the marks ended with the same sound. A person with average memory and intelligence might remember only the last sound that ended with “Star” and is likely to be deceived easily. The evidence of the parties shows that customers on a major basis only recognize the monogram and demanded the “Star” cycles of Sonipat. The Appellant manufactured and sold 1,50,000 annually and was often referred to as star cycles or tara brands by the customers and the same circumstance was taken into consideration and it was held that the mark “Royal Star” could easily deceive the customers with imperfect memory and average intelligence.
A look at the monogram of both the marks depicted that essential feature therein was the position of the star, and not only the word star but the representation of the star would remain in the minds of the people and very easily confuse them regarding both the brands.
In the present case, it can be concluded that the mark of the respondent infringed the mark of the appellant. Initially, the phonetic sound was taken into consideration and after that, the positioning of the star was considered as the demand for the appellant cycles was very much and was often referred by the cycles of “Tara Brand”. This could easily have created confusion in the minds of the people and could have deceived them.
“The views of the authors are personal“
[i] Messrs Modi Sugar Mills Limited v. Tata Oil Mills Ltd, A.I.R. 1943 Lah 196.
[ii] Thomas Bear, and Sons (India) Ltd. v. Pravag Narain, A.I.R 1940 Privy 86.