# '2 22 RUSTON & HORNS8Y LTD v. THE ZAMINDARA ENGINEERING CO

- **Citation:** [1970] 2 S.C.R. 222
- **Court:** Supreme Court of India
- **Decided:** 1969-09-08
- **Case number:** Civil Appea( No. 1274 of 1966
- **Bench:** J. C. Shah, V. Ramaswami
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/2-22-ruston-horns8y-ltd-v-the-zamindara-engineering-co-4790
- **Pages:** 5

## Headnote

Trade Marks Act, 1940, s. 21-Trade ;,zark
deceiptively
si1nilarWhether addition of word 'India' distinguishes.
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 11\at "RUSTAM" was not an
infringement of "RUSTON" and stated that the words "RUSTAM INDIA"
W<!re used.
The trial court dismissed the suit holding that there was no
visual or phonetic simi!aritv between "RUSTON" and "RUSTAM". The
High Court in appeal, held that there was deceptive resemblance between
the words "RUSTON" and "RUSTAM", but heft! 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, .ind
the suffix 'INDIA' \\'as sufficien-t warning that the engine sold was not
the engine ma•u(actured 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
\\'hether the infringement is such as is likely to, deceive or cause confusion.
But \Vhere the aHeged infringement consists of using not the exact mark
on the.R:~gister but somthing similar to it, the test of _infringement is the.
same al" in an action for passing off.
Jn other words, the test as to the
likelihood of confusion or deception arising from siffiilarity of marks is
the same hoth in Infringement anc. passing off actions. [225 H]
Jn the present case the High Court found that there \v::is deceptive
resemblance between the word "RUSTON" and the worJ "RUSTAM"
::ind therefore the use of the bar>t: \VJrd "RUSTAM" constituted infringeM
ment of the appellant's trade mark "RUSTON".
The respondent did
not prefer an appeal against the judgm·cnt of the High Court on this point
and it was, therefore., not open to hin1 to challenge that finding.
If the
respondent's trade mark \Va~ 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 \Vas entitled to .succeed
in its action for infrin_gernent of its trade mark.
[226 B]
·
MillinRton v. Fox, 3 I\1v & Cr. 338 and Savilla Perfunieef Ltd.
\'.
June Perfect Ltd., 58 R.P.C. 147 at 161, referred .to.
·
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## Text

'2 22
RUSTON & HORNS8Y LTD.
v.
THE ZAMINDARA ENGINEERING CO.
September 8, 1969
(J. C. SHAH AND V. RAMASWAMI, JJ.]
Trade Marks Act, 1940, s. 21-Trade ;,zark
deceiptively
si1nilarWhether addition of word 'India' distinguishes.
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 11\at "RUSTAM" was not an
infringement of "RUSTON" and stated that the words "RUSTAM INDIA"
W<!re used.
The trial court dismissed the suit holding that there was no
visual or phonetic simi!aritv between "RUSTON" and "RUSTAM". The
High Court in appeal, held that there was deceptive resemblance between
the words "RUSTON" and "RUSTAM", but heft! 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, .ind
the suffix 'INDIA' \\'as sufficien-t warning that the engine sold was not
the engine ma•u(actured 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
\\'hether the infringement is such as is likely to, deceive or cause confusion.
But \Vhere the aHeged infringement consists of using not the exact mark
on the.R:~gister but somthing similar to it, the test of _infringement is the.
same al" in an action for passing off.
Jn other words, the test as to the
likelihood of confusion or deception arising from siffiilarity of marks is
the same hoth in Infringement anc. passing off actions. [225 H]
Jn the present case the High Court found that there \v::is deceptive
resemblance between the word "RUSTON" and the worJ "RUSTAM"
::ind therefore the use of the bar>t: \VJrd "RUSTAM" constituted infringeM
ment of the appellant's trade mark "RUSTON".
The respondent did
not prefer an appeal against the judgm·cnt of the High Court on this point
and it was, therefore., not open to hin1 to challenge that finding.
If the
respondent's trade mark \Va~ 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 \Vas entitled to .succeed
in its action for infrin_gernent of its trade mark.
[226 B]
·
MillinRton v. Fox, 3 I\1v & Cr. 338 and Savilla Perfunieef Ltd.
\'.
June Perfect Ltd., 58 R.P.C. 147 at 161, referred .to.
·
•
CIVIL APPELLATE JURISDICTION : Civil Appea( 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
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No. 208 of 195.8.
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K. S. Shavaksha, R. A. Shah, !. B. Dadachanji and Bhuvanesh
Kumari, for the appellant.
HORNSBY LTD. v. ZAMINDARA ENG. co. (Ramaswami. J.) 223·
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S. K. Mehta, K. L. Mehta and Sona Bhatiani. for respondent.
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The Judgment of the Court was delivered by
Ramaswami, J.-This appeal is br<mght by special leave from·
the iudgment of the Allahabad High Court dated November 23,
1965 in First Appeal No. 208 ct 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.
Rustori Hornsby (India) Ltd., a company registered
in l1ndia under the Companies Act, 1956 is a subsidiary of the
appellant.
The-respondent is a firm carrying on business in the
· maITUfacture and sale of diesel internal combustion engines and·
their parts.
The appella1nt 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 01' the said trade mark
and manufactures i1n India and sells in India internal combustion
engines under the trade mark "RUSTON".
Sometime in June,
1955 the apoellant came to learn that the respondent was manu·
facturing and selling diesel inter1nal 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 re.2ist-~red trade mark "RUSTON".
The defendant replied that "RU~ TAM" 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 Ad.ditional District Judge, Meerut, dismissed the suit
holding that there was no visual or phonetic similarity between
"RUSTON" and "RUSTAM". The appellant tuck the matter in
appeal in the Allahabad High Court.
By its judgment
dated
November 23, 1965 the Higl-i Court held that the use of the word
RUST AM bv the respondent constituted infringement
of
the
appellant's trade mark "RUSTON" ~nd the respondent should be
prohibited from using the trade mark "RUSTA_M". ·But the. High
Court proceeded to hold that the use oi the words "RUSTAM"
1NDIA" was not a111 infringement because the plaintiff's engines
were manufactured in England and the defendant's engines were
m<inufactured in India.
The suffix "India" would be a sufficient
warni,n? that th'e
en~ine sold was not a
"RUSTON" engine
manufactured in England and the respendent may be perrriitted ·
to use the combination "RUSTAM INDIA".
:224
SUPREME COURT REPORTS
(1970] 2 S.C.R.
Section 21 of the Trade Marks Act, 1940 states :
"Subject to the provisions of section 22, 25 and 26
:the registration of a person i11 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
shalI be deemed to be infringed by any person who, not
behg 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 registerP.d, and in such manner as to render the use
of the mark likely to be take!l eitlier-
( a) as being used as a trade mark; or
(b) to import a reference tq 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 o~ trade."
The distinction between an infringement action lllld a passing
·off action is important.
Apart from the question as to the nature
•Of trade mark the issue in an infringeme,nt 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 <o be
designed or calculated to lead purchasers to believe that
they are the plantiff's goods ?"
But in ain infringement action the issue is as fo,llows :
"Is the defendant using a marJ< which is the same as
or which is a colourable imitallon of the,
plaintiffs
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 clel!r-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 plain-
. tiffs goods and the prices also may be so different that there
would be no probability of deception of the public.
Nevertheless,
•iin an action on the trade mark, that is to say, in an infringement
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HORNSBY LTD. v. ZAMINDARA ENG. co. (Ramaswami, J.) 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 upqn the validity of the registration and subject to other restrictions laid down in ss. 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 a1ny 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 coP.fosion
between them and the goods of A.
No case of actual deception
nor ~ny actual damage need be proved.
At common law the
action was not maintainable unless there had been fraud on A's
part.
In equity, however, Lord Cottenham L.C. in Millington
v. Fox(') held that it was immaterial whether the defendant had
been fraudule1nt 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 Jaw 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. v. June Perfect Ltd.(').
"The Statute law relating to infringement of trade
marks is based on the same fundamental idea as the law
relating tc passing-off.
But it differs from that law in
two particulars, namely (1) it is concerned only with
one method of passing-off, 1namely, 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 shuwing that by something outside the actual mark itself he has distinguished his goods
from those of the registered proprietor.
Accordingly,
in co.nsidering 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 marl; 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 infringem~nt consists of using:
<1) 3 My & Cr. J38.
(2) 58 R. P. C. 147 at 161.
226
SUPREME COURT REPORTS
[1970] 2 S.C.R.
: 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 confusiqn 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" a,nd 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 c.f the High Court on this point and it is, therefore,
not open to him to chall~nge that finding. If the respondent's
trade mark is deceptively similar ·o 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 action for infringement of its trade mark.
We are accordi;ngly 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" a;nd 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 Uinder 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
·to the appellant price-lists, bills, invoic.~s and other advertising
material bearing the mark "RUSTAM" or "RUSTAM INDIA".
The appeal is allowed with costs to the above extent.
'Y.P.
Appeal allowed.
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