Sanjib Banerjee, J.
1. The rhinoceros is in the court: not to protest its shrinking natural habitat as it has no voice to do so; but only by its shorter, more-endearing name. And even as the parties jostle in the reflected glory of the majestic rhino, the name itself threatens to be a bull in the China shop of trademark law.
2. The appeal is directed against a judgment and order of December 9, 2015 by which the appellant has been restrained from manufacturing, selling or distributing or advertising or dealing with cement under the mark ‘Rhino’ in a particular colour scheme and get-up and also from infringing the contesting respondents’ mark of ‘Rhino’. In addition, the appellant has also been restrained from passing off cement under the mark ‘Rhino in sacks with the red, black and white colour scheme or get-up similar to the contesting respondents’. The respondent Nos. 1 and 2 have a cross-objection to the extent that such respondents were found not to have made out a case under Section 29(4) of the Trade Marks Act, 1999 and to the extent that further orders sought by such respondents as plaintiffs were declined.
3. The appellant has started selling cement in gunny bags and like packaging material from January, 2015 under the mark ‘Rhino’. The respondent Nos. 1 and 2, the plaintiffs in the suit (hereinafter referred to as the respondents), have been using the word-mark ‘Rhino’, which is registered in class 19, in course of their manufacture and sale of asbestos sheets and asbestos building materials. The registration, granted on March 31, 1980, dates back to the date of the application of October 10, 1977, which claimed user thereof since September 25, 1977. The discussion here proceeds on the basis that the registered word-mark ‘Rhino’ remains valid and such registration has been kept renewed, since no argument to the contrary has been made. In addition, the respondents have a registration in respect of a black rectangular device with the word ‘RHINO’ appearing in white therein. The device-mark is registered in class 6 for galvanised steel sheets with effect from January 1, 2007 and dating back to January 18, 1996, which was the date of the application. The claim in the application was that such device-mark had been used since March, 1995. Another device-mark in the form of the outline of a rhinoceros is registered in favour of the respondents since October 14, 2003 and dating back to September 10, 1997. Such registration is in class 6 for galvanised steel sheets. There is a further device-mark in the outline of a rhinoceros registered in favour of the respondents since May 16, 2006 and dating back to September 10, 1997 in class 19 pertaining to asbestos sheets and asbestos building materials.
4. The appellant claims that the mark ‘Rhino’ is commonly used in respect of divers products, particularly in the North-East as the rhinoceros is the most famous animal in the forests of Assam by the Brahmaputra river and the neighbouring areas. The appellant contends that no solitary commercial venture or entity can claim exclusive rights over the mark ‘Rhino’ nor is such mark common to only a particular trade or line of goods or services. The most vociferous submission of the appellant is that the word-mark ‘Rhino’ has not fastened to the respondents’ products or their asbestos sheets for the respondents to claim any secondary meaning, associating the mark exclusively with their goods.
5. The appellant flaunts its gunny bags in court that prominently carry the mark ‘Rhino’ with cement written equally conspicuously just below the mark ‘Rhino’ and the name of the manufacturer prominently displayed towards the bottom of the bag. The appellant asserts that it is inconceivable that the most unwary of customers would buy the appellant’s bag of cement when he intended to buy the respondents’ asbestos sheets. The appellant says that in the light of the appellant’s name and the source of its cement being prominently displayed in its packaging material, there is no chance of any person being deceived by the ‘Rhino’ mark carried by the appellant’s cement to think it was manufactured by the respondents. The appellant emphasises on the disparate nature of the goods manufactured and marketed by the two sets of contesting parties to assert that there can be no likelihood of confusion as to either the nature of the products or the origin of the appellant’s cement.
6. According to the appellant, the interlocutory court itself found that there was neither a case made out under Section 29(2) of the Act nor under Section 29(4) thereof and the tests for passing-off would be no different from that of infringement in a case as the present. The appellant criticises the judgment and order impugned on the ground that it gives no reasons in support of its findings and there is no satisfaction recorded therein of any prima facie case being made out by the respondents or of any irrevocable prejudice being suffered by the respondents for an order to be made on their petition. The appellant is particularly critical of the injunction pertaining to the colour scheme and get-up when, according to the appellant, the asbestos sheets sold by the respondents only carry an embossed mark of the word ‘Rhino’ and some other details and there is no particular trade-dress or packaging in which asbestos sheets can be said to be sold in the market.
7. As to the quality of the claim in the interlocutory petition, the appellant says that no case was made out of any damage to the goodwill or reputation of the respondents or of the sale of their asbestos sheets declining or even the dilution of any of the marks owned by the respondents. The appellant maintains that the colour scheme used by the respondents in advertising or promotional material or any corporate literature is completely irrelevant in the context of how the completely distinct goods of the respondents and the appellant are sold in the market; and that the asbestos sheets come without any clothes or dress, so to say, in their oversized form and the appellant’s cement comes in bags. The appellant has also relied on several judgments to establish a distinction between a mark which has become distinctive of a product and a mark that is commonly used or may even be somewhat descriptive of the product.
8. It needs also to be noticed that it cannot be the appellant’s case that the mark ‘Rhino’ is incapable of registration or appropriation in respect of a particular product since the appellant has also applied for registration thereof in respect of cement in January, 2015. The appellant has also harped on 81 recorded users of the mark ‘Rhino’ across a wide range of goods and services, several of them being registered owners of such mark in their respective areas of operation.
9. The appellant has first referred to a judgment reported at (2004) 5 SCC 257 (Godfrey Philips India Limited v. Girnar Food and Beverages Private Limited) for the proposition that a descriptive trademark is entitled to protection only if it has assumed a secondary meaning which identifies it with a particular product or being from a particular source. The matter pertained to mark ‘Super Cup’ by which the appellant sold extra strong CTC tea. The respondent before the Supreme Court was also in the tea business and used the same mark in connection with the sale of its tea. In the passing-off action, an interlocutory injunction was issued which was upset in appeal. The reasoning in the appellate order of the High Court was that the word ‘Super’ was merely laudatory and the word ‘Cup’ referred to a cup of tea, which rendered the mark ‘Super Cup’ to be descri
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tive and laudatory of the goods and, thus, not entitled to any protection. The Supreme Court disagreed with the enunciation of the principle of law and held that even a descriptive mark would be entitled to protection if it had assumed a secondary meaning which identified the mark with a particular product or the mark being from a particular source. The matter was remanded to the appellate stage of the High Court for a fresh consideration.10. Much has been made by the appellant of a judgment reported at (2010) 2 SCC 142 (Skyline Education Institute (India) Private Limited v. S. L. Vaswani) for the apparent recognition therein that even if a fancy name, that had no nexus with the goods or service, was adopted in course of a trade, it would not guarantee any protection being accorded to such trade name. However, as would be evident from the judgment, the matter may have turned on a completely different consideration, which may not be of much assistance to the appellant herein. An educational institution using ‘Skyline’ as part of its name sued a society using the same mark as part of its trading name in relation to its activities in the field of education. The defendants asserted that the plaintiff was running its institute illegally without obtaining permission from any statutory body and without being affiliated to any university or nodal educational authority. Though the Single Bench of the Delhi High Court observed that ‘Skyline’ was not an invented word and had to be considered as generic as many persons and institutions used such name as part of their trading name or business activities, the main consideration that weighed with the Single Bench was that the defendants had obtained due recognition and affiliation from statutory bodies and their first batch of students was undergoing a five-year course. It was also held by the Single Bench that the name of the defendants’ institute, despite the use of the word ‘Skyline’ therein, was sufficiently distinctive and could not be confused with the name of the plaintiff. More importantly, the matter before the Supreme Court turned on the Wander v. Antox [(1990) Supp. SCC 727] principle that the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion is shown to have been exercised arbitrarily or capriciously or in a perverse manner or where the court had ignored the settled principles of law regulating the grant or refusal of interlocutory injunctions.11. The judgment next cited by the appellant is reported at ILR (2009) I Del 575 (Britannia Industries Limited v. Cremica Agro Foods Limited) where the mark ‘Greetings’ used by the plaintiff in respect of biscuits failed to earn an interlocutory injunction in a passing-off action. The defendant used the same mark in relation to its bakery products. The court held that the plaintiff could not establish its distinctiveness in the mark or any secondary meaning being established by such mark qua the plaintiff’s biscuits.12. Another Delhi judgment, reported at (2010) 44 PTC 515 (Rich Products Corporation v. Indo-Nippon Foods Limited), has been carried by the appellant for the recognition of the legal principle therein that a descriptive expression which alluded to the character or the quality of the product itself could not be protected till it was demonstrated that such expression had acquired a secondary meaning. The mark in that case was ‘Whip Topping’. Such mark was a part of the plaintiff’s mark ‘Rich’s Whip Topping’ and the action pertained to the use of the mark ‘Bells Whip Topping’ by the defendant. The plaintiff used the mark in connection with the sale of its non-dairy frozen products. The defence taken was that the mark ‘Whip Topping’ was generic in nature as it merely described the character and quality of the products. The court held that the mark ‘Whip Topping’ was “both ‘generic’ and ‘descriptive’ and cannot be exclusively appropriated as a trademark.”13. The appellant submits that merely because asbestos sheets and cement may both be used in the construction business or as building material and may be sold through a similar trade channel, in the larger sense of such expression, it is difficult to imagine any person going to buy the respondents’ asbestos ending up with a bag of the appellant’s cement; or a person being induced to buy the appellant’s cement in preference to any other by associating the mark ‘Rhino’ thereof with the respondents’ mark used in connection with asbestos sheets. The appellant suggests that if the owner of a registered trademark does not make out a case of infringement either under Section 29(2) or under Section 29(4) of the Act, such owner may scarcely claim an injunction on the cause of action of passing-off since the tests would be no different.14. The respondents say that the word-mark used by the two sets of parties is identical and the similarity of the goods is undeniable; and, as such, Section 29(2)(a) of the Act entitles the respondents to an injunction for infringement. The respondents also maintain that they had made out a case under Section 29(4) of the Act with their reputation and goodwill and the interlocutory court erred in interpreting the expression ‘reputation in India’ in Section 29(4)(c) of the Act to imply a pan-India reputation rather than reputation anywhere in India. The respondents say that they have been in the market for a long time with their asbestos sheets and other products under the mark ‘Rhino’ and asbestos sheets and cement should be seen as cognate goods as both are used as building material and, thus, satisfying the test of “similarity of the goods” within the meaning of such expression in Section 29(2)(a) of the Act. The respondents have relied more on judicial precedents than on facts to assert their rights and suggest that their being in the market selling building material for nearly four decades and their impressive turnover and advertisement expenses entitled them to the order of injunction that has been passed and further orders sought that have been declined.15. The respondents first refer to a judgment reported at (2003) 27 PTC 391 (Sarda Plywood Industries Limited v. Tac Construction Materials Limited) where, on the strength of the registered mark ‘Duroply’, the registration of word-mark ‘Duracem’ in class 19 was cancelled upon it being recognised that the trade channel for the two goods would be the same and the first two syllables of both marks were phonetically similar. In that case, the mark ‘Duroply’ was previously registered in respect of laminates, teak-ply, panes and the like and the owners questioned the propriety of mark ‘Duracem’ being subsequently registered in the same class in respect of non-metallic building material.16. In the next judgment brought by the respondents, reported at (2013) 204 DLT 348 (Dharampal Satyapal Limited v. Suneel Kumar Rajput), the mark involved was ‘Rajnigandha’ and its use by a different spelling of the identical Indian word, but in a completely unconnected area of business. The plaintiff held registration in mark ‘Rajnigandha’ in class 31 relating to tobacco products and questioned the use of the mark ‘New Rajneegandha Greens’ by the defendants in relation to a real estate project and the same domain name on the defendants’ website. The respondents herein seek to claim that since ‘Rajnigandha’ paan masala is well-known and widely recognised, such reputation earned the owners the interlocutory injunction in that matter. However, the reasons in support of the decision may be somewhat different and of no immediate assistance to the respondents herein. In discussing the law and the distinction between subsection (4) of Section 29 of the Act and the three sub-sections preceding it, the court noticed that in a Section 29(4) situation a stronger protection is afforded to a mark that has a reputation without the registered proprietor of such mark having to demonstrate the likelihood of confusion arising from the use of a similar mark in relation to dissimilar goods and services. The crux of the decision, however, was in the defendants’ real estate project being slated to come up in the Noida area where the plaintiff’s principal place of business was located and one of the crossings had come to be known as the ‘Rajnigandha Chowk’. The defendants were found to have, without due cause, taken unfair advantage of the plaintiff’s registered trademark as “the geographical location of the Defendant’s projects in and around Noida where the Plaintiff’s principal place of business is located and where the public is likely to associate the projects of the Defendants with the Plaintiff.”17. The respondents next refer to one of the earlier judgments on this branch of law rendered by the Supreme Court in the judgment reported at AIR 1960 SC 142 (Corn Products Refining Company v. Shangrila Food Products Limited). The appeal before the Supreme Court arose out of an application for the registration of a trademark under the Trade Marks Act, 1940. The respondent before the Supreme Court applied in 1949 for registration of the mark ‘Gluvita’ in respect of biscuits in class 30. Such mark had not been used prior to the application for registration. The appellant opposed the application since the appellant had a 1942 registration of the mark ‘Glucovita’ in class 30 in respect of dextrose or glucose powder and also for infants’ and invalids’ foods. The objection failed before the trademark registry and an appeal was carried before a Single Bench of the Bombay High Court. The appellant succeeded as it was held that the two marks were sufficiently similar so as to be reasonably likely to cause deception and confusion. The respondent preferred an intra-court appeal and it was held by a Division Bench that there was no evidence that the appellant’s mark had acquired any reputation among the general public though it may have been well-known in the trade. It was also held that the evidence established that there were several marks carrying ‘Gluco’ or ‘Vita’ as prefix or suffix and, thus, it could not be said that the appellant before the Supreme Court could claim any exclusivity over such features of the mark. The Supreme Court read the evidence somewhat differently and opined that “it would be wrong … to say that the appellant’s trade mark had not acquired any reputation among the general public and that hence there is no reasonable apprehension of their being confused or deceived by the use of the respondent’s proposed mark.” The Supreme Court was also critical of “Glucovita’ being judged on the basis of it being a combination of the common prefix or suffix ‘Gluco’ and ‘Vita’. The law enunciated by the Supreme Court appears at paragraph 20 of the report:“20. … The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesi, this latter test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other … Whether by applying these tests in a particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case.”18. A judgment reported at (2014) 57 PTC 617 (Pidilite Industries Limited v. Jubilant Agri & Consumer Products Limited) has been cited on behalf of the respondents for the proposition that it may be irrelevant that there are many users of a particular mark since it is the prerogative of the plaintiff to sue who he pleases. Another judgment reported at (2008) 37 PTC 468 (Indian Hotels Company Limited v. Jiva Institute of Vedic Science & Culture) has been brought for the proposition that it may not lie in the mouth of a defendant to suggest that the plaintiff’s mark may not be distinctive when the defendant had also applied for registration of the same mark.19. As to the similarity of the respondents’ goods sold under the mark ‘Rhino’ and the appellant’s goods also sold under the same mark, a judgment reported at (2004) 28 PTC 42 (Harish Motichand Sariya v. Ajanta India Limited) has been placed by the respondents where, in a passing-off action, the manufacturers of ‘Ajanta’ toothbrush obtained an injunction against the manufactures of ‘Ajanta’ toothpaste on the ground that toothbrush and toothpaste were cognate or allied goods. Indeed, toothbrush and toothpaste are complementary goods and the tests in such a situation may be completely inapposite when comparing the respondents’ asbestos sheets with the appellant’s cement.20. A decision reported at AIR 2004 Bom 10 (SIA Gems and Jewellery Private Limited v. SIA Fashion) has been placed, again on the point of cognate goods as the court found such relationship between sarees and dress material on the one hand and costume jewellery on the other. An injunction was issued in the passing-off action upon the court being satisfied that the defendant’s business carried on under the name of ‘Sita’ was likely to be confused with the plaintiff’s business carried on under the name of ‘Sia’.21. The respondents maintain that it is not necessary for them to demonstrate any ill-motive or bad intention on the part of the appellant in adopting the name ‘Rhino’ as long as there is a likelihood of confusion or deception. In such connection, the respondents refer to a judgment reported at AIR 1940 PC 86 (Thomas Bear & Sons (India) Limited v. Prayag Narain) for the proposition that the probability of deception is the “vital element in such a case.” However, on facts, it was observed in such case that it was not possible to infer that chewing tobacco sold by the defendants would be understood by persons exercising ordinary caution to be goods sold by the plaintiff, notwithstanding the plaintiff’s pipe tobacco being well known in the market.22. The respondents claim that, without prejudice to their contention that the mark ‘Rhino’ has been patently infringed by the appellant, they have made out an alternative case for passing-off. Indeed, it is the respondents’ submission that they are entitled to an injunction: both on account of infringement and for passing-off. The respondents maintain that a registered proprietor of a mark can successfully sue for passing-off in respect of the mark alone as the protection against passing-off is a higher right than against infringement.23. In such context, the respondents rely on a recent judgment reported at (2016) 2 SCC 683 (S. Syed Mohideen v. P. Sulochana Bai) for the proposition that the owner of a registered trademark, as claimant, may fail to make out a case of infringement and may yet succeed in obtaining an injunction for the defendant passing off the defendant’s goods as those of the claimant. Since such judgment refers copiously to the holy grail on trademark law, Kerly’s Law of Trade Marks and Trade Names, it is necessary to consider the facts and the law as enunciated in the judgment in some detail.24. The respondent before the Supreme Court was the registered owner of the word-mark ‘Iruttukadai Halwa’. Though such registration was of the year 2007, the respondent commenced the business of selling halwa by such name through her predecessor in the year 1900. The respondent-plaintiff claimed that the shop started by her father-in-law in Tirunelveli was by the name of “Irruttukadai Halwa Shop” and, since 1900, the shop opened only in the evenings to sell the solitary item of halwa. The respondent also claimed that the word ‘Iruttukadai’ became exclusively associated with the shop. The appellant before the Supreme Court was also in the business of selling sweets, halwa and other savouries from a shop by the name of ‘Raja Sweets’ and, later, from another shop by the name of ‘Nellai Raja Sweets’, both in Tirunelveli. The appellant thereafter opened a shop near the railway station by the name of ‘Tirunelveli Iruttukadai Halwa’ and, in 2008, obtained a registration of such name. The Supreme Court noticed Section 28(3) of the present Act which contemplates a situation where two or more persons are registered proprietors of trademarks which are identical or nearly resemble each other and the mandate therein that in such a situation “the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks …” In such a scenario, the issue that the Supreme Court raised and considered was: “the issue to be determined is as to whether … the provisions of Section 27(2) would still be available …” The question was answered in the affirmative on several grounds as listed in the report.25. The court reasoned that first, the rights conferred by registration are subject to the rights of the prior users of the trademark; secondly, that “passing off rights are considered superior than that of registration rights”; thirdly, that “it is also recognised principle in common law jurisdiction that passing off rights is broader remedy than that of infringement”; and fourthly, that “registration merely recognizes the rights which are already pre-existing in common law and does not create any rights.”26. In the present case, the principal thrust of the respondents’ contention is that in the appellant using the ‘Rhino’ mark in connection with its cement, there is an actionable wrong which ought to be righted by an injunction. This wrong, according to the respondents, would amount to both infringement and passing-off qua the respondents’ registered mark ‘Rhino’. In furtherance of such case, the respondents assert that they are entitled to interlocutory orders of injunction, both for infringement and passing-off. Without prejudice to their claim on account of infringement, the respondents say that they are entitled to an interim injunction for the appellant passing off its goods as the respondents’, irrespective of whether an injunction for infringement is issued. In relying on the Iruttukadai Halwa case, they submit that the basis for their action and their right to the interim injunction is recognised in such judgment.27. A point of some legal importance must be noted before returning to the discussion on the sheet-anchor authority cited by the respondents. A judgment is only an authority for what it actually decides and it is the enunciation of the reasons or principle on which a question before the court is decided which is alone binding as a precedent. It is equally important to always remember that words used by judges in their judgments are not to be read as if they are words in an Act of Parliament; or, as the clich goes, edicts written on stone. The two principles are axiomatic and may be traced to the dictum in the opinion of the House of Lords reported at 1901 AC 495 (Quinn v. Leathem) which has been applied with approval by the Supreme Court over the years and even in recent times. The following passage is instructive and has often been quoted by the Supreme Court:“Now, … there are two observations of a general character which I wish to make, and one is to repeat what I have very often said before, that every judgment must be read as applicable to the particular facts proved, or assumed to be proved, since the generality of the expressions which may be found there are not intended to be expositions of the whole law, but governed and qualified by the particular facts of the case in which such expressions are to be found. The other is that a case is only an authority for what it actually decides. I entirely deny that it can be quoted for a proposition that may seem to follow logically from it. Such a mode of reasoning assumes that the law is necessarily a logical code, whereas every lawyer must acknowledge that the law is not always logical at all.”28. Thus, whatever has been said in the Iruttukadai Halwa case must be seen to be confined to the context of one registered proprietor of a trademark suing another registered proprietor of the same trademark used in connection with the same business. The ratio decidendi that may be discerned from such judgment is that notwithstanding Section 28(3) of the Act not conferring any degree of exclusivity of one over the other in such a scenario, a passing-off action will lie and an injunction may issue in such action.29. At paragraph 32 of the report in the Iruttukadai Halwa case, the following passage from Kerly (14th Ed) has been quoted which figures as paragraph 18-036 in the 15th edition of the treatise:“A claimant may fail to make out a case of infringement of a trade mark for various reasons and may yet show that by imitating the mark claimed as a trade mark, or otherwise, the defendant has done what is calculated to pass off his goods as those of the claimant. A claim in “passing off” has generally been added as a second string to actions for infringement, and has on occasion succeeded where the claim for infringement has failed.”30. There is no doubt that the passage quoted above has the support of judicial precedents. But it is one thing to say that if an injunction for infringement cannot be obtained, an injunction may be sought for passing-off; and quite another to say that in respect of a word-mark the refusal of an injunction for infringement may not preclude the grant of an injunction for passing-off qua such word-mark. To emphasise the point, since the respondents’ case here is founded on their word-mark, it is difficult to imagine that such word-mark, if registered, may not earn them an injunction on the ground of infringement, but yet sanction them to an injunction on the ground of passing-off qua the word-mark. In fact, the passage has referred to a claim in passing-off succeeding “on occasion” when the claim for infringement has failed; and that implies that it is not as a rule but only in exceptional cases that it has happened.31. One of the earliest authorities noted Kerly in support of the second sentence in the passage quoted above is reported at (1890) LR 44 Ch.D. 193 (Hart v. Colley). It may be of some relevance, particularly in the context of the history of the law on trademarks and how it developed, to notice an aspect that fell for consideration late in the 19th century:“I am surprised to find that this point has never yet been expressly decided, for it must have arisen a great many times. But I find that in Edwards v. Dennis (30 Ch.D. 454) observations were made by the Judges which, as it seems to me, point exactly the same way. In that case it was held that a person could not register a mark with respect to all the goods comprised in a particular class, unless he had used the mark in respect of all those goods, and that, when a mark had been registered with respect to a particular class of goods, but had been used only in connection with certain goods in that class, the registration must be rectified by limiting it to those goods only in connection with which the mark had been used. Now it would be absurd to say that, if a man registers a mark for Class 1, in respect of particular goods comprised in that class, he cannot sue in respect of other goods in that class, and yet that, without any other registration, he can sue in respect of all the goods comprised in all the other forty-nine classes. It is impossible to come to such a conclusion; and, it having been decided that a man can register with respect to those only of the goods in any given class upon which he has used his mark, it follows a fortiori that a man whose mark is registered in respect of one particular class cannot, by virtue of that registration, sue in respect of goods which are not within that class at all.”32. The law may now have changed and the statute confers greater rights to the registered owner of a mark than what the previous statutes may have expressly provided for. But again, judicial interpretation of the rights may not have undergone the change that is reflected from a comparison of the Acts in this country of 1940, 1958 and 1999 as evident from the passage at paragraph 20 of Corn Products quoted earlier. But the remainder of the discussion on the rights of the registered proprietor of a word-mark to obtain an injunction for passing-off qua the word-mark after failing to obtain an order of injunction on the ground of infringement must be reserved for later.33. The respondents rely with equal vigour on another judgment reported at (2011) 4 SCC 85 (T. V. Venugopal v. Ushodaya Enterprises Limited) for the proposition that in an action for passing-off, the similarity of the goods or services may not always be necessary. Apart from the fact that in citing the judgment in the present case, the essential distinction between an action for passing-off and an action for infringement, particularly what either action seeks to preserve or protect, may have been lost on the respondents, there appears to be the usual dose of confusion injected in the legal issues that are involved, as is the wont in actions of the present nature which thrive and prey on confusion to assert confusion in the trade. The reported case pertained to the mark ‘Eenadu’ in an action brought by the publishers of the famous Telugu newspaper by such name against manufacturers of incense sticks (agarbattis) and involved infringement of copyright in how ‘Eenadu’ was written in a stylised manner and passing-off. Of the four major languages in southern India, the word ‘Eenadu’ means “this land” in Kannada, Malayalam and Tamil and it means “today” in Telugu. The injunction sought by the plaintiff was issued on the appreciation that word-mark ‘Eenadu’ had acquired a secondary meaning and was “fully identified with the products and services provided by” the plaintiff; and, further that the defendant used the mark ‘Eenadu’ for its agarbattis in “the same artistic script, font and method of writing the name (as that of the plaintiff) which obviously cannot be a coincidence.” The considerations that were relevant in the ‘Eenadu’ case may not come into play in the present case.34. A Full Bench judgment of this court reported at (2009) 1 CHN 852 (Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills) has been brought by the respondents for the proposition that the tort of passing-off is committed if the offending trader applies an established trademark to cause confusion or deception among consumers as regards the source of the offending goods. The reference arose upon a Division Bench disagreeing with a view taken several decades ago that notwithstanding the overwhelming reputation of a word-mark, if the nature of the goods or services covered by the perceived offending mark was wholly dissimilar and unrelated, an injunction may not issue. The previous view rendered by a Division Bench in the 1950s pertained to the famous word-mark ‘Bata’ and the owner thereof being declined an injunction against the manufacturers of lungis and handkerchiefs on the ground that the manufacture of the perceived offending goods “cannot constitute any passing off of their goods as that of the respondents.” The dissenting judgment of the later Division Bench pertained to registered mark ‘Sony’, which the Full Bench regarded as a household name. The Full Bench considered several of the authorities noticed hereinabove and, notwithstanding ‘Sony’ being a registered mark and the argument on behalf of ‘Sony’ relying on Section 29(4) of the Act of 1999, it was held that the matter had to be assessed on the basis of the Trade and Merchandise Marks Act, 1958 since the suit had been issued during the currency of such enactment and Section 29 of the 1958 Act did not accommodate the larger principle introduced by the Section 29(4) of the successor statute. The case was considered on the ground of passing-off and, before the Full Bench overruled the dictum in the ‘Bata’ case, it observed as follows at paragraph 28 of the report:“28. The key function of a trade mark is to indicate the source or origin of goods and services. The tort of passing off is committed if the offending trader applies an established trade mark in such manner so as to cause confusion or deception in the mind of the consumers as regards the source or origin of the goods and the mind of purchasers are directed to the firm whose identity is already linked with the trade mark in the market place. Even if the goods or services of the rival traders are different, in our opinion this factor alone would not altogether eliminate the possibility of confusion or deception. If a highly distinctive trade mark is applied to a class of goods which its proprietor does not deal with, consumers may always wonder as to whether the proprietor of the trade mark has launched a new product. The purchasing decision of the consumers may be determined by this factor.”35. The final judicial precedent carried by the respondents is a judgment reported at (2004) 6 SCC 145 (Satyam Infoway Limited v. Sifynet Solutions (P) Limited), which involved a passing-off action and the main issue framed by the Supreme Court was whether internet domain names were subject to the legal norms applicable to other intellectual property such as trademarks. The appellant, Satyam Infoway Limited, had obtained registration of several domain names where ‘sify’ was invariably a part thereof and the word “Sify” was said to have been coined from its corporate name. The action was brought against a party using ‘siffynet’ as a part of its domain names. In course of granting the injunction in favour of the appellant, the Supreme Court observed as follows at paragraph 13 of the report:“13. The next question is, would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase "passing off” itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trade mark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these (sic, there) first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement.”36. The essential questions that arise herein are whether the respondents had made out a case for obtaining an injunction for infringement of the word-mark ‘Rhino’; and, whether the respondents are entitled to an injunction for passing-off in respect of the same word-mark in addition to the injunction for infringement or even if the case of injunction for infringement fails. The ancillary issues that arise are, generally, the distinction, if any, between an infringement action and one for passing-off; and, whether a failed case of injunction on the ground of infringement of a word-mark under the present statute may not preclude the registered proprietor of the word-mark from pursuing an injunction on the ground of passing-off qua such word-mark: the emphasis being on such word-mark alone.37. Aside the most banal distinction between actions for infringement and passing-off being that the former requires the registration of a mark and the latter does not, there is a more fundamental difference between the statutory protection against infringement and the common law action of passing-off where the common law remedy is founded on the torts of misrepresentation and deceit. The registration of a mark is a species of property. It is the invasion of such property which is protected by Section 28(1) of the present Act in the myriad situations covered by Section 29 thereof. Since protection against infringement is a statutory right, such right must be found in the statute or not at all. In such sense, an action for passing-off is wider; but the very essence of such action is to protect the goodwill in a mark or its business. In the context of passing-off, goodwill may be regarded as the value of the attraction to customers which the name and reputation possesses (Kerly, 15th Ed, paragraph 18 – 040). Thus, the mere registration of a mark entitles the registered proprietor to bring an action for infringement; but the claimant in a passing-off action has the onerous obligation of asserting and establishing goodwill in the mark or the business pertaining to the mark.38. The law relating to passing-off, like most in common law, has been developed over the years by judges; whereas the right against infringement is created by legislation. As much as the right against infringement has to be rooted to the statutory provisions in respect thereof, there may be no stopping judges from finding or discovering rights in nuances and meanings that may not be apparent on the face of such provisions. But there is infringement only if the statute regards it as such, whether by its express words or in how judges “find” such words to mean or imply. That is the extent of the right against infringement and no more. It is the right to the registered mark which is protected, while in an action for passing-off it is the goodwill that is built up in the mark and its associated features that may be protected. The mere fact that a mark, whether it is registered or not, is used by a trader of goods or services does not ipso facto result in such trader being liable to another – even the prior user of such mark – for passing-off. The extent of distinctiveness in the use of the same mark by another may be good defence to ward off an injunction for passing-off. But this would be an irrelevant consideration in an action for infringement; for, the statute protects only the mark as the other features that may be involved in the use of the mark may not be registered and, thus, not be eligible for statutory protection. The underlying principle embodied in Section 17 of the Act of 1999 is conclusive on such aspect. However, in an action for passing-off, when there is no statutory remedy for the mark itself, the tests on the misrepresentation and the similarity aspect pertain to the manner in which the marks are used, together with the presentation of the other common features, to ascertain what would amount to misrepresentation on the ground of the resemblance or overlapping of the marks and the related goods or services. And misrepresentation is only one feature of the classical trinity of goodwill, misrepresentation and damage that is at the heart of a passing-off action.39. With such initial thoughts, it has now to be assessed whether the respondents had made out a case for an interlocutory injunction on the ground of infringement and the reasons furnished for the order impugned being made. It is here that Section 29 of the Act of 1999 must be seen:“29. Infringement of registered trade marks.—(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.(3) In any case falling under clause (c) of sub-section (2), the Court shall presume that it is likely to cause confusion on the part of the public.(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—(a) is identical with or similar to the registered trade mark;and(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.(6) For the purposes of this section, a person uses a registered mark if, in particular, he—(a) affixes it to goods or the packaging thereof;(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;(c) imports or exports goods under the mark; or (d) uses the registered trade mark on business papers or in advertising.(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising—(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or(b) is detrimental to its distinctive character; or(c) is against the reputation of the trade mark.(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.”40. It goes without saying that Section 29 of the Act is a substantial improvement in respect of the bundle of rights conferred on the registered proprietor of a trademark. The predecessor statute of 1958 merely provided for an act of infringement to have been committed when “a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade mark which is identical with, or deceptively similar to, the trade mark in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.” Little wonder then, that the Full Bench of this court in the Sony case granted an injunction on the ground of passing-off since Section 29 of the 1958 Act pertaining to infringement of trademark did not cover the length of the field as in Section 29 of its 1999 avatar.41. But despite the obvious broadening of the net in respect of infringement in the 1999 Act, there is at least one anomaly that appears from Section 29 of the 1999 Act: in it retaining the words of sub-section(1) of Section 29 of the 1958 Act in its first sub-section and yet providing for a clause (c) to sub-section (2) and sub-section (3). If the Act of 1999 in this country is based on the Trade Marks Act, 1994 of the United Kingdom, it may not be missed that there is no equivalent of clause (c) of Section 29(2) of the present Indian statute therein and, consequently, no equivalent of Section 29(3) of the Indian statue in Section 10 or elsewhere in the 1994 statute of the United Kingdom. In a sense, sub-sections (2) to (9) of Section 29 of the 1999 Act flesh out and illustrate what is the present meaning of Section 29(1) of such Act; when, in the absence of provisions equivalent to present sub-sections (2) to (9), Section 29(1) of the 1958 Act meant and implied – and was judicially interpreted to mean and imply - a much lesser bundle of rights for the registered proprietor of a mark.42. When the offending mark is identical to the registered mark claimed to have been infringed, there is no difficulty on the initial aspect of the matter in testing whether the perceived offending mark bears the degree of resemblance with the registered mark that would warrant the action. But in the majority of cases, the perceived offending mark is somewhat different but may be said to so closely resemble the registered mark that it may be actionable. It is here that the expression “deceptively similar” used in Section 29 of the Act is the key to the understanding of such provision and the extent of the initial test before any further consideration arises in the matter. The closeness of the resemblance that the perceived offending mark bears to the registered mark has to be, in the case of a word-mark, in its visual, alphabetical or phonetic similitude to the registered mark. In respect of other types of marks, the test of resemblance may be different; but that is of no concern in the present situation. But in every case, whether the perceived offending mark is deceptively similar to the registered mark has to be assessed only against the registered mark alone and not the manner of its presentation if the presentation also is not registered. This is the key distinction between an infringement action and a passing-off action, where the latter relies on the overall impression in the similarity aspect and not only on the mark to its limited extent of registration. In an action for infringement, only when the perceived offending mark is identical to or closely resembles the registered mark, does the consideration progress to the similarity of the goods or services covered by the rival marks.43. Section 29(2) of the Act and Section 29(4) thereof cover distinctly dissimilar situations and it is difficult to imagine how a case under both may be run simultaneously, particularly in respect of a word-mark which is the subject-matter of the present action. Section 29(2) covers all situations where either the two marks are identical or similar or the nature of the goods or services is identical or similar. In addition, Section 29(2) of the 1999 Act introduces the public interest element that was not expressly provided for in the predecessor statute. The mere resemblance of the perceived offending mark with the registered mark or the mere resemblance of the goods or service covered by the perceived offending mark with the goods or service covered by the registered mark is not the end of the consideration as to infringement under Section 29(2) of the Act. The identical character or the resemblance with both the registered mark and the nature of the goods or service covered thereby is the first, so to say, qualifying test, unless it is a situation governed by Section 29(2)(c) of the 1999 Act that brings the statutory presumption under Section 29(3) thereof into play. In the situations covered by clauses(a) and (b) of Section 29(2) of the present enactment, the next test is whether such identical character or resemblance of the perceived offending mark, both as to the registered mark and the goods or service covered thereby, is likely to cause confusion on the part of the public or, disjunctively, likely to have an association with the registered mark. If the identical character or resemblance, both of the marks and the goods or services covered thereby, is apparent and such identical character or resemblance of the perceived offending mark is likely to cause confusion on the part of the public, it would amount to an act of infringement. Equally, if the identical character or the resemblance, both in respect of the marks and the goods or services covered thereby, is apparent and it is perceived that the use of the mark by the perceived offender gives an impression of its association with the registered mark, it would also amount to an act of infringement.44. In a situation covered by Section 29(4) of the Act, the identical nature or resemblance of the marks must be apparent, but the resemblance of the goods or services covered by the marks is unnecessary and yet the reputation of the registered mark in India and the use of the mark by the perceived offender without due cause or the use of the offending mark being detrimental to the distinctive character or reputation of the registered mark may be regarded as an act of infringement. It does not appear that a plaintiff may run a claim both under Section 29(2) and Section 29(4) of the Act in respect of the same mark, particularly a word-mark, simultaneously. It would take a very bold or an utterly foolhardy draftsman to make out a concurrent case, though one in the alternative may be possible. Thus, since the respondents seem to have obtained an injunction under Section 29(2) of the Act, their cross-objection claiming an injunction under Section 29(4) of the Act would completely destroy the interlocutory injunction they have already obtained.45. And that brings us to the nature of the action and the obvious flaw all over it. Without meaning any disrespect, the action appears to be a strange concoction of a bit of this and a bit of that in the hope that a combination of all would add to the merits and completely unmindful of how the variety is destructive of the cause of action for infringement. It must also be noticed that while the respondents have furnished the sales figures of their business entity or entities, the sales figures of their key asbestos sheet product have not been furnished. Overall company sales figures are no substitute for the sales figures of the product on which the action is founded. Likewise, the respondents openly wonder what better facts may be brought to obtain an interlocutory injunction. Well, as rightly suggested by the appellant, the plaint need not furnish any evidence; but the interlocutory petition must, to the extent necessary to obtain an interim injunction by establishing reputation within the meaning of the word as used in Section 29(4) of the Act or confusion or likelihood of association if Section 29(2) of the Act is pressed into service. Fundamentally, the extent of the injury or prejudice already suffered and likely to be suffered till the suit comes up for trial has, necessarily, to be demonstrated to entitle the plaintiff to an interlocutory injunction. As to how the plaintiff goes about doing this would depend on the nature of the case and the extent of imagination, industry and enterprise that the plaintiff can breathe into the action. But demonstrate the plaintiff must, of the injury that the plaintiff is likely to suffer if the injunction is not granted. The quality of the material that ought to be on display to entitle a plaintiff to an interlocutory injunction does not appear from the petition or even the affidavit-in-reply filed by the respondents before the interlocutory court. The marks are identical and the first limb of the tests, both under Section 29(2) and under Section 29(4) of the Act is satisfied. But the respondents do not make out a case that asbestos sheets and cement may be similar products. Once this second limb of the essential ingredients of Section 29(2) of the Act is not, prima facie, established, the consideration does not proceed to assessing any confusion on the part of the public or any association of the perceived offending mark with the registered mark. Merely because asbestos sheets and cement are both used in the building or construction business does not mean that an asbestos sheet has to be regarded as akin or comparable to cement within the meaning of the word “similar” used in the relevant provision. Asbestos sheet and cement are not complementary goods like a toothbrush and toothpaste. They are not even cognate goods in the sense that dress material and costume jewellery may be regarded to be. If it were cement on the one hand and sand on the other, the considerations would have been different. If it were asbestos sheets and tin sheds, it may have come somewhat closer. But asbestos sheets and cement are entirely different, though they may come through the same trade channels.46. It is difficult to accept that a purchaser intending to buy asbestos sheets of the respondents’ manufacture would end up purchasing cement of the appellant’s make. The goods are so utterly disparate that such a situation may not arise. Again, the class of persons who would buy building material may not, generally, comprise ordinary lay persons. It would, more likely than not, be masons or building contractors or like persons connected with the building or construction business who would be the immediate buyers; and not by the one piece or by the solitary bag. The owner of a proposed house scarcely goes marketing for the asbestos sheets that would provide the covering of his proposed building or the cement that would go into the construction.47. The real point is whether a person intending to purchase cement would opt for appellant’s ‘Rhino’ brand by thinking that it emanates from the same reliable source as asbestos sheets sold under the same mark. That would make this case almost exclusively under Section 29(4) of the Act in an action for infringement and having no nexus with Section 29(2) of the Act at all. But the sine qua non for an injunction to be issued under Section 29(4) of the Act – and, equally, for an interlocutory injunction with a prima facie view thereunder – is the reputation of the mark which is said to be infringed. The quality of reputation which would meet a case under Section 29(4) of the Act is several notches superior than the ordinary reputation of a mark which has been in the market for 30 or 40 years. Even if such reputation is not of the degree that it must be a household name as in the Sony case covered by the Full Bench judgment or the ‘Bata’ matter of the 1950s that it dealt with, the nature of the reputation which will earn a plaintiff an order, interlocutory or otherwise, under Section 29(4) of the Act is much more than a self-proclaimed reputation unsubstantiated by figures or firmer facts. If figures were to be brought, such figures would have to demonstrate that the product carrying the mark was the market-leader, even if it were to be in a limited geographical area of operation. As to how such reputation would be demonstrated in the interlocutory stage is for the claimant to decide, but there is no doubt that the nature of the reputation that the respondents flaunt is far too fragile and insubstantial for another’s use of the mark in connection with a different set of products to be arrested. There is no case of any interlocutory injunction for infringement made out by the respondents.48. Now to the judgment and order impugned before returning to the case of passing-off, if possible, qua the word-mark upon the interlocutory injunction on the ground of infringement being declined. The judgment records the submission and the judicial authorities cited by the parties with meticulous care over nearly the first 39 of its 43 pages. Without noticing that a case under Section 29(2) of the Act and one under Section 29(4) thereof could not be run in respect of the same mark simultaneously and could only have been made out in the alternative, the judgment and order first considers the case under Section 29(4) of the Act at page 39 thereof and then the case under Section 29(2) of the Act at page 40 thereof before spelling out the operative part at page 43 with two further cases discussed over the most of page 40 and pages 41 and 42 thereof. The reasons in support of the order as found in the judgment and the order itself are set out:“The learned Advocate General would submit that the case of the petitioner comes both under Sections 29(2) and 29(4). Since an argument was made by Mr. Chatterjee that there is no pleading of Section 29(4) and, accordingly, the plaintiff has to confine itself to Section 29(2), it is necessary to find out if there is any necessary pleading to attract Section 29(4). In the petition, in Paragraph 27 it has been stated that the products manufactured by the respondents bearing the mark “Rhino” with the red, black and white colour combination with the device of a Rhino is being sold all over the country. However, on examination of the documents it appears that such advertisement or sale is by and large restricted to the North-East and not to other parts of the country. These documents, per se, would not show that the said mark has acquired a reputation in India and for which the plaintiff may take the benefit of Section 29(4) of the Trade Marks Act, 1999. However, it cannot be disregarded that the plaintiff is a registered holder of the mark “Rhino” and the defendant has adopted the said name “Rhino” only recently without offering any explanation for adoption of the said name for its products. The products are sold extensively in the North-East. The plaintiffs have presence in the market since 1977 and the said mark “Rhino” was and is being used continuously and extensively. Although the cement could be an ingredient for manufacturing of asbestos, cement sheet, the goods are not similar. However, both asbestos and cement are used for building purposes and are likely to be sold through the same trade channel. There is an overall similarity between the mark used by the plaintiff and the mark used by the defendant. Even if the plaintiff may not succeed in establishing its right under Section 29(4) of the Trade Marks Act, 1999, certainly the petitioner has been able to establish that using the infringed mark is likely to cause confusion in the mind of the public that the products sold is as of the plaintiff. The common law of passing off has been retained in Section 27 of the Trade Marks Act, 1999.…“Under such circumstances, there shall be an order of injunction restraining the respondents, their men, servants, agents, assigns, dealers, distributors and/or anyone claiming through them restraining them from manufacturing, marketing, selling, distributing, advertising and/or otherwise dealing any cement under the mark “Rhino” with the colour scheme, get up as shown in Annexure “g” to the Petitioner and also from infringing the registered trade marks as shown in Annexure “f” to the Petition. There shall also be an order in terms of Prayer “d”.”49. There is no doubt that the case made out by the respondents was that they had a substantial presence in the North-East and some of the neighbouring States and not a pan-India presence. To the extent that the judgment impugned holds that the respondents’ presence was “by and large restricted to the North-East and not to other parts of the country” and as such the mark had not acquired a reputation in India, the same cannot be sustained. There are two sides to the word “reputation” as used in Section 29(4) of the Act: the quality of the reputation and the extent thereof. The judgment does not dwell on the facet of the quality of the reputation but refers only to the geographical extent thereof. For the purpose of Section 29(4) of the Act, the geographical extent may not cover all parts of India in the sense that the goods or service need not be available in every corner of the territory of India nor does the reputation have to extend to every part thereof. As long as there is reputation of the goods or service attached to the mark in any part of India, it would meet the test of the extent of reputation. But the quality of the reputation is an altogether different matter. It is possible that a product or any service bearing a registered mark may be available only in a limited territory and even in one small corner of India. As long as such reputation is overwhelming, almost to the extent that there is a secondary meaning associated with the mark, particularly a word-mark, the limited geographical extent thereof may be immaterial as long as such reputation is somewhere in India; and it is certainly not required of the reputation to be of a pan-India magnitude. But the reputation must be of such quality that it transcends the nature of the goods or service that it is attached to. Loosely speaking, a mark – particularly a word-mark – is said to have a secondary meaning when, immediately upon seeing or reading the mark – particularly a word-mark – the goods or service associated with the mark – particularly a word-mark – flashes across the mind simultaneously with what the mark – particularly a word-mark – conveys in its ordinary sense. That is the real test and it is in such test that the respondents fail.50. The injunction appears to have been granted by the judgment and order impugned on the ground of infringement but on the sparse reasons indicated in the judgment, the case of infringement cannot be said to have been made out. As noticed earlier, for a case of infringement to be taken up for consideration under Section 29(2) of the Act, the essential eligibility criteria are the resemblance of the marks and the resemblance of the goods or services associated therewith. If either fails, no further consideration arises. The impugned judgment clearly holds that the goods are not similar. It then proceeds to observe that both asbestos and cement are likely to be sold through the same trade channel. But the earlier observation that the two rival goods are not similar is not revised. The judgment then observes that there is “an overall similarity between the mark used by the plaintiff and the mark used by the defendant”. Despite the identical nature of the rival marks, once it is found that the goods covered thereby are not similar, the matter would not progress to any further consideration of confusion or likely association under Section 29(2) of the Act. The order of injunction on the ground of infringement contradicts the judgement that precedes it. The judgment does not give any reasons for any injunction to be passed on the ground of passing-off. On the basis of the reasons set out in the judgment, or the lack thereof, the order impugned cannot be sustained in any of its limbs.51. It has already been discussed that the nature of the goods are dissimilar, as was also held in the interlocutory court, and an injunction under Section 29(2) of the Act cannot be issued. It has also been indicated that upon the respondents failing to demonstrate the kind of the reputation necessary for the purpose, no prima facie case is made out under Section 29(4) of the Act for an injunction to be issued.52. Since the case of passing-off may not have been considered at all in the judgment and order impugned and the respondents maintain that they are entitled to an injunction on the ground of passing-off, irrespective of the fate of their case on account of infringement, this final feature requires deliberation. After the 1999 Act, it is difficult to conceive of a situation where despite a case of infringement failing qua the mark, a case of passing-off may still be made out qua such mark. Till such time that be 1958 Act was in operation and the entire gamut of infringement was confined to what it is now contained in 29(1) of the 1999 Act without the full import of the nature of the acts that would amount to infringement being exhaustively spelt out as done now under the other subsections of Section 29 of the 1999 Act, the act of infringement was confined to resemblance of the mark on the one hand and the perceived offending mark being used “in relation to goods or services in respect of which the trade mark is registered” on the other. Several of the situations covered by the exhaustive subsequent sub-sections of Section 29 could not be read into Section 29(1) of the Act of 1958 and several of such situations, as in the Full Bench judgment in the Sony case, were viewed from the passing-off perspective. Though this discussion should hold good for all types of marks that may be registered, since the mark involved in this case is a word-mark, the consideration ought to be confined to such context. The tests on the aspect of the similarity of the marks and the similarity of the goods or services associated therewith are, in effect, not much different for infringement than the tests in passing-off when the consideration is confined is only to the mark and not the other features that may be associated with the mark. The tests in an action for passing-off on the aspect of the similitude between the rival marks and the goods or services covered by them have been summarised by the Supreme Court in a judgment reported at (2001) 5 SCC 73 (Cadila Health Care Limited v. Cadila Pharmaceuticals Limited). Such judgment has been noticed and referred to in several of the judgments cited by the respondents, including the following passage at paragraph 35 of the report:“35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.(c) The nature of the goods in respect of which they are used as trade marks.(d) The similarity in the nature, character and performance of the goods of the rival traders.(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.(f) The mode of purchasing the goods or placing orders for the goods.(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”53. The tests are no different than those under Section 29(2) of the Act of 1999 qua the mark. It must be emphasised, however, that goodwill is not a part of the tests as the tests have more to do with the second feature of misrepresentation in the troika of goodwill, misrepresentation and damage in an action for passing-off. Tests (b), (c) and (d) of Cadila are the qualifying tests covered under clauses (a) to (c) of Section 29(2) of the Act of 1999. That is not to say that test (b) of Cadila corresponds to the test under Section 29(2)(a) or so on, but only that the overall range of tests (b), (c) and (d) of the Cadila case cover the entire ambit of clauses (a) to (c) of Section 29(2) of the Act of 1999. Test (a), (e), (f) and (g) of Cadila are the tests to ascertain whether there is any likelihood of confusion on the part of the public or the likelihood of association with the complaining mark in the situations covered by clauses (a) and (b) of Section 29(2) of the Act. The situation envisaged under Section 29(2)(c) of the Act can never arise in a passing-off action since a statutory presumption cannot operate in a common law right and the mere misrepresentation without damage or likelihood of damage is alien to the law of passing-off even if the goodwill in the complaining mark is assumed.54. In the instant case the two marks are identical, but the natures of the goods are not. When the goods or services covered by the rival marks are not similar, even in the case of passing-off the other tests may be redundant unless a case of overwhelming, trans-goods reputation is made out as in Section 29(4) of the 1999 Act. Thus, strictly in respect of the registered mark, if a case of infringement is not made out against the offending mark, a case of passing-out may not also succeed; more so, if it is a word-mark.55. But there are other factors which may be introduced and the claimant may succeed in the alternative case for passing-off despite being found not to be entitled to an injunction for infringement. However, such case needs others legs of support and cannot be based only on the mark itself. Since infringement deals with the proprietary rights in respect of the registered mark, any deviation by the perceived offending mark from the registered mark which takes it beyond the pale of resemblance with the registered mark would disqualify the registered mark from obtaining an injunction for infringement. That would apply with greater force when the mark is a word-mark. The change of a few alphabets may make the word-mark phonetically and alphabetically dissimilar. Such dissimilarity would disqualify a registered mark for protection against infringement. However, the manner of the depiction of the word-mark, even though the stylized form of depiction thereof is not registered, may make it deceptively similar in the passing-off context when the perceived offending mark may not be found to be deceptively similar qua even the initial test for infringement. It is in such sense that a passing-off action can be maintained and even an injunction obtained despite a case of infringement failing. Again, a registered mark may be embellished with some decoration and presented in a unique manner without such manner of presentation forming the subject-matter of registration. Even here, though the marks may be dissimilar, the overall impression may lead to an inference of passing-off, upon the other attendant tests being satisfied. In a sense, the Act of 1999 has conferred on the one hand a lot of rights to the registered proprietor of a mark by bringing divers situations within the fold of infringement. But it has simultaneously reduced the scope of a registered mark being made the subject-matter of a passing-off action qua the mark, particularly if it is a word-mark. Some of the age-old distinctions between infringement and passing-off, particularly on the aspect of similarity, may have been blurred or obliterated by the 1999 Act and even the celebrated judgment reported at AIR 1965 SC 980 (Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories) may have been rendered a relic.56. Asbestos sheets of the respondents do not come in any packaging or trade-dress that is distinctive. The sheets have an embossed mark of ‘Rhino’. The appellant’s cement comes in bags also under the mark ‘Rhino’ and it is no defence that the appellant prominently displays its name in its bags. That is because though the law in this regard has to do with the source or origin of the goods or service associated with a mark, it is not necessary that the purchaser is aware of the identity of the owner of the mark. If an intending purchaser were to associate product A with product B and think that the two emanated from the same source, without being aware of the source, that would suffice for the test of confusion. But in the instant matter, no case of confusion has been made out, far less deception. Again, confusion and deception have sometimes been interchangeably used in this branch of law though they are distinct. In the absence of any case of passing-off being made out in the present case, no further consideration on such aspect arises.57. The respondents have to rest with the ownership in their registered marks which have not been, prima facie, shown to have been infringed by the appellant in the appellant’s sale of ‘Rhino’ cement. Since it is the word-mark ‘Rhino’ that has been stressed on and no grounds other than Section 29(2) and Section 29(4) of the Act of 1999 urged in the context of infringement, the rudderless reference to advertisement material and the like in the petition before the interlocutory court are of no consequence. No case of passing-off has been made out on the basis of any additional features attendant to the registered mark.58. The rhinoceros remains untamed. Its shorter name may give pockets of exclusivity to the registered owners or other users thereof, but even by such shorter name it cannot have only one master.59. The appeal, APO 211 of 2017, is allowed and the cross-objection, OCO 4 of 2017, is dismissed. The judgment and order impugned dated December 9, 2015 are set aside and the respondents’ interlocutory petition dismissed without any order thereon. As a consequence, GA 4003 of 2015 and GA 3979 of 2015 stand disposed of. The respondents will pay the costs in the interlocutory court and in this appeal for their unworthy cause, assessed at Rs.50,000/-.60. Urgent certified website copies of this judgment, if applied for, be supplied to the parties subject to compliance with all requisite formalities.Siddhartha Chattopadhyay, J.I agree.
"2017 AIR (Cal) 226,"