1. The defendant in O.S.15 of 2005, who suffered decree in a passing of action is the appellant.
2. The plaintiff hospital established in 1989 is well equipped and offers specialised treatments for various ailments. It also runs several sister institutions. They have adopted the mark of ‘A1-Shifa Hospital’. By virtue of long, continuous and extensive user of the said mark, it has become a house hold name. Patients from abroad knowing about the quality of the service offered by the hospital come for treatment. The plaintiffs claimed that they moved an application for registration of the above mark. According to the plaintiff, they have spent huge amounts for advertisement of the mark ‘A1-Shifa Hospital’ and the name has acquired a distinctive character. The hospital has earned goodwill and high reputation in the process. The complaint was that the plaintiff happened to come across a few advertisements made mention of in the plaint in leading newspapers in respect of a hospital run by the defendant, which also carried the name A1-Shifa followed by Super Speciality Hospital for Piles. The grievance of the plaintiff is that the name so adopted by the defendant is phonetically, visually, structurally, constitutionally and literally a replica of the plaintiff’s reputed service mark. They would accuse the defendant of fraudulently adopting the said mark and has caused damages to them. Noting the deception, the plaintiff is said to have issued notice to the defendant asking them to desist from the representations being made by them. The defendant chose not only not to respond to the notice, but they carried on the campaign with added vigour. This has left the plaintiff with no other remedy than to approach the court for necessary reliefs.
3. The defendant resisted the suit. The defendant pointed out that they were not aware of the quality of the service offered or reputation enjoyed by the plaintiff’s hospital. They disputed the tall claims set up by the plaintiff. It was pointed out by the defendant that they have specialized in particular field only. It is wrong to claim that the plaintiff is entitled to have exclusive use of the word A1-Shifa Hospital. The technology, mode of treatment etc. adopted by the defendant is entirely different from the one being carried on by the plaintiff. The so-called complaint of deception and misconception and the possibility of misunderstanding are without any basis. The defendant too claimed that they had acquired proprietary right over the mark A1-Shifa Super Speciality Hospital for Piles. Except for the words, namely, A1-Shifa, there is nothing in common between the two institutions. They also pointed out that Shifa, an Arabic word, means cure, and it is a descriptive word. Therefore no proprietary right can be acquired over the same. It is also their contention that there are several institutions, concerns and other business ventures having the name A1-Shifa. They denied that they had ever made any attempt to show that they had anything to do with A1-Shifa Hospital, namely the plaintiff. The persons who wish to avail of the services extended by the plaintiff or defendant cannot be deceived by the claim because they would make sufficient enquiries before they approach the hospital for treatment. They also disputed that the plaintiff enjoyed a goodwill and reputation. On the basis of these contentions they prayed for a dismissal of the suit.
4. On the above pleadings, issues were raised by the court below. The evidence consists of the testimony of P.Ws.1 to 3 and documents marked as Exts.A-1 to A-18 from the side of the plaintiff. The defendant had D.Ws.1 and 2 examined and Exts.B-1 to B-11 marked. On an analysis of the evidence in the case, the trial court came to the conclusion that the defendant is guilty of mischief of passing off and granted a decree in favour of the plaintiff, which reads as follows:
'In the result, suit is decreed in part declaring that the service marks ‘A1-Shifa Hospital’ and ‘A1-Shifa’ are the exclusive service marks of the plaintiff and defendant is restrained by a decree of permanent prohibitory injunction restraining the defendant from using the said name and mark in any manner. The plaintiff is also granted a decree for mandatory injunction directing the defendant and his men to deliver invoice bill, printed materials, printing block, seals and other materials bearing service marks ‘A1-Shifa’ for the purpose of destruction.
The defendant shall also pay cost of the suit to the plaintiff.'
5. It is the above judgment and decree that is assailed in this appeal.
6. After having heard counsel on both sides and after having perused the records in the case, it is felt that two questions arise for consideration in this case. They are (i) whether the finding of the court below that the defendant is guilty of the mischief of passing off is justified and (ii) whether the plaintiff is entitled to a decree as is now granted.
7. At the outset itself one may notice that both function in the same field. Both extend medical services to the public. After going through the evidence, there is little doubt regarding the fact that the plaintiff seems to have adopted the word A1-Shifa prior in point of time to the defendant. The records would disclose that the defendant started functioning in 2002 only. The plaintiff would claim that they are entitled to the exclusive use of the word A1-Shifa and the defendant cannot appropriate that name. According to the plaintiff, the use of the word A1-Shifa by the defendant created confusion in the minds of the general public and they have received several queries as to whether the defendant is a branch of the plaintiff hospital. They also assert that they have received complaints regarding the defendant hospital and that affected the good will and reputation earned and enjoyed by the plaintiff. They claim to have obtained registration of the trade mark used by them.
8. The defendant would counter this claim of the plaintiff by pointing out that absolutely no confusion is caused in the mind of any person who wishes to avail the service rendered by the plaintiff or defendant by the use of the name A1-Shifa. The defendant holds itself out as A1-Shifa Super Speciality Hospital for Piles and it stationed at Ernakulam, whereas the plaintiff is represented as A1-Shifa Hospital Pvt. Ltd. at Perinthalmanna. They too claimed to have obtained registration of their trade mark. The defendant would also point out that visually, structurally and literally the two marks are entirely different and distinguishable.
9. Before going into the merits of the case, it is necessary to understand the difference between infringement of trade mark and passing off action. Infringement of trade mark is a statutory remedy and to avail of that remedy a particular trade mark has to be registered. An unregistered trade mark gets protection under Section 27 of Trade Marks Act and passing off action was usually referred to as a common law remedy. In the decision reported in Durga Dutt Sharma v. N.P. Laboratories (A.I.R.1965 S.C.980) difference was pointed out as follows:
'These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another that mark or a colourable imitation thereof. While an action for passing off is a common law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of ‘the exclusive right to the use of the trade mark in relation to those goods’. The use by the defendant of that trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of pass off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.'
10. In the decision reported in Parle Products v. J.P. & Co. Mysore (A.I.R.1972 S.C.1359) after referring to the decision reported in Durga Dutt Sharma’s case (supra) it was held as follows:
'To decide the question as to whether the plaintiff’s right to a trade has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. According to this Court in Durga Dutt v. Navratna Pharmaceutical Laborataries:
‘While an action for passing off is a common law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of ‘the exclusive right to the use of the trade mark in relation to those goods’. The use by the defendant of that trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement’.
In the above case the court further pointed out:
‘In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of pass off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.’'
11. In the decision reported in A. C. Krishnan v. Nambisan’s Dairy Pvt. Ltd. (1997 (1) K.L.T.163) it was held as follows:
'An action for passing off is a common law remedy being in substance an action for deceit, a passing off by a person of his goods as those of another. The gist of an action for infringement is different. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the indication of his exclusive right to the use of the trade mark in relation to his goods. The use by the defendant of the trade mark of the plaintiff is not essential in action for passing off, but is the sine qua non in an action for infringement. Where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential feature of both the actions may coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But the correspondence between the two ceases there. An in an action for infringement, the plaintiff must not only make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is limitation, no further evidence is required to establish that the plaintiff’s rights are violated. The length of user of a mark will also be material factor for the mark to become distinctive and exclusively associated with the goods of the plaintiff. Supreme Court pointed out the distinction between infringement action and passing off action. The former is a statutory right and if the trade mark of the defendant 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, if the alleged infringement is not in using the exact mark, but something similar, then the test of infringement is the same as in an action for passing off. And the gist of the latter is that the defendant is not entitled to represent his goods as the goods of the plaintiff. But, it is not necessary for the plaintiff to prove that the defendant did this knowingly or with any intent to deceive. It is enough in a passing off action that the get up of the plaintiff’s goods has become distinctive and that there is a possibility of confusion between them and the goods of the defendant. No case of actual deception need be proved.'
12. In the decision reported in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. ((2000) 5 S.C.C.573) it was held as follows:
'It is no answer to a charge of infringement-as contrasted with a passing off action-that the defendant’s mark, whilst including the plaintiff’s mark, includes other matters too. Still less is it an answer that by something outside that actual mark the defendant has distinguished his goods from those of the plaintiff-by adding his own name. But this principle is not absolute. It is also accepted that addition of his own name by the defendant is an element to be considered and may turn the scales in favour of the defendant. In the same para Kerly says:
‘But the use of the defendant’s name as part of the mark complained of is an element to be considered and in some cases it has turned the scale in his favour.’'
13. In the decision reported in Preme v. Ambujakshan (2006 (1) K.L.T.905) it was held as follows:
'There is difference between an action for passing off and action for infringement of trade mark. An action for passing off is a common law remedy being in substance an action for deceipt. It is a passing off by a person of his own goods, as those of another. The action for infringement of trade mark is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of his exclusive right to the use of the trade mark in relation to those goods as provided under the Trade Marks Act. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. May be that where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. In an action for infringement, plaintiff must make out that the use of the defendant’s mark is likely to deceive, where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise when the court reaches the conclusion that there is an imitation, no further evidence is required to establish that plaintiff’s rights are violated.'
14. A reading of the above decisions leaves one in no doubt that there is clear distinction between an action for infringement of trade mark and action for passing off. Even assuming that one may not get a relief on complaint of infringement of trade mark, still he may be successful with regard to the grievance of passing off action. While the complaint of infringement is concerned with a right of the proprietor of the registered trade mark, the gist of action for passing off is deceit and misrepresentation.
15. It will be useful at this point of time to fund out as to what one means by passing off. Usually passing off is treated as a common law tort used to protect unregistered trade mark right. The legal and economic basis of this tort is to provide protection for the right of property which exists not in particular name, mark or style but in an established business or professional reputation or good will. The true basis of the action is now held to be that passing off injures the right of property in plaintiff. It affects the good will and reputation of his business. The gist of the concept of passing off is that the goods are telling falsehood and are saying something about themselves to mislead. The law of passing off prevents a person from selling his goods as the goods of somebody else. What is protected by passing of action is an economic asset. The fundamental principle behind passing off is that one man has no right to put his goods for sales as the goods of a rival trader. It seeks to protect the traders from unfair competition which involves false or misleading representation using the reputation and goodwill earned by somebody else. It seeks to prevent the intrusion of rivals upon the goodwill and reputation earned by another in services. A person is therefore precluded from using the trade mark, letters or names which may induce the clients or consumers to believe that the goods which he is selling are actually of somebody else. In Halsbury’s Laws of England, 4th Edition, Vol. 48 at page 185, Note 297, the elements of passing off action are enumerated as follows:
'Elements of the action for passing off.- The necessary elements of the action for passing off have been restated by the House of Lords as being three in number:
(1) that the claimant’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;
(2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and
(3) that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation.
The restatement of the elements of passing off in the form of this classical trinity has been preferred as providing greater assistance in analysis and decision that the formulation of the elements of the action previously expressed by the House. This latest statement like the House’s previous statement, should not, however, be treated as akin to a statutory definition or as if the words used by the House constitute an exhaustive, literal definition of passing off and in particular, should not be used to exclude from the ambit of the tort recognised forms of the action for passing off which were not under consideration on the facts before the House.'
The very same ingredients are seen mentioned in Halsbury’s Laws of India Vol.20(1) at Note 185.1358. The characteristics of a passing off action are made mention of at Note 185.1357 in Halsbury’s Laws of India Vol.20(1), which read as follows:
'An action for passing off is a common law remedy being an action in substance of deceit under the law of tort. The following five characteristics which must be present in order to create a valid cause of action for passing off are:
(2) made by a trader in the course of trade,
(3) to prospective customers of his ultimate customers of goods or services supplied by him,
(4) which is calculated to injure the business or good will of another trader in the sense that there is a reasonably foreseeable consequence, and
(5) which causes actual damage to a business or good will of the trader by whom the action is brought, or in a quia timet action, will probably do so.'
The principle relating to passing off is considered in the decision reported in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 S.C.C. 73), wherein it was held as follows:
'As far as this court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this court in the cases of National Sewing Thread Co. Ltd.’s case, Corn Products Refining Co.’s case, Amritdhara Pharmacy’s case, Durga Dutt Sharma’s case and Hoffmann-La Roche & Co. Ltd.’s. Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this Court in Dyechem’s case sought to examine the difference in the two marks ‘PIKNIK’ and ‘PICNIC’. It applied three tests, they being: (1) is there any special aspect of the common feature which has been copied? (2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts? In examining the marks, the manner in which the two words were written and the peculiarity of the dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK.'
With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this court in Amritdhara’s case where the phonetic similarity was applied by judging the two competing marks. Similarity, in Durga Dutt Sharma’s case it was observed that:
'In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiffs and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated.'
Lastly, in Dyechem’s case it was observed in para 54 as under:
'54. As to scope of a buyer being deceived, in a passing off action, the following principles have to be borne in mind. Lord Romer, L.J. has said in Paytom & Co. v. Snelling, Lampard & Co. that it is a misconception to refer to the confusion that can be created upon an ignorant customer. The kind of customer that the courts ought to think of in these cases is the customer who known the distinguishing characteristics of the plaintiff’s goods, those characteristics which distinguish his goods from other goods in the market so far as relates to general characteristics. It he does not know that, he is not a customer whose views can properly be regarded by the Court. …….In Schweppes’s case Lord Halsbury said, if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived.'
These observations appear to us to be contrary to the decision of this Court in Amritdhara’s case where it was observed that the products will be purchased by both villagers and townsfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in England. While we agree that in trade mark matters, it is necessary to go into the question of comparable strength, the decision on merits in Dyechem’s case does not, in our opinion, lay down correct law and we hold accordingly.'
16. In the decision reported in Heinz Italia v. Dabur India Ltd. ((2007) 6 S.C.C.1) it was held as follows:
'In an action for passing off, the plaintiff has to establish prior user to secure an injunction and the registration of the mark or similar mark in point of time is irrelevant. Modern tort of passing off has five elements i.e. (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate customers of goods or services supplied by him, (4) which is calculated to injure the business or good will of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or good will of the trader by whom the action is brought or (in a quia timet action) will probably do so.
Further, before the use of a particular mark can be appropriated it is for the plaintiff to prove that the product that he is representing had earned a reputation in the market and that this reputation had been sought to be violated by the opposite party.
Furthermore, the principle of similarity cannot be very rigidly applied and if it can be prima facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to court is not a ground to defeat the case of the plaintiff.
Lastly, in the case of passing off action the similarities rather than the dissimilarities have to be taken note of by the court and the principle of phonetic ‘similarity’ cannot be ignored and the test is as to whether a particular mark has obtained acceptability in the market so as to confuse a buyer as to the nature of product he was purchasing.'
17. In the decision reported in Laxmikant v. Patel V. Chetanbhat Shah (A.I.R.2002 S.C.275) it was held as follows:
'A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time, such business or services associated with a person acquire a reputation or good will which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. the law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are and ought to be, the basic policies in the work of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of some one else to himself and thereby resulting in injury.
In Oertil v. Bowman (1957) RPC 388 (at page 397), the gist of passing off action was defined by stating that it was essential to the success of any claim to passing off based on the use given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiff’s goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get-up will be understood by the trade and the public in that country as meaning that the goods are the plaintiff’s goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark is applicable to trade name.
In the present case, the plaintiff claims to have been running his business in the name and style of Muktajivan Colour Lab and Studio since 1982. He has produced material enabling a finding being arrived at in that regard. However, the trial court has found him using Muktajivan as part of his business name at least since 1995. The plaintiff is expanding his business and exploiting the reputation and goodwill associated with Muktajivan in the business of Colour Lab and Photo by expanding the business through his wife and brother-in-law. On or about the date of the institution of the suit, the defendant was about to commence or had just commenced an identical business by adopting word Muktajivan as a part of his business name although till then his business was being run in the name and style of Gokul Studio. The intention of the defendant to make use of business name of the plaintiff so as to divert his business or customers to himself is apparent. It is not the case of the defendant that he was not aware of the word Muktajivan being the property of the plaintiff or the plaintiff running his business in that name though such a plea could only have indicated the innocence of the defendant and yet no difference would have resulted in the matter of grant of relief to the plaintiff because the likelihood of injury to the plaintiff was writ large. It is difficult to subscribe to the logic adopted by the Trial Court, as also the High Court, behind reasoning that the defendants’ business was situated at a distance of 4 or 5 kms. from the plaintiffs’ business and therefore, the plaintiff could not have sought for an injunction. In a city, a difference of 4 or 5 kms. does not matter much. In the event of the plaintiff having acquired a goodwill as to the quality of services being rendered by him, a resident of Ahemdabad City would not mind travelling a distance of a few kilometers for the purpose of availing a better quality of services. Once a case of passing off is made out, the practice is generally to grant a prompt ex parte injunction followed by appointment of local Commissioner, if necessary. In our opinion, the trial Court was fully justified in granting the ex parte injunction to the plaintiff based on the material made available by him to the Court. The trial court fell in error in vacating the injunction and similar error has crept in the order of the High Court. The reasons assigned by the Trial Court as also by the High Court for refusing the relief of injunction to the plaintiff are wholly unsustainable.'
18. In the decision reported in K. Narayanan v. S. Murali ((2008) 10 S.C.C.479) it was held as follows:
'In this connection, the following decisions of this court may be strongly relied upon. In Wander Ltd. v. Antox India (P) Ltd. it has been observed as follows:
'16. … Passing off is said to be a species or unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation with another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing off involves a misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably forseeable consequence, the business or good will of another which actually or probably, causes damages to the business or good of the other trader.'
19. In the decision reported in Preme v. Ambujakshan (2006 (1) K.L.T.905) it was held as follows:
'The principle of passing off action is that a person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or good will which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. That law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated with it. It does not matter whether the latter person does so fraudulently or otherwise. Honesty and fair play are, and ought to be the basic policies in the world of business. When a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. Plaintiff in a passing off action has to establish misrepresentation by the defendant to the public. It not mean that plaintiff has to prove any mala fide intention on the part of the defendant. What has to be established is the likelihood of confusion in the minds of the public. In assessing the likelihood of such confusion courts must approach it from the point of average intelligence and imperfect recollection of an ordinary person.'
20. In the decision reported in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahendra Ltd. (A.I.R.2002 S.C.117) it was held as follows:
'In an action for passing off whether there is a likelihood of deception or confusion arising is a matter for decision by the court and no witness is entitled to deceive or to cause confusion that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example, the nature of the market, itself, the class of customers, the extent of the reputation the trade channels, the existence of any connection in course of trade and others.'
21. In the decision reported in British Diabetic Association v. Diabetic Society Ltd. ((1995) 4 All.E.R.812) it was held as follows:
'…..Mr. Thorley submits that the basic law as to passing off is quite simple (though there are, he says, some unusual features in this particular case) and that the case must really turn on findings of fact. The basic principle can indeed be stated quite shortly. In Erven Warnink BV v. J Towned & Sons (Hull) Ltd. at 932 Lord Diplock expressed it in a single sentence:
'………. A G Spalding & Bros v. A W Gamage Ltd. and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate customers of goods or services supplies by him, (4) which is calculated to injure the business or good will of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or good will of the trader by whom the action is brought or (in a quia timet action) will probably do so.’
………’More difficult questions arise as to whether a charity, trading or not, can maintain a passing off action against another charity or against any other defendant who cannot properly be called a trader. In Australia, the Court of Appeal of New South Wales had stated: ‘We see no reason why an element essentially indistinguishable from commercial good will should not be attributed to a charitable organisation and be equally entitled to protection from the law’'.
22. In the decision reported in Irvine v. Talksport Ltd. ((2002) 2 All.E.R.414) it was held as follows:
'The law of passing off is not designed to protect a trader from fair competition. It is not even to protect him against others selling the same goods or copied goods. If the latter is possible at all it is only as a result of the application of the law of copyright, designs, patents or confidential information. Furthermore, passing off does not create or protect a monopoly in a name or get-up. The latter point was made clearly over 100 years ago by Parker J in Burberrys v. JC Cording & Co. Ltd.:
‘The principles of law applicable to a case of this sort were well-known. On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the other hand, no one is entitled to the use of any word or name, or indeed in any other way, to represent his goods as being the goods of another to that other’s injury. If an injunction be granted restraining the use of a word or name, it is no doubt granted to protect property, but the property, to protect which it is granted, is not property in the word or name, but property in the trade or good will which will be injured by its use.’
What is protected is good will. The nature of good will was described by the House of Lords in IRC v. Muller & Co’s Margarine Ltd. The oft quoted passage from the speech of Lord Macnaghton reads:
‘What is good will? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom.’
However, there is another passage in that speech which is just as important and throws light on rights held by the owner of good will:
‘It is very difficult, as it seems to me, to say that good will is not property. Good will is bought and sold every day. It may be acquired, I think, in any of the different ways in which property is usually acquired. When a man has got it he may keep it as his own. He may vindicate his exclusive right to it if necessary by process of law. He may dispose of it if he will-ofcourse under the conditions attaching to property of that nature.’
Expressed in these terms, the purpose of a passing off action is to vindicate the claimant’s exclusive right to good will and to protect it against damage. When a defendant sells his inferior goods in substitution for the claimant’s, there is no difficulty in a court finding that there is passing off. The substitution damages the good will and therefore the value of it to the claimant. The passing off action is brought to protect the claimant’s property. But good will will be protected even if there is no immediate damage in the above sense. For example, it has long been recognised that a defendant cannot avoid a finding of passing off by showing that his goods or services are of as good or better quality than the claimant’s. in such a case, although the defendant may not damage the good will as such, what he dos is damage the value of the good will to the claimant because, instead of benefiting from exclusive rights to his property, the latter now finds that someone else is squatting on it. It is for the owner of good will to maintain, raise or lower the quality of his reputation or to decide who, if anyone, can use it alongside him. The ability to do that is compromised if another can use the reputation or good will without his permission and as he likes.'
23. Having thus understood the principle relating to passing off action, one has to consider as to what is meant by good will and reputation.
24. Good will of a business is recognized as a form of property. Good will of business must emanate from a particular centre or source. It has power of attraction sufficient to bring customers home to the source from which it emanates. It is composed of a variety of elements. It differs in its composition in different trades. It has no independent existence. It must be attached to a business, trade or service. It is considered to be an intangible property capable of being transferred. The term good will was considered in the decision reported in Star Industrial v. Yap Kwee Kor ((1976) F.S.R.256) wherein it was held as follows:
'Good will as the subject of proprietary right is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries a separate good will attaches to it in each. So when the business is abandoned in one country in which it has acquired a good will, the good will in that country perishes with it, although the business may continue to be carried on in other countries.'
25. It is necessary to distinguish the term reputation from good will, though both are used interchangeably. Reputation is the means by which something is recognized. It is the knowledge among a large number of people of the existence of something, a well-known product or a well-known person. It exists in the minds of customers who are aware of the good qualities or reliability of the goods or business concerned. In Halsbury’s Laws of England 4th Edn.Vol.48 Note 308, it is mentioned as follows:
'308. Nature of good will. A passing-off action is now recognized as being a remedy for the invasion of a right of property, the property being in the business or good will likely to be injured by the misrepresentation rather than in the mark, name or get-up improperly used. ‘Good will’ has been defined as the benefit and advantage of the good name, reputation and connection of a business, the attractive force which brings in custom, and the one thing which distinguishes an old-established business from a new business at its first start. Although good will usually runs hand in hand with reputation, good will and reputation are not identical concepts.'
26. In the case on hand, the plaintiff would say that the name adopted by them, namely A1-Shifa and A1-Shifa Hospital have achieved a distinctiveness and the defendant cannot be permitted to use those words.
27. Learned counsel appearing for the appellant contended that the word A1-Shifa is descriptive in nature and therefore it does not qualify to be protected. According to the learned counsel, even assuming that the defendant has used the word ‘A1-Shifa’, the services rendered by the two hospitals are entirely different in nature and content, and the defendant is known as ‘A1-Shifa’ Super Speciality Hospital for Piles. The get up, the manner of presentation of the logo, structural representation and the visual representation are entirely different and there is no reason to believe that any misconception or confusion will be caused in the minds of the public. Learned counsel went on to point out that it is not sufficient for the plaintiff to simply establish that there is deceptive similarity. But they would go further and establish that they enjoy a good reputation and good will and also as a result of the deceptive acts said to have been committed by the defendant, they had suffered damages. In the case on hand, according to learned counsel, there is absolute want of evidence to show that the plaintiff has earned good will and reputation, which are entitled to be protected and also that by the act committed by the defendant, any loss has been caused to the plaintiff. These are matters for proof and not for presumption. Learned counsel also drew the attention of this Court to the fact that there are several concerns spread over the world carrying the name A1-Shifa. Therefore, the plaintiff cannot claim exclusiveness of the usage of the words A1-Shifa. Accordingly, it is contended that the court below was not justified in granting a decree to the plaintiff.
28. Per contra, learned counsel appearing for the respondent pointed out that the lower court has considered all the aspects of the case and has come to the conclusion that the mark adopted by the defendant is deceptively similar to that of the plaintiff and it is likely to cause confusion in the mind of the public. Learned counsel emphasized that the field of activity of both the plaintiff and defendant is the same and that goes a long way in favour of the plaintiff. The plaintiff has produced several documents to show the quantum of advertisement published by them and has produced accounts to show their income. Once it is shown that the mark adopted by the defendant is deceptively similar, then it is easy to presume that damages have been caused or is likely to be caused to the plaintiff. Further proof may not be necessary in that regard.
29. The question therefore arises for consideration is as to whether the plaintiff has exclusive right to use the words ‘A1-Shifa’.
30. Before enquiring into that aspect, one contention taken by the appellant needs to be noticed. It was very vehemently contended that the word ‘A1-Shifa’ being descriptive in nature cannot be patronised by anybody. In support of this contention, learned counsel for the appellant relied on the decision reported in G.F. Industries v. Registrar of T.M. (A.I.R.1972 Delhi 179), S.B.L. Limited v. Himalaya Drug Co. (A.I.R.1998 Delhi 126), Teju Singh v. Shanta Devi (A.I.R.1974 Andhra Pradesh 274), R.S. Krishna & Co. v. G. R. Gopal & Co. (A.I.R.1981 Madras 262), J. R. Kapoor v. M/s. Micronix India (J.T. 1994 (5) S.C. 37) and H.D. Corporation v. Dy. Registrar of Trade Marks (A.I.R.1955 Calcutta 519). According to the learned counsel, the above decisions will clearly show that general words which are of common use, names of persons, geographical names, generic words and descriptive words cannot form the basis for passing off action. In the decision reported in G. F. Industries’s case (supra) the word that was considered was ‘Janata’. It was in relation to the registration of a trade mark. It was held in the said decision that there is nothing inherently distinctive or inherently capable of distinguishing in the word ‘Janata’ and therefore the registration was refused.
31. The decision reported in S.B.L. Limited’s case (supra) that too was a matter relating to registration of trade mark and the question that arose for consideration was whether the word ‘Liv’ can form the cause for passing off action. It needs at once to be noticed that in the said case the court was considering an interim injunction petition and held that the word ‘Liv’ had become a generic term and public juris. It is descriptive in nature and common in usage and therefore nobody can claim an exclusive right to the use of ‘Liv’ as a constituent of any trade mark.
32. In the decision reported in Teju Singh’s case (supra) the trade name that arose for consideration was ‘One day Electric Dry-Cleaners’ and ‘Only 1 day Electric Dry-Cleaners’. It was held in the said case that in the facts and circumstances of the case, the words do not indicate any special skill and they are only of a descriptive nature and not distinctive so as to sustain a passing off action.
33. In the decision reported in R.S. Krishna & Co’.s case (supra), the word ‘Thennamarakkudi’ was sought to be registered as a trade mark. Considering the various aspects, the court had occasion to hold that the word do not show any distinctive character and therefore could not be qualified to be registered as a trade mark.
34. In the decision reported in H.D. Corporation’s case (supra) the word ‘Rasoi’ arose for consideration. ‘Resoi’ means kitchen. In the facts and circumstances of the case it was held that even if it could have a proper reference to the character and quality of the goods and to be distinctive, the word nevertheless will be ineligible for registration in view of the fact that it is a common word of the language of which no monopoly should be granted to a particular trader. It was further held that it is undoubtedly true that the common words of a language are public property and that no one should be allowed to appropriate one of such words to his exclusive use and thereby deprive other persons of the legitimate right to use the said word.
35. However, in the above decisions, it is seen observed that in exceptional circumstances the rule may however be inapplicable, for eg., where the common word has lost its primary meaning by long user of the word by a trader in relation to his goods and has become identified with the particular goods of that trader.
36. In the decision reported in J. R. Kapoor’s case (supra) the word that came up for consideration was ‘micro’. It was held that the said word is descriptive and no one can claim monopoly over the use of the said word. However, it is to be noticed that the decision was rendered while the court was considering an interlocutory application for injunction.
37. Normally the view is that the words which are generally descriptive, common usage etc. cannot qualify for registration as trade mark and nobody has a right to monopolize those words. But there are exceptions. The test that is to be applied in such case whether the particular word which is used may be a general word, geographical in nature, may be a name, may be descriptive, is to see whether it has acquired distinctiveness so as to identify it with a particular goods or service.
38. In Halsbury’s Laws of England Vol.48, 4th Edn. at page 208 para 322 it is mentioned as follows:
'Special considerations apply where the claimant seeks to restrain as passing off the use of words or phrases which are descriptive of the goods or services concerned or of their geographical origin.
It is possible for a word or phase which is wholly descriptive of the goods or services concerned to become so associated with the goods or services of a particular trader that its use by another trader is capable of amounting to a representation that his goods or services are those of the first trader. In these circumstances it is sometimes said that, although the primary meaning of the words is descriptive, they have acquired a secondary meaning as indicating the products of a particular trader and no other.'
39. In Halsbury’s Laws of India Vol.20(1) it is observed as follows:
'[185.587] ‘Secondary meaning’ There are two aspects of ascribing secondary meaning. Secondary meaning exists if a trade mark is not only interpreted by consuming public to be an identification of product, but the consuming public must also identify the product with the product’s origin. If the second limb of identifying the product along with its origin is not complete, it may not be possible to say that a particular non-distinctive trade mark or common name mark has acquired secondary meaning. Secondary meaning attaches to a mark when the consuming public primarily associates the term with a particular source.'
40. In all such cases in order to succeed in a passing off action, the plaintiff must demonstrate not only the use of such descriptive term, but also that it has become so closely associated with his goods so as to secure a secondary meaning, but not simply of goods of that nature, but specifically of goods of which he alone is the source. This aspect was considered in the decision reported in Lloyd Indulations (India) Limited v. Punj Lloyd Insulations Pvt. Ltd. (1999 P.T.C. (19) 449), wherein it was held as follows:
'Nobody can claim property in a mere descriptive word used by him as his trade name unless and until it is shown that the said descriptive word has acquired a secondary meaning and has lost its primary character and is so much associated with the goods of the plaintiff that a mere mention of it brings before his eyes the picture of the goods of the plaintiff.'
41. In the decision reported in Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd. ((2004) 5 S.C.C.257) it was held as follows:
'A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source.'
42. Therefore, it cannot be taken as a general rule that the words of the kind made mention of by the learned counsel for the appellant can under no circumstance be monopolized so as to form the basis of the cause of action for passing off and registration of trade mark.
43. One may now go into the evidence in the case to ascertain as to what exactly is spoken to by the plaintiff.
44. The Finance Director of the plaintiff Company which runs the hospital has been examined as P.W.1. He speaks about the nature of the service offered by the hospital and states that it had earned a high reputation. He also makes mention of various sister concerns of the Company in the same name and it is pointed out that they keep a high standard in quality. He then makes mention of the turn over of the hospital and the cost of advertisement incurred in that respect. His complaint is that since the service mark ‘A1-Shifa Hospital’ and ‘A1-Shifa’ are exclusive trade mark of the plaintiff, its use by the defendant is illegal. He would assert that the name of the defendant is phonetically, visually and structurally identical with the service mark of the plaintiff. He would further say that such a mode has been adopted by the defendant to deceive the public and to achieve wrongful gains. He would also depose that the plaintiff was put to blame by parties who were aggrieved by the service rendered by the defendant, who thought that the defendant was a limb of the plaintiff. He would also depose that they have received several queries enquiring whether the defendant is a branch of the plaintiff hospital or whether they had anything to do with the defendant. His evidence shows the prior usage of the words A1-Shifa and as a result of the adoption by the defendant of the same name, the plaintiff has suffered huge loss both financially and in its reputation and good will also. In fact the chief examination is in the form of an affidavit, which is a true replica of the plaint. In cross-examination, he would depose that he has not bothered to find out the types of treatments offered by the defendant in the hospital. He also deposed that the plaintiff has not produced any document to show that they are a super speciality hospital. He is unable to give several details regarding the actual service offered by the hospital. He admitted that the meaning of the word ‘Shifa’ is cure. Surprisingly enough, he deposes that he has not seen the advertisement given by the defendant hospital. He would also concede that no comparison has been made to ascertain whether the mode of visual representation of the service mark by the defendant is identical or similar to that of the plaintiff. He conceded that the two names, namely A1-Shifa Super Speciality Hospital for Piles and A1-Shifa Hospital Pvt. Ltd. can be easily understood to be two public institutions. He would also depose that he had not bothered to enquire whether there are any other hospitals in Kerala carrying the same name. His cross-examination shows that the plaintiff hospital has patients from Malappuram, Calicut, Palghat, Cannanore and Trivandrum. He would reiterate in cross-examination that the plaintiff has received complaints about the service rendered by the defendant hospital from several persons who had occasion to believe that the defendant was a sister concern of the plaintiff. But he was unable to give the details regarding those persons. He has also stated that the logo used by the two hospitals are entirely different. This is the solitary evidence given by the plaintiff regarding the passing off action complained by the plaintiff. The other two witnesses examined on behalf of the plaintiff are employees of the two newspapers who had occasion to give advertisement in respect of the hospitals. Of course, the plaintiff has produced his accounts to show the expenses incurred for advertisement and the actual turnover. The question is whether these are sufficient to sustain the complaint of passing off action.
45. Here one may at once refer to a passage from Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 6th Edn. by W. Cornish and D. Llewelyn at page 630, which reads as follows:
'Accordingly, the claimant will demonstrate the volume of his sales and advertising expenditure and will supplement this by evidence from trades and the public of the meaning that they attach to the distinguishing features of the claimant’s goods or business: saying, for instance, that they have long understood the trade mark ‘XXXX’ to denote goods of the claimant’s manufacture. At the end of the day, the claimant must show that it is his reputation that is being misappropriated by the defendant. Otherwise it may well be a case of ‘the unknown seeking remedies against the known’. Likewise, the court will not protect a good will of only trivial extent.'
46. In the decision reported in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. ((2000) 5 S.C.C. 573) it was held as follows:
'The plaintiff must prove that essential features of his registered mark have been copied. The onus to prove ‘deception’ is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its ‘essential features’.
The identification of an essential feature depends partly on the court’s own judgment and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be by ocular test alone; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark.'
47. In the decision reported in Roche & Co. v. G. Manners & Co. (A.I.R.1970 S.C.2062) it was held as follows:
'In Parmer Knoll Ltd. v. Knoll International Ltd. [1962 RPC 265 at p. 274], Lord Denning explained the words ‘to deceive’ and the phrase ‘to cause confusion’ as follows:
‘Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.’
The tests for comparison of the two word marks were formulated by Lord Parker in Pianotist Co. Ltd’s application as follows:
‘You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to by those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public goods – then you may refuse the registration, or rather you must refuse the registration, in that case.’
It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. the House of Lords was considering the resemblance between the two words ‘Aristoc’ and ‘Rysta’. The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maughum cited the following passage, he said, he completely accepted as the correct exposition of the law:
‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.’
It is also important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to ca
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use confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma’s case, Tokalon Ltd. v. Davidson and Co., Lord Johnston said: ‘………..we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even causal point of view of a customer walking into a shop’.' 48. It is well-settled that the likelihood of deception or confusion is not to be discharged in vacuum but to be determined in the background of the surrounding circumstances. Normally the following factors are taken into consideration: (i) The nature of marks. (ii) The degree of resemblance. (iii) The nature of goods or services rendered. (iv) The similarity in nature, character and purpose of the goods or services of the rival traders. (v) The class of purchasers who are likely to buy the goods bearing the marks, their level of education and intelligence, and the degree of care they are likely to exercise in purchasing the goods. (vi) The mode of purchase of the goods or of placing orders for the goods and any other surrounding circumstances. 49. Resemblance is not determined by placing the two goods side by side. So, in comparing their visual appearance, it is necessary to allow for imperfect recollection by a person of ordinary memory. Normally a person cannot retain in mind every detail of the mark which he had seen once. The question whether one mark so nearly resembles another as to be likely to deceive or cause confusion is purely a question for the tribunal to decide and no evidence from the witnesses on this point will be admissible. Intention to deceive is a matter of inference to be drawn from the circumstances of the case. 50. It is by now well-settled that what a passing off action seeks to protect is the good will and reputation. The starting point in any passing off action is the establishment of good will and reputation. The starting point for deciding whether there has been any misrepresentation amounting to passing off action is the understanding whether plaintiff has built up good reputation and good will among the public. It is the plaintiff’s reputation as the source of goods or service that is in issue. In Halsbury’s Laws of England 4th Edn.Vol.48 it is stated as follows: 'To establish a likelihood of deception or confusion in an action for passing off where there has been no direct misrepresentation generally requires two factual elements: (1) that a name, mark or other distinctive features used by the claimant has acquired a reputation among a relevant class of persons; and (2) that members of that class will mistakenly infer from the defendant’s use of a name, mark or other feature which is the same or sufficiently similar that the defendant’s goods or business are from the same source or are connected. While it is helpful to think of these two factual elements as two successive hurdles which the claimant must surmount, consideration of these two aspects cannot be completely separated from each other, as whether deception or confusion is likely is ultimately a single question of fact.' 51. Normally the reputation required to be established by the claimant is that the name, mark or other feature has by use come to be regarded as identifying goods or services from a particular source known or unknown. The mere fact that only the claimant has in the past made use of the name, mark or other features concerned is not conclusive. Common field of activity is one of the factors that is to be taken into account in considering whether there is likelihood of causing confusion. In deciding whether confusion or deception is sufficient to sustain an action for passing off, all circumstances must be considered. 52. It is essential in a passing off action for the plaintiff to prove that he has established a commercial reputation distinctively attached to his goods or service. Whether the plaintiff has acquired good will is essentially a question of fact to be determined upon the consideration of a number of factors which had already been made mention of. 53. In the case on hand, even going by the evidence given by P.W.1, the two marks are easily distinguishable. It is true that P.W.1 has stated that their reputation and good will are affected. But except for the interested testimony of P.W.1, there is absolutely no independent evidence in that regard. He has stated that they had received several complaints from various persons who had occasion to avail of the services extended by the defendant and who availed of those services under the belief that the defendant was the sister concern of the plaintiff. But surprisingly enough none of those persons have been examined to show that what P.W.1 claimed is true. Merely by producing the accounts, the requirements will not be satisfied. 54. Moreover, the evidence of P.W.1 would show that the patients of the hospital are mostly confined to a few districts towards the northern side of Kerala and there is no statement by P.W.1 that the patients used to come from the southern side and they have stopped coming due to the deceptive similarity adopted by the defendant. It is for the plaintiff to show that his reputation or good will is being misappropriated by the defendant. 55. The existence of misrepresentation is an essential element of the action of passing off and it is for the plaintiff to adduce evidence regarding the misrepresentation made by the defendant. In the absence of evidence of misrepresentation or deception, the mere fact that similar name or get up has been used by the defendant does not give rise to a cause of action for passing off. 56. The above vital aspects have not been considered by the trial court. The trial court was simply carried away by the fact that the defendant too has used the words A1-Shifa and the defendant being engaged in the same field of activity is liable for passing off. The criterion adopted by the lower court to come to the conclusion that there is passing off action by the defendant is only one of the essential material aspects to be considered in a passing off action. But there are several other factors also which the plaintiff had to establish in order to succeed in an action for passing off. Regrettably enough, none of the other essential aspects have been established by the plaintiff. The only evidence available on record is that the defendant has used the word A1-Shifa, which is also used by the plaintiff. It is wholly insufficient to succeed in an action for passing off. In the result, this appeal is allowed, the judgment and decree of the trial court are set aside and the suit stands dismissed. There will be no order as to costs in this appeal.