Atlas Cycle Industries Ltd. v. Hind Cycles Limited
Appellant was a company incorporated in 1950. In 1938, a firm called Messrs Janki Dass & Co., began to import bicycles into India under the Trade Mark “EASTERN STAR”. In or about 1943, the said firm obtained trade mark registration in Class 12 of the word mark “EASTERN STAR” (Registration No. 11426) and of the monogram containing the word “EASTERN STAR” (Registration No. 12052), which were being used by them in respect of cycles and their accessories.
Appellant was a subsequent assignee of the said trade marks with effect from 12th July, 1955. Around February, 1959, Appellant came to know that the Respondent were selling cycles under the trade mark “ROYAL STAR”. Appellant filed a suit seeking a decree of permanent injunction against the Respondent, for passing off and infringement of it’s mark “EASTERN STAR”.
• Appellant manufactured and sold cycles and cycle parts on a large scale throughout India and by 1956 its turnover was more than a lakh of cycles per year.
• Cycles sold under the trade mark “EASTERN STAR” came to be referred to by the public as “STAR CYCLES” or “TARA Brand CYCLES”, and that because of the popularity of the Appellant’s cycles a number of persons began to infringe the Appellant’s trade mark by adopting trade marks containing the word “STAR”.
• The trade mark “ROYAL STAR” so nearly resembled the Appellant’s trade mark “EASTERN STAR” as to be likely to cause confusion or deception, and the use of the same was an infringement of the Appellant’s registered trade marks.
• Appellant was not exclusively entitled to the use of the word “STAR” which was only a part of the registered name, and the name did not consist of any particular part but consisted of the combination of the two words “EASTERN” and “STAR”.
• “ROYAL STAR” was entirely different in name and getup from the trade mark “EASTERN STAR”.
• Shape of the monogram of the “ROYAL STAR” was quite different from the monogram of the Appellant’s “EASTERN STAR”.
District Judge’s Ruling:
• The names “EASTERN STAR” and “ROYAL STAR” were substantially different even though the word “STAR” was common to both the names and there was no likelihood of deception or confusion.
• The case of the Appellant that its cycles were known in the market as “STAR” cycles could not be accepted as the evidence about the same was not very convincing.
Consequently, District Judge dismissed the suit. Against the said Judgment, the Appellant preferred the present appeal.
High Court’s Observations and Ratio:
On Infringement of Word Mark “EASTERN STAR” Observations:
The question for determination is whether the use of the words “ROYAL STAR” for cycles by Respondent constitutes an infringement of the Appellant’s trade mark “EASTERN STAR”.
The proper approach to the question is to consider the overall and phonetic similarity of the two names “EASTERN STAR” and “ROYAL STAR”.
Both the competing names end in the same sound. Therefore, a person of average intelligence and imperfect memory is very likely to remember only the sound of the end word “STAR”, and is thus likely to be deceived or confused between the two names or marks. The said two marks have an overall structural and phonetic similarity, and consequently their use in respect of the same kind of goods is likely to cause deception or confusion.
Appellant’s and Respondent’s evidence shows that illiterate customers look at the monogram on the cycle and villagers seldom demanded for “STAR” bicycle of Sonepat. Respondent’s evidence also shows that the permanent feature of the “ROYAL STAR” and the “EASTERN STAR” cycles is the representation of a “STAR”.
Appellant has been manufacturing and selling about 1,50,000 cycles annually. The volume of sales during the period 1938 to 1956 and even thereafter and the fact that the “EASTERN STAR” cycles were the only cycles in the field in the earlier period render probable the contention of the Appellant that the “EASTERN STAR” cycles had become known as “STAR” cycles.
The cycles of Respondent were sought to be introduced under the name “ROYAL STAR” only from 1956. In view of our finding that the “EASTERN STAR” cycles came to be popularly referred to as “STAR” cycles, the same has to be taken as another circumstance from which it has to be held that the use of the name “ROYAL STAR” for the cycles of Respondent is very likely to deceive and confuse a purchaser of average intelligence and imperfect memory. Ratio:
The use of word mark “EASTERN STAR” by Respondent constitutes an infringement of the registered trade mark No.11426 of the Appellant. On Infringement of Monogram comprising the word “EASTERN STAR” Observations:
The mark of the Appellant consists of a circular device with a star in the centre and a crown at the top. Within the circle, there is an inner circle and the circumference of the inner circle is connected to the star by a large number of lines. In between the circumference of the inner circle and that of the outer circle, there are written the words “THE EASTERN STAR”. At the bottom of the circle, there is an arc like projection containing the words “ATLAS PRODUCT”. The device used by Respondent, is oblong and contains the representation of a star in a smaller circle in the middle. Above the small circle is written the word “ROYAL” and below it “STAR”. Beneath that are the words “MADE IN INDIA”.
A look at the two marks shows that the essential feature in each of them is the representation of a star therein. The correct approach is to consider which feature of each of the marks would remain in the mind of purchaser of average intelligence and imperfect memory. After having a look at the two marks, we are of the view that it is not the general outlines or shapes of the marks, but it is the representation of a star in the two marks which would remain in the mind of such a purchaser. In this connection, we have also to keep in mind the fact that the Appellant’s cycle had came to be referred to as “STAR CYCLES”. Consequently, the presence of the representation of a star in the mark of Respondent is very likely to deceive or cause confusion in the mind of a purchaser who wants to purchase the cycle of the Appellant. Ratio:
The use of a deceptively similar monogram by Respondent constitutes an infringement of the registered trade mark No.12052 of the Appellant. The Appeal was allowed.