Ruston & Hornsby Ltd. v. Zamindara Engineering Co.

Relevant Acts and provisions

Trade Marks Act, 1940

Section 21

Provisions considered: Section 21 of the Trade Marks Act, 1940, on the exclusive right of a registered proprietor.

Brief facts

Ruston & Hornsby Ltd., an English manufacturer, was the registered proprietor of the mark RUSTON for oil and diesel engines. The respondent manufactured similar engines under the mark RUSTAM and later RUSTAM INDIA. The appellant sued for infringement and passing off. The trial court dismissed the suit finding no deceptive similarity, but the High Court held RUSTAM deceptively similar to RUSTON while holding that the addition of the word INDIA sufficiently distinguished the respondent's Indian-manufactured engines.

Issues before the Court

1. Is RUSTAM deceptively similar to the registered mark RUSTON for the purposes of infringement?
2. Does adding a geographical or descriptive suffix such as INDIA cure an otherwise infringing mark?
3. What is the difference between the tests applicable to infringement and to passing off?

Court's findings

The Court held that once a mark is found deceptively similar to a registered trade mark, the addition of a descriptive or geographical word such as INDIA does not remove the infringement, because the essential feature of the respondent's mark remained deceptively similar in sound and appearance to the registered mark; a purchaser of average intelligence and imperfect recollection would still be liable to be deceived or confused despite the added suffix.

The Court reiterated that in an infringement action concerning marks that are not identical, the test of deceptive similarity is essentially the same as that applied in a passing off action, namely whether the resemblance is such as to be likely to deceive or cause confusion.

The Court found that the High Court had erred in treating the word INDIA as a sufficient point of distinction once deceptive similarity in the essential feature of the mark had been established.

Decision

Appeal allowed; the respondent restrained by permanent injunction from using RUSTAM or RUSTAM INDIA or any mark deceptively similar to RUSTON.

Keywords

Composite Marks Deceptive Similarity Dominant Mark Infringement Passing Off