Ruston & Hornsby Ltd. Vs The Zamindara Engineering Co.

Ruston & Hornsby Ltd. Vs The Zamindara Engineering Co.:The Test of Infringement and Passing Off in Trade Mark Law

Case Title:Ruston & Hornsby Ltd. Vs The Zamindara Engineering Co.

Date of Order:8 September 1969

Case No.:Civil Appeal No. 1274 of 1966

Citation:1970 AIR 1649, 1969 SCC (2) 725

Court:Supreme Court of India

Coram:V. Ramaswami and J.C. Shah, H. J. 

Introduction :The case of Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co. is a landmark decision in Indian trademark law that dealt with the question of whether the use of a mark similar to a registered trademark, with the addition of a distinguishing suffix, still amounts to trademark infringement. The Supreme Court's ruling emphasized that the primary consideration in an infringement action is the likelihood of deception or confusion in the minds of consumers. The judgment reaffirmed that statutory protection of a registered trademark is absolute and that any mark which is deceptively similar to a registered mark constitutes infringement. The Court also clarified the distinction between infringement and passing-off actions and reinforced the principle that minor modifications in an infringing mark do not absolve liability.

Factual Background :Ruston & Hornsby Ltd. was a company incorporated under the English Companies Act with its registered office in Lincoln, England. The company was engaged in the manufacture and sale of diesel internal combustion engines and their accessories. Its subsidiary in India, Ruston & Hornsby (India) Ltd., was a registered user of the trademark "RUSTON" in India. The plaintiff was the proprietor of the registered trademark "RUSTON" under Registration No. 5120 in Class 7 for internal combustion engines. In June 1955, the plaintiff discovered that The Zamindara Engineering Co., a firm engaged in the manufacture and sale of diesel internal combustion engines, was selling engines under the mark "RUSTAM." The plaintiff believed that "RUSTAM" was deceptively similar to "RUSTON" and would likely confuse consumers. On July 8, 1955, the plaintiff issued a cease-and-desist letter to the defendant, demanding that it stop using the mark "RUSTAM" on its engines. In response, the defendant asserted that "RUSTAM" was not an infringement of "RUSTON" because it was using the mark "RUSTAM INDIA" rather than "RUSTAM" alone. The plaintiff, being dissatisfied with this response, proceeded to file a suit for permanent injunction against the defendant.

Procedural Background:The plaintiff instituted a suit on February 17, 1956, before the Additional District Judge, Meerut, seeking a permanent injunction restraining the defendant from infringing its registered trademark "RUSTON." The trial court dismissed the suit on January 3, 1958, holding that there was no visual or phonetic similarity between "RUSTON" and "RUSTAM" and that the defendant’s use of the mark "RUSTAM" did not constitute an infringement of the plaintiff’s registered trademark. Aggrieved by this decision, the plaintiff appealed before the Allahabad High Court, which held in its judgment dated November 23, 1965, that the use of the mark "RUSTAM" constituted infringement of the plaintiff’s registered trademark "RUSTON" and granted an injunction restraining the defendant from using "RUSTAM." However, the High Court held that the defendant’s use of the mark "RUSTAM INDIA" was not an infringement, as the suffix "INDIA" served as a distinguishing element and indicated that the defendant’s engines were manufactured in India, while the plaintiff’s engines were manufactured in England. The plaintiff challenged this decision before the Supreme Court of India.

Issues Involved in the Case:The primary issue before the Supreme Court was whether the defendant’s use of the mark "RUSTAM" constituted an infringement of the plaintiff’s registered trademark "RUSTON." The Court also had to determine whether the addition of the suffix "INDIA" to the infringing mark "RUSTAM" created sufficient differentiation so as to negate the likelihood of confusion and thereby preclude liability for trademark infringement.

Submission of the Parties:The plaintiff contended that the marks "RUSTON" and "RUSTAM" were phonetically and visually similar and that their resemblance was likely to deceive or cause confusion among consumers. The plaintiff argued that the statutory protection granted to a registered trademark under Section 21 of the Trade Marks Act, 1940, gave the proprietor exclusive rights over the mark and that any unauthorized use of a deceptively similar mark constituted an infringement. The plaintiff further asserted that the use of "RUSTAM INDIA" did not mitigate the deceptive similarity and that the additional word "INDIA" did not sufficiently distinguish the defendant’s mark from the plaintiff’s registered trademark.

The defendant contended that "RUSTON" and "RUSTAM" were distinct marks and that there was no likelihood of deception or confusion. The defendant also argued that the plaintiff’s engines were manufactured in England, whereas the defendant’s engines were manufactured in India, and that the use of "RUSTAM INDIA" was a clear differentiating factor that indicated the origin of the products, thereby eliminating any possibility of confusion.

Discussion on Judgments Cited and Their Context in This Case:The Supreme Court referred to the case of Millington v. Fox (3 My & Cr. 338), which held that fraudulent intent is not necessary for an action of trademark infringement and that an injunction could be granted even in the absence of intent to deceive. This principle was applied in the present case to emphasize that infringement occurs when an unauthorized mark is deceptively similar to a registered trademark, regardless of whether the defendant intended to mislead consumers. The Court also cited Saville Perfumery Ltd. v. June Perfect Ltd. (58 R.P.C. 147 at 161), which established that the statutory protection afforded to a registered trademark is absolute and that once a mark is shown to be deceptively similar, the defendant cannot rely on external distinguishing factors to escape liability. The Supreme Court further analyzed the provisions of Section 21 of the Trade Marks Act, 1940, which states that a registered proprietor has the exclusive right to use the trademark and that any mark so nearly resembling it as to cause confusion constitutes infringement.

Reasoning and Analysis of the Judge:The Supreme Court held that the marks "RUSTON" and "RUSTAM" were phonetically and visually similar and that their use by the defendant was likely to deceive or cause confusion among consumers. The Court observed that in trademark infringement cases, the primary test is whether the impugned mark is likely to cause confusion in the minds of consumers, rather than whether confusion has actually occurred. The Court rejected the High Court’s view that the addition of "INDIA" to "RUSTAM" was a distinguishing factor, holding that if "RUSTAM" was an infringement of "RUSTON," then "RUSTAM INDIA" was also an infringement. The Court reasoned that the addition of a geographical suffix does not negate deceptive similarity and that once a mark is found to be infringing, the use of any additional words does not exonerate the infringer.

Final Decision:The Supreme Court allowed the appeal and granted a permanent injunction restraining the defendant from using the marks "RUSTAM" and "RUSTAM INDIA." The Court also awarded nominal damages of Rs. 100 to the plaintiff and directed the defendant to deliver all price lists, invoices, and advertising material bearing the infringing marks. The appeal was allowed with costs.

Law Settled in This Case:The test for trademark infringement is whether the impugned mark is deceptively similar to the registered mark and likely to cause confusion. The addition of a suffix or distinguishing word does not necessarily negate infringement. In an infringement action, actual deception need not be proved, and likelihood of confusion is sufficient. The statutory protection granted to a registered trademark is absolute, and any mark that closely resembles it constitutes infringement.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi.