RUSTON & HORNSBY LTD. versus THE ZAMINDARA ENGINEERING CO.

Citation: [1970] 2 S.C.R. 222 · Decided: 08-09-1969 · Supreme Court of India · Bench: J.C. SHAH · Disposal: Appeal(s) allowed

Cited by 1 judgment(s) · see the full citation network in Lexace

Judgment (excerpt)

'2 22 
RUSTON & HORNS8Y LTD. 
v. 
THE ZAMINDARA ENGINEERING CO. 
September 8, 1969 
(J. C. SHAH AND V. RAMASWAMI, JJ.] 
Trade Marks Act, 1940, s. 21-Trade ;,zark 
deceiptively 
si1nilar-
Whether addition of word 'India' distinguishes. 
For the infringement of its registered trade mark "RUSTON" by the 
respondent's trade mark "RUSTAM", the appellant filed a suit for perma-
nent injunction. 
The. respondent pleaded 11\at "RUSTAM" was not an 
infringement of "RUSTON" and stated that the words "RUSTAM INDIA" 
W<!re used. 
The trial court dismissed the suit holding that there was no 
visual or phonetic simi!aritv between "RUSTON" and "RUSTAM". The 
High Court in appeal, held that there was deceptive resemblance between 
the words "RUSTON" and "RUSTAM", but heft! that the use of "RUS-
TAM INDIA" did not constitute an infringement because the appellant's 
engines were manufactured in England and the respondent's in India, .ind 
the suffix 'INDIA' \\'as sufficien-t warning that the engine sold was not 
the engine ma•u(actured in England. 
Allowing the appeal this Court, 
HELD : In an action for infringement when the defendant's trade 
mark is identical with the plaintiff's mark, the. court will not enquire 
\\'hether the infringement is such as is likely to, deceive or cause confusion. 
But \Vhere the aHeged infringement consists of using not the exact mark 
on the.R:~gister but somthing similar to it, the test of _infringement is the. 
same al" in an action for passing off. 
Jn other words, the test as to the 
likelihood of confusion or deception arising from siffiilarity of marks is 
the same hoth in Infringement anc. passing off actions. [225 H] 
Jn the present case the High Court found that there \v::is deceptive 
resemblance between the word "RUSTON" and the worJ "RUSTAM" 
::ind therefore the use of the bar>t: \VJrd "RUSTAM" constituted infringeM 
ment of the appellant's trade mark "RUSTON". 
The respondent did 
not prefer an appeal against the judgm·cnt of the High Court on this point 
and it was, therefore., not open to hin1 to challenge that finding. 
If the 
respondent's trade mark \Va~ deceptively similar to that of the appellant 
the fact that the word ·'INDIA'' was added to· the respondent's trade 
mark was of no consequence and the appellant \Vas entitled to .succeed 
in its action for infrin_gernent of its trade mark. 
[226 B] 
· 
MillinRton v. Fox, 3 I\1v & Cr. 338 and Savilla Perfunieef Ltd. 
\'. 
June Perfect Ltd., 58 R.P.C. 147 at 161, referred .to. 
· 
• 
CIVIL APPELLATE JURISDICTION : Civil Appea( No. 1274 of 
1966. 
Appeal by special leave from the judgment and' decree dated 
November 23, 1965 of the Allahabad High Court in First Appeal 
A 
c 
D 
E 
G 
No. 208 of 195.8. 
~ 
H 
K. S. Shavaksha, R. A. Shah, !. B. Dadachanji and Bhuvanesh 
Kumari, for the appellant. 
HORNSBY LTD. v. ZAMINDARA ENG. co. (Ramaswami. J.) 223· 
A 
S. K. Mehta, K. L. Mehta and Sona Bhatiani. for respondent. 
B 
c 
D 
E 
F 
H 
The Judgment of the Court was delivered by 
Ramaswami, J.-This appeal is br<mght by special leave from· 
the iudgment of the Allahabad High Court dated November 23, 
1965 in First Appeal No. 208 ct 1958. 
The appellant is a limited liability company incorporated 
under the English Companies Act with its registered 
office 
at 
Lincoln, England. 
It carries on business in 
the 
manufacture 
and sale of diesel internal combustion engines and their parts and 
accessories. 
Rustori Hornsby (India) Ltd., a company registered 
in l1ndia under the Companies Act, 1956 is a subsidiary of the 
appellant. 
The-respondent is a firm carrying on business in the 
· maITUfacture and sale of diesel internal combustion engines and· 
their parts. 
The appella1nt was a registered proprietor of 
the 
registered trade mark Ruston being registration No. 
5120 in 
Class 7 in respect of internal combustion engines. 
Ruston and 
Hornsby (India) Ltd .. is the registered user 01' the said trade mark 
and manufactures i1n India and sells in India internal combustion 
engines under the trade mark "RUSTON". 
Sometime in June, 
1955 the apoellant came to learn that the respondent was manu· 
facturing and selling diesel inter1nal combustion engines under the 
trade mark "RUSTAM". 
On July 8, 1955 the appellant wrote 
through its attorneys a letter to the respondent and called upon 
it to desist from using the trade mark "RUSTAM" on its engines 
as it was an infringement of the re.2ist-~red trade mark "RUSTON". 
The defendant replied that "R

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