Ruston & Hornsby v. Zamindara Engineering — Trademark Case Law

Ruston & Hornsby Ltd. v. The Zamindara Engineering Co., Supreme Court of India, decided 8 September 1969.

Ruston & Hornsby, an English company, manufactured diesel engines and held the registered trademark RUSTON in India. The respondent sold diesel engines under the mark RUSTAM, and in practice used the words RUSTAM INDIA. Ruston & Hornsby sued for infringement of its registered mark.

The trial court found no visual or phonetic similarity and dismissed the suit. On appeal, the High Court found that RUSTON and RUSTAM were deceptively similar, but held that RUSTAM INDIA did not infringe, reasoning that the word INDIA told buyers the engines were made in India rather than in England and so acted as a sufficient warning.

The Supreme Court allowed the appeal. It drew the now-standard distinction between the two actions.

An action for infringement is a statutory remedy for the vindication of the registered proprietor's exclusive right to use the mark. Once the defendant's mark is found to be deceptively similar to the registered mark, infringement is made out, and the defendant cannot escape by adding words or matter that might indicate a different trade origin.

An action for passing off is different. It protects goodwill against misrepresentation, and there the added matter, packaging and get-up can matter, because the question is whether the defendant has in fact misled the public about the source of the goods.

Since RUSTAM was deceptively similar to RUSTON, the addition of INDIA did not save the respondent from infringement.

This is the case to cite when an infringer argues that a suffix, prefix, house name or place name distinguishes its mark from yours. In an infringement action, if the core marks are deceptively similar, additions do not cure it.

It also anchors the argument that registration matters. The same additions that might defeat a passing-off claim do not defeat infringement of a registered mark, which is one of the most practical reasons to register. See infringement vs passing off, and for the test of deceptive similarity itself, Cadila Health Care v. Cadila Pharmaceuticals.

Key takeaway: In infringement, once the marks are deceptively similar, adding words like INDIA does not help the defendant. Added matter may count in passing off, but not against a registered mark.