K. Narayanan And Anr vs S. Murali

K. Narayanan and Anr. ...

Appellants

VERSUS

S.Murali ...Respondent

JUDGMENT

TARUN CHATTERJEE, J.

1. The present appeals are filed at the instance of the

appellants against the Judgment and final order dated

18th of April, 2002 passed by the High Court of Madras

in O.S.A. Nos. 149 & 150 of 2002 whereby the

Division Bench of the High Court had dismissed the

appeals of the appellants.

2. The brief facts leading to the filing of these appeals

may be narrated as under:

1

3. The appellants are engaged in the business of

manufacturing and selling Banana Chips and had adopted

the trade mark A-ONE with respect to the said Banana

Chips in 1986. The appellants had applied for an

application for registration of the trade mark A-ONE

before the Trade Mark Registry at Chennai on 6th of

December, 1999 with respect to the said Banana chips.

The application of the appellants for registration of the

trademark is still pending.

4. On 7th of February, 2000, the respondent filed

O.S.No.1 of 2000 on the file of the District Judge at

Coimbatore against the appellants, seeking an injunction

restraining the appellants from passing off their goods

using the trade mark A-ONE. The said suit was dismissed

by the District Judge at Coimbatore on 23rd of December,

2001.

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5. The respondent filed three trade mark applications

numbered as 899359, 899360 and 899361 on 24th of

January,2000 before the Trade Mark Registry at Chennai

seeking registration as user of the mark A-ONE

throughout India since 1995.

6. Thereafter the appellants filed C.S.No. 482 of 2001

on 22nd of May, 2001 on the file of the High Court of

Madras, seeking an injunction to restrain the respondent

from passing off his goods using the trade mark A-ONE.

7. The appellants filed an application before the High

Court for leave to institute the suit and by order dated 11th

of June, 2001, the High Court granted leave.

8. On 6th of March,2002, the learned Single Judge of

the High Court dismissed the injunction application and

also revoked the leave to sue, granted by it to the

appellants.

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9. The appellants, being aggrieved by the aforesaid

order, preferred appeals before the Division Bench of the

High Court, which was dismissed by the Division Bench

by an order dated 18th of April, 2002.

10. Being aggrieved and dissatisfied with the aforesaid

judgment of the Division Bench, the appellants have filed

these Special Leave Petitions in this Court which, on grant

of leave, were heard by us in presence of learned counsel

for the parties.

11. We have heard the learned counsel for the parties

and examined the impugned judgment of the Division

Bench of the High Court as also of the learned Single

Judge and other materials on record and we deem it

appropriate to reproduce the findings of the Division

Bench while dismissing the appeals, which are as under :-

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"The point raised in the appeals is one which was already decided against the appellant by our considered judgment in the case of Premier Distilleries Pvt. Ltd. Vs. Sushi Distilleries 2001(3) CTC 652. Learned counsel sought to contend that there is an earlier view of this Court which conflicts the view which we have taken. Having perused that order, we find that it was merely a summary order which does not address itself pointedly to the question. Mere filing of the application for registration of the trade mark in the Registry situated at Madras would not suffice to confine the jurisdiction of this Court. That question was specifically addressed, and dealt with in our reasoned order in the case of Premier Distilleries Pvt. Ltd. (supra). In that order, we have pointed out that the very term "cause of action"

would clearly imply that the action viz., the institution of the suit must follow the cause, and not precede it. Even before the registration is granted for the trade mark, there is no right in the person to assert that the mark has been infringed. A proposed registration which may, or may not be granted will not confer a cause of action to the plaintiff, whether the application for registration is filed by the plaintiff, or the defendant."

5

12.Before we look at the submissions of the parties before

us, we deem it expedient at this stage to reproduce the

relevant provisions of the Trade and Merchandise

Marks Act, 1958 (in short, the `Act'), which would be

required by us for a proper appreciation of the

controversy involved. Section 18(1) of the Act may be

reproduced as under:-

" Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark either in Part A or in Part B of the register."

Section 28 of the Act may be reproduced as under:-

"Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act."

6 13.Let us now consider the submissions of the learned

counsel for the parties. The learned counsel for the

appellants argued before us that the Division Bench of

the High Court in its impugned judgment had taken a

contrary view from the Judgment of the Division Bench

of the High Court of Delhi in M/s. Jawahar

Engineering Company and others, Ghaziabad Vs.

M/s. Jawahar Engineers Pvt. Ltd. Sri Rampur,

Distt. Ahmednagar, Maharashtra [1983 PTC 207],

which has held that the real point which gives the Court

jurisdiction is not the place where the advertisement has

appeared but the place for which the trade mark is

sought for sale. It has also held that when an injunction

is sought, it is not necessary that the threat should have

become a reality before the injunction is granted or

refused and it can even be sought for a threat that is still

to materialize.

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14. The learned counsel for the appellants further

submitted that the view taken by the Division Bench of the

High Court of Delhi reported in 1983 PTC 207 was

followed by the learned Single Judge of the High Court of

Madras in the Judgment reported in 1990 PTC 240.

15. The learned counsel for the appellants further

submitted that a similar view was followed by the Division

Bench of the High Court of Madras in its unreported

judgments dated 13th of March, 1995 and 29th of

March,1995 in O.S.A. No. 53/1995 and O.S.A. No.

82/1995 respectively.

16. The learned counsel for the appellants submitted that

when the respondent filed a trade mark application at the

Trade Mark Registry at Chennai, a threat was

communicated regarding the use of the trade mark in

8 Chennai, and it was immaterial whether there was actual

use or not and the appellants would be entitled to an

injunction (being a prohibitive remedy) against the said

mark.

17. The learned counsel for the appellants finally argued

that the respondent had based its application for

registration of the trade mark on use of the mark

throughout India without any geographical limitation from

1st of April,1995, which included the city of Chennai,

which thus entitled the appellants to file the suit at the

High Court of Madras based on the claims made in the

trade mark application.

18.These submissions of the learned counsel for the

appellants were contested by the learned counsel

appearing on behalf of the respondent. The learned

counsel for the respondent contended that mere filing of

9 an application for registration of trade mark by the

respondent in Chennai would not confer any territorial

jurisdiction for the High Court at Chennai to entertain

the present suit filed by the appellants, when admittedly

both the parties to the suit resided in Coimbatore, had

their place of business in Coimbatore and the goods

were sold only in Coimbatore.

19.The learned counsel appearing on behalf of the

respondent further contended that since according to

Section 18 of the Act, an application for registration

could be filed by both proprietor of a trade mark used

and proposed to be used by him, therefore mere filing

of an application for registration would not result in

creating a cause of action for filing a suit for passing

off.

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20. The learned counsel appearing on behalf of the

respondent also contended that since according to Section

28 of the Act, the registration of a trade mark gave a

person, exclusive ownership of the trade mark and right to

take action against the infringement of the trade mark,

therefore an action against infringement of trade mark

could not be made in the court merely on the basis of an

application for registration of trade mark.

21. It was further argued that actual sale of goods was

necessary to be proved in the case of passing off action

and therefore the Court within whose jurisdiction the

commercial sale of goods took place, had jurisdiction to

entertain a suit for passing off.

22. It was further argued that the decision of the

Division Bench of the Delhi High Court in M/s. Jawahar

Engineering Company and others, Ghaziabad (supra) was

11 not applicable to the present case because in that case the

plaintiff was a registered owner of the trade mark and the

action was for injunction regarding a threatened breach of

registered trade mark, whereas in the present case, the

appellants were not registered owners.

23. It was finally argued by the learned counsel

appearing on behalf of the respondent before us, that, by

merely filing a trade mark application, the respondent did

not misrepresent in the course of trade that his goods were

the goods of the appellants and therefore there was no

cause of action for filing a suit for passing off, which

necessarily required sale of one's goods deceptively as

though it were the goods of another.

24.Having heard the learned counsel for the parties and

after carefully examining the aforementioned judgment

of the High Court and also of the learned Single Judge,

12 we do not find any infirmity in the judgment of

Division Bench of the High Court holding that, before

registration is granted for the trade mark, there is no

right in the person to assert that the mark has been

infringed and that a proposed registration which may,

or may not be granted will not confer a cause of action

to the plaintiff, whether the application for registration

is filed by the plaintiff, or the defendant.

25. In this connection, the following decisions of this

Court may be strongly relied upon:-

In Wander Ltd. and another Vs. Antox India P.

Ltd., [1990 (Supp) SCC 727] (para 16), it has been

observed as follows:-

"Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an

13 action for deceit. The tort of passing-off involves a misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader."

26. In the present case, mere filing of a trade mark

application cannot be regarded as a cause of action for

filing a suit for passing off since filing of an application

for registration of trade mark does not indicate any

deception on the part of the respondent to injure business

or goodwill of the appellants.

27. In Dhodha House Vs. S.K. Maingi, [(2006) 9 SCC

41] (para 31), it has been observed as follows:-

" A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour a registration certificate has already

14 been granted (sic) indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum filing of such an application."

28. In the aforesaid decision, this Court has expressed its

concurrence to the views observed by the Division Bench

of the High Court of Madras in Premier Distilleries Pvt.

Ltd. Vs. Sushi Distilleries [2001(3) CTC 652], which

observed as under:-

" The cause of action in a suit for passing off, on the other hand and as already observed, has nothing at all to do with the location of the Registrar's office or the factum of applying or not applying for registration. It is wholly unnecessary for the plaintiff to prove that he had applied for registration. The fact that the plaintiff had not applied for registration will not improve

15 the case of the defendant either. Filing of an application for registration of a trade mark, therefore, does not constitute a part of cause of action where the suit is one for passing off." (Emphasis supplied)

29. In this view of the matter, we are, therefore, of the

opinion that filing of an application for registration of a

trade mark does not constitute a part of cause of action in a

suit for passing off. The appellants cannot file the suit in

the High Court of Madras seeking an injunction to restrain

the respondent from passing off his goods using the trade

mark A-ONE, based only on the claims made in the trade

mark application of respondent filed before the Trade

Mark Registry, since the necessary requirements of an

action for passing off are absent.

30.Accordingly, there is no ground to interfere with the

impugned judgment of Division Bench of the High

16 Court of Madras. For the reasons aforesaid, the appeals

stand dismissed with no order as to costs.

.....................J. [Tarun Chatterjee]

New Delhi; ............... ......J. August 05, 2008. [Harjit Singh Bedi]

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