REPRORTABLE IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION

CIVIL APPEAL Nos. 4480-4481 of 2002

K. Narayanan and Anr.              …

Appellants

VERSUS

S.Murali               …Respondent

J U D G M E N T

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:

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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.”   

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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.”

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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

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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

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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

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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,

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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

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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

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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

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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

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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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