Intellectual Property Rights | Passing Off | Trade Mark

K. Narayanan and Ors. v. S. Murali

Citation: 2008 (10) SCC 479

Brief Facts:

Appellants were engaged in the business of manufacturing and selling banana chips and had adopted the trademark ‘A-ONE’ in 1986. Appellants had applied for trade mark registration before the Trade Mark Registry at Chennai in 1999. The said application was pending at the time of the present Civil Appeal. While, the application of the Appellants was still pending, Respondent brought a suit in the year 2000 in Coimbatore seeking an injunction restraining the Appellants from passing off their goods under the said trademark. This suit was dismissed by the Learned District Judge in the year 2001.

In the meantime, Respondent had also filed three trade mark applications before Trade Marks Office, Chennai in the year 2000 claiming to be users since 1995 all over India of the mark A-ONE. In retaliation, the Appellants then decided to approach the High Court of Madras in June, 2001 seeking an injunction restraining the Respondent from passing off.  In 2002 revoked the leave to sue, granted by it to the Appellants. The Appellants, preferred appeals before the Division Bench of the High Court which was also dismissed.

The Division Bench held 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. Being dissatisfied Appellants filed the present proceedings before the Supreme Court.

Appellants’ Contentions:

Division Bench of the High Court in its impugned judgment had taken a contrary view from the judgment in M/s. Jawahar Engineering Company and Ors. v. M/s. Jawahar Engineers Pvt. Ltd.[1] in which it was 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. The said decision 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

When the Respondent filed a trade mark application, a threat was communicated regarding the use of the trade mark in Chennai, and it was immaterial whether there was actual use or not and the Appellants would be entitled to an injunction against the said mark.

Respondent’s application for registration of the trade mark had no geographical limitation, 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.

Respondent’s Contentions:

Mere filing of an application for registration of trade mark by the Respondent in Chennai would not confer any territorial jurisdiction at Chennai.

The circumstances were different in the cited case, as there the Plaintiff was a registered owner of the trademark and the action was in relation to registered trademarks.

According to Section 18[2] 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.

As per Section 28[3] 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.

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.

Hon’ble Court’s Observations:

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.

In, Dhodha House v. S.K. Maingi[4] it was observed that “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.”

Further, in Dhodha House v. S.K. Maingi[5] this Hon’ble Court has concurred with the decision of Premier Distilleries Pvt. Ltd. v. Sushi Distilleries[6] which observed, inter alia, “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.”

Thus, 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.

Author: Ms. Pragati Pachisia, JCCLC


[1] 1983 PTC 207

[2] Section 18, Trade and Merchandise Marks Act, 1958 – 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.

[3] Section 28, Trade and Merchandise Marks Act, 1958 – 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.

[4] 2006 (32) PTC 1 (SC)

[5] Ibid.

[6] 2001 (3) CTC 652

Similar Posts

Leave a Reply