Supreme Court of India
K. NARAYANAN AND ANR.versusS. MURALI
- Citation
- 2008 INSC 908
- Decided
- 5 August 2008
- Disposal
- Dismissed
- Bench
- TARUN CHATTERJEE
Holding
Filing a trademark application that is not yet registered does not constitute a cause of action for passing off, and therefore no injunction can be granted on that basis.
Summary
The appellants, manufacturers of banana chips, had been using the trade mark "A-ONE" since 1986 and applied for its registration in 1999, which remained pending. The respondent filed a parallel application for registration of the same mark in 2000 and later sued the appellants for passing off. The appellants responded by filing a suit seeking an injunction against the respondent’s alleged passing off, which the High Court dismissed. On appeal, the Supreme Court examined whether a pending trademark application creates a cause of action for passing off and held that it does not, as infringement rights arise only upon registration and the elements of passing off—deception, goodwill, and actual use—were absent. Consequently, the Court dismissed the appeals, affirming that the appellants could not obtain an injunction based solely on the pending applications.
Issues considered
- Does the filing of a trademark application, pending registration, give rise to a cause of action for passing off?
- Can an injunction be granted to restrain alleged passing off when the plaintiff has not obtained trademark registration?
Legislation cited
- Trade and Merchandise Marks Act, 1958s. 18, s. 28
Subjects
trademarkpassing offcause of actioninjunctionpending registrationTrade Marks ActSection 18Section 28intellectual propertyunfair competition
Judgment
[2008] 11 S. C.R. 939
lf
K. NARAYANAN AND ANR. A
V.
S. MURALI
(Civil Appeal Nos.4480-4481 of 2002)
AUGUST 5, 2008
~ B
[TARUN CHATTERJEE AND HARJIT SINGH BEDI, JJ.]
Trade and Merchandise Marks Act, 1958 - ss. 18 and 28
- Passing off - Cause of action - Appellants manufacturing
and selling banana chips under the trademark A-ONE - Filed c
application for registration of the trade mark- Application still
pending - Respondent too filed application seeking registra-
tion as user of trademark A-ONE - Suit filed by appellants
seeking injunction to restrain respondent from 'passing off' his
goods using the trade mark A-ONE - Dismissal of, by High
D
Court - Justification - Held: Justified - Before registration is
)"'
granted for trade mark, there is no right to assert that the mark
has been infringed - A proposed registration, which may or
may not be granted, does not confer a cause of action to the
plaintiff, whether application for registration is filed by plaintiff,
or defendant - Mere filing of trade mark application cannot be E
regarded as a cause of action for filing a suit for 'passing off' -
On facts, filing of application for registration of trade mark did
rtot indicate any deception on part of respondent to injure busi-
ness or goodwill of the appellants - Necessary requirements
) of an action for 'passing off' were absent. F
The appellants were manufacturing and selling ba-
nana chips under the trademark "A-ONE" since 1986. In
1999, they filed an application before the Trade Mark Reg-
istry for registration of the trade mark "A-ONE". The ap-
G
plication remained pending. In 2000, the respondent too
,. · filed an application seeking registration as user of the
trademark "A-ONE". Thereafter, the appellants filed suit
before the High Court seeking injunction to restrain the
939 H
940 SUPREME COURT REPORTS [2008] 11 S.C.R.
)f
A respondent from 'passing off' his goods using the trade
mark "A-ONE". The High Court dismissed the suit.
The question which arose for consideration in the
instant appeals was as to whether the appellants were ,,.
entitled to seek injunction to restrain the respondent from ~
B passing off his goods using the trademark "A-ONE".
Dismissing the appeals, the Court
HELD: 1.1 Filing of an application for registration of .
.....
a trade mark does not constitute a part of cause of action ,..
c in a suit for passing off. The High Court has rightly 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
D the plaintiff, whether the application for registration is filed
by the plaintiff, or the defendant. [Paras 24,29) [948 E-F;
946 G-H, 947 A]
1.2 In the instant case, mere filing of the application
for registration of trade mark cannot be regarded as a
E cause of action for filing a suit for passing off, since the
.!
"
application does not indicate any deception on the part
of the respondent so as to injure business or goodwill of
the appellants. The appellants cannot file the suit in the
High Court seeking an injunction to restrain the respon-
F dent 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. [Paras 26, 29) [947 E; 948 F-G]
G
Premier Distilleries Pvt. Ltd. v. Sushi Distilleries (2001)
3 CTC 652- approved. -.
Wander Ltd. and Anr v. Antcx India P Ltd. (1990) Supp
SCC 727 anct. Dhodha House v. S. K. Maingi (2006) 9 SCC
H 41- relied on.
~-
K. NARAYANAN & ANR. v. S. MURALI 941
Mis. Jawahar En'gineering Company and Ors. A
Ghaziabad v. M/s. Jawahar Engineers Pvt. Ltd. Sri
Rampur, Distt. Ahmednagar, Maharashtra (1983) PTC 207-
referred to.
Case Law Reference
B
(1983) PTC 207 referred to Para 5
(1990) Supp sec 727 relied on Para 13
(2006) 9 sec 41 relied on. Para 14
(2001) 3 CTC 652 approved Para 14 c
CIVIL APPELLATE JURISDICTION : Civil Appeal No.
4480-4481 of 2002
From the Judgment and Order dated 18.4.2002 of the High
Court of Judicature at Madras in O.S.A. Nos: 149 and 150 of D
2002
Gladys Daniel, Anup Kumar and K.V. Vijayakumar for the
Appellants.
Dr. A. Francis Julian, Sumit Kumar (for M/s. Arputham, E'.
Aruna & Co.) for the Respondent.
The Judgment of the Court was delivered by
TARUN CHATTERJEE, J. 1. The present appeals are
filed at the instance of the appellants against the Judgment and F
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 Divi-
sion Bench of the High Court had dismissed the appeals of the
appellants.
· 2. The brief facts leading to the filing of these appeals may G
be narrated as under: ·
~ 3. The appellants are engaged.,in the business of manu-
facturing and selling Banana Chips and had adopted the trade
mark A-ONE with respect to the said Banana Chips in 1986. H
942 SUPREME COURT REPORTS [2008] 11 S.C.R.
A The appellants had applied for an application for registration of
the trade mark A-ONE before the Trade Mark Registry at
Chennai on 5th of December, 1999 with respect to the said Ba-
nana chips. The application of the appellants for registration of
the trademark is still pending.
B 4. On 7th of February, 2000, the r:espondent filed O.S.No.1
of 2000 bn 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
C on 23rd of December, 2001.
5. The respondent filed three trade mark applications num-
bered as 899359, 899360 and 899361 on 24th of January,2000
before the Trade Mark Registry at Chennai seeking registra-
D tion as user of the mark A-ONE throughout India since 1995.
6. Thereafter the appellants filed C.S.No. 482 of2001 on
22nd of May, 2001 onthe file-of the High Court of Madras, seek-
ing an injunction to restrain the respondent from passing off his
goods using the trade mark A-ONE.
E 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
F High Court dismissed the injunction application· and also re-
voked the leave to sue, granted by it to the appellants. "-
9. The appellants, being aggrieved by the aforesaid or-
der, preferred appeals before the Division Bench of the High
Court, which was dismissed by the Division Bench by an order
G dated 181h of April, 2002.
10. Being aggrieved and dissatisfied with the aforesaid judg-
ment of the Division Bench, the appellants have filed these Spe- ~
cial Leave Petitions in this Court which, on grant of leave. were
H heard by us in presence of learned counsel for the parties.
K. NARAYANAN & ANR. v. S. MURALI 943
[TARUN CHATTERJEE, J.] ,,.
11. We have heard the learned counsel for the parties and A
examined the impugned judgment of the Division Bench of the
High Court as also of the learned Single Judge and other mate-
rials on record and we deem it appropriate to reproduce the
findings of the Division Bench while dismissing the appeals,
\ . which are as under :- B
"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.
c
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
D
... 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 E
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 F
will not confer a cause of action to the plaintiff,. whether
the application for registration is filed by the plaintiff, or
the defendant. "
12. Before we look at the submissions of the parties be-
G
fore 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:- H-
944 SUPREME COURT REPORTS [2008] 11 S.C.R.
A "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."
B 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, I-
>-
if valid, give to the registered proprietor of the trade mark
c 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."
13. Let us now consider the submissions of the learned
D 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 Judg-
ment of the Division Bench of the High Court of Delhi in Mis.
Jawahar Engineering Company and others, Ghaziabad Vs.
E Mis. 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
F 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 ma-
terialize.
14. The learned counsel for the appellants further submit- ,
G ted 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 re-
ported in 1990 PTC 240.
15. The learned counsel for the appellants further submit-
H
K. NARAYANAN & ANR. v. S. MURALI 945
'I [TARUN CHATTERJEE, J.]
ted that a similar view was followed by the Division Bench of A
the High Court· of Madras in its unreported judgments dated
13th of March, 1995 and 291h 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 B
Mark Registry at Chennai, a threat was communicated regard-
ing 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 (being a prohibitive remedy) against
the said mark. c
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
0
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 ap-
pellants were contested by the learned counsel appearing on E
behalf of the respondent. The learned counsel for the respon-
dent contended that mere filing of an application for registra-
tion of trade mark by the respondent in Chennai would not con-
fer any territorial jurisdiction for the High Court at Chennai to
entertain the present suit filed by the appellants, when admit- F
tedly 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 re-
spondent further contended that since according to Section 18 G
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 pass-
ing off. H
946 SUPREME COURT REPORTS [2008] 11 S.C.R.
~
A 20. The learned counsel appearing on behalf of the re-
spondent also contended that since according to Section 28 of
the Act, the registration of a trade mark gave a person, exclu-
sive ownership of the trade mark and right to take action against
the infringement of the trade mark, therefore an action against
B infringement of trade mark could not be made in the court merely -I
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
c of goods took place, had jurisdiction to entertain a suit for pass- ..
I
ing off.
22. It was further argued that the decision of the Division
Bench of the Delhi High Court in M/s. Jawahar Engineerir,ig
Company and others, Ghaziabad (supra) was not applicable to
D
the present case because in that case the plaintiff was a reg is-
'<
tered 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.
E
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 appel-
F larits 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
G High Court and also of the learned Single Judga; 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 wbich may, or may
H not be gr~rnted will not confer a cause of action to the plaintiff,
K. NARAYANAN & ANR. v: S. MURALI 947
[TARUN CHATTERJEE, J.]
whether the application for registration is filed by the plaintiff, or A
the defendant.
25. In this connection, the following decisions of this Court
may be strongly relied upon:-
ln Wander Ltd. and another Vs: Antox India P Ltd.,·[1990 B
(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 C
established for himself in a particular trade or business.
The action is regarded as an 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 D
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 appli-
cation cannot be regarded as a cause of action for filing a suit
for passing off since filing of an application for registration of E
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:- F
·~ 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 G
certificate has already 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 H
948 SUPREME COURT REPORTS [2008) 11 S.C.R.
A 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
11
factum filing of such an application.
B 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:-
c " The cause of action in a suit for passing off, on the other
hand and as aiready 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
D
for registration will not improve 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
11
action where the suit is one for passing off.
E (Emphasis supplied)
29. In this view of the matter, we are, therefore, of the opin-
ion that filing of an application for registration of a trade mark
does not constitute a part of cause of action in a suit for pass-
ing off. The appellants cannot file the suit in the High Court of
F 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 re-
quirements of .an action for passing off are acsent.
G
30. Accordingly, there is no ground to interfere with the
impugned judgment of Division Bench of the High Court of Ma-
dras. For the reasons aforesaid, the appeals stand dismissed
with no order as to costs.
H B.B.B. Appeals dismissed.
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