2008 Supreme(SC) 1188

2008(6) Supreme 144
Supreme Court of india
Tarun Chatterjee and Harjit Singh Bedi, JJ.
K. Narayanan and Anr. — Appellants
versus
S. Murali — Respondent
Civil Appeal Nos. 4480-4481 of 2002
Decided on : 05-08-08

Advocates appeared :
For the Appellants : Ms. Gladys Daniei, Anup Kumar and K.V. Vijayakumar, Advocates.
For the Respondent : Dr. A. Francis Julian, Sr. Adv., Sumit Kumar (for M/s. Arputham, Aruna & Co.), Advocates.
Important Point
Mere filing of a trade mark application could not be regarded as a cause of action for filing a suit for passing off where filing of an application for registration of trade mark did not indicate any deception on part of respondent to injure business or goodwill of appellants.

Headnote:Trade and Merchandise Marks Act, 1958 – Section 18(1), 28 – Appellants engaged in business of manufacturing and selling Banana Chips adopted trade mark A-ONE with respect to said Banana Chips in 1986 – Application by appellants for registration of trade mark A-ONE before Trade Mark Registry at Chennai on 6th of December, 1999 with respect to said Banana chips – Suit filed by respondent against appellants, seeking an injunction restraining appellants from passing off their goods using trade mark A-ONE – Said suit was dismissed by District Judge – Respondent thereafter filed three trade mark applications seeking registration as user of mark A-ONE throughout India since 1995 – Injunction application thereagainst – Dismissed – Appeals – Dismissed – Special Leave Petitions – Before registration is granted for 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 – Instantly, mere filing of a trade mark application could not be regarded as a cause of action for filing a suit for passing off since filing of an application for registration of trade mark did not indicate any deception on part of respondent to injure business or goodwill of appellants – Appellants could not file suit seeking an injunction to restrain 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 were absent – No ground to interfere with impugned judgment of High Court – Appeals dismissed. (Paras 26, 29, 30)

       Facts of the Case :

       1.Appellants engaged in business of manufacturing and selling Banana Chips adopted trade mark A-ONE with respect to said Banana Chips in 1986. Application was filed by appellants for registration of trade mark A-ONE before Trade Mark Registry at Chennai on 6th of December, 1999 with respect to said Banana chips. Suit was filed by respondent against appellants, seeking an injunction restraining appellants from passing off their goods using trade mark A-ONE. Said suit was dismissed by District Judge -.Respondent thereafter filed three trade mark applications seeking registration as user of mark A-ONE throughout India since 1995. Injunction application thereagainst was dismissed. Appeals thereagainst were also dismissed.

       2.Present Special Leave Petitions have been filed against said order of High Court.

       Findings of the Court :

       Before registration is granted for 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. Instantly, mere filing of a trade mark application could not be regarded as a cause of action for filing a suit for passing off since filing of an application for registration of trade mark did not indicate any deception on part of respondent to injure business or goodwill of appellants. Appellants could not file suit seeking an injunction to restrain 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 were absent.

       Result : Appeals dismissed.