2015 Supreme(SC) 586

SUPREME COURT OF INDIA
H.L. Dattu CJI., A.K. Sikri, J.
S. Syed Mohideen – Appellant
Vs.
P. Sulochana Bai – Respondent
Civil Appeal No. 2758 of 2015 (Arising Out of SLP (C) No. 12671 of 2014)
Decided On : 17-03-2015

IMPORTANT POINTS
When same or similar trade mark is registered to two persons, exclusive right to use of any of those trademarks shall not be deemed to have been acquired by one registrant as against other registered owner of the trade mark. Both registrants have concurrent right to use the registered trade mark in their favour. One cannot sue the other for infringement, subject to other provisions of the Trade Marks Act.
Action for passing off premised on the rights of prior user would be unaffected by any registration.
Ingredients of passing off are (i) goodwill owned by a trader, (ii) misrepresentation by another person and (iii) damage to goodwill of the trader. Mere fact that both prior user and subsequent user are registered proprietors is irrelevant.
Registration is no defense to a passing off action and Trade Marks Act, 1999 is not a bar thereto. Passing off action is independent of the Act.
Registration merely recognizes pre-existing common-law rights. It does not create any rights.
Simply adding a word to the trademark of a prior user amounts to deceiving the public and encroaching upon the goodwill and reputation of the respondent, and is not permissible.

Headnote:(a) Trade Marks Act, 1999 – Section 34, 25(2) and 21 – Respondent registering the trade mark 'Iruttukadai Halwa' in 2007 – Appellant registering the trade mark 'Tirunelveli Iruttukadai Halwa' in 2008 – Respondent not making any opposition u/s 21 at the time of registration of appellant’s trade mark – Held duly registered in 2008. (Para 17)

       (b) Trade Marks Act, 1999 – Section 28(3) – Postulates a situation where same or similar trade mark can be registered in favour of more than one person – Same or similar trade mark registered to two persons – Exclusive right to use of any of those trademarks shall not be deemed to have been acquired by one registrant as against other registered owner of the trade mark – Both registrants have concurrent right to use the registered trade mark in their favour – One cannot sue the other for infringement – But this is subject to other provisions of the Act. (Para 21, 22)

       © Trade Marks Act, 1999 – Section 34 – Protecting rights of prior user – Opens with non-obstante clause – Rights of registration u/s 27 and 28 made subject to section 34 – Prior user right is a superior right which cannot be disturbed or interfered with by registration – Therefore action for passing off premised on the rights of prior user would be unaffected by any registration. (Para 22)

       1996 (3) R.C.R. (Civil) 697 : (1996) 5 SCC 714 – Relied upon

       AIR (1995) Delhi 300 – Cited with approval

       (d) Trading laws – Passing off – Ingredients – Goodwill owned by a trader, misrepresentation and damage to goodwill – Mere fact of both prior user and subsequent user being registered proprietors is irrelevant. (Para 22)

       (1990) 1 All E.R. 873; (1979) AC 731, 742 (HL); 2002 (2) R.C.R. (Civil) 357 : (2002) 3 SCC 65 – Relied upon

       (e) Trademark laws – Passing off and infringement – Former has wide application than the latter – Registration is no defense to a passing off action – Trade Marks Act, 1999 not a bar to a passing off action – Rights conferred u/s 28, subject to section 27(2) – Passing off action is independent of the Act. (Para 22)

       Trade Marks Act, 1999 – Section 27 and 28 – Registration merely recognizes pre-existing common-law rights – Does not create any rights. (Para 22)

       AIR 1978 Del 250; AIR 7 969 Bombay 24 (D.B.) – Cited with approval

       (f) Trade Marks Act, 1999 – Section 27(2) and 28(3) r/w section 29 – Section 27(2) opening with non-obstante clause – Rights in passing off emanate from common law and not from the Act – Rights conferred by section 27(2) – Not affected by section 28(3). (Para 22)

       (g) Trading laws – Passing off – Plaintiff-respondent using the trade mark ‘Iruttukadai Halwa’ since 1900 though registered in 2007 – Recognised all over Tamil Nadu – Appellant cannot simply add the word ‘Tirunelveli’ and register ‘Tirunelveli Iruttukadai Halwa’ – Amounts to deceiving the public and encroaching upon the goodwill and reputation of the respondent – Not permissible. (Para 23, 24)

       Facts of the case:

       The Respondent is registered owner of trade mark 'Iruttukadai Halwa'. Though, this trade mark was got registered by the Respondent/plaintiff sometime in the year 2007, according to the Respondent/plaintiff the business of selling halwa in the aforesaid name was started by her father-in-law way back in the year 1900.

       When she found that Appellant was also selling halwa under the trade name 'Iruttukadai Halwa', she filed suit for declaration, permanent injunction and other reliefs on the ground that the Appellant had adopted deceptive similar trade mark to confuse the consumers.

       This suit was decreed by the trial court. Insofar as the relief of rendition of accounts is concerned it was denied by the trial court.

       The Appellant filed an appeal against the said decree which has been dismissed by the High Court.

       Finding of the Court:

       The findings and conclusions reached by the Court below is perfectly in order, hence, the same does not call for interference.

       Result: Appeal dismissed with cost.