1. The Notice of Motion is heard finally.

2. The plaintiff has sought a declaration that a cease and desist notice issued by the defendants is an unjustified and groundless threat and that the use of the mark “HOKEY POKEY” by it does not constitute an infringement of the defendant’s trademark, identical thereto registered under class 30 and also does not constitute the tort of passing off. The plaintiff has also sought an injunction restraining the defendants from issuing such threats and passing off products under the said mark or any mark similar thereto and from using the said mark or any marks similar thereto in relation to ice-cream shops/parlours or business establishments or rendering any retail or restaurant services under the said mark or any mark similar thereto.

3. For the purpose of this Notice of Motion, it is necessary to refer to only a few facts.

The defendants label mark, a dominant part whereof consists of the words “HOKEY POKEY”, was registered in India under class 30 with effect from 29th November, 2001. The plaintiff admittedly started using the mark in respect of items under class 30 only in November, 2007, i.e. after the defendants application for registration under class 30.

4. The question is whether the plaintiff is entitled to an injunction against the respondents, despite the fact that it admittedly started using the trademark in relation to goods under class 30 in respect of ice-cream/ice-cream parlours only on a date subsequent to the registration of the defendants’ mark. I have answered the question against the plaintiff.

5. For the purpose of answering this question, I will presume as correct the sales figures and promotional expenses mentioned in the plaint and ignore the defendants case that they started actually using the mark from 1st April, 2000. Again for the purpose of deciding this question, it is irrelevant that the plaintiff obtained registration of the mark “HOKEY POKEY” on 13th March, 2008, written in a stylized manner under class 16 (not class 30) which pertains essentially to stationery items and that the plaintiffs application for registration under other classes, including class 30, is pending. I will also presume that registration by itself does not constitute use of the trade mark.

6. Mr. Tulzapurkar submitted that the plaintiff is entitled to an injunction against passing off as it had used the mark before the defendants did. He submitted that the mere application for registration of the mark and even the registration thereof makes no difference if the same was not actually used by the proprietor in the course of his activities. The submission was sought to be supported by relying upon section 27 of the Trade Marks Act, 1999, which saves passing off actions.

7. The question was considered by a learned single Judge of this Court in Sun Pharmaceutical Industries Limited v. CIPLA Limited, (2007) 109 BLR. In that case, the defendants registration of the trademark took effect from 26th February, 1998. The plaintiff, thereafter, applied for registration on 31st December, 1999 and commenced using the same. The defendants thereafter commenced using the mark in July, 2006. The question was whether the plaintiff had a prima facie case for an injunction in such a case. The facts, therefore, are almost identical to those in the present case. The submissions in that case on behalf of the plaintiff were also identical to Mr. Tulzapurkar’s submission on this question of law before me. The learned Judge noted the submissions and held as under :-

“10. Dr.Tulzapurkar, the learned counsel for the plaintiff submitted that the plaintiff is entitled to an injunction against passing off only on the ground that their user on 1.12.2000 is prior to the defendant’s user in July 2006. According to the plaintiff, in such a case of passing off, the defendant’s registration with effect from 26.2.1998, though prior to the plaintiff’s user, is liable to be ignored, since the only right which regist