The rights of prior user are superior to that of registration under the Trade Marks Act, 1999, and the action for passing off, based on the rights of prior user generating goodwill, shall be unaffected by any registration provided under the Act.

JUDGMENT

Debangsu Basak, J. - By this application, the defendants have applied for dismissal of the suit.

2. Learned Advocate appearing for the defendant has submitted that, leave under Clause 14 of the Letters Patent, 1865 has not been granted. Though the plaintiff has claimed reliefs with regard to infringement of a registered trade mark, the plaintiff has not claimed anything with regard to passing of. Referring to ( S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 ) he has submitted that, a suit for infringement of registered trade mark, as against a defendant who also possess a registered trade mark is not maintainable. He has relied upon ( Jagdish Gopal Kamath & Ors. v. Lime and Chilli Hospitality Services P. Ltd., (2013) 4 MhLJ 627 ) and submitted that, leave under Clause 14 of the Letters Patent, 1865 is a discretionary exercise. In the facts of the present case, no leave under Clause 14 of the Letters Patent, 1865 has been granted and should be granted.

3. Learned Advocate appearing for the plaintiff has relied upon ( Siyaram Silk Mills Limited v. Shree Siyaram Fab Private Limited & Ors., (2013) 53 PTC 410 (Bombay)), ( Sun Pharma Laboratories Ltd. v. Lupin Ltd. & Anr., (2018) 74 PTC 103 (Delhi) ) and ( Shambhu Nath & Brothers & Ors. v. Imran Khan, (2018) 76 PTC 365 ) and submitted that, the plaintiff has claimed relief on account of infringement of registered trade mark as well of passing of. Therefore, the suit is maintainable.

4. The plaintiff has filed the instant suit seeking leave under Clause 14 of the Letters Patent, 1865, leave under Order II Rule 2 of the Code of Civil Procedure, 1908 and leave under Section 12A of the Commercial Courts Act, 2015. In the plaint, the plaintiff has claimed that it adopted an innovative and distinctive mark being "Khaitan" being with the word "Khaitan" being written in red colour in a stylish manner and a visual representation of a fan placed above the letter 'i' in the mark. According to the plaintiff, the mark has consisted of a distinct colour and font representing a distinctive manner. The plaintiff has claimed registration in respect of the mark 'Khaitan' in various forms. The plaintiff has claimed to be using such mark since 1970 for its products on different goods. According to the plaintiff, its mark has attained fame and recognition. The plaintiff has claimed that it is using such mark in respect of electric goods manufactured by it. According to the plaintiff, the defendants have imitated the unique and distinctive mark of the plaintiff and are using the mark "Khaitar" which is phonetically, visually and structurally similar and/or deceptively similar to the trade mark of the plaintiff. The plaintiff has come to learn that the defendant No. 2 had applied for registration of the mark "Khaitar" on September 13, 2017 and patent registration thereof fraudulently claiming user since April 1, 2011.

5. In the plaint, the plaintiff has claimed relief both on account of infringement of its registered trade mark as also for passing off. There are pleadings in the plaint which makes out a case of passing off. The plaintiff has repeatedly used the word "identical and/or deceptively similar" to the trade mark of the plaintiff in the plaint to make out a case of both infringement of its registered trade mark as also for passing off.

6. In S. Syed Mohideen (supra) the Supreme Court has considered various provisions of the Trade Marks Act, 1999. It has held that, under Section 28 of the Trade Marks Act, 1999, owner of a registered trade mark cannot sue for infringement of its registered trade mark if the trade mark of the defendant is also registered. It has however gone on to say that, the Court should consider whether a plaintiff can bring an action against the defendant for passing off invoking the provisions of Section 27(2) of the Trade Marks Act, 1999. It has considered the interplay of Sections 27(2) and Section 28(3) of the Trade Marks Act, 1999. It has held that, on a co