The application for registration is irrelevant in an action for passing off, and the cause of action for passing off is not dependent on the location of the Registrar's office or the fact of applying for registration.

R. Jayasimha Babu, J.

1. The plaintiff which has its place of business at Bangalore had sought leave to institute a suit in this Court claiming an injunction against passing off by the defendant, which is a company having its place of business at Pondicherry. It was alleged that a part of cause of action for the suit arose in Chennai, as the plaintiff's application for registering it as the owner of a trade mark "Royal Gold Cup" whisky was filed before the Registrar of Trade Marks at Madras on 18.3.1998. Leave was granted on 4.1.2001. Subsequently the defendant, after entering appearance applied for revoking the leave. That application, having been dismissed, the defendant in the suit is in appeal before us.

2. It was submitted for the plaintiff that having regard to the fact that a trade mark when registered will date back to the date of application, the factum of having filed an application for registration in the registry would suffice to clothe the plaintiff with the right to contend that a part of cause of action in relation to passing off of a trade mark for registering which an application has been filed arise in the city in which Registrar's office is located. As admittedly, the Registrar of Trade Marks has an office at Chennai and the application was filed in that office, it was submitted that a part of cause of action has arisen in the city of Chennai, even though neither the plaintiff nor the defendant reside or carry on business in Chennai, and the goods with reference to which right to the trade mark is asserted is not marketed in Chennai.

3. The submission so made, eventhough found favour with the learned single Judge, cannot be regarded as one which could property be accepted.

4. As stated by Lord Esher in Read v. Brown, (1888) 22 Q.B.D. 128, cause of action means -- Every fact which it would be necessary for the plaintiff to prove, if traversed in order to support his right to the judgement of the Court. It does not comprise every piece of evidence which is necessary to prove each fact but every fact which is necessary to be proved. As stated even more vividly by Fry, L.J., in the same case,

"Everything which, if not proved, gives the defendant an immediate right to judgment must be part of the cause of action."

5. The test formulated by Fry, L.J., if applied here, will demonstrate how fallacious the argument advanced by the plaintiff is. The action here is one for passing off and not one for infringement of trade mark which has been registered. The action of passing off can be maintained even without applying for registration of a trade mark and can be maintained even inspite of the registration of trade mark by a defendant. The registration of a trade mark, by itself, will not preclude the action of passing off if the plaintiff is able to demonstrate necessary ingredients for establishing his rights. The action or inaction on the part of the plaintiff in relation to the registration of the mark which he claims to be his, is wholly irrelevant for the purpose of deciding the plaintiff's right to a relief in relation to passing off.

6. In order to establish his right to an injunction in an action for passing off, it is wholly unnecessary for the plaintiff to demonstrate that he had applied for registration of mark under the Trade Marks Act. His failure to demonstrate that he had filed an application for registration will not clothe the defendant with a right to obtain dismissal of the suit. The application for registration is, therefore, a factor of no relevance in an action for passing off.

7. The essence of the action of passing off is deceit on the part of the defendant in trying to pass off his goods as that of the plaintiff. That is a pure question of fact to be established by proper evidence. The cause of action can arise where deceit is practised. It cannot arise at a location where the plaintiff who claims the relief, chooses to lodge an application for registering his mark, without any deceit havin