The main legal point established in the judgment is the relevance of registration in a different class as not being a complete defense in an action for passing off.

R. Jayasimha Babu, J.

The appellant is the registered owner of the copyright in the 'pony label', the registration number being A/346861/81 dated 2.11.1981.

2. The annexure to the Registration Certificate which sets out the label is as under :

3. The appellant, which is the leading manufacturer in the country for all kinds of needles is also the owner of several trade marks with the name 'pony'. It holds seven trade mark registration certificates for goods under class 26, 4 certificates for goods under class 10, one under class 8 and two under class 4. It's marks, as also the marks used by the defendants which is practically a replica of the plaintiff's mark are as under;

4. The earliest of the registration certificate is dated 7.7.1971. As the name of the appellant 'Needle Industries Ltd.' indicates, it's primary activities are manufacturing and marketing needles. The registration obtained for it's mark under class 26 relate to things used in knitting, stitching and tailoring primarily. The goods in respect of which such registration has been obtained in class 26 include knitting needles, knitting pins, crochet hooks, snap fastners, needles of all kinds, safety pins, fastners of all kinds, tailoring accessories etc. It has registered the trademark 'pony' not only in India but in a large number of other countries as well.

5. The appellant entered the field of manufacture of sewing threads in the year 1994 and it has applied for registration of the mark 'pony' for sewing thread in class 23. That application is still pending. Defendant 2 was an agent of the appellant and was marketing it's needles for a long number of years from 1983. According to the appellant, the second defendant was instrumental in setting up the first defendant to manufacture and market sewing thread by using the trademark 'pony' and 'pony label' without the permission of the appellant. The appellant claims that it came to know of such user only when the application that had been filed by the first defendant in the suit was advertised in the trade mark journal on 16.07.1997, wherein it was mentioned that user of the mark by the second defendant was from the year 1987. The appellant after filing opposition to that application filed by the defendant filed a suit in this Court in C.S. No. 334 of 1998 on 29.4.1998 for an injunction to restrain the defendants from infringing the plaintiff's copyright as also from passing off sewing threads manufactured by the first defendant, as having emanated from the appellant. The ex parte injunction granted in favour of plaintiff/appellant on 29.4.1998 was vacated on 18.8.2000 by the Order under appeal.

6. During the pendency of the suit, an application that had been filed by the first defendant in the suit - Super Thread Industries, for registration of the mark 'Pony' for sewing threads was considered and accepted by the Assistant Registrar of Trade Marks at Delhi, who by his order dated 6.7.2000 held, inter alia, that the first defendant had established user of the mark 'pony' in relation to sewing yarn since the year 1987 by producing bills and documents pertaining to central excise and further that the registration of the appellant's mark under class 26 would not disentitle the first defendant from registering the trade mark in relation to different class of goods, namely sewing thread under class 23.

7. The injunction which the appellant obtained immediately after the institution of the suit in C.S. No. 334 of 1998 was thereafter dissolved by the learned single Judge by his order dated 18.8.2000. The appellant being aggrieved is in appeal before us.

8. Learned counsel for appellant submitted that sewing thread and needles are cognate goods, and that needles and thread are sold through the same trade channel. The use of the plaintiff's mark by the defendants for first defendant's sewing thread, it was submitted, results in passing off those goods as emanating from the appellant, and riding on the goodwill establishe