Permission to affix trade mark labels not sufficient for constituting trafficking.

Lakshmanan, J.

1. The matter arises under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as "the Act"). The Petitioner filed this petition under Sections 32(e), 46, 107 of the Act praying that the entry in the register in respect of registered Trade Mark No. 170403 in Class-34 in part-A in the name of the respondent K.B. Venkatachalam trading as Golden Match Works, Gudiyatham, dated 13-8-1955 may be removed from the Register.

2. The facts as stated in the petition in brief are as follows: The first petitioner K.R Jadayappa Mudaliar is trading in Match Works under the name and style of M/s. Sarasu Match Works at Gudiyatham, North Arcot District The second petitioner is the son of the first petitioner, who is also trading in the same trade under the name and style of M/s. Vanaja Match Works, at Thottidurai Mottur Village, Murasappalli (Post), Gudiyatham. The petitioners are represented by their counsel Mr. C. Daniel. The matter was argued at length by the learned Senior Counsel Mr. U.N.R. Rao on behaif of the petitioners. The petitioners and the respondent are engaged in the business of manufacturing safety matches. They are competitors and rivals in the said business. The respondent has secured registration under the Act for a Trade Mark with the name "National Park" in Class-34 in Part-A under No.17043 since 13.3.1955. The mark was registered with the authorities and used in black and white. According to the petitioners, the respondent although had registered the mark has not used Trade Mark for the product of his manufacture except for short periods and also has been licencing simultaneously in favour of 22 different manufacturers for the use of the Trade Mark. It is staled in the petition that with the written permission given by the respondent the Central Excise has been granting Central Excise licence to manufacture safety matches with "National Park" as shown in document No.1 as the trade mark under Rule 71(3) of Central Excise Rules, 1944. It is further stated that the second petitioner has also been using "National Park" and was also using the same design with the alteration of the name as "Running Deer." In March, 1986 the respondent filed C.S.No.156 of 1986 in this Court under Sections 105 and 106 of the Act, against the second petitioner for the alleged infringement of the respondent's registered Trade mark of "National Park" by the second Petitioner's "Running Deer" trade mark. The suit was for a permanent injunction against the use of "Running Deer" trade mark on account of the alleged infringement and passing off of the registered "National Park" trade mark. The suit was however withdrawn on 13.1.1988 and the injunction order granted on 20.3.1986 in Application No.1402 of 1986 came to an end with the withdrawal of the suit. According to the petitioner, the respondent had also filed O.S.No.16 of 1987 a few days prior to withdrawal of C.S.No.156 of 1986, before the District Court, North Arcot at Vellore against both the petitioners herein. However in O.S.No.16 of 1987 the respondent made both the petitioners as defendants. His complaint was that the first petitioner was committing infringement and passing off by the use of the "Standing Stag" and the second petitioner is committing infringement and passing off with respect to "Running Deer" vis-a-vis respondent's registered Trade Mark of "National Park." The second petitioner filed written statement in the said suit and urged that the registered Trade Mark "National Park" having been used continuously since 1979 for about 10 years by several other manufacturers with the permission of the respondent, the mark has lost its distinctiveness and has "become publici juris, Consequently the plaintiff/respondent herein has lost his exclusive right with respect to the mark "National Park". The petitioners, who are aggrieved persons under the Act entitled to file this petition as they are in the same trade and filed the present petition alleging that th