The central legal point established in the judgment is the application of Section 134(2) of the Trade Marks Act 1999 to determine the jurisdiction of the court and the rights of the plaintiff to file the suit based on the ownership of the trademark and the potential passing off of the defendant's products.

Prabha Sridevan, J.

The plaintiff is the appellant herein. The plaintiffs application for injunction against registration of trademark and against passing off were dismissed and the defendants application for rejection of suit on the ground of jurisdiction were heard together and all the three were dismissed. Therefore, we have two appeals by the plaintiff and one appeal by the defendant. We will refer to them as plaintiff and defendant.

2. The trademark BSA, BSA (device) with Piled Arms Device either separately or collectively is the property that is sought to be protected. According to the plaintiff, they are the proprietor of the trademark BSA under Clause 12 and these trademarks were assigned in their favour by BSA Cycles Limited, England by a Deed of Assignment dated 31-08-1981 and since then the plaintiff has been the registered owner of the trademark for goods viz., vehicles, apparatus for locomotion by land, air or sea, cycles, motor-cycles and side cars, fore cars and trailing cars. When one Derby International Corporation issued a notice to the plaintiff for reassigning the mark, the suit was filed and parties to the suit arrived at a compromise and a decree was passed on 26-04-1995 regarding the terms of the compromise. The plaintiff has given details of the sales figures of BSA Cycles from 2000 till March 2008. According to the plaintiff, by long, continuous and extensive use, the trademark BSA has been identified by the trade and public with the plaintiffs product and the plaintiffs products were acquired great reputation and goodwill for their superior quality. Since motorised cycles are a natural extension of bicycles which is the plaintiffs business in or about September 2008 they expanded their activities into motorised vehicles and launched its scooters/ motorcycles with the same trademark. This was a big success.

3. On 14-11-2008, the Managing Director of the defendant sent a letter informing the plaintiff that, what was assigned to the plaintiff was restricted to bicycles and the defendant is about to conclude a trade arrangement with a foreign manufacturer. The defendant had filed an application for registration of trademark. The plaintiff sent a reply asserting that they have absolute rights for the trademark BSA and there has never been a restriction or protest to the use of the said trademark for all goods under Clause 12. Again the defendant sent a letter on 22-12-2008 stating that the plaintiff would not have been given any rights over the trademark BSA with regard to motorised cycles fearing that the defendant may in time enter into the Indian market, the plaintiff filed the suit and asked for injunction both against passing off and against registration of trademark. In the counter filed to the applications, the objection regarding jurisdiction was taken and that a mere letter written by the defendant cannot give jurisdiction to this Court. According to the defendant, in May 1957, the Birmingham Small Arms Company Ltd., then the worlds largest motorcycle make, sold its interest to Raleigh Industries Ltd, and the agreement governing the sale dated 23-05-1957 delineated the conditions for the use of the various trademarks, and BSA Cycles never had the right to use the trademark in respect of motorcycles. All that it had was the right to use the trademark for pedal cycles, bicycles and carts and therefore, the assignor could not have transferred the rights which it did not have to the plaintiff by the Deed of Assignment. The defendant had made an application to register the trademark BSA for power-vehicles in India and though it was pending for 22 years was abandoned in August 2003. Thereafter, a fresh application was made on 27-08-2008. When the defendant came to know about the plaintiffs intention to launch motorvehicles with the trademark BSA, the defendant wrote a letter on 14-11-2008. According to the defendant, in fact they should have brought an action to restrain the applicant and w