The registration of a trade mark under the Trade Marks Act, 1999 confers exclusive rights, subject to validity and other provisions of the Act. The Act also limits the effect of registered trade marks and provides for infringement in cases of deceptive similarity.

M.M. Sundresh, J.

1. This original side appeal has been preferred by the appellant being aggrieved against the order of the learned single Judge in dismissing the application filed for interim injunction pending suit in O.A.30 of 2012 in C.S.No.19 of 2012 on the ground of infringement of a registered trade mark.

2. The facts in brief:

2.1. The appellant was a company incorporated under the Companies Act in the year 1992. An agreement followed by an undertaking was entered into between the appellant and M/s Mano Pharmaceuticals Private Limited in the year 2003. The said M/s Mano Pharmaceuticals Private Limited has filed an application under the Trade Marks Act, 1999 ( hereinafter referred to as "the Act") for registration of trade mark "METO". TM-16 was filed in the name of Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited) on 24.02.2003. A registration certificate for trade mark "METO" was issued in No.321616.

2.2. The respondent/defendant is said to have adopted the trade mark "METOX". Both the products of the appellant and the respondent are pharmaceutical products meant for the same ailment. A notice was issued by the appellant on 05.04.2011 restraining the respondent from using the trade mark "METOX", as it is deceptively similar to the trade mark "METO". Thereafter, a suit in C.S.No.19 of 2012 was filed in the month of January, 2012. Pending suit, a Legal Use Certificate was issued reflecting the name of Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited) on 07.02.2012.

2.3. The learned single Judge dismissed the injunction application on the ground that at the time of filing the suit, the appellant was not the registered trade mark holder, as it was in the name of M/s Mano Pharmaceuticals Private Limited. The procedure contemplated under the Act for the registration of Assignment Deed was not done and therefore, the appellant cannot maintain the suit. There is no phonetical, structural and visual similarities between the two products. The word "METO" has been derived from the chemical component Metoprolol and therefore, it is "publici juris" and generic. Both the products are in scheduled "H" drugs. The respondent is using the product "METOX". The scheduled "H" drugs can only be sold on prescription of the registered medical practitioners. Both the products are having different colour scheme apart from their distinct package. Accordingly, the learned single Judge both on facts and on law, has dismissed the application filed for injunction. Challenging the same, the present Original Side Appeal has been filed.

3. Submissions of the appellant:

Shri R.Muthukumarasamy, learned Senior Counsel appearing for the appellant, would submit that the appellant, having a registered trade mark, is entitled for an order ofinjunction. Admittedly, the respondent's name is unregistered. Having applied for registration, the respondent cannot raise a plea of "publici juris". TN-16 was filed as early as on 17.03.2003. The Legal Use Certificate was issued on 07.02.2012 much prior to the order of the learned single Judge. The judgments relied upon by the learned Senior counsel appearing for the respondent have primarily dealt with the cases of passing off. The learned Senior Counsel also submitted that in view of the express provision contained under Section 29 of the Trade Marks Act, 1999, the appellant is entitled for an order of injunction. In support of his contention, the learned Senior Counsel has made reliance upon a Division Bench judgment of this Honourable Court in BLUE HILL LOGISTICS PRIVATE LIMITED V. ASHOK LEYLAND LIMITED (2011) 4 CTC 417.

4. Submissions of the Respondent:

Per contra, Shri P.S.Raman, learned Senior counsel appearing for the respondent, would submit that the suit itself is not maintainable on two grounds. Admittedly at the time of filing the suit, the registration certificate stood in the name of M/s Mano Pharmaceuticals Private Limited. Even assuming the L