The use of a registered trade mark can be actionable if it is used in a manner which will enable the proprietor to pass off his goods as that of someone else.

ORDER :- This is a defendants' application under S. 115 of the Code of Civil Procedure directed against an order of II Additional District Judge Allahabad deciding three preliminary issues in a passing off action against them. One Mohammad Sattar filed a suit against one Baij Nath Prasad in which he alleged that he was the manufacturer of a brand of Bidis called 'Toofan Mail' which were very popular with the public; that these Bidis were sold under a label containing a picture of a Railway Mail Train, two Railway signals, a Railway track, two boats, and other signs; that the defendant Baij Nath Prasad had started selling a certain brand of Bidis under the name of 'Punjab Mail Bidis'; that he had chosen this name deliberately with the object of deceiving the bidi smoking public who had begun to appreciate the excellence of the plaintiff's Toofan Mail bidis; that the defendants also fixed a label on his bidis which contained a picture of a Railway train, Railway signals, a Railway track, two boats and the other signs included in the plaintiff's labels; that in this manner the defendant was able to pass off his bidis as the plaintiff's with consequent loss to him. The plaintiff asked for an injunction to restrain the defendant from passing off his bidis by using a label deceptively similar to the one used by the plaintiff, and he also claimed damages. Soon after the filing of the suit both the original plaintiff and the defendant died and were substituted by their respective representatives. The defendants resisted the suit and denied all liability. They contended that they were using a label which had been registered by them in 1943 under the Trade Marks Act 1940 and which continued to be so registered under the Trade and Merchandise Marks Act 1958. They denied that the two labels were similar as to deceive the plaintiffs' customers. They also raised a preliminary objection that the suit was barred under S. 30 (1) (d) of the Trade and Merchandise Marks Act 1958. The learned Judge framed three issues which he decided as preliminary. They are : "Issue No. 2 (a) -Is the present suit only an action for infringement of plaintiffs' trade mark and not a passing off action? Issue No. 2 (b) - How do Ss. 28 (3), 29 and 30 (1) (d) of the Trade and Merchandise Marks Act 1958 affect the suit? Issue No. 7 - Does the plaint disclose no cause of action for the claim of passing off?"

2. After hearing the parties the learned Judge decided all these issues against the defendants. He held that S. 30 (1) (d) of the aforesaid Act did not bar the suit; that the suit was not only an action of infringement of trade mark but also a passing off action; and that the plaint disclosed a cause of action for a claim of passing off. Aggrieved by this order the defendants have come here in revision.

3. Mr. R. C. Ghatak for the applicant contended that the order of the Court below is illegal because on the face of it the plaint disclosed no cause of action and the Court had no jurisdiction to entertain a suit for infringement of trade mark. Learned counsel argued that the view of the Court below that even assuming that the defendants were using their own registered trade mark the plaintiff was entitled to bring a passing off action is erroneous. Learned counsel contended that there can be no passing off action if the only allegation of the plaintiffs is that the defendants have used a label deceptively similar to that of the plaintiffs' label but the defendants' label has been duly registered under the Trade and Merchandise Marks Act. Learned counsel pointed out that under the aforesaid Act the defendants had the right to use a label which had been duly registered under the law and the mere use of it could not be actionable. He relied on Ss. 28 (1), 28 (3) and 30 (1) (d) of the Act. These provisions are as follows :

"Section 28 (1) -Rights conferred by registration : Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of

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