LexK. NARAYANAN AND ANR. versus S. MURALI
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[2008] 11 S. C.R. 939 lf K. NARAYANAN AND ANR. A V. S. MURALI (Civil Appeal Nos.4480-4481 of 2002) AUGUST 5, 2008 B ~ [TARUN CHATTERJEE AND HARJIT SINGH BEDI, JJ.] Trade and Merchandise Marks Act, 1958 - ss. 18 and 28 - Passing off - Cause of action - Appellants manufacturing and selling banana chips under the trademark A-ONE - Filed c application for registration of the trade mark- Application still pending - Respondent too filed application seeking registra- tion as user of trademark A-ONE - Suit filed by appellants seeking injunction to restrain respondent from 'passing off' his goods using the trade mark A-ONE - Dismissal of, by High D Court - Justification - Held: Justified - Before registration is )"' granted for trade mark, there is no right to assert that the mark has been infringed - A proposed registration, which may or may not be granted, does not confer a cause of action to the plaintiff, whether application for registration is filed by plaintiff, E or defendant - Mere filing of trade mark application cannot be regarded as a cause of action for filing a suit for 'passing off' - On facts, filing of application for registration of trade mark did rtot indicate any deception on part of respondent to injure busi- ness or goodwill of the appellants - Necessary requirements ) of an action for 'passing off' were absent. F The appellants were manufacturing and selling ba- nana chips under the trademark "A-ONE" since 1986. In 1999, they filed an application before the Trade Mark Reg- istry for registration of the trade mark "A-ONE". The ap- G plication remained pending. In 2000, the respondent too ,. · filed an application seeking registration as user of the trademark "A-ONE". Thereafter, the appellants filed suit before the High Court seeking injunction to restrain the 939 H 940 SUPREME COURT REPORTS [2008] 11 S.C.R. )f A respondent from 'passing off' his goods using the trade mark "A-ONE". The High Court dismissed the suit. The question which arose for consideration in the instant appeals was as to whether the appellants were ,,. B entitled to seek injunction to restrain the respondent from passing off his goods using the trademark "A-ONE". ~ Dismissing the appeals, the Court HELD: 1.1 Filing of an application for registration of ..... . a trade mark does not constitute a part of cause of action ,.. c in a suit for passing off. The High Court has rightly held that before registration is granted for the trade mark, there is no right in the person to assert that the mark has been infringed and; that a proposed registration, which may or may not be granted, will not confer a cause of action to D the plaintiff, whether the application for registration is filed by the plaintiff, or the defendant. [Paras 24,29) [948 E-F; 946 G-H, 947 A] 1.2 In the instant case, mere filing of the application E for registration of trade mark cannot be regarded as a cause of action for filing a suit for passing off, since the " application does not indicate any deception on the part .! of the respondent so as to injure business or goodwill of the appellants. The appellants cannot file the suit in the F High Court seeking an injunction to restrain the respon- dent from passing off his goods using the trade mark "A- ONE", based only on the claims made in the trade mark application of respondent filed before the Trade Mark Registry, since the necessary requirements of an action for passing off are absent. [Paras 26, 29) [947 E; 948 F-G] G Premier Distilleries Pvt. Ltd. v. Sushi Distilleries (2001) 3 CTC 652- approved. -. Wander Ltd. and Anr v. Antcx India P Ltd. (1990) Supp SCC 727 anct. Dhodha House v. S. K. Maingi (2006) 9 SCC H 41- relied on. ~- K. NARAYANAN & ANR. v. S. MURALI 941 Mis. Jawahar En'gineering Company and Ors. A Ghaziabad v. M/s. Jawahar Engineers Pvt. Ltd. Sri Rampur, Distt. Ahmednagar, Maharashtra (1983) PTC 207- referred to. Case Law Reference (1983) PTC 207 referred to Para 5 (1990) Supp sec 727 relied on Para 13 (2006) 9 sec 41 relied on. Para 14 (2001) 3 CTC 652 approved Para 14 CIVIL APPELLATE JURISDICTION : Civil Appeal No. 4480-4481 of 2002 B c From the Judgment and Order dated 18.4.2002 of the High Court of Judicature at Madras in O.S.A. Nos: 149 and 150 of D 2002 Gladys Daniel, Anup Kumar and K.V. Vijayakumar for the Appellants. Dr. A. Francis Julian, Sumit Kumar (for M/s. Arputham, E'. Aruna & Co.)
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