The existence is outcome of continuous process of Struggle. A baby is outcome
of fight amongst hundreds of thousands of brother sperms in penetrating one
ovum. In ancient days man struggled against the nature in order to survive.
Changing time witnessed the fight amongst the feudal society in order to advance
their respective interest on the land.
With Advent of nuclear era and advent of global economy ,concept of direct war
amongst the nations seems to be a distant possibility and the same has been
replaced by the battle amongst the multinational corporations/companies on
economic front. Modern days, the multinational companies are trying to extend
their economic interest in as much countries as possible.
A civilized society guarantees the fairness in battle. Providing equal
opportunities to all the contesting parties is one of the prime objectives of
the modern society. While writing this article ,the mythological story of famous
battle between the giant Elephant and the Crocodile ( as mentioned in the Hindu
scriptures), flickers across my mind.
Once upon a time there was a giant Elephant. His mere glimpse was sufficient to
instill feeling of fear amongst the small animals. Once the Elephant went to the
bank of the Ganga, in order to quench his thirst. Inside the water there was a
Crocodile, lying in waiting for a prey. As soon as the Elephant entered into the
water, the Crocodile caught one of his legs and started to drag him into the
water. As tug of war progressed, the Crocodile was prevailing over the Elephant
and for a moment life of Elephant was seemed to come to an end.
Getting panicky, the Elephant fervently began to pray Lord Vishnu (The Hindu
God) and Lord Vishnu descended upon Earth in order to rescue the life of
Elephant by killing the Crocodile." The Crocodile prevailed over the Elephant
not because he was more powerful than the Elephant but because of the fact that
the battle was fought inside the water, which was more suitable to the Crocodile
. Place of battle plays decisive role in its outcome and present story
highlights the same. Had the battle would have been fought on the land , there
would have been different story. "
In modern civil disputes, the concept of territorial jurisdiction draws its
origin from the fact that defending party should not be put to inconvenience at
the instance of another party. The idea is to provide fair opportunity to both
the party. Today territorial jurisdiction plays important role in outcome of
civil disputes amongst the parties.
This article proposes to deal with the significance of trade mark application
vis-à-vis territorial jurisdiction in an action of Trade Mark Infringement and
an action of Passing off especially in light of recent Judgment passed by the Hon'ble
Apex Court in Dhodha House Vs. S.K.Maingi
as reported in 2006(32) PTC 1
(SC) and different interpretations given thereto by the Hon’ble High Courts.
Cause Of Action
Sections 16-20 of Code of Civil Procedure deal with the territorial jurisdiction
in civil court. Section 16-18 of C.P.C deal with territorial jurisdiction in
suits pertaining to immovable property. Section 19 of C.P.C deals with
territorial jurisdiction in suit pertaining to movable property. Section 20 of
C.P.C deals with all other cases not covered by the aforesaid provisions of
C.P.C. Indisputably suit for Infringement of trade mark/Passing off would be
governed by Section 20 of C.P.C and according to which all such suit may be
filed ,at the option of plaintiff , in any of the following court viz:-
- Within whose local jurisdiction ,the cause of action , wholly or in part
- Within whose local jurisdiction the defendant resides or carries on
business or personally works for gain.
To appreciate the significance of trade mark application filed either by the
plaintiff or the by the defendant, in conferring the jurisdiction of the court,
it is necessary to understand the term cause of action as application for
filing of registration of trade mark, would be covered under the Section 20 (c)
of C.P.C, which says that the suits can be filed at the places where the cause
of action, wholly or in part arises.
The term cause of action has not been defined in C.P.C however this term can be
understood with the help of interpretations given thereto by various courts.
A Cause of action means every fact, which if traversed, it would be necessary
for the plaintiff to prove in order to support his right to a judgment of the
court. AIR 1949 PC 78(at 86),AIR 1989 SC 1239.
It is a action which gives occasion for and forms the foundation of the Suit.
AIR 1970 SC 1059. Cause of action is bundle of essential facts which are
necessary for the plaintiff to prove before he can succeed in the suit. (1978) 2
SCC 91(Para10). Cause of action means every fact which it would be necessary for
the plaintiff to prove, if traversed in order to support his right to the
judgment of the court. It doesn’t comprise every piece of evidence which is
necessary to prove each fact but every fact but every fact which is necessary to
Everything which, if not proved, gives the defendant an Immediate
right to judgment must be part of cause of action. Read Vs Brown (1888) 22 Q.B.D
128. From the aforesaid interpretations given by various courts it can be said
that cause of action means every fact which is necessary for the plaintiff to
prove to support his right to the judgment of the court and everything which if
not proved, gives the immediate right to the defendant for the judgment.
What Facts Are Necessary To Be Proved In An Action Of Passing Off
In Trade Mark Act 1999, the term Passing off is nowhere defined, however some
guidance can be taken from the interpretation given to the term Passing Off by
In N.R.Dongre Vs Whirlpool Corporation
1996 (5) SCC 714 case the Hon'ble Apex
Court observed: "The concept and principle on which passing off action is
grounded is that a man is not to sell his own goods under the pretence that they
are the goods of the another man". The Apex court further clearify in Kaviraj
Durga Dutt Sharma Vs Navratna Pharmaceutical Laboratories
AIR 1965 SC 980. "
use by the defendant of the trade mark of the plaintiff is essential in an
action of Passing off". In Ruston & Hornby Ltd Vs Zamindara Engineering Co
1970 SC 1649,the Hon'ble Court observed that " In a passing off action the issue
is as follows - Is the defendant is selling his goods so marked as to be
designed or calculated to lead purchasers to believe that they are the
plaintiff's good." In Laxmikant V Patel Vs Chetanbhai Shah
AIR 2002 SC 275, The
apex Court observed " the law does not permit anyone to carry on his business in
such a way as would persuade the customers or client in believing that the goods
or services belonging to someone are his or associated therewith.
Industries Vs Banarasi Dass Gupta
AIR 1980 Del 254 the Hon'ble Delhi Court
observed as follow:
In an action of passing off all that is needs to be proved
is that the defendant's Goods are so marked ,made up or described by them as to
calculated to mislead ordinary purchasers and to lead them to mistake the
defendant's goods for those of the plaintiff's and it is the tendency to mislead
or to confuse that forms the gist of passing off action.
In an action of passing off the plaintiff is required to prove:
- Deception and
P. Narayanan (Para 25.13 ,Vol VI,Page 696).
Section 134 (1) (c) of Trade Marks Act 1999,also helps us in understanding that
what are the things/facts, which the plaintiff is not required to establish in
an action of passing off. Section 134 (1) (c) of Trade Marks Act 1999 reads as
"No suit for passing off arising out of use by the defendant of any trade mark
which is identical with or deceptively similar to the plaintiff's trade mark,
whether registered or unregistered ,shall be instituted in any court inferior to
a District court having jurisdiction to try the same."
Bare perusal of the above mention section makes it quite clear that an action of
passing off has got nothing to With the plaintiff’s Trade Mark being registered
or unregistered. Further reading of the section clearly establishes this fact
that the cause of action for Passing off arise only by the use of impugned Trade
Mark by the defendant. This fact has been confirmed by the various courts.
To appreciate the term use by the defendant of any trade mark, it is necessary
to understand the term trade mark, as defined in Trade Mark Act 1999.
Section (zb) of Trade Mark Act 1999, reads as follows:
2(zb)Trade Mark means a mark capable of being represented graphically and which
is capable of distinguishing the goods or services of one person from those of
others and may include shape of goods, their packaging and combination of
- In relation to chapter XII (other than Section 107), a registered trade
mark or a mark used in relation to goods or services for the purposes of
indicating or so to indicate a connection in the course of trade between the
goods or services, as the case may be, and some person having the right as
proprietor to use the mark; and
- In relation to other provisions of this Act , a mark used or proposed to be
used in relation to goods or services for the purposes of indicating or so to
indicate a connection in the course of trade between the goods or services , as
the case may be , and some person having the right, either by way of permitted
user ,to use the mark whether with or without ant indication of the identity of
that person and includes a certification trade mark or collective mark.
The above mentioned section makes it clear that for a mark, to be qualified as a
trade mark, its user; inter-alia has to in the course of trade. In other way the
user of the trade mark has to be in the course of trade or a commercial user. It
is submitted that a user which does not pertain to user of a mark in the course
of trade and/or a commercial user it can never amount to user of a trade mark
and by necessary implication the same can never be basis of bringing an action
of either Infringement of trade mark or an action of passing off.
From the above discussion, it is quite clear that in an action of passing off,
the cause of action can be based on every fact which:
Significance Of Trade Mark Application In Creating Jurisdiction In An Action
Of Passing Off.
- establishes tremendous reputation of plaintiff’s trade mark,
- proves misrepresentation/user by the defendant in the course of trade,
that his good are the goods of the plaintiff, and
- pertains to damage occurred to the plaintiff because of impugned
activity of the defendant. Every fact which establishes these facts, can be
said to form the part of cause of action in an action of passing off.
In para 38 of the Dhodha House case (Supra) the Hon'ble Apex Court, after
relying on the Premier distelleries Pvt Ltd Vs Shashi Distilleries cae
907(Mad)],held that the cause of action in a suit for passing off has nothing to
do with the location of Registrar's office or the factum of applying or not
applying for registration.
In AIR 1991 Karnataka 303 and 2002 ( 25) PTC 704
(Karnataka) , it has been held that registration of trade mark is wholly
irrelevant for the action of passing off. In AIR 1978 Delhi 250, the Hon'ble
court observed that the registration of the mark or similar mark prior in point
of time to user by the plaintiff is irrelevant in an action of passing off.
From above discussions it is quite clear that in an action of
passing off, the filing of trade mark application either by the plaintiff or by
the defendant is totally irrelevant and no cause of action can be based thereon.
It is trite to say that cause of action constitutes every fact, which if not
proved, gives the defendant an immediate right to judgment.
In an action of
passing off, every fact which is necessary in establishing goodwill and
reputation of the plaintiff’s trade mark can be said to gives accrual of cause
of action. Now question is that whether filing the trade mark by the plaintiff,
establishes the goodwill and reputation of the plaintiff’s trade mark or not?
Answer is no.
As the goodwill and reputation of a trade mark can be established
only by the commercial user of the same in the market and filing of trade mark
application has got nothing to do with commercial user of the same. Thus trade
mark application filing by the plaintiff does not give rise to accrual of cause
of action in an action of passing off.
More so in an action of passing off, the plaintiff is not required to establish
that he is registered proprietor of the trade mark. In the other way it can be
said that an action of passing off lies irrespective of this fact that whether
the plaintiff is registered proprietor of trade mark or not? It has also been
observed by the Apex Court in Corn Products Refining Co Vs Shangrilla Food
AIR 1960 SC 142 that preserve of mark in the register doesn’t prove
its user at all.
This view was supported by various courts AIR 1978 DELHI 250.
Thus the factum of plaintiff, being registered proprietor of a trade mark also
does not give rise to accrual of cause of action in an action of passing off.
Moreover filing of trade mark application by the defendant doesn’t correspond to
defendant's user. In other way filing of trade mark application by the defendant
has got nothing to do with the user in the course of trade and by mere filing
trade mark application, the defendant is not trying to misrepresent in the
course of trade that his goods are the goods of the plaintiff. It is well
settled proposition of law that registration is prima facie evidence of the
validity and preserve of a mark on the register does not proves the user at all.
Hence filing of trade mark application by the defendant and/or registered trade
mark of defendant is irrelevant in an action of passing off. In other way it can
be said that in an action of passing off, the locus of trade mark office, in no
way gives rise to cause of action. The same view has been duly supported by the
Apex court in Dhodha House(Supra) Judgment.
With due respect to the Hon'ble Delhi High Court, it is submitted that the in
its recent judgment viz: Pfizer Products Inc Vs Rajesh Chopra & others
32) PTC 301 (Del) the Hon’ble court did not perceive the ratio of Dhodha House
Judgment in right perspective in as much as in an action of passing off the
Hon’ble court relied on the filing of trade mark application.
In a very recent Judgment titled as M/s Parle Products Pvt. Ltd Versus M/s Surya
Food 7 Agro Ltd
, reported as 2007 (35) PTC 542 (Mad), the Hon’ble Madras High
Court observed in order to establish his right to an injunction in an action
for passing off, it is wholly un necessary for the plaintiff to demonstrate that
he had applied for registration of the mark under the Trade Mark Act.
failure to demonstrate that he had applied an application for registration will
not clothe the defendant with a right to obtain dismissal of the suit. The
application for registration is therefore, a factor of no relevance in an
action for passing off(para 6).
In the said judgment the Hon’ble Court further observed:
the essence of the
action of passing off id deceit on the part of the defendant in trying to pass
off his goods as that of the plaintiff. That is a pure question of fact to be
established by the proper evidence. The cause of action can arise where deceit
is practiced. It can not arise at a location where the plaintiff who claims the
relief, chooses to lodge an application for registering his mark, without any
deceit having been practiced within that Jurisdiction.(para 7).
In para 9 of the said Judgment the Hon’ble have gone one step further in
observing that that in an action for passing off , the cause of action has got
nothing to do with the location of the registrar’s office or factum of applying
or not applying for registration. Filing of an application for registration of a
trade mark therefore doe snot constitute a part of cause of action where the
suit is one for passing off.
By necessary implication it is clear that filing of trade mark application
either by the plaintiff or by the defendant has got nothing to do with the
passing off action. Or in other words it can safely be said that locus of office
of trade mark office , either qua the plaintiff’s trade mark application filing
or qua defendant’s trade mark application filing do not form part of cause of
action in an action of passing off. Any reliance on the same is extraneous and
irrelevant in such cases.
What Facts Are Necessary/Relevant In An Action Of Infringement Of Trade Mark
In order to understand that what facts are necessary/relevant in an action of
Infringement of trade mark, few relevant sections of the Trade Marks Act 1999
are required to be gone through. Section 27(1) of trade marks act 1999 reads as
follows:No person shall be entitled to institute any proceeding to prevent, or
to recover damages for, infringement of an unregistered trade mark.
While Section 134(1)(a)and (b) or trade marks act 1999 reads as follows:
(a) for infringement of a registered trade mark, or (b) relating to any right in
a registered trade mark; shall be instituted in any court inferior to a District
Court having jurisdiction to try the suit. Combined reading of section 27(1) and
section 134 (1)(a) and (b) of Trade Marks act 1999 makes it quite clear that for
the purposes of bringing an action of Infringement of a trade mark, plaintiff is
required to establish that he is the registered proprietor of the trade mark.
other way it can be said that in an action of infringement of trade mark, the factum of plaintiff in failing to establish that he is registered proprietor of
the trade mark, gives an immediate right of judgment to the defendant. The
logical conclusion is that, every fact which establishes that the plaintiff is
registered proprietor of the trade mark, gives rise to cause of action in an
action of infringement of trade mark. Prima facie it appears that locus of trade
mark office, qua the plaintiff’s trademark application filing, gives rise to
cause of action.
More so same view was supported by Division Bench, Madras High Court in Premier
Distilleries Pvt Ltd Vs Shashi Distilleries Case
2001 PTC 907 (Mad)(DB) Where
the Hon’ble DB observed as follows The right to bring an action for
infringement in the court within whose jurisdiction the trade mark registry is
located ,is founded on the fact that the relief sought in the action one for
infringement and not merely for passing off.
Where it is alleged that a trade
mark is infringed, it is essential for the plaintiff to show that the mark had,
in fact, been registered. The failure to establish that fact will result in the
dismissal of the suit for infringement, satisfying the test formulated by Fry, L.J. for ascertaining the cause of action, namely everything which, if not
proved, entitles the defendant to an immediate right to judgment.
With due respect to the Hon’ble DB it is submitted that mere the locus of trade
mark registry , qua the plaintiff’s trade mark application filing can not be
basis in assuming the jurisdiction of court. Let us examine relevant section of
the Act. Section 134(2)of Trade Marks Act1999 provides for additional forum to
the plaintiff according to which the suit for infringement of trade mark can be
filed to the court, in whose jurisdiction, at the time of institution of suit,
the plaintiff actually and voluntarily resides or carries on business or works
This additional forum was not there in the old Trade & Merchandise
Marks Act 1958.Had the presumption that the locus of trade mark registry, qua
the plaintiff’s trade mark application filing can provide the jurisdiction of
court be taken to be reasonable, then there would not have been any occasion
for the legislature to providing for additional forum to the plaintiff by virtue
of Section 134 (2) of Trade Mark 1999. Let this proposition be explained by one
example. A legal entity namely X carries on its business in Delhi. A files trade
application before the trade mark registry, at Delhi office and after some time
the same gets registered in his name.
A files a suit for infringement against Y(residing at Ghaziabad )before the
Delhi High Court in the old Trade & Merchandise Marks Act1958.In old Act
additional forum was not there. If we take the above presumption to be
reasonable i.e.( the locus of trade mark registry , qua the plaintiff’s trade
mark application filing can provide the jurisdiction of court), then mere this
fact that plaintiff’s trade mark was filed and registered from trade mark
registry, Delhi, could give rise to accrual of cause of action even in old Act.
Hence even in old act , for the purposes of conferring jurisdiction to Delhi
High Court this fact became irrelevant, whether the plaintiff was actually
carrying on its business or works for gain at Delhi or not? The insertion of
additional forum by legislature in Section 132(2)Trade Marks Act 1999 creates
clouds over this proposition.
There are also many other reasons which further fortify this argument that in
infringement case ,trade mark application filing by the plaintiff cannot give
rise of accrual of cause of action, or in other words it can be said that the
same can not be a basis of conferring jurisdiction in such cases. Bare perusal of
Scheme of the Trade Mark Act 1999 and rules framed there under clearly
establishes this fact that location of trade mark registry is not based on
jurisdiction basis, rather it meant for facilitating the registration of trade
Section 5 of the Trade Marks Act 1999 provides for head office and
branch offices of Trade Mark Registry. In fact in Mumbai, there is head office
of Trade Mark Registry while branch offices are located in Delhi,
Chennai, Calcutta and Ahmedabad. Section 6 of the Trade Mark Act provides for
the register where entry shall be entered pertaining to all the registered trade
The compilation and publication of the trade mark journal is handled only by the
head office. Thus it is quite clear that different branch offices are not
intended to work as independent offices. Rule 4(a)(ii) of Trade Marks Rule 2002
provides that where there is no any entry in the register as to principal place
of business in India, Appropriate office of trade mark registry for the purposes
of making trademark application, or for the purposes of filing notice of
opposition would be guided by the place mentioned in addresses for service in
Thus the locus of appropriate trade mark office does not correspond to
actual place of business of the applicant. Rule 5 of the Trade Marks Rules 2002
provides that jurisdiction of the appropriate Trade Mark office is not altered
by change in the principal place of business or address for service in India.
Under Trade Marks Act 1999,all the appeals against the order of Registrar of
Trade Marks, instead of going to Different High Court according to the
Jurisdiction, has to go before the Intellectual Property Appellate Board at
Chennai only, irrespective of the jurisdiction. Thus in view of scheme of the
Trade Marks Act 1999 and rules made there under it is clear that locus of trade
mark registry cannot be taken to be one of the basis for the purposes of
conferring jurisdiction in Infringement of Trade Marks cases.
More so, in AIR
1974 DELHI 40 the Hon’ble High Court also returned this finding that the
registration in plaintiff’s favour of the trade mark by itself is not sufficient
to support the action of infringement. Now let us examine that whether in
infringement cases, jurisdiction can be based on the factum of trade mark
application filed by the defendant?Let us examine Dhodha House Case in this
In Dhodha House case
(Supra) the Apex court dealt With two civil appeals.
Appeal no 6248 of 1997,the plaintiff was carrying on its business in the
District of Ghaziabad while the defendant was based in Faridkot. Plaintiff
claimed to be registered proprietor of Trade Mark Dhodha House under no 277714-B
in class 30 and registered copyright holder under no A-5117/1970 and
A-5330/1970.The Plaintiff filed composite suit of infringement of trade
mark/passing off/infringement of copyright against the defendant before the
District Judge Ghaziabad. It is important to mention here that no trade mark
application was filed by the defendant.In Civil Appeal No.16/1999,both the
plaintiff and the defendants were based at Rajkot.
The plaintiff claimed to be registered proprietor of Trade Mark and copyright
Field Marshal. The first defendant was alleged to be registered under the
Companies Act in Delhi. The impugned Trade Marks of defendant were published
in India by trade mark registry in respect of defendant's applications for
registration, including the Union Territory of Delhi. The Plaintiff filed
composite suit of infringement of trade mark/passing off/infringement of
copyright against the Defendant before the Hon'ble Delhi High Court.In Civil
Appeal no 6248 of 199, counsel for the plaintiff relied on M/S Jawahar
Engineering Company Vs M/S Jawahar Engineers Pvt Ltd
1983 PTC 207.
In Jawahar Engineers Case,
plaintiff was registered proprietor of Trade Mark Jawahar whereas the defendant has applied for registration of the trade mark
Jawahar for few states of India. In that case it was held having
regard to the fact that an advertisement had appeared in the trade mark journal
as regard application for registration of the trade mark of defendant therein,
the Delhi high Court would have jurisdiction in the matter.
In para no 31 of the
Dhodha House Judgement , the Hon’ble Supreme Court discussed the Jawhar
and returned the finding as follows:
The said decision has no
application in the instant case for more than one reason. For the purposes of
registration of a trade mark, an application must be filed in the branch office
of registrar of trade mark. In the said para the Hon’ble Court further observed An advertisement by itself in a journal or a paper would not confer
jurisdiction upon a court.
In para 32 the Dhodha House Judgement, the Apex Court further observed a cause
of action will arise only when a trade mark is used and not when an application
is filed for registration of the trade mark. In a given case an application for
grant of registration certificate may or may not be allowed. In said para the
Hon’ble Apex Court further observed:
In other words a suit may lie where an
advertisement of trade mark or copyright has taken place but a cause of action
for filing the suit would not arise within the jurisdiction of court only
because an advertisement has been issued in the Trade Mark Journal or any other
Journal notifying the factum of filing of such an application.
Thus it is quite clear that the Hon’ble Apex Court returned the finding that
cause of action for infringement of trade mark shall arise only when the trade
mark is used and not an trade mark application is filed. By logical conclusion
it can be said that no cause can be based on defendant’s application, as the
same does not correspond to defendant’s commercial user. Even Section 31 of
trade marks Act 1999 says as follows:- Registration to be prima facie evidence
Section 29 of trade marks act provides that in what circumstances it can be said
that a registered trade mark is being infringed.29 (1) A registered trade mark
is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade ,a trade mark which
is identical with ,or deceptively similar to ,the trade mark in relation to
goods or services in respect of which the trade mark is registered and in such a
manner as to render the use of the mark likely to be taken as being used as a
trade mark.29(2)A registered trade mark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which because of ---------29(4) A registered trade mark
is infringed by a person who not being a registered proprietor or a person using
by way of permitted use, uses in the course of trade , a trade mark which
--------29(5) A registered trade mark is infringed by a person if he uses such
registered trade mark as his trade name or part of his trade name or name of the
business concern or part of the name ,of his business concern dealing in goods
or services in respect of which the trade mark is registered.29(6) For the
purposes of this section, a person uses a trade mark, if, in particular, he:
- affixes it to the goods or the packaging thereof;
- Offers or exposes goods for sale, puts them on the market, or stocks
them for those purposes under the registered trade mark , or offers or
supplies services under the registered trade mark
- imports or exports goods under the mark;
- uses the registered trade mark on business papers or in advertising.
29(7) A registered trade mark is
infringed by a person who supplies such registered trade mark to a material
intended to be used for labeling or packaging goods, provided such person, when
he applied the mark, knew or had reason to believe that the application of the
mark was not duly authorized by the proprietor or a licensee.29(8) A registered
trade mark is infringed by any advertising of that trade mark if such
- takes unfair advantage of and is contrary to honest practices in
industrial or commercial matters; or
- is detrimental to distinctive character; or
- is against the reputation of the trade mark.29(9)
Where the distinctive
elements of a registered trade mark consists of or includes words, the trade
mark may be infringed by spoken use of those words as well as by their visual
representation and reference in this section to use of a mark shall be construed
It is clear that for an action of Infringement, the commercial user of impugned
trade mark by the defendant has to be established. Now let us examine that on
the question of infringement of trade marks, what stand has been taken by the
Infringement is use by the defendant for trading purposes upon
or in connection with the goods of the kind for which the plaintiff’s right to
exclusive use exists, not being the goods of the plaintiff, of a mark identical
with the plaintiff’s mark or comprising something some of its essential features
or colorably resembling it so as to be calculated to cause goods to be taken by
ordinary purchasers for the goods of the plaintiff. Abbey Sports Co Ltd Vs
, (1936)53 RPC 300 at 304.
A Plaintiff , in a suit on the
basis of infringement, has to provide not only that his trade mark is infringed
but a person who is not a registered proprietor of the mark or the registered
user thereof but that the said person is using a mark in the course of trade.
S.M.Dychem Ltd Vs Cadbury (India) LTD
AIR 2000 SC 2114.
The use by the defendant of the trade mark of the plaintiff is sine qua non in
an action for infringement of trade mark. Kaviraj Pandit Durga Dutta Sharma
Vs Navratna Pharmaceutical Laboratories
AIR 1965 SC 980. In the same
judgment it was further held that:
When once the use by the defendant of the mark which is claimed to infringe the
plaintiff’s mark is shown to be in the course of trade , the question whether
there has been an infringement is to be decided by the comparison of the two
From above mentioned discussions it can be said that in order to bring an action
of infringement of registered trade mark, the plaintiff has to establish the
user/proposed user of trade mark by the defendant in the course of trade. Any
user , which is not in the course of trade, cannot be said to form cause of
action in infringement of trade mark cases.Now let us examine the term Use in
the course of trade.
The term use in the course of trade has no where been defined in the Trade Mark
Act 1999.In Hermes Tm (1982)RPC 425 AT 432 it is observed that:
In the course of trade is wide enough to cover the steps necessary for the
production of goods as well as their actual placing on the market.
The user of trade mark can further be explained by bare perusal of a recent
judgment of Hon’ble Delhi high Court titles as M/s Yonex Kabushiki Kaisha
Versus M/s Phillips International & others
, reported as 2007 (35) PTC 345
(DEL) , where in para 14 of the judgment the Hon’ble Court observed as follows
the plaintiff has sought to establish the allege use of the trade mark YONEKA in
the India on account of the letter dated 06.08.2005 purported to have been
issued by the Badminton Association of India.
The said declaration also did not prove use of the trade mark on commercial
basis in any manner whatsoever. The said letter talks about supply of the
shullecocks free of costs. The question whether any shuttlecocks, as per
alleged agreement with association ,were supplied or not remains unanswered on
the part of the plaintiff. Furthermore , distribution of free samples does not
constitute commercial use of the trade mark ‘.
It is submitted that the Hon’ble Delhi High Court emphasized on this fact that
alleged user of the trade mark has to be commercial user and in the given case
the Hon’ble Court returned the finding that distribution of free samples does
not constitute commercial use of the trade mark. The facts remains that use of a
trade mark has to be commercial in nature. Further it is observed in para no.
23.24 of Trade Marks & Passing off, Volume VI, P.Narainan , relying on the
Irvings Vs Horsenail
(1934) 51 RPC 110 at 116 case explained the term use
as a trade mark. The expression (use as a trade mark) means in such a manner
as to render the use of the mark likely to be taken as being use as a trade mark
Thus it is clear that in order to constitute infringement the defendant must use
the offending mark as a trade mark within the meaning of definition under 2
S(1)(Zb).It is submitted that Section 2 S(1)(Zb) of the act contemplates the
user by the defendant in the course of trade. In para 2.21 of the said book,
P.Narainan further observed it is fundamental principle of law that the
function of a trade mark is to indicate the origin of the goods to which it is
applied. Aristoc Vs Rysta
(1945) 62 RPC 65 at 79. Connection in the
course of trade would therefore, mean any kind of connection consistent with
this principle. A connection with the goods in the course of trade means an
association with the goods in the course of their production and preparation for
From combined reading of section 2 (zb)(i)(ii)of Trade Mark Act 1999 [as already
mentioned in passing off section of this article], section 29 of Trade Mark Act
1999, and also from perusal of the above mention judgments of the courts, it is
quite clear that in order to succeed in an action of Infringement of trade mark,
the plaintiff is required to prove the user/proposed user of the impugned trade
mark by the defendant in the course of its trade activity.
The said user has to be commercial user. Thus every fact which proves the actual
commercial user and/or proposed commercial user of impugned trade mark by the
defendant is a relevant fact and the same gives rise to cause of action.
Defendant’s filing of application and/or advertisement thereof in the trade mark
journal does not amount to commercial user/proposed commercial user at all.
Even Hon’ble Delhi High Court observed in AIR 1972 DELHI 248 that mere
acceptance of an application for registration of a trade mark or its
advertisement confers no right. Mentioning of user column in the application is
not conclusive proof of the commercial user/proposed commercial user by the
defendant. That’s why there is provision of opposition so that the claimed user
and or proposed user (remember, the same doesn’t qualify for proposed commercial
user) of the defendant can be challenged.
Even if the defendant’s application qualifies the opposition and gets
registered, even then there is provisions for rectification of the same whereby
the proprietary rights of the defendant over the impugned trade mark including
its user can also be challenged. Even various court also held that registration
is prima facie evidence of validity (AIR 1972 DELHI 248 , AIR 1972 DELHI 46).The
defendant is not getting any right in the trade mark by filing application or by
its advertisement nor the same is any proof the user of the defendant’s trade
mark, leave aside the commercial user.
This is the reason why the legislature, while enacting the Trade Mark Act 1999,
did not include the act of trade mark application filing by the defendant as
infringement of trade mark (Section 29 of Trade Mark Act 1999).While bringing an
action of infringement of trade mark, onus heavily lies on the plaintiff to
establish the infringement of his trade mark by the defendant and the same
cannot be discharged only qua defendant’s trade mark application filing. Thus it
can be safely be said that in an action of infringement of trade mark/passing
off, no cause of action can be based on trade mark application filling, either
by plaintiff or by defendant.
Written By: Ajay Amitabh Suman,
Advocate, Delhi High Court