JUDGMENT Prakash Narain, J.
(1) This appeal is directed against the order of a learned Single Judge of this court dismissing an application under Order 39, rules I and 2, read with Section 151 of the Code of Civil Procedure, moved by the appellant in Suit No. 381 of 1976, filed by it in this court claiming that the respondents herein were guilty of passing off their goods bearing the appellant's trade-mark and in consequence praying for the issue of a permanent injunction restraining respondents from using the trade mark of the appellant and holding that they arc liable to render accounts, pay damages and surrender all goods bearing the appellant's trade mark. Pending the disposal of the suit, the appellant prayed for issue of temporary injunction interms of its prayer for permanent injunction against the respondent.
(2) The appellant manufactures and markets various textiles including voiles and mulls. Respondent No. 1 is also a manufacturer of textiles, including voiles and mulls. Respondent No. 2 is the proprietor of respondent No. 1. Respondent No. 3 is a processor who is supplied unbleached textiles, including voiles, by manufacturers for being processed, dyed and printed with marks which are ultimately marketed by the manufacturers.
(3) The appellant's case is that it is manufacturing voiles and from the year 1973 up to the end of 1975 got the same processed by respondent No. 3. Thereafter it is getting goods manufactured by it processed from another party. It is claimed that the appellant directed respondent No. 3 after processing to put the trade mark in question on its voiles and respondent No. 3 complied with that direction. From 1976 the appellant gave this processing work to another party and is getting the same trade mark placed n its goods. However, in the middle of 1976 it came to know that respondents 1 and 2 arc using the identical mark for voiles manufactured by it by getting it processed from respondent No. 3.
(4) The respondents' case is that the said trade mark is a mark developed by and belongs to respondent No. 3. It is a processor's mark which it used to previously affix on the voiles processed by it for the appellant but is now affixed by it on the voiles processed by it for respondents 1 and 2. It is also claimed by respondents that the said mark is common to the trade.
(5) There was some confusion caused as to what the mark in suit is. We would first like to clarify that. The mark in question are the words "RAJARANI" and these two words arc written or embossed or printed or stamped in a particular manner. The proprietory interested claimed by the appellant is only to the extent mentionedabove. The appellant docs not claim any proprietary interest in any pictures printed or embossed or stamped on textile goods including voils. No proprietorship in any device of "Man and Woman" or "Kings or Queen" is claimed by the appellant.
(6) As noticed earlier, the proprietary interest in the aforesaid trade mark is claimed by the appellant by virtue of user. This claim is contested on the grounds, (a) that the mark belongs to respondent No. 3, (b) that the mark is common to the trade, and (c) there have been registrations of this mark prior to 1973 in one case even with a disclaimer in the use of the words "RAJARANI".
(7) The learned Single Judge on the material placed before him came to the conclusion that although, prima facic, the trade mark cannot be said to be the processor's mark, as claimed by the respondents; yet the appellant would not be entitled to the discretionary relief of injunction inasmuch as (a) the words "RAJARANI" were common to- the trade, (b) there have been cases where applications for registration of the words "RAJARANI" have been declined by the trade mark registry, and (c) it appeared that both the appellant and respondent No. 3 were guilty of piracy in adopting a mark which was well known earlier. It may be noticed that the learned Single Judge, has observed that the appellant had used the mark in question even prior to 1973 and tharespondent No. 3 cannot be said to be the originator of the mark when it started processing the goods of the appellant. In short, therefore, the learned Single Judge was, prima facie, of the view that neither of the respondents can claim proprietary interest in the mark in question but then the appellant also could not claim proprietary interest on account of the prima facie evidence of earlier registrations of the mark "RAJARANI" and the view of the trade mark registry that no proprietary interest can be given in. the words "RAJARANI" or "King and Queen".
(8) In granting or not granting ad interim injunction, it is settled law. three factors have to be kept in view, namely, the establishment of a prima facie case, the balance of convenience between the parties and whether if the interim injunction is not issued it will cause irreparable injury to the applicant.
(9) The prima facie case in favor of the appellant stands established by admitted user of the mark by the appellant on voiles produced and marketed by it. It has been rightly so held even by the learned Single Judge. But this prima facie case made out by the appellant is said to be considerably watered down or weakened by the fact that the mark is alleged to be common to the trade and the various registrations adverted to in the learned Single Judge's order. The first point, therefore, that arises for consideration is whether this approach is correct. It must be remembered that the suit is one based on a claim of passing off. It is not a suit for infringement of a registered trade-mark. In a passing off action registration of the trade mark is immaterial. Section 27 of the Trade and Merchandise Marks Act; 1958, hereinafter referred to as the Act, reads as under :-
"27.No action for infringement of unregistered trade mark :
(1)No person shall be entitled to institute any proceeding to prevent, or recover damages for the infringement of an unregistered trade mark.
(2)Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof."
The relevant parts of Section 106 of the Act read as under :
"106.Reliefs in suits for infringement or for passing off :-
(1)The relief which a court may grant in any suit for infringement or for passing off referred to in Section 105 includes an injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for delivery-up of the infringing labels and marks for destruction or erasure.
(2)Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or an account of profits in any case-
(C)where in a suit for passing off the defendant satisfies the court-
(I)that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and (II)that when he came aware of the existence and nature of the plaintiff's trade mark, he forthwith ceased to use the trade mark complained of."
From a reading of the above sections it is clear that registration of mark in the trade mark registry would be irrelevant in an action for passing off. Furthermore, it will be clear that in deciding whether a particular mark is common to the trade use of that mark would be extremely relevant. Mere registration would not be enough.
(10) In M/s. L. D. Malhotra Industries v. M/s. Ropi Industries, I.L.R. 1976 (1) Delhi 278 (1), the law regarding registered and unregistered trade marks has been very succinctly enunciated by Avadh Behari, J. and this we say with great respect. In that case two industries were engaged in the manufacture of dress hooks which are generally used in garments. One was M/s. Ropi Industries and the other was M/s. L. D. Malhotra Industries, respectively referred to in the judgment as Ropis and Malhotras. The latter, i.e. Malhotras got their mark Kismat (word per se) registered with the Registrar of Trade Marks in December, 1967. In December, 1969 Ropis made an application for registration of their trade mark KISMAT. This application was advertised in the trade mark journal in November, 1970. In February, 1971 Malhotras filed an opposition. Ropis had sought registration of a label mark of which the word Kismat was the dominant part claiming that 'they were using the label mark Kismat since 1963. The Assistant Registrar held that Ropis were prior users of the trade mark KISMAT. In April, 1971 Ropis made an application for rectification of the register under Section 56(2) of the Act vis-a-vis the registration granted to Malhotras. That is how the matter came before Avadh Behari, J. He observed :-
"NOWit will appear that Ropis were first in the field. Their user dates back to April 1, 1963. But they are later in registration. Malhotras were the first to get their trade mark registered. In other words Ropis were prior in use and anterior in Registration while Malhotras were prior in registration but posterior in use. Who has got a better right of the two. That is the question.
"INthis appeal against the order of rectification four points arise for decision. First is the question of use of the trade mark. Use plays an all important part. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout "THEState and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected."
(11) In Consolidated Foods Corporation v. Brandon and Co., Private Ltd., , it was observed that "A trader acquires a right of property, in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade- The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced ana obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the Statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.
(12) For the purpose of claiming such proprietorship of a mark, it is not necessary that the mark should have been used for considerable length of time. As a matter of fact, a single actual use with intent to continue such use eo instanti confers a right to such mark as a trademark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with instent on the part of the proprietor to continue its production and sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trade-mark is the test rather than the extent or duration of the use. A mere casual, intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific article or goods. ."
(13) The Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., laid down the rule vis-a-vis user of a mark as opposed to registration of mark. It observed that the onus of proving user is on the person who claims it. It did not approve of looking into the register of trade marks where a mark may be entered to be any proof of user. To quote from the speech of A.K. Sarkar, J. : "Now, of course, the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of marks in the register (14) Thus, the law is pretty well-settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the merepresence of the mark in the register maintaned by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. In our opinion, these clear rules of law were not kept in view by the learned Single Judge and led him to commit an error.
(15) It has been urged on behalf of the respondents that inasmuch as the appellant had failed to show exclusive user, no prima facie case had been made out by it for issue of an interim injunction. The gist of the law relating to a passing off action was said to be as enunciated in T. Oertli AG. v. E. J. Bowman (London), Ld., Page, W. & Cov. (Turmix Sales) Ltd., H.G.H. Farnsworth S. S. Parness and F. A. Marlow, 1957 R.P.C. 388(4) and T. Oertli A.G. v. E. J. Bowman (London) Ld. and others, 1959 R.P.C.I.(5) (16) In T. Oertli AG's case while dismissing an action based on passing off it was observed that the plaintiffs had not made out the requisite association in England of the word "Turmix" with the machine of the plaintiffs' manufacture. When the above matter went to the House of Lords, whose decision is reported in 1959 R.P.C. I, the decision of the Court of Appeal was upheld.
(17) From a reading of the judgments in T. Oertli AG's case we cannot accept the contention that there is any rule of law laid down by any court that exclusive user must be shown before a case can be said to have made out for issue of an interim injuction. Mr. Anoop Singh has invited our attention to Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, to Emphasise the need for establishment of exclusive user by the appellant. The decision relied upon has no bearing on this aspect. Indeed, this was a decision arising out of a claim for infringement of a registered trade mark and also of alleged passing off.
(18) It was next contended that a passing off action is an action in deceit and the appellant had to prove that either there has been actual passing off or the use of the mark by the respondents has actually caused confusion or damage to the appellant. This proposition also, in our opinion, cannot be accepted. As was held in T. Oertli AG's case, referred to above :- "WEemphasise that this appeal is concerned solely with passing off and not with the infringement of Trade Mark or Patent rights. It is, of course, essential to the success of any claim in respect of passing off based on the use of a given mark or get up that the plaintiff should be able to show that the disputed mark or get up has become by user in this country distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff or that mark or get up will be understood by the trade and the public in this country as meaning that the goods are the plaintiff's goods. The gist of the action is that the plaintiff, by using and making known the mark or get up in relation to his goods, and thus causing it to be associated or identified with those goods, has acquired a quasi-proprietary right to the exclusive use of the mark or get up in relation to goods of that kind, which right is invaded by any person who, by using the same or some deceptively similar mark or get up in relation to goods not of the plaintiff's manufacture, induces customers to buy from him goods not of the plaintiff's manufacture as goods of the plaintiff's manufacture, thereby diverting to himself orders intended for and rightfully belonging to the plaintiff."
(19) Even the Supreme Court in Kaviraj Pandit Durga Dutt Sharma's case, referred to earlier, observed that the use by the defendant of a trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in an action for infringement. Salmond in his Law of torts (Twelfth Edition) described the basis of passing off action in the following words :- "THEcourts have wavered between two conceptions of a passing off action-as a remedy for the invasion of a quasiproprietary right in a trade name or trade mark, and as a remedy analogous to the action on the case for deceit. for invasion of the personal right not to be injured by fraudulent competition. It has recently been said that 'the true basis of the action is that the passing off injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business'. In general the violation of a right to property 19 actionable, even though it is innocent and though no damage has been proved. At common law it was necessary to prove an 'actual fraudulent intention' but a different view was taken in equity, and since the Judicature Acts it has been generally accepted that it is not necessary in an action for passing off to prove fraud that is to say, an intent to deceive. It is sufficient in all cases to prove that the practice complained of is calculated (that is to say, likely) to deceive."
In our view the proof of actual damage or fraud is unnecessary in a passing off action whether the relief asked for is injunction alone or injunction, accounts and damages. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out. We are fortified in coming to this conclusion by the observations in a bench decision of this court in Prina Chemical Works and others v. Sukndayal and others, I.L.R. 1974 (1) Delhi 545(7).
(20) Mr. Anoop Singh, learned counsel for the respondents has relied on Prina Chemical Works, case, referred to above, to contend that a pirated mark cannot be protected. His contention is that in view of the appellant and, perhaps also respondent No. 3, having pirated the mark "RAJARANI" from the proprietors of the same registered trade mark, namely, M/s. Karam Setty Venkataratnam of Chirala, Andhra Pradesh and Raj Mal Pahar Chand of Amritsar, the appellant cannot claim protection of this court. The reliance by the learned counsel on Prina Chemical Works' case is misplaced. In that case as a matter of fact it was found that the plaintiff was not the proprietor of the mark but someone else. In the present case relying on the observations of Avadh Behari, J. in the case of M/s. L. D. Malhotra Industries, v. M/s. Ropi Industries, I.L.R. 1976 (1) Delhi 278(1), we are of the opinion that the appellant has made out a case which requires consideration. In any case even on the evidence on record till now the registration in favor of M/s. Karam Setty Venkataratnam of Chirala, Andhra Pradesh, is restricted to Andhra Pradesh whereas the registration in favor of Raj Mal Pahar Chand of Amritsar is with a disclaimer to the use of the words "RAJARANI". It may be noticed that the registered trade marks of Andhra Pradesh and Amritsar are not the trade marks which are pleaded by the appellant and which we have already described. The appellant is, admittedly, a prior user of this mark vis-a-vis the respondents. That the said mark has some novelty and attractiveness is evident from the fact that both the appellant and the respondents have applied for registration of that mark in their favor. That the applications of the parties are still pending is neither here nor there. The registration of the mark in favor of either party would create a situation in which an action for infringement may be relevant. We are only concerned with the prima facie case in an action for passing off. We are in agreement with the learned Single Judge that the appellant has made out a prima facie case.
(21) We now come to the question of balance of convenience. It has been urged on behalf of the respondents that the mark "RAJA- RANI" is common to the trade and for this purpose reliance has been placed on the registration in Andhra Pradesh and Amritsar. There is a distinction between a mark being "common on the register" and "common to the trade". There is no evidence on record to show that there is actual user of this mark by any party other than the parties before us. Inasmuch as trade mark is property right, an invasion of it should be protected and the balance of convenience would obviously be in favor of the appellant who was admittedly the first user of this mark. We cannot accept that there is any prima facie evidence of respondent No. 3 being the owner of the mark. Indeed, this is belied by the registration applications filed by respondent No. 2. As was observed by Goddard, L. J. in Draper v. Trist and others, 1939(3) A.E.R. 513(8) - "INpassing off cases, however, the true basis of the action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business. . . . ".
This right is to be protected and the balance of convenience is in favor of the person who has established a prime facie right, to property.
(22) We now come to the question of irreparable injury. It is said that there is nothing on the record to show that any loss has been occasioned to the appellant and, in any case, the respondents can be ordered to keep accounts. We do not agree. The irreparable injury would be the likely confusion that may be caused if respondents arc allowed to use the mark which we have held prima facie as being the mark of the appellant. It will take some time before the suit is decided. If the respondents are not restrained by means of an interim injunction they would continue to market their goods with the offending mark. That ultimately might be held to be long user and the ultimate relief of permanent injunction may be refused on the plea of common or concurrent user. At the moment no plea of common or concurrent user has been raised by the respondents but there is nothing to prevent them from doing so in future if they are allowed to use the trade mark for the duration of the pendency of the suit. The likelihood of confusion being caused and the likelihood of the plea of common or concurrent user being raised by a later stage would be the irreparable injury to the appellant.
(23) We, therefore, accept this appeal, reverse the judgment of the learned Single Judge and issue an interim injunction against the respondents restraining them from using the trade mark described by us earlier on any voiles that they may manufacture or market or process. We are restricting this injunction to voiles only, as is claimed by the appellant.
(24) Before we part, we may notice one other submission on behalf of the respondents and that is that voiles is textile goods and the trade mark is registered or accepted under the Act for textile goods. The contention is irrelevant, for the present suit is confined to an action regarding voiles only. Rule 137 of the Rules framed under the Act is relevant in this behalf.
(25) The appeal is disposed of with the above observations but we do not make any order as to costs at this stage.