KJ 1 IN THE HIGH COURT OF JUDICUATURE AT MUMBAI ORDINARY ORIGINAL CIVIL JURISDICTION LEAVE PETITION NO.458 OF 2010 IN SUIT NO.862 OF 2010 Hindustan Unilever Limited .. Petitioner V/s. Ashique Chemicals & Anr. .. Defendants ---- Mr.Alankar Kirpekar for the Petitioner. Mustafa Safiyuddin with Shailendra Bhandare and Meghana Chandorkar for the defendants. ---- CORAM : R.S.MOHITE, J DATE : JUNE 29, 2010 P. C.: 1 This is a leave petition filed by the original plaintiff for grant of leave under clause-14 of the Letters Patent. It is the case of the petitioner (original plaintiff) that they hold a registered trade mark “Sun” and/or “Sunlight” and other label marks of which the word “Sun” or “Sunlight” is an essential feature. It is their further case that respondent nos.1 & 2 are using labels containing the word KJ 2 “Sunplus” in respect of detergent powder. According to the petitioner by such action, the respondents are infringing the petitioners’ trade mark and their action also amounts to the tort of passing off. Advocate for the petitioner contends that in view of section 134 of the Trade Marks Act 1999, they are entitled to file a suit where they are carrying on their business. He contends that the petitioners have their registered office in Mumbai and are carrying on business in Mumbai. According to him therefore, this Court has jurisdiction to entertain a suit for infringement of their trademark. In so far as a tort or passing off is concerned, in paragraph-11 of the petition, it is stated that in or about January-2010 they came across detergent powder sold by respondent no.1 under the mark “Sun plus” in the State of Tamil Nadu. That thereafter, they conducted inquiry in the market and also found the sample was manufactured by respondent no.2. The sample of the labels are at Exhibit-D and Exhibit-D-1 to the plaint. 2 In the plaint the petitioners have also stated that defendant no.2 had applied for registration of the mark “Sunplus” . They KJ 3 have disclosed in their plaint that the said application was still pending. 3 On behalf of defendant no.2, it is contended that the said application is now finally decided. A copy of the order passed by the Deputy Registrar of Trade Mark on 29.3.2010 has been produced to my perusal. Operative part of the said order is as under :- “ In view of the above circumstances, the Application No. 757598 in Class 03, is to proceed for registration and goods to be confined to read as Detergent Powder included in Class 3 for sale in the State of Kerala and Opposition No.721068 is dismissed.” 4 A perusal of the said judgment indicates that the registration has been limited to goods for sale in the State of Kerala because defendants have been able to establish that they have been selling such goods with the mark “Sunplus” in the state of Kerala for a long period of time. Advocate for the defendants relies upon KJ 4 section 28(3) of the Trade Marks Act, which is as under :- “Section 28(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.” 5 In the present case however, I find that the registration granted has been limited by the order of the Registrar to the State of Kerala. In the circumstances, in my view, section 28(3) will not KJ 5 come to the assistance of the defendants. Since the claim of passing off is in respect of goods manufactured in Tamil Nadu and it is the contention of the plaintiff that both the defendants have the same addresses in Chennai, which fact also born out by the address of defendant no.2 on the order passed by the Registrar of Trade Mark, in my view, the argument of the defendants based upon section 28(3) is not tenable. 6 It was also contended that the action for passing off was based upon different bundle of facts. This argument is based upon the premise that if the label of the defendants is viewed as a whole, then it has a different appearance. It is contended that for action of passing off, the label must be viewed as a whole and should not be limited to the word of the trade mark. I am not able to accept this contention because wording of the trade mark also is relevant for deciding an action of passing off. In this view of the matter, I have granted leave by a separate order on the docket of the petition. Petition stands disposed off. (R.S.MOHITE,J.) KJ 6