Case: S. Syed Mohideen Vs. P. Sulochana Bai

p.12, and particularly the following: "A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated". Law in India under our present Act is similar." We uphold said view which has been followed and relied upon the courts in India over a long time. The said views emanating from the courts in India clearly speak in one voice which is that the rights in common law can be acquired by way of use and the registration rights were introduced later which made the rights granted under the law equivalent to the public user of such mark. Thus, we hold that registration is merely a recognition of the rights pre-existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognised in the form of the registration by the Act. 24. When we apply the aforesaid principle to the facts of the present case, we find that the impugned judgment of the High Court, affirming that of the trial court is flawless and does not call for any interference. From the plethora of evidences produced by the respondent she has been able to establish that the trade mark Iruttukadai Halwa has been used of by her/her predecessors since the year 1900. The business in that name is carried on by her family. It has become a household name which is associated with the respondent/her family. The Court has also noted that the Halwa sold by the respondents shop as Iruttukadai Halwa is not only famous with the consumers living in Tirunelveli, but is also famous with the consumers living in other parts of India and outside. Reference is made to an article published in Ananda Viketan, a weekly Tamil magazine dated 14.9.2003, describing the high quality and the trade mark Iruttukadai halwa sold by the plaintiff, the findings and conclusions reached by the Court below is perfectly in order, hence, the same does not call for interference, carries more merit, for, this name has been further acknowledged in a Tamil song from the movie "Samy" as follows:- "Tirunelveli Halwada, Tiruchy Malai Kottaida (Rock Fort)Tirupathike Laddu thantha SamydaIruttukadai Alwada, Idli Kadai Ayada (grandma)" When the above Tamil cinema song being repeatedly played in the State of Tamil Nadu has also spoken more about the trade mark Iruttukadai halwa, it goes without saying that the plaintiffs trade mark name Iruttukadai halwa has become a household name in the nook and corner of this State, therefore, no one can claim as his own the name Iruttukadai halwa except the respondent. 25. This factual position is summed up by the High Court in the following manner: "From the year 1900 onwards till now, the respondents family has been running the shop only for limited hours without selling any other item except halwa and the public not only in Tirunelveli but also in other parts of India has accepted the name as Iruttukadai halwa. As highlighted above, this could be seen from the telephone directory, issued in the year 1999, wherein the plaintiffs Iruttukadai halwa shop has been mentioned with the address at No. 14, East Car Street, Tirunelveli Town. Moreover, another interesting article published in Ananda Viketan, a weekly magazine dated 14.09.2003 in the State of Tamil Nadu clearly brings home the case of the plaintiff for the grant of declaration and injunction against the defendant on the ground that the word Iruttukadai halwa means and indicates only the halwa sold at Door No. 14, East Car Street, Tirunelveli Town belonging to the plaintiff alone. Moreover, the plaintiff has also registered the trade mark Iruttukadai halwa under Section 25(2) of the Trade Marks Act, 1999 with the Registrar. Under clause 16 even the paper and paper articles etc., and the trade marks certificate issued and registered under clause 30 also clearly proves the case of the plaintiff that she is the prior user of the trade mark Iruttukadai halwa. Therefore, the trial Court accepting the case of the respondent that she has officially registered the trade mark as a prior user rightly granted the decree for declaration and injunction against the defendant. When the plaintiff has proved that the person who gets into the business at the first point of time acquired the right to use the trade mark, the priority in use of the trade mark by the plaintiff will have to be recognised in law. Accordingly, when the plaintiff has earned the reputation and goodwill in the business in the name and style of Iruttukadai Halwa, the defendant cannot simply add the word Tirunelveli Iruttukadai Halwa, as the same has been used prior in point of time by the plaintiff. Therefore, the Court is of the considered opinion that allowing the defendant to use the trade mark Tirunelveli Iruttukadai Halwa will amount to deceiving the public, hence, no one can be permitted to encroach upon the goodwill and reputation of other party, particularly when a specific mark, though may be a descriptive word, has acquired a subsidiary meaning and is fully admitted by the particular company and when a party who cannot be termed as a honest current user of the mark on the reputation and goodwill of the company, it will constitute invasion of the proprietary right, hence, the same cannot be permitted any longer. In a situation like this, it is the bounden duty and obligation of the Court not only to protect the goodwill and reputation of the prior user, but also to protect the interest of the consumers." 26. Havin

Court's decision (1 = petition accepted / positive for appellant, 0 = rejected / negative): 0

Reasoning from the judgment:
0[ds]12. After considering the aforesaid submissions of the counsel for the parties, we find formidable force in the arguments of the learned counsel for the appellant predicated on the rights accrued to him as a result of the trade mark of Tirunelveli Iruttukadai Halwa having been duly registered by the Registrar under Section 25(2) of the Act. This is the aspect which cannot be down played at all. An owner of a registered trade mark is given certain invaluable rights including the right to use the said trade mark to the exclusion of others.In the present case, we find that no such opposition was made by the respondent when the application of the appellant for registration of trade mark Tirunelveli Iruttukadai Halwa was preferred and after following the procedure laid down therein the Registrar granted the registration. Further, it is curious to note that this registration is stated to be under Section 25(2) of the Act, which would imply that it was a case of renewal of registration in the year 2008 and the original registration was much earlier. However, those facts do not emerge from the record and the appellant also did not press this fact. Therefore, we shall proceed on the basis that the appellants trade mark was registered in the year 2008, more so when we find that actual date has no bearing to theuphold said view which has been followed and relied upon the courts in India over a long time. The said views emanating from the courts in India clearly speak in one voice which is that the rights in common law can be acquired by way of use and the registration rights were introduced later which made the rights granted under the law equivalent to the public user of such mark. Thus, we hold that registration is merely a recognition of the rightsin common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognised in the form of the registration by the Act.Having regard to the aforesaid findings of the courts below and the application of principle of law on these facts as enunciated above, we find full justification in the decree passed by the courts below in favour of the respondent.However, what is stated above is the reflection of Section 28 of the Act when that provision is seen and examined without reference to the other provisions of the Act. It is stated at the cost of repetition that as per this Section owner of registered trade mark cannot sue for infringement of his registered trade mark if the appellant also has the trade mark which is registered. Having said so, a very important question arises for consideration at this stage, namely, whether such a respondent can bring an action against the appellant for passing off invoking the provisions of Section 27(2) of the Act. In other words, what would be the interplay of Section 27(2) and Section 28(3) of the Act is the issue that arises for consideration in the instant case. As already noticed above, the trial court as well as High Court has granted the injunction in favour of the respondent on the basis of prior user as well as on the ground that the trade mark of the appellant, even if it is registered, would cause deception in the mind of public at large and the appellant is trying to encash upon, exploit and ride upon on the goodwill of the respondent herein. Therefore, the issue to be determined is as to whether in such a scenario, provisions of Section 27(2) would still be available even when the appellant is having registration of the trade mark of which he is using. After considering the entire matter in the light of the various provisions of the act and the scheme, our answer of the aforesaid question would be in the affirmative. Our reasons for arriving at this conclusion are the following:(A) Firstly, the answer to this proposition can be seen by carefully looking at the provisions of Trade Marks Act, 1999 (The Act). Collective reading of the provisions especially Section 27, 28, 29 and 34 of the Trade Marks Act, 1999 would show that the rights conferred by registration are subject to the rights of the prior user of the trademark. We have already reproduced Section 27 and Section 29 of thethe registration of the mark shall give exclusive rights to the use of the trademark subject to the other provisions of this Act. Thus, the rights granted by the registration in the form of exclusivity are not absolute but are subject to the provisions of thesaid provision 28 (3) nowhere comments about the rights of passing off which shall remain unaffected due to overriding effect of Section 27(2) of the Act and thus the rights emanating from the common law shall remain undisturbed by the enactment of Section 28(3) which clearly states that the rights of one registered proprietor shall not be enforced against the another person.The above were the reasonings from the provisions arising from the plain reading of the Act which gives clear indication that the rights of prior user are superior than that of registration and are unaffected by the registration rights under the Act. Secondly, there are other additional reasonings as to why the passing off rights are considered to be superior than that of registration rights.Traditionally, passing off in common law is considered to be a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. The three ingredients of passing off are goodwill, misrepresentation and damage. These ingredients are considered to be classical trinity under the law of passing off as per the speech of Lord Oliver laid down in the case of Reckitt & Colman Products Ltd. v. Borden Inc (1990) 1 All E.R. 873 which is more popularly known as "Jif Lemon" case wherein the Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnink v. Townend & Sonsapplicability of the said principle can be seen as to which proprietor has generated the goodwill by way of use of the mark name in the business. The use of the mark/carrying on business under the name confers the rights in favour of the person and generates goodwill in the market. Accordingly, the latter user of the mark/name or in the business cannot misrepresent his business as that of business of the prior right holder. That is the reason why essentially the prior user is considered to be superior than that of any other rights. Consequently, the examination of rights in common law which are based on goodwill, misrepresentation and damage are independent to that of registered rights. The mere fact that both prior user and subsequent user are registered proprietors are irrelevant for the purposes of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder/former user. That is the additional reasoning that the statutory rights must pave the way for common law rights of passing off.C. Thirdly, it is also recognised principle in common law jurisdiction that passing off right is broader remedy than that of infringement. This is due to the reason that the passing off doctrine operates on the general principle that no person is entitled to represent his or her business as business of other person. The said action in deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act. The authorities of other common law jurisdictions like England more specifically Kerlys Law of Trademarks and Trade Names, Fourteenth Edition, Thomson, Sweet & Maxwell South Asian Edition recognizes the principle that where trademark action fails, passing off action may still succeed on the samethe reading of aforementioned excerpts from Kerlys Law of Trademarks and Trade Names, it can be said that not merely it is recognised in India but in other jurisdictions also including England/UK (Provisions of UK Trade Marks Act, 1994 are analogous to Indian Trade Marks Act, 1999) that the registration is no defense to a passing off action and nor the Trade Marks Act, 1999 affords any bar to a passing off action. In such an event, the rights conferred by the Act under the provisions of Section 28 has to be subject to the provisions of Section 27(2) of the Act and thus the passing off action has to be considered independent Iruttukadai Halwa the provisions of Trade Marks Act, 1999.D. Fourthly, It is also well settled principle of law in the field of the trade marks that the registration merely recognizes the rights which are alreadyin common law and does not create any rights. This has been explained by the Division Bench of Delhi High Court in the case of Century Traders v. Roshan Lal Duggar Co. AIR 1978 Del 250 in the followingis 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 "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." (Emphasisview is expressed by the Bombay High Court in the case of Sunder Parmanand Lalwani and Others v. Caltex (India) Ltd. AIR 1969 Bombay 24 (D.B.) in which it has been held vide paras 32 and 38 asA proprietary right in a mark can beIruttukadai Halwa obtained in a number of ways. The mark can be originated by a person, or it can be subsequently acquired by him from somebody else. Our Trade Marks law is based on the English Trade Marks law and the English Acts. The first Trade Marks Act in England was passed in 1875. Even prior thereto, it was firmly established in England that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with goods irrespective of the length of such user and the extent of his trade, and that he was entitled to protect such right of property by appropriate proceedings by way of injunction in a Court of law. Then came the English Trade Marks Act of 1875, which was substituted later by later Acts. The English Acts enabled registration of a new mark not till then used with the like consequences which a distinctive mark had prior to the passing of the Acts. The effect of the relevant provision of the English Acts was that registration of a trade mark would be deemed to be equivalent to public user of such mark. Prior to the Acts, Prior to the Acts, one could become a proprietor of a trade mark only by user, but after the passing of the Act of 1875, one could become a proprietor either by user or by registering the mark even prior to its user. He could do the latter after complying with the other requirements of the Act, including the filing of a declaration of his intention to use such mark. See observations of Llyod Jacob J. in 1956 RPC 1. In the matter of Vitamins Ltds Application for Trade Mark at p.12, and particularly the following: "A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated". Law in India under our present Act isd said view which has been followed and relied upon the courts in India over a long time. The said views emanating from the courts in India clearly speak in one voice which is that the rights in common law can be acquired by way of use and the registration rights were introduced later which made the rights granted under the law equivalent to the public user of such mark. Thus, we hold that registration is merely a recognition of the rightsin common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognised in the form of the registration by the Act.When we apply the aforesaid principle to the facts of the present case, we find that the impugned judgment of the High Court, affirming that of the trial court is flawless and does not call for any interference. From the plethora of evidences produced by the respondent she has been able to establish that the trade mark Iruttukadai Halwa has been used of by her/her predecessors since the year 1900. The business in that name is carried on by her family. It has become a household name which is associated with the respondent/her family. The Court has also noted that the Halwa sold by the respondents shop as Iruttukadai Halwa is not only famous with the consumers living in Tirunelveli, but is also famous with the consumers living in other parts of India and outside.