Case: K. Narayanan  Vs. S. Murali

2. The brief facts leading to the filing of these appeals may be narrated as under:3. The appellants are engaged in the business of manufacturing and selling Banana Chips and had adopted the trade mark A-ONE with respect to the said Banana Chips in 1986. The appellants had applied for an application for registration of the trade mark A-ONE before the Trade Mark Registry at Chennai on 6th of December, 1999 with respect to the said Banana chips. The application of the appellants for registration of the trademark is still pending.4. On 7th of February, 2000, the respondent filed O.S.No.1 of 2000 on the file of the District Judge at Coimbatore against the appellants, seeking an injunction restraining the appellants from passing off their goods using the trade mark A-ONE. The said suit was dismissed by the District Judge at Coimbatore on 23rd of December, 2001.5. The respondent filed three trade mark applications numbered as 899359, 899360 and 899361 on 24th of January,2000 before the Trade Mark Registry at Chennai seeking registration as user of the mark A-ONE throughout India since 1995.6. Thereafter the appellants filed C.S.No.482 of 2001 on 22nd of May, 2001 on the file of the High Court of Madras, seeking an injunction to restrain the respondent from passing off his goods using the trade mark A-ONE.7. The appellants filed an application before the High Court for leave to institute the suit and by order dated 11th of June, 2001, the High Court granted leave.8. On 6th of March, 2002, the learned Single Judge of the High Court dismissed the injunction application and also revoked the leave to sue, granted by it to the appellants.9. The appellants, being aggrieved by the aforesaid order, preferred appeals before the Division Bench of the High Court, which was dismissed by the Division Bench by an order dated 18th of April, 2002.10. Being aggrieved and dissatisfied with the aforesaid judgment of the Division Bench, the appellants have filed these Special Leave Petitions in this Court which, on grant of leave, were heard by us in presence of learned counsel for the

Reasoning:
24. Having heard the learned counsel for the parties and after carefully examining the aforementioned judgment of the High Court and also of the learned Single Judge, we do not find any infirmity in the judgment of Division Bench of the High Court holding 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 the plaintiff, whether the application for registration is filed by the plaintiff, or the defendant.25. In this connection, the following decisions of this Court may be strongly relied upon:-In Wander Ltd. and another Vs. Antox India P. Ltd., [1990 (Supp) SCC 727] (para 16), it has been observed asis said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader.In the present case, mere filing of a trade mark application cannot be regarded as a cause of action for filing a suit for passing off since filing of an application for registration of trade mark does not indicate any deception on the part of the respondent to injure business or goodwill of the appellants.27. In Dhodha House Vs. S.K. Maingi, [(2006) 9 SCC 41] (para 31), it has been observed ascause of action will arise only when a registered 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. The person in whose favour a registration certificate has already been granted (sic) indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum filing of such an application.In the aforesaid decision, this Court has expressed its concurrence to the views observed by the Division Bench of the High Court of Madras in Premier Distilleries Pvt. Ltd. Vs. Sushi Distilleries [2001 (3) CTC 652], which observed ascause of action in a suit for passing off, on the other hand and as already observed, has nothing at all to do with the location of the Registrars office or the factum of applying or not applying for registration. It is wholly unnecessary for the plaintiff to prove that he had applied for registration. The fact that the plaintiff had not applied for registration will not improve the case of the defendant either. Filing of an application for registration of a trade mark, therefore, does not constitute a part of cause of action where the suit is one for passing off." (Emphasis