Maqbool Ahmed and Others vs Peer Mohammad Mali

Qamar Hasan, J.—This appeal is directed against the judgment and. decree, dated 5th Isfandar 1359F., of the District Judge, Gulberga, who affirmed on appeal the decision of the Munsiff of Yadgir, dismissing the suit on the preliminary ground that it could not be maintained in view of bar enacted in Sub-section (1) of Section 19, Hyderabad Trade Marks Act.

The case adumbrated in the plaint briefly stated was that the first Plaintiff (since deceased and now represented by his male and female heirs including the second Plaintiff) started the business of manufacturing and selling bidis in 1330F., in partnership with one Abdul Wahab. The bidis were sold in the market in bundles and packets with Suraj Mark design as exhibited along with the statement of claim.

In 1339F., the design which was used as a trade mark on the packets and bundles containing the bidis was registered. The year 1350F., saw the dissolution of the partnership between the deceased-Plaintiff No. 1 and Abdul Wahab and a new partnership was formed with the Plaintiff 2 as a result of which the name of Plaintiff 2 was substituted in the place of Abdul Wahab on the labels bearing the trade mark. According to the Plaintiffs the bidis manufactured by them became very popular with the consuming publics by reason of their good quality and acquired reputation as ''suraj mark'' bidi associating it with the Plaintiffs as the manufacturers thereof. The complaint was that Defendant, Peer Muhammed Mali, in order to gain an easy and lucrative market for himself began to use a device for the bidis manufactured by him which was such a colourable imitation of the Plaintiff''s mark as was calculated to deceive the purchasers into the belief that they were buying the Plaintiffs'' goods.

It was, therefore, prayed that the Defendant and his servants or agents be perpetually restrained from using the impugned trade mark and from selling, the bidis manufactured by him wrapped up in labels bearing the colourable imitation of the Plaintiffs'' trade mark; that he be ordered to- deliver up to the Court the said labels for purposes of being destroyed and a decree for damages amounting to O.S. Rs. 500/- be passed in the Plaintiffs'' favour.

In his reply the Defendant admitted that he was manufacturing and selling the bidis but denied that the device which he was using was, a counterfeit of the Plaintiffs'' trade marks or its colourable imitation. Necessary issues, which could be framed on these pleadings, were raised on 15th Amardad 1357 F., and the case was posted for evidence. Before the evidence could be recorded the Defendant made an application dated 17th Ardibihisht 1358 F., stated that the Hyderabad Trade Mark Act had come into force.

According to that enactment the Plaintiffs trade mark would be deemed to be an unregistered one and anyone on the strength of such trade mark could not bring a suit to restrain the other from using his own trade mark. Therefore, the present suit should be dismissed without recording the evidence. The trial Judge after satisfying him self that the said enactment (hereinafter referred to as the Act) had come into force, framed a fresh issue as to whether the suit was maintainable under the Trade Marks Act in the absence of a registered trade mark.

It was contended before the Munsiff-Magistrate on behalf of the Defendant that as the trade mark on the alleged infringement of which, the relief of perpetual injunction and damages was sought against him had not been registered, as required by the Act, the bar of suit contained in. Sub-section (1), Section 19 of the Act applied. The vakil, for the Plaintiff in reply urged there that the suit was in the nature of a passing off action and was, therefore, saved by Sub-section (2) of the same section.

The Munsiff acceded to the contention raised by the Defendant and as already stated dismissed the suit. In, the lower appellate Court the Plaintiff-Appellants addressed no arguments and left the matter to be determined on the merits. The lower appellate Judge regarding the Plaintiffs'' trade mark as properly registered, held that the subsequent removal of Abdul Wahab''s name from the trade mark and substitution therein of the name of Plaintiff 2 compulsorily required fresh registration and as no such registration had been effected the suit fell within the mischief of Sub-section (1) of Section 19.

The learned advocate for the Appellants vehemently challenged before us the propriety of the judgments of the Courts below. No doubt, the parties claimed to have secured the registration of their respective trade marks under the Hyderabad Registration Act, but it was conceded that that sort of registration created no statutory right in the trade marks.

The question that remains to be decided is whether having regard to the facts disclosed in the plaint and1 reliefs sought thereby, the suit fell within the mischief of Sub-section (1) or was saved by Sub-section (2) of Section 19 of the Act. The Act came into force on 1st Amardad 1356F., and the present suit was instituted on 14th Meher 1356 P. The provisions of the Act, therefore, applied to the case. Now Section 19 of the Act runs as follows:

(1) No person shall be entitled to institute any proceeding to prevent or to 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 remedies in respect thereof.

It would thus appear that Section 19 deals with two categories of actions, which have become known as infringement action or an action on the trade mark and a passing, off action. Section 20 of the Act inter alia provides that the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of trade mark in relation to these goods and without prejudice to the generality of the foregoing provision, this right shall be deemed to be infringed by any person, who, not being the proprietor of a trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered and in such manner as to render the use-of the mark likely to be taken either - (a) as being used as a trade mark; or (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade.

These provisions go to show that in order to acquire a statutory proprietary right to the use I of the trade mark in respect of any goods it is indispensable that it must have been registered under the Act otherwise he would be barred from seeking relief for its infringement. In other words, in a trade mark action, the action "is baaed on a right of property.

As stated by Shavaksha in Annotation on the Trade Marks Act 1940 on p. 70, in an infringement action all that the pleadings require are a statement of the fact that the Plaintiff has registered his trade mark and the fact that the Defendant is using a mark which is identical with the Plaintiff''s mark or nearly resembles it as to be likely to deceive or cause confusion in the course of trade.

In Lissen Ltd. v. Harley 1929 46 RPC 11 (17)(A), Clauson J., observed as follows:

If you are restraining the infringement of a registered trade mark you can restrain the man from using the mark; but, if it is what is known as an unregistered trade mark, all you can do is to restrain him from selling article under a label containing that word without clearly distinguishing his goods from the goods of the Plaintiff which is quite a different thing.

It may be recalled that the Appellants on the facts stated in the plaint had prayed that the Defendant, his servants or agents be perpetually restrained from using the impugned trade mark and from selling the bidis manufactured by him wrapped up in the labels bearing the colourable imitation of the Plaintiffs'' trade mark. In other words, the suit was for perpetual injunction to interdict the Respondent from using the impugned trade mark and selling the bidis along therewith.

Judged by the standard laid down in Lissen''s case (A) referred to above the suit would appear to be a composite suit for infringement of the trade mark and for passing off of the goods. Then there was the further prayer for handing over the infringing label for the purpose of destruction which can only be appropriate in a trade mark action.

Unfortunately, it escaped the attention of the Courts below that the exclusive jurisdiction to entertain an action on the trade mark in view of the clear provisions of Section 70 of the Act lay with the District Court. Therefore, they ought not to have decided the effect of Sub-section (1) of Section 19 on the .suit as brought by the Appellants. They would have been well advised to return the plaint for presentation to the District Court.

It may, however, be pointed out that if the cause of action is based on an unregistered trade mark in a Court inferior to a District Court and the reliefs sought are of such a nature as to make the suit an infringement action, the proper course for the Plaintiff would be to amend the plaint so as to restrict himself to reliefs which he may properly ask for in a passing off action.

For the reasons stated above, we allow the appeal, set aside the judgments and decrees of the Courts below. We further direct that if the Appellants are agreeable to it they may be allowed to amend the plaint as hinted above. If, however, the Appellants insist on retaining the plaint in its present form, the plaint be returned to them in compliance with the provisions of Rule 10 of Order 7, Code of Civil Procedure. The costs of this Court and of the Courts below will abide the choice which the Appellants may make.