Premier Distilleries Pvt. Ltd. vs Sushi Distilleries

R. Jayasimha Babu, J.—The plaintiff which has its place of business at Bangalore had sought leave to institute a suit in this Court claiming an

injunction against passing off by the defendant, which is a company having its place of business at Pondicherry. It was alleged that a part of cause

of action for the suit arose in Chennai, as the plaintiffs application for registering it as the owner of a trade mark ""Royal Gold Cup"" whisky was filed

before the Registrar of Trade Marks at Madras on 18.3.1998. Leave was granted on 4.1.2001. Subsequently the defendant, after entering

appearance applied for revoking the leave. That application, having been dismissed, the defendant in the suit is in appeal before us.

It was submitted for the plaintiff that having regard to the fact that a trade mark when registered will date back to the date of application, the

factum of having filed an application for registration in the registry would suffice to clothe the plaintiff with the right to contend that a part of cause

of action in relation to passing off of a trade mark for registering which an application has been filed arise in the city in which Registrar''s Office is

located. As admittedly, the Registrar of Trade Marks has an office at Chennai and the application was filed in that office, it was submitted that a

part of cause of action has arisen in the city of Chennai, even though neither the plaintiff nor the defendant reside or carry on business in Chennai,

and the goods with reference to which right to the trade mark is asserted is not marketed in Chennai.

The submission so made, eventhough found favour with the learned single Judge, cannot be regarded as one which could properly be accepted.

As stated by Lord Esher in Read v. Brown, 1888 (22) Q.B.D. 128, cause of action means - Every fact which it would be necessary for the

plaintiff to prove, if traversed in order to support his right to the judgment of the Court. It does not comprise every piece of evidence which is

necessary to prove each fact but every fact which is necessary to be proved. As stated even more vividly by Fry, L.J., in the same case,

Everything which, if not proved, gives the defendant an immediate right to Judgment must be part of the cause of action.

The test formulated by Fry, L.J., if applied here, will demonstrate how fallacious the argument advanced by the plaintiff is. The action here is one

for passing off and not one for infringement of trade mark which has been registered. The action of passing off can be maintained even without

applying for registration of a trade mark and can be maintained even inspite of the registration of trade mark by a defendant. The registration of a

trade mark, by itself, will not preclude the action of passing off if the plaintiff is able to demonstrate necessary ingredients for establishing his rights.

The action or inaction on the part of the plaintiff in relation to the registration of the mark which he claims to be his, is wholly irrelevant for the

purpose of deciding the plaintiffs right to a relief in relation to passing off.

In order to establish his right to an injunction in an action for passing off, it is wholly unnecessary for the plaintiff to demonstrate that he had

applied for registration of mark under the Trade Marks Act. His failure to demonstrate that he had filed an application for registration will not

clothe the defendant with a right to obtain dismissal of the suit. The application for registration is, therefore, a factor of no relevance in an action for

passing off.

The essence of the action of passing off is deceit on the part of the defendant in trying to pass off his goods as that of the plaintiff. That is a pure

question of fact to be established by proper evidence. The cause of action can arise where deceit is practised. It cannot arise at a location where

the plaintiff who claims the relief, chooses to lodge an application for registering his mark, without any deceit having been practiced within that

jurisdiction.

The right to bring an action for infringement in the court within whose jurisdiction the Trade Mark Registry is located, is founded on the fact that

the relief sought in the action is one for infringement and not merely for passing off. Where it is alleged that a trade mark is infringed, it is essential

for the plaintiff to show that the mark had, in fact, been registered. The failure to establish that fact will result in the dismissal of the suit for

infringement, satisfying the test formulated by Fry, L.J., for ascertaining the cause of action, namely everything which, of not proved, entitled the

defendant to an immediate right to judgment.

The cause 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

Registrar''s 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.

The argument advanced that registration if granted would date back to the date of application and that the plaintiff would have the right to seek

amendment of the plaint to seek relief on the ground of infringement as well, is wholly irrelevant so far as the cause of action for bringing a suit for

passing off is concerned. While it may be convenient to the plaintiff to institute a suit in a court where he may later on be able to bring a suit for

infringement of the trade mark, that convenience of the plaintiff is in no way relevant for deciding as to whether a cause of action for filing a suit for

passing off can be said to have arisen in a place where, the deceit alleged to have been practised by the defendant had in fact, not been practised

within the jurisdiction of the court in which the suit is brought.

The cause of action is not to be confused with convenience. Many things may be convenient to a plaintiff, but they do not become part of

bundle of facts requiring to be established for obtaining the decree in the suit. The argument advanced for the plaintiff is also far fetched. It seeks to

presume that the plaintiff in a suit for passing of who has applied for registration of the mark will pursue the effort to have the trade mark registered;

that such effort will be successful; that such an event will occur when the suit is still pending; that the suit will continue to pend till the registration is

effected; that plaintiff would be seeking an amendment to add a prayer with regard to infringement and that the plaintiff would be ultimately in a

position to establish infringement. The cause of action is something which has occurred and which gives a right to take action. The cause must

precede the action and not follow it. The events contemplated by the plaintiff as being capable of occurring at a point of time in the future, merely

on account of those possibilities, will not constitute a cause of action for relief for securing which, those events are not materially relevant.

Counsel also submitted that Pondicherry is at a short distance from Madras and that also is a factor which should weigh with the Court in

granting or refusing to grant the leave. Once a border is drawn it does not matter how far away from the border one is --whether it is an inch or a

mile makes no difference. If the plaintiff cannot demonstrate that a part of the cause of action arose within the jurisdiction of this Court, the fact that

it can be said to arise at a short distance away from it, is of no avail.

Counsel placed before us a number of judgments to which it is unnecessary to refer as none of them deal with the point which is under

consideration here.

The impugned order of the learned single Judge cannot be sustained and the same is set aside. The appeal is allowed.