Ranjit Lal Maria vs Vidya Parkash

Harnam Singh, J.—On 13.1.1948, Mr. Vidya Parkash instituted the suit out of which these proceedin have arisen for the grant of permanent injuntion restraining Defendant 1 from printi(sic) publishing, advertising and selling any newspaper under the name "Chitra Weekly" and (sic) restraining Defendant 2 from printing any (sic) paper for Defendant 1 and for rendition accounts by Defendant 1.

On 17-2-1948, Shri Ranjit Lal put in written statement.

On the pleadings of the parties the (sic) Court fixed the following issues:

(1) Whether the name Chitra Weekly by long (sic) has become associated with the name of the Plaintiff the mind of the public?

(2) Whether the name of a newspaper is n trade name?

(3) What is the effect of the Defendant has obtained a prior declaration for publishing and (sic) Chitra

(4) Whether the name Chitra has become com to the trade of printing and publishing of newspaper. If so, what is its effect?

(5) Whether the Defendant''s use of Chitra calculated to deceive the purchaser and to pass off publication as that of the Plaintiff?

(6) Relief.

On 2-3-1948, Shri Ranjit Lal, Defendant 1, made an application under Order 6, Rule 17, Order 14, Rule 5 and Section 151, Code of Civil Procedure, urging that the contesting Defendant may be permitted to plead that the Court has no jurisdiction to try the suit. On that application the following preliminary issue was framed: "Whether the Court is not poscassed of jurisdiction to try the suit?"

Now, the trial Court finding that the suit brought was a passing off action has held that the suit is not hit by Section 73, Trade Marks Act, 1940, hereinafter referred to as the Act.

Shri Ranjit Lal Defendant applies to this Court u/s 44, Punjab Court Act, 1918, for the revision of the order passed by the trial Court on 8-7-1948.

Mr. H.S. Gujral, learned Counsel for the Defendant urges that the suit is hit by Section 73 of the Act.

In order to appreciate the point raised in these proceedings it has to be borne in mind that the Plaintiff''s suit relates to an unregistered ''trade mark and there is no allegation in the plaint that the conditions mentiened in Section 20(1) of the Act are satisfied. u/s 20(1) of the Act, no person can file an infringement action except for a registered trade mark or a mark which has been continuously in use since befor 25-2-1937, by such person and unless an application for its registration, made within five years from the commencement of the Act, has been refused. As already mentioned, there is no averment in the plaint that the conditions mentioned in Section 20(1) of the Act are satisfied. Clearly, the suit out of which these proceedings have arisen does not fall within the exception mentioned in Section 20(1) of the Act.

Before proceeding to decide the point debated before me I with to point out that there is a real distinction between an infringement action and a passing off action. The main question in a passing off case is whether the Defendant is passing off his goods as the goods of the Plaintiff, whereas in an infringement action the Plaintiff has to prove that he has a proprietary right in the trade mark and having proved that he has to prove that the Defendant is using either the identical mark or similar mark. That this is so is plain from illus. (w) to Section 54, Specific Relief Act. Illustration (w) reads:

A improperly uses the trade mark of B.B may obtain an injunction to restrain the user, provided that B''s use of the trade mark is honest.

In other words, the remedy by way of infringement action is available where there is violation of the Specific property right conferred by the trade mark law, while the remedy by passing off action is available apart altogether from trade mark right where there is conduct on the part of the Defendant which has led or is calculated to lead to deception. An authority on this point is to be found in Irving''s Yeast-Vite Ltd. v. Horsenail (1934) 51 R.P.C. 110 : 103 L.J.Ch. 106. In that case Lord Tomlin said:

The distinction between the cases in which the remedy for infringement of trade mark and the remedy for passing off are respectively appropriate has often been stated and is not in doubt. The first remedy is available where there is violation of the specific property right conferred by the trade mark law. The second is available, apart altogether from trade mark right where there is conduct on the part of the Defendant which has led or is calculated to lead to deception.

Then the injunction granted in a passing off action is wide enough to permit the Defendant to use the whole or any part of the Plaintiff''s mark so long as he is able to do so in a manner which is not calculated to lead to deception and confusion.

Having made these observations I pass on to consider whether the present action is an infringement action within the moaning of Section 73 of the Act. Paragraph 3 of the plaint reads inter alia:

Defendant 1 is passing off his publication under a spurious name Chitra Weekly as the publication of the Plaintiff and is thereby deceiving and defrauding the subscribers and adversers of Plaintiff''s paper, the genuine Chitra Weekly.

Clearly, the cause of action disclosed in the plaint is not the cause of action appropriate in an infringement action. In an infringement action Plaintiff brings the suit alleging that the Plaintiff has registered his trade mark or that his trade mark falls within Section 20(1) of the Act and that the Defendant is using a mark which is identical with the Plaintiff''s mark or so nearly resembles it as to be likely to deceive or cause confusion in the course of trade. Again the relief in such an action is for an absolute injunction against the Defendant from using the Plaintiff''s mark.

Applying the test mentioned above, I feel no doubt that the pith and substance of the plaint in the present case is appropriate in a passing off action. Indeed, issue 5 fixed by the trial Court is an issue which is only appropriate in a passing off action and would not arise in an infringement action.

For the foregoing reasons, I find that the present action is in substance a passing off action within Section 20(2) of the Act.

In the result the petition for revision fails and is dismissed with costs.