S. Padmaraj vs K. Rajendran

M. Karpagavinayagam, J.—S. Padmaraj, the appellant herein filed a Trade Mark O.P. for permanent injunction restraining the

respondent/defendant and his men from passing off his inferior quality of rice under the trade mark ""Seven Star Brand"". Pending the O.P., he filed

an application in I.A. No. 124 of 2001 for granting interim injunction. Though the same was originally granted, it was vacated subsequently on the

application filed by the respondent. Aggrieved by the said order dated 11.3.2002, the petitioner/appellant has filed this appeal.

According to the petitioner/plaintiff/appellant, he is the proprietor of the trade mark ""Seven Star Brand"" in respect of rice, dealing in the sale of

rice from 1990. He invested huge sum and established the fact that his rice is of superior quality. He applied for registration of the above said trade

mark with the Government of India and the same is pending. Knowing fully well, the defendant/respondent applied for registration of his very same

trade mark and started selling his inferior quality of rice under the trade mark ""Seven Star Brand"". He sent desist notice and received reply with

false contentions. Hence, the plaintiff/appellant was obliged to file the O.P. for permanent injunction.

It is the case of the defendant/respondent that the appellant and the respondent were originally partners in selling rice. The respondent owns a

rice mill called ""Dinesh Babu Modern Rice Mill"" in Arni. In 1999, the partnership business came to an end. Therefore, the respondent started a

partnership firm and registered it as ''''Seven Star Brand"". The appellant started another partnership firm in the name of ""Seven Star"". The

respondent is able to invest large money under the brand name of ""Seven Star Brand"" and selling superior quality of rice. Out of jealousy, the

appellant has now filed the suit for an action for passing off on false grounds.

The lower Court though initially granted interim injunction ex parte, was pleased to vacate the order of injunction holding that there is no prima

facie case for granting injunction.

While challenging this order, Mr. G. Masilamani, the learned senior counsel, would vehemently contend that the trial Court misapplied the facts

and wrongly concluded that there is no prima facie case by holding that the appellant/plaintiff cannot file the suit u/s 32 of the Trade Marks Act,

1999 when admittedly, the trade mark has not been registered.

I heard the counsel for the caveator, the respondent herein.

It is true that Section 32 of the Act would not apply to the present facts of the case as it would deal with the cases relating to protection of

registration only and as correctly pointed out by the senior counsel for the appellant, the applicability of Section 32 of the Act would not arise in

this case, as this O.P. has been filed u/s 27(2) of the Trade Marks Act for preventing passing off action. However, the conclusion arrived at by the

trial Court for holding that there is no prima facie case for granting injunction, in my view, cannot be said to be wrong.

Admittedly, the appellant/plaintiff has applied for registration of the trade mark in Serial No. 11/99 as ""Seven Star"" on 18.2.1999. On the same

day, the defendant also filed ''A'' form for registration in No. 12/99 as ""Seven Star Brand"". When such being the case, there is no material to show

that the petitioner/plaintiff has been using the trade mark ""Seven Star Brand"" from the year 1990 as mentioned in his affidavit and plaint.

As a matter of fact, in the plaint, it is specifically stated that the plaintiff is the proprietor of the trade mark ""Seven Star Brand"" in respect of rice.

This is factually wrong. It is the specific contention of the respondent through the counter that the petitioner and the respondent were originally

partners in selling rice and the partnership business came to an end in the year 1999 and thereafter, the petitioner came out of the partnership and

started his firm as ""Seven Star"" and concealing the said facts, the present suit has been filed as if the petitioner/plaintiff is the proprietor of ""Seven

Star Brand"" using the said trade mark from 1990.

Though this reference has not been mentioned in the reply notice, it is the specific stand taken by the respondent through the counter that there

is suppression of material fact in the plaint. This is not denied either through rejoinder or in the course of arguments made before this Court by the

plaintiff. Whatever it is, the only question which remains to be considered as to whether any case is made out for granting injunction.

Considering the nature of pleadings in the plaint, affidavit and counter-affidavit filed by the parties, it is clear that there is common field of

activity between the two parties in respect of goods and trade marks sought to be used by either are identical.

As held by the Supreme Court in Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd. and Others, when the areas of activity and the nature

of goods dealt with or business carried on being identical, and the trade marks being of similar nature, the Court has to consider the question as to

who is the prior user, in deciding the grant of interim injunction.

If the present facts are applied to the above principle, it is clear that the petitioner/plaintiff/appellant has not produced any material to show that

he is the prior user. On the other hand, it is seen from the plaint that some of the details are not factually correct, as noted above.

The Supreme Court in the decision cited supra, would hold that there cannot be any temporary injunction unless a strong prima facie case is

established and the plaintiff had honestly and concurrently used the trade mark for a long period as a prior user or there are other special

circumstances arising in the matter to grant such interim injunction.

In this case, there are no special circumstances. Consequently, the impugned order is liable to be confirmed and accordingly confirmed. Hence,

the appeal is dismissed. No costs. Consequently, C.M.P. No. 7586 of 2002 is also dismissed.