Sainaba Beevi vs Sulabha G. Shenoy and Others

M.R.Hariharan Nair

1.The counter petitioners in O.S. No. 6/98 of the District Court, Thiruvananthapuram are aggrieved that notwithstanding serious objection raised by them with regard to the maintainability of the said proceeding, the court has decided it in favour of the plaintiffs. The contention raised by the present petitioners was that at the time when the suit was instituted on 30-5-1998, the Trade Mark relied on by the petitioner, namely, ''Maveli'' had not been registered and that as such the proceeding brought forth invoking Sec. 27(1) of the Trade and Merchandise Marks Act, 1958 was not maintainable.

The plaintiffs stated in answer to the contention that trade mark has already been applied for and also that the petition is filed not merely based on Sec. 27(1) and that the pleadings available in the plaint, read as a whole, would show that it is filed under Sec. 27(2) as well in which case there will be no bar for want of required registration.

I have heard both sides and reliance was heavily placed on case law by both sides.

The points that arise for decision are:-

(i) Whether the suit as brought forth is under Sec. 27(1) of the Trade and Merchandise Marks Act, 1958?

(ii) Whether the Us, in so far as it invokes Sec. 27(1) of the aforesaid Act, is barred.

The points:- These are considered together for the sake of convenience. In order to appreciate the rival contentions it is necessary to refer to the provisions in Sec. 27(1) and (2) of the Act itself.

No action for infringement of unregistered trade mark.- (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of 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 the remedies in respect thereof."

It is clear from a reading of Sec. 27(1) of the Act that there is an absolute bar in bringing forth a suit alleging infringement of a trade mark, if the particular trade mark is unregistered. At the same time, under Sec. 27(2) of the Act, an action for passing of goods would be maintainable even at the instance of a person claiming an unregistered trade mark. It is conceded during hearing that at the time when the suit was filed on 30-5-1998, the petitioner had not obtained the registration of the trade mark, though it had been applied for. However, in the course of the present proceeding in this court, the petitioner has succeeded in getting the trade mark registered and that is produced along with C.M.P. No. 1665/2001. A perusal of the said registration certificate issued on 21-1-2000 shows that the registration is w.e.f. 12-2-1992.

It is Sec. 23 of the Trade and Merchandise Marks Act that provides for registration. The said section reads as follows:

Registration.- (1) Subject to the provisions of Sec. 19, when an application for registration of a trade mark in Part A or Part B of the register has been accepted and either-

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been opposed and the opposition has been decided in favour of the applicant; the Registrar shall, unless the Central Government otherwise directs, register the said trade mark in Part A or Part B of the register, as the case may be and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall subject to the provisions of Sec. 131, be deemed to be the date of registration.

(emphasis supplied)

It is obvious from a reading of Sec. 23(1)(b) that once Registration is allowed, it has effect from the date of filing of the application and that date shall subject to the provisions of Sec. 131 which relates to registration by citizens of convention countries, be deemed to be the date of registration. It was because the petitioner had filed an application for registration on 12-2-1992 that in the present certificate of registration that date is given, albeit it was actually issued only on 21-1-2000. By virtue of the fiction contemplated in Sec. 23(1)(b), the registration is actually with effect from 12-2-1992 and the revision petitioner cannot hence be heard to contend that the mark was unregistered as on the dates of violation alleged in para. 36 of the O.P.

I shall now refer to the decisions relied on by either side. P.L. Anwar Basha Vs. M. Natarajan, relied on by the respondents dealt with a similar contention raised by the contesting defendants in a proceeding under the very same Act. It was found by the court that under Sec. 23, the trade mark, when registered, has to be treated as registered as on the date of making of the application for registration and that date shall, subject to the provisions of Sec. 131 of the Act, be deemed to be the date of registration and though the registration certificate was actually issued therein only on 30-11-1974 it has to be deemed to refer to the date of application for registration on 18-9-1969 and in that perspective, it has effect even on the date of filing of the O.P. (30-5-1998) and that the O.P. is hence maintainable.

Bharathiya Coffee Workers Catering Service (P) Ltd. Vs. Indian Coffee Workers Co-operative Society Ltd., relied on by the learned counsel for the revision petitioner does not actually refer to the point in dispute in the present case. What was considered in the said decision was only whether in the absence of registration an institution like the Indian Coffee House, can maintain an action for infringement of its trade mark against a retired employee of the very same institution. It was held that without registration of the mark, suit under Sec. 29(1) of the Act cannot be maintained. It is to be mentioned here that there was no plea or proof in the said case that ''Indian Coffee House'' was actually registered albeit under the fiction under Sec. 23(1)(b) as on the date of filing the suit. This according to me, makes all the difference.

Himalaya Drug Co. Pvt. Ltd., Bangalore Vs. Arya Aushadhi Pharmaceutical Works, Indore, whichis the other decision relied on by the learned counsel for the revision petitioner was also not one of similar facts. At the time when the matter was considered by the court there was nothing on record to show that the petitioner had sought registration of the trade mark in question in accordance with the provisions of the Act or that it was so registered. No certificate of registration could be produced in that case. It was therefore that the cort found that the suit being under Sec. 29(1) and the registration being absent, it was not maintainable.

M.S.A. Subramania Mudaliar Firm by partner M.S.A. Subramania Mudaliar Vs. The East Asiatic Co. Ltd., by Managing Agent, , In the matter of In Re: Abani Kanta Pal, , Khatuna and another v. Ramsewak Kashinath and another (AIR 1986 Ori.), M/s. Shankar Housing Corporation v. Mohan Devi and others ( AIR 1978 Del. 255) and Seth Loonkaran Sethiya and Others Vs. Mr. Ivan E. John and Others, which are the other decisions relied on by the learned counsel for the revision petitioner were all the cases arising from dispute based on want of registration under the Indian Partnership Act in suits involving partnership firms. The finding in the said cases, is that if the plaintiff firm was actually unregistered as on the date of suit, the suit brought forth claiming relief arising from the working of the firm would not be maintainable and also that subsequent registration would not render the proceeding valid.

It has to be mentioned here that there is vast difference between the provisions of the Partnership Act and the provisions of the Trade and Merchandise Marks Act. I have already referred to Sec. 23(1) of the Trade and Merchandise Marks Act, which provides for retrospective effect for the registration of the trade mark with effect from the date of making the application. Such a provision is not available in the Indian Partnership Act. It is Sec. 59 of the Partnership Act which provides for registration pursuant to an application made under Sec. 58. There is no mention in Sec. 59 of the Partnership Act that once registration is effected it will date back to the date of application and hence registration granted under Sec. 59 of the Partnership Act will only have prospective effect. It is therefore that the courts which dealt with the aforesaid provision in the various decisions aforementioned concluded that subsequent registration would not make a suit instituted earlier without registration valid. According to me, in view of the production of the certificate of registration of the trade mark in question with effect from 12-2-1992 the action brought forth on 30-5-1998 was perfectly valid and the court below has not committed any irregularity, illegality or impropriety in concluding that the suit was validly filed. In view of decision as aforementioned, it is unnecessary to go into the other question whether the suit can be maintained even without registration bringing it under sub-clause (2) of Sec. 23 of the Act.

The revision therefore fails and it is accordingly dismissed.