S M PALANIAPPA CHETTIAR Vs. KONAR PUBLICATIONS

JUDGEMENT

(1.) PLAINTIFFS in Civil Suit No. 311/97, filed under Sections 105 and 106 of the Trade and Merchandise Marks Act, 1958 are the appellants before us in this Appeal, whereas defendants are the respondents. The plaintiffs are engaged in the business of publishing Tamil Notes for the school students since 1953 under the trade mark "KONAR TAMIL URAI". Claiming prior usage and proprietory right of the trade mark and apprehending infringement as well as passing of goods by the defendants, the plaintiffs moved two applications namely No. 336/97 and 337/97 for injunction, restraining the defendants from infringing the plaintiffs'well established trade mark and passing of the goods respectively. The learned Judge, after hearing both the parties, dismissed both the applications by his order dated 12.6.1997. Aggrieved by this order, the plaintiffs have filed this appeal. For the sake of convenience, the parties are referred hereinafter as they are ranked in the original proceedings.

(2.) INITIALLY, the plaintiffs filed two appeals namely Nos. 215/97 and 216/97 against the impugned order. Appeal No. 215/97 was filed against the order of dismissal of Application No. 336/97, seeking injunction against infringement of the plaintiffs'well established trade mark "Konar Tamil Urai", whereas Appeal No. 216/97 is filed against the order of dismissal passed in Application No. 337/97, seeking injunction against passing of goods. As per the documents placed on record admittedly, the plaintiffs are not the registered proprietors of the trade mark "Konar Tamil Urai", but have only applied for registration on 16.5.97, just two days prior to the institution of the suit, whereas during the course of hearing, it has come on record that the defendants are the registered proprietors of the trade mark "Konar Tamil Urai". In fact, treating the application for registration as the actual registration, the plaintiffs prayed for injunction against infringement of the trade mark. But legally, as the application itself does not confer any proprietory right qua the trade mark and in particular when the trade mark in question had already been registered in favour of the defendants, the plaintiffs'action against alleged infringement was not maintainable and could not be pursued as per law; consequently, the learned counsel Mr. Mohan Parasaran for the appellants, accepting the dismissal of the application, fairly conceded to the legal position and did not press the Appeal No. 215/97 preferred against the refusal to grant injunction against alleged infringement of the trade mark. So, now the controversy between the parties remains confined to the act of passing of goods in the name of the well established and registered trade mark "Konar Tamil Urai".

(3.) NOW coming to the contentious question of passing of goods, we have no hesitation in saying that a passing of action is maintainable in law even against the registered owner of a trade mark, as held by the Supreme Court in the case of N.R. Dongre v. Whirlpool Corporation. Even the learned Single Judge has also subscribed to this view in para 16 of his judgment. Hence, even if the defendants are the registered proprietors of the trade mark, the question of passing of goods requires consideration in light of the facts and circumstances of this case. Before dealing with no merits, we may say that the controversy is very narrow, i.e. the right to use the trade mark for publishing notes for school students. The plaintiffs claim use of the disputed trade mark for publication of notes only for school students continuously from 1940. It is also an admitted fact that the defendants have been publishing notes under the disputed trade mark only for college students since around 1965 and the plaintiffs have no objection even if the defendants continue to publish so. The plaintiffs'use of the trade mark since 1940 for publication for school students is admitted by the defendants in the counter-affidavit. It is stated by the defendants that a celebrated scholar one Sri Ayyan Perumal Konar used to prepare model questions and answers for detailed and non-detailed text in Tamil from 1940 onwards and had given the publication rights under an agreement to the plaintiff by accepting royalty and that, even after the death of Ayyan Perumal Konar in 1969, the plaintiffs continued to publish notes for school students under the same trade mark, but prepared by other authors. The defendants also claim publication under the same trade mark since 1965 but their publication is only for college students. Not an iota of evidence has been produced on record to show that at any point of time, the defendants had published notes under the said trade mark for school students. Thus, the defendants cannot be said to be using the said trade mark for school students. Even assuming that they used this trade mark for school students, then also the claim is since 1965 only, whereas the plaintiffs'use is admitted since 1940; therefore, under no circumstances, the defendants could be prior user. In such circumstances, despite registration of the trade mark in favour of the defendants, we have no hesitation in saying that the plaintiffs are prior users of the trade mark in relation to the notes prepared for school students. It is an admitted fact that the plaintiffs'publication for school students has acquired reputation and goodwill amongst the users and they have been doing extensive business to the tune of several crores of rupees. Despite these facts, if the defendants are allowed to publish notes under the said trade mark for school students, then the defendants are likely to be benefited by the reputation and goodwill established by the plaintiffs, adversely affecting the monetary interest of the plaintiffs. It is true that the defendants are the registered proprietors of the trade mark, but only for college students, consequently, shall have no right to publish for school students for which goodwill has already been acquired by the plaintiffs.