CHHEDI LAL GUPTA Vs. SHAKURAN BIBI

JUDGEMENT

(1.) THIS is a defendants' application under Section 115 of the Code of Civil Procedure directed against an order of II Additional District Judge Allahabad deciding three preliminary issues in a passing off action against them. One Mohammad Sattar filed a suit against one Baij Nath Prasad in which he alleged that he was the manufacturer of a brand of Bidis called 'Toofan Mail' which were very popular with the public; that these Bidis were sold under a label containing a picture of a Railway Mail Train, two Railway signals, a Railway track, two boats, and other signs; that the defendant Baij Nath Prasad had started selling a certain brand of Bidis under the name of 'Punjab Mail Bidis'; that he had chosen this name deliberately with the object of deceiving the bidi smoking public who had begun to appreciate the excellence of the plaintiff's Toofan Mail bidis; that the defendants also fixed a label on his bidis which contained a picture of a Railway train, Railway signals, a Railway track, two boats and the other signs included in the plaintiff's labels; that in this manner the defendant was able to pass off his bidis as the plaintiff with consequent loss to him. The plaintiff asked for an injunction to restrain the defendant from passing off his bidis by using a label deceptively similar to the one used by the plaintiff, and he also claimed damages. Soon after the filing of the suit both the original plaintiff and the defendant died and were substituted by their respective representatives. The defendants resisted the suit and denied all liability. They contended that they were using a label which had been registered by them 1943 under the Trade Marks Act 1940 am which continued to be so registered under the Trade and Merchandise Marks Act 1958. They denied that the two labels were similar as to deceive the plaintiffs' customers. They also raised a preliminary objection that the suit was barred under Section 30 (1) (d) of the Trade and Merchandise Marks Act 1958. The learned Judge framed three issues which he decided as preliminary. They are: "Issue No. 2 (a)--Is the present suit only an action for infringement of plaintiffs' trade mark and not a passing off action? Issue No. 2 (b)--How do Sections 28 (3), 29 and 30 (1) (d) of the Trade and Merchandise Marks Act 1958 affect the suit? Issue No. 7--Does the plaint disclose no cause of action for the claim of passing off?"

(2.) AFTER hearing the parties the learned Judge decided all these issues against the defendants. He held that Section 30 (D (d) of the aforesaid Act did not bar the suit; that the suit was not only an action of infringement of trade mark but also a passing off action; and that the plaint disclosed a cause of action for a claim of passing off. Aggrieved by this order the defendants have come here in revision.

(3.) SECTION 30 (1) (d) provides in effect that the use of a registered trade mark will not amount to an infringement of another registered trade mark even if the two are identical or merely resemble each other. In other words the proprietor of a registered trade mark does not have to obtain the consent of the proprietor of another registered trade mark which happens to be identical and similar to his own. But this provision does not give him the right to use his trade mark for the purpose of passing off his goods as those of another.