ORAL JUDGMENT. :

1. The Notice of Motion is heard finally.

2. The plaintiff has sought a declaration that a cease and desist notice issued by the defendants is an unjustified and groundless threat and that the use of the mark “HOKEY POKEY” by it does not constitute an infringement of the defendant’s trademark, identical thereto registered under class 30 and also does not constitute the tort of passing off. The plaintiff has also sought an injunction restraining the defendants from issuing such threats and passing off products under the said mark or any mark similar thereto and from using the said mark or any marks similar thereto in relation to ice-cream shops/parlours or business establishments or rendering any retail or restaurant services under the said mark or any mark similar thereto.

3. For the purpose of this Notice of Motion, it is necessary to refer to only a few facts.

The defendants label mark, a dominant part whereof consists of the words “HOKEY POKEY”, was registered in India under class 30 with effect from 29th November, 2001. The plaintiff admittedly started using the mark in respect of items under class 30 only in November, 2007, i.e. after the defendants application for registration under class 30.

4. The question is whether the plaintiff is entitled to an injunction against the respondents, despite the fact that it admittedly started using the trademark in relation to goods under class 30 in respect of ice-cream/ice-cream parlours only on a date subsequent to the registration of the defendants’ mark. I have answered the question against the plaintiff.

5. For the purpose of answering this question, I will presume as correct the sales figures and promotional expenses mentioned in the plaint and ignore the defendants case that they started actually using the mark from 1st April, 2000. Again for the purpose of deciding this question, it is irrelevant that the plaintiff obtained registration of the mark “HOKEY POKEY” on 13th March, 2008, written in a stylized manner under class 16 (not class 30) which pertains essentially to stationery items and that the plaintiffs application for registration under other classes, including class 30, is pending. I will also presume that registration by itself does not constitute use of the trade mark.

6. Mr. Tulzapurkar submitted that the plaintiff is entitled to an injunction against passing off as it had used the mark before the defendants did. He submitted that the mere application for registration of the mark and even the registration thereof makes no difference if the same was not actually used by the proprietor in the course of his activities. The submission was sought to be supported by relying upon section 27 of the Trade Marks Act, 1999, which saves passing off actions.

7. The question was considered by a learned single Judge of this Court in Sun Pharmaceutical Industries Limited v. CIPLA Limited, (2007) 109 BLR.

In that case, the defendants registration of the trademark took effect from 26th February, 1998. The plaintiff, thereafter, applied for registration on 31st December, 1999 and commenced using the same. The defendants thereafter commenced using the mark in July, 2006. The question was whether the plaintiff had a prima facie case for an injunction in such a case. The facts, therefore, are almost identical to those in the present case. The submissions in that case on behalf of the plaintiff were also identical to Mr. Tulzapurkar’s submission on this question of law before me. The learned Judge noted the submissions and held as under :-

“10. Dr.Tulzapurkar, the learned counsel for the plaintiff submitted that the plaintiff is entitled to an injunction against passing off only on the ground that their user on 1.12.2000 is prior to the defendant’s user in July 2006. According to the plaintiff, in such a case of passing off, the defendant’s registration with effect from 26.2.1998, though prior to the plaintiff’s user, is liable to be ignored, since the only right which registration confers is to prevent another person from infringing the trade mark, particularly since the registration was not accompanied by use. The learned counsel for the plaintiff relied on Section 27 of the Trade Marks Act and several decisions in support of his case. It may be noted, however, that in none of the cases relied on by the plaintiff, an injunction was granted on the basis of a prior user against the defendant whose registration was prior to such user. .............

16. There is substance in the argument of Mr. Ravi Kadam, Advocate General, that it is necessary to examine with care the circumstances in which the plaintiff adopted their mark. This is clearly necessary since it would otherwise be very easy for a trader to copy a mark pending registration, start using the mark and claim a priority on the basis of the user and even further obtain an injunction restraining the defendant who had earlier applied for the registration of the mark, but who happens to start using it later after registration is obtained.”

As noted by the learned Judge in paragraph 10, in a number of cases, an injunction was granted against the defendant whose registration was prior to such use. The learned Judge dealt with these authorities and distinguished them, inter-alia, on the ground that in those cases the adoption was not found to be honest. Apart from being bound by, I am in respectful agreement with the judgment.

8. The right to have a mark registered is not dependent upon the actual use of the mark at the time of registration. Section 18(1) reads :-

“18 Application for registration.- (1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for registration of his trade mark.”

9. To hold that a registered mark does not take precedence over the use of the mark after the date of the application for registration would render section 18(1) otiose. The Act encourages proprietors to have their marks registered. If the plaintiff’s case is upheld, it would not only be contrary to, but destroy the object of the Act as it would positively discourage registration of trade marks.

10. To uphold the plaintiff’s case would cause havoc and virtually erode the rights of the proprietors of trademarks. There is always a time-lag between an application for registration of a mark and the order registering the same. Applications for registration are in public domain. They are advertised. If Mr. Tulzapurkar’s submission is upheld, upon an application for registration being made and advertised, it would be possible for any person to use it immediately, thereby rendering the valuable rights of the registered proprietor in respect of the mark nugatory even before the mark is registered. This would render an essential and substantial part of the Act redundant.

11. In Williams Ltd. v. Massey Ltd. (1911) 28 RPC 512, the plaintiff applied for registration of a mark on 21st October, 1910. Upto that time, the defendants had not used the mark in connection with the class of business under which registration was sought. Others had used it in connection with items other than those which fell under the class for which registration was sought. It was held :-

“I am not sure – the point is a new one – that user within Section 41 means user by the sale of a single piece, or of a very few pieces of goods, with the Trade Mark on. I am not at all sure that the Section means that; I am inclined to think that under section 41 substantial user is meant, and that there must be something like substantial user. But, supposing, as Mr.Rutherford was bound to put it, that the sale of halfpenny piece of toffee, before the Plaintiffs had sold any at all, is sufficient, then I am not sure that that sale must not be a sale preceding the date on which the registration takes effect – that is to say pre-preceding the date of the Application, because under the Act of 1905 the registration, when the Certificate is granted, relates back to the date of the Application. If I am wrong in that point of view it gives rise to a very extraordinary state of things. Under the Act of 1905 registration may precede user. User is not necessary to obtain registration of a mark under the Act of 1905. You can register a new mark and you get rights which the old Acts did not give you. You get proprietary rights, and not merely a block in the way of litigation; you get, under the Act of 1905, rights which you had not before. I think that user in Section 41 must mean user prior to the Application. If it does not mean that, then it must bring about this extraordinary state of things. A man applied on the 1st of January for registration, and he does not get the Certificate of Registration untill the 31st of March. . Then if “user” for the purposes of Section 41 means user at any time after the Application, user on the 2nd of April by another will prevent the registered proprietor from attacking him if the registered proprietor has not in fact used it before the 2nd of April. It seems to me that is not the meaning of the Act of Parliament.”

I am entirely in agreement with the above observations. They apply under our Act as well. 12. Section 34 of the Act reads as under:-

“34. Saving for vested rights. - Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior -

to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or

to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his, whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark.”

If I am right in the view I have taken, the expression “date of registration” in section 34(b) must mean the date of the application for registration for that is the date to which the registration, when granted, will relate. A view to the contrary would lead to an extremely peculiar situation. The date on which a mark is considered to be registered must be the same for infringement or for a passing off action. It would otherwise lead to conflicting orders in actions for infringement on the one hand and passing off actions on the other, which could never have been the intention of the Legislature.

13. If the defendants were to file an action for infringement in such circumstances, they would be entitled to succeed, despite the plaintiff’s user of the mark subsequent to the defendants registration of the mark. In other words, section 34 would not come to the plaintiff’s aid if an action were brought by the defendants for infringement against them. Whether the plaintiffs would succeed on any other ground is another matter altogether.

14(A) The point was also considered by a learned single Judge of the Madras High Court in Mohan Goldwater Breweries (Private) Limited v. Khoday Distilleries Private Limited & Anr., 1977 IPLR 83. The learned Judge considered two appeals under section 102 of the Act. The appellant’s opposition to the respondents application for registration was rejected by the Assistant Registrar of Trademarks. The respondents had filed applications for registration on 10th November, 1969. The appellant filed a notice of opposition, interalia, on the ground that it had adopted a similar trademark since June, 1970 and had used the same extensively since September, 1970, as a result of which, a great deal of reputation had accrued around it.

The appellant contended that the respondents trademark being deceptively similar, registration ought to be rejected as being contrary to section 11(a) of the Act. It was contended on behalf of the appellant that though the respondents had filed the application for registration in November, 1969, they had not chosen to use the same; that a mere intention to use the same was not sufficient to confer a proprietary right in the mark on the respondent and that a present intention to immediate use of the mark is necessary before an application for registration is filed under section 18.

(B) I am in respectful agreement with the learned Judge who held that section 18 clearly indicates that a person who is actually using a trademark or who intends to use a trademark can apply for registration and that, therefore, the actual user is not necessary for acquisition of a proprietary right in a trademark and an intention to use and register the trademark is sufficient. On facts, the learned Judge came to the conclusion that there was nothing to indicate that the respondents had no intention to use the mark or had abandoned any such intention.

(C) Although it was a case where the opposition to the registration of the mark was in question, the learned Judge also dealt with a point similar to the one that arises in this case. The learned Judge held at page 92 of the report as under :-

“The question then is, as between the applicants who have proposed to use the mark and have sought registration of the same in November, 1960 and the appellants who have chosen, to use the mark subsequent to the date of such application for registration, who has got a preferential right to use or the proprietary interest in the trade mark. This question leads us to the fourth contention as to what is the relevant date for ascertaining the proprietary interest in a trade mark for purpose of registration. According to the applicants, the date of application for registration is the relevant date while according to the opponents the relevant date is the date of opposition. On a due consideration of the matter, I am of the view that for the purpose of registration of a trade mark the rights of the parties have to be usually determined as on the date of the application. This view is taken by Romer J. in Jellinek’s application (1946) 63 R.P.C. 59 at p. 78. Ciba Ltd. v. M. Ramalingam A.I.R. 1958 Bombay 58 at p.61 takes the same view. As already stated, user is not absolutely necessary for the purpose of maintaining an application for registration. IN this case the application for registration was filed on 10-11-1969 and the evidence of user filed by the opponents is from October, 1970. Since the applicant’s entitlement to registration of a trade mark has to be decided with reference to the facts as on the date of the application for registration, the evidence of user by the opponents subsequent to the said date cannot be relevant and will not entitle them to put forward the plea of user in answer to the earlier application for registration.”

15. I am in respectful agreement with the above observation. While considering the plaintiff’s action for passing off vis-a-vis a registered trade mark also, the relevant date must be the date of the application for registration and not the date on which the registration is actually obtained. I have already indicated the dangers in accepting a view to the contrary. Absent any other factors such as deceit or abandonment on the part of the defendants, the use by the plaintiff of the mark after the date of the application for registration cannot sustain an action for passing off against a registered trade mark. In the circumstances, it must be held that absent anything else, the use of a trade mark after an application for registration by another of a similar mark cannot affect an action for infringement by the latter or support a passing off action by the former.

16. In the present case also, I can see no intention on the defendants part to have abandoned the trade mark. Mr. Dhond sought to rely upon several circumstances which would indicate the contrary. I do not intend considering the same in any detail as the mere non-user in India does not indicate abandonment. Much less, does it indicate an intention never to use the mark in India. I will assume as correct Mr. Tulzapurkar’s contention that the defendants endeavours at negotiating a contract with Air India in respect of its products sold under the said mark did not succeed. I will also assume that he is correct in suggesting that there was no use of the mark by the defendants pursuant to the negotiations with Air India. It is important to note, however, that the fact of negotiation belies any case of abandonment.

17. In this view of the matter, I did not permit Mr. Dhond to raise various other contentions, including that the defendants had acquired a trans-border reputation prior to the plaintiff’s use of the mark and that the plaintiff’s use of the mark and the registration thereof was dishonest.

18. Mr. Tulzapurkar referred to a judgment of a learned single Judge of this Court in CluettPeabody & Co. Inc. v. Arrow Apparels, 1998 PTC, 18. The facts in that judgment were entirely different. There, the plaintiffs had failed to use the mark for a period of 35 years. The learned Judge observed that delay by itself is no defence, but where by reason of non-user for almost 30 years the mark loses its distinctiveness or if it drops out of use in the trade or the mark is allowed to die for non-user, then certainly delay in the context of the above facts provides a very strong defence for refusing an injunction in favour of the plaintiffs. It is in these circumstances that the rights flowing from registration were not given effect to. It is, however, important to note that it was also held in paragraph 27 :-

“27.(i) The test as to “who gets it there first” is not applicable in cases where registration is sought under Section 18 [Page 26 of Narayanan].”

19. In the circumstances, the Notice of Motion is dismissed. Liberty to the plaintiff to apply after the rectification proceedings are concluded.

The defendants shall, however, give prior notice of 7 days of any legal proceedings that may be adopted by it against the plaintiff with respect to the mark.