Prakash Narain, J:

1. This appeal is directed against the order of a learned Single Judge of this Court sitting on the original side whereby an interim injunction was issued against the appellant on a motion by the respondent.

2. The respondent/plaintiff manufactures and sells playing cards. On 8th February, 1966, the respondent/plaintiff registered under No. 233581 in Class 16, a trade mark consisting the device of a tractor and the word tractor for his playing cards. The appellant defendant also trades in playing cards and it is alleged by the respondent that early in 1971 he came to know that the appellant had adopted the trade mark Ferguson in relation to its playing cards and was marketing the same under that name also using the device of a tractor on the back of the playing cards. The respondent therefore, brought an action against the appellant seeking permanent injunction restraining the appellant from infringing the registered trade mark of the respondent and passing off its goods as those of the respondent. A prayer was also made for rendition of accounts, damage etc. Alongwith the suit the respondent filed an application (L.A. 963 of 1971) under Order 39, Rules 1 and 2 read with Section 151 of the Code of Civil Procedure claiming that during the pendency of the suit an interim injunction may be issued restraining the appellant-defendant its agents and representatives from manufacturing, selling, offering for sale or otherwise dealing in playing cards bearing the trade mark Ferguson and tractor and/or any mark resembling thereto, calculated to cause confusion and amounting to infringement and/or passing off as and for the genuine trade mark of the respondent/plaintiff.

3. The appellant resisted both the suit and the interlocutory application. It pleaded that its application for registration of the Ferguson trade mark has been accepted for registration in the Trade Mark Registry at Bombay in Class 16 and has been advertised in the Trade Mark Journal No. 531 dated 16th July, 1971 to which the plaintiff-respondent has filed his opposition on September 11,1971 : that it has been in the trade of manufacturing and selling cards using the mark Ferguson since February, 1966 ; that the trade mark Ferguson does not in any way infringe the registered trade mark of the respondent plaintiff : that playing cards are sold in sealed cartons and although the playing cards manufactured by the appellant have the device of tractor on the back of the playing cards merely as an ornamental device with the word Ferguson printed thereon in a corner yet the carton does not have the device of the tractor and has only the trade mark Ferguson on it and so, there is neither any infringement nor would an unwary purchaser be led to the purchase the appellants playing cards in the belief that the same were manufactured and marketed by the respondent.

4. The learned Single Judge after hearing the parties was of the view that the device of tractor on the playing cards of the appellant did amount to any infringement of the registered trade mark of the respondent and so, issued a temporary injunction for the duration of the suit restraining the appellant, its agents and representatives from manufacturing, selling, offering for sale or otherwise dealing in playing cards printed with the device of a tractor or any mark resembling therewith.

5. Mr. Anoop Singh, the learned Counsel for the appellant, has urged that no prima facie case had been made by the respondent to justify the issue of an interim injunction. We are not impressed by this contention at all. The device of the tractor on the playing cards manufactured by the appellant is patently similar to the device of the tractor of which the respondent has obtained registration. It may be that there is no device of the tractor on the carton of the appellants playing cards but then it is common knowledge that playing cards are purchased not only by looking at the carton but so also after seeing the contents of carton. We would not like to express any opinion at this stage as to whether the word Ferguson itself is an infringement of trade mark of the respondent who contends that is a well-known tractor and in common paralance is almost synonymous to the word tractor. Therefore, on a visual inspection it must be held that prima facie, the respondents complaint was justified.

6. It was next urged by Mr. Anoop Singh that since the statute contemplated concurrent registration or user and the appellants application for registration of the trade mark Ferguson had been accepted in the registry the action brought by the respondent should have been stayed instead of granting any interim or permanent relief to the respondent. Reference in this behalf may be made to sub-section (3) of Sec. 12 of the Trade and Merchandise Marks Act, 1958 (hereinafter called the Act). The provision of law is that in case of honest concurrent user or of other special circumstances which in the opinion of the Registrar make it proper so to do, the Registrar may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same, or similar description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. It is urge that in as much as the application of the appellant has been accepted for registration no relief should have been granted.

7. No doubt registration may be granted for concurrent user as provided by the law but till registration is granted there can be no doubt that the respondents trade mark is infringed by the appellant and the statutory right which the respondent has under Section 28 of the Act is violated. Inasmuch as registration of the trade mark is prima facie evidence of its validity and the appellant has not challenged the validity of the registration of the respondents trade mark, it is not open to the appellant at this stage, to plead Section 12(3) of the Act.

8. Mr. Anoop Singh laid great stress that instead of granting any relief to the respondent the action of the respondent should have been stayed, in support of his contention be invited our attention to a decision rendered in the High Court of Justice (Chancery Division) in England by Stirling J, in Edwards v. Elkan (1888) 5 R.P.C. 70. In that case there was an infringement of a trade mark Our Boys for watches. The defendant in that action had alleged and it was not contradicted by the plaintiff that the defendant had been using the words Our Boys in connection with watches two years prior to the date when the plaintiffs obtained registration of his trade mark. There was no motion to rectify the registration of trade mark in that case also. The defendant had applied for registration. In these circumstances it was held that the plaintiffs motion for interim injunction should stand over till the defendants application for registration was decided by the Registry. This decision is no authority in the present case for here there is nothing on record to show long or prior user by the appellant of the infringing trade mark of the device of a tractor. Apart from this the application of the appellant is for registration of the trade mark of the word `Ferguson on its carton whereas the interim injunction granted by the learned Single Judge is in respect of printing the device of the tractor.

9. Mr. Anoop Singh has also referred to the decision in Mr. Chell v. Henry, (1880) 15 Ch. D. 181. In this case the plaintiffs registered trade mark was for worsted goods described as a white selvage on each side of the piece having a read and white mottled thread inter-woven the full length of the selvage between the edge of the piece and edge of the selvage, and deposited a specimen at the Patent Office Museum. The specimen so deposited was undyed, and the selvage was white, the warp being white cotton and the woof white mohair, and nearly in the middle of the selvage was a compound warp thread composed of a thread or white cotton and a thread of Turkey red cotton twisted together. The defendant sold black mohair goods with a dark grey selvage of nearly the same shade as that of the plaintiffs with a twisted thread running along its inner edge, which thread was originally white, red and yellow, but in the course of dying the white became dark grey, and the yellow a dark olive, which could hardly be distinguished. The plaintiffs sought to restrain the sale of these goods as an infringement, and moved for an injunction. There was evidence that the selvage, not actually white, was what was known in the trade as a white selvage. The injunction was refused on the ground that there was no similarity in the goods of the plaintiffs and those of the defendant. This decision does not help the appellant for obviously in the present case the device of the tractor on the playing cards is similar.

10. Reference was also made by Mr. Anoop Singh to the decisions of the Chancery Division in Bravingtons Ltd. v. Barrington Tennant, 1957 RPC 183 and Tavener Rutledge Ltd. v. Specters Ltd., 1957 RPC 498. The first of these related to similarity of trade names inasmuch as the defendant instead of using its full name Barrington Tenant started trading only under the name Barrington which was stated to be similar to Bravington Ltd. used by the plaintiff. The motion for injunction was refused on the ground that it was doubtful if the similarity of the shops, would deceive potential customers, that there had been undue delay by the plaintiffs in taking action and that in view of these facts as interim relief should be granted. On facts the Court came to the conclusion that it was not satisfied that there would be any deception as alleged. In the latter case, namely, 1957, RPC 468, the complaint of the plaintiff was that the defendant was selling sweets in canisters that were almost exact copies of those used by the plaintiff and infringement of copyright was alleged. Later on, the action was brought for infringement of trade-mark, copyright and passing off Injunction was refused primarily on the ground of undue delay and that there was no similarity in the labels of the canisters. These two decisions, therefore, also do not help the appellant. There is neither undue delay in the present case and there certainly is a similarity in the printed device of the tractor on the playing cards of both the appellant and respondent.

11. Mr. Anoop Singh urged that only the device on the carton of the respondent is registered and not the device on playing cards and so use of the device of a tractor on the playing cards of the appellant could not be stopped. This contention has to be merely stated to be rejected. What is registered in the case of the respondent is the trade mark in relation to the goods and it cannot be disputed that the goods that are being manufactured by the parties are playing cards packed in cartons. A reference to sub-section(2) of Section 2, Section 28 and Section 29 of the Act makes it clear that the registered trade mark of the respondent would be available to him both for the playing cards as well as the carton.

12. Mr. Anoop Singh lastly urged that the appellants application for registration has been pending since January, 1970 and was even published in July, 1971 and so, even if the suit was not stayed the respondent should have been put on terms in case the suit is ultimately dismissed on the plea of the appellant regarding concurrent user. Mr. Anoop Singh, of course, strongly urged, already noticed, that the suit should have been stayed but in the alternative prayed for imposition of terms. He sought support for his contention from a Bench decision of the Mysore High Court in D. Adinarayanan Setty v. Broke Bond Tea of India Ltd, AIR 1960 Mys 142 and the English decisions reported in 1932 RPC 286 we have already dealt with the plea regarding the stay of the suit and are of the opinion that the decisions cited are not attracted in the present case. No terms can be imposed on the respondent for there is no such prayer either in the appeal before us or even the reply filed by the appellant in the original side.

13. We are entirely in agreement with the learned Single Judge the mere acceptance of an application for registration of a trade mark or its advertisement confers no right on the appellant and, prima facie, there is an infringement of the trade mark. There is also, prima facie, no evidence on the record to show honest concurrent user.

14. The appeal is, accordingly, dismissed with costs.