Interpretation of jurisdiction in view of Dhodha House Vs. S.K.Maingi (SC) case

The existence is outcome of continuous process of Struggle. A baby is outcome of fight amongst hundreds of thousands of brother sperms in penetrating one ovum. In ancient days man struggled against the nature in order to survive. Changing time witnessed the fight amongst the feudal society in order to advance their respective interest on the land. With Advent of nuclear era and advent of global economy ,concept of direct war amongst the nations seems to be a distant possibility and the same has been replaced by the battle amongst the multinational corporations/companies on economic front. Modern days, the multinational companies are trying to extend their economic interest in as much countries as possible.

A civilized society guarantees the fairness in battle. Providing equal opportunities to all the contesting parties is one of the prime objectives of the modern society. While writing this article ,the mythological story of famous battle between the giant Elephant and the Crocodile (as mentioned in the Hindu scriptures), lickers across my mind.

'Once upon a time there was a giant Elephant. His mere glimpse was sufficient to instill feeling of fear amongst the small animals. Once the Elephant went to the bank of the Ganga, in order to quench his thirst. Inside the water there was a Crocodile, lying in waiting for a prey. As soon as the Elephant entered into the water, the Crocodile caught one of his legs and started to drag him into the water. As tug of war progressed, the Crocodile was prevailing over the Elephant and for a moment life of Elephant was seemed to come to an end. Getting panicky, the Elephant fervently began to pray Lord Vishnu (The Hindu God) and Lord Vishnu descended upon Earth in order to rescue the life of Elephant by killing the Crocodile." The Crocodile prevailed over the Elephant not because he was more powerful than the Elephant but because of the fact that the battle was fought inside the water, which was more suitable to the Crocodile . Place of battle plays decisive role in its outcome and present story highlights the same. Had the battle would have been fought on the land , there would have been different story. "

In modern civil disputes, the concept of territorial jurisdiction draws its origin from the fact that defending party should not be put to inconvenience at the instance of another party. The idea is to provide fair opportunity to both the party. Today territorial jurisdiction plays important role in outcome of civil disputes amongst the parties. This article proposes to deal with the significance of trade mark application vis-a-vis territorial jurisdiction in an action of Trade Mark Infringement and an action of Passing off especially in light of recent Judgment passed by the Hon'ble Apex Court in DHODHA HOUSE VS. S.K.MAINGI as reported in 2006(32) PTC 1 (SC) and different interpretations given thereto by the Hon'ble High Courts.

CAUSE OF ACTION.

Sections 16-20 of Code of Civil Procedure deal with the territorial jurisdiction in civil court. Section 16-18 of C.P.C deal with territorial jurisdiction in suits pertaining to immovable property. Section 19 of C.P.C deals with territorial jurisdiction in suit pertaining to movable property. Section 20 of C.P.C deals with all other cases not covered by the aforesaid provisions of C.P.C. Indisputably suit for Infringement of trade mark/Passing off would be governed by Section 20 of C.P.C and according to which all such suit may be filed ,at the option of plaintiff , in any of the following court viz:-

(a) Within whose local jurisdiction ,the cause of action , wholly or in part arises or

(b) Within whose local jurisdiction the defendant resides or carries on business or personally works for gain.

To appreciate the significance of trade mark application filed either by the plaintiff or the by the defendant, in conferring the jurisdiction of the court, it is necessary to understand the term 'cause of action' as application for filing of registration of trade mark, would be covered under the Section 20 (c) of C.P.C, which says that the suits can be filed at the places where the cause of action, wholly or in part arises.

The term cause of action has not been defined in C.P.C however this term can be understood with the help of interpretations given thereto by various courts.

A Cause of action means every fact, which if traversed, it would be necessary for the plaintiff to prove in order to support his right to a judgment of the court. AIR 1949 PC 78(at 86),AIR 1989 SC 1239.

It is a action which gives occasion for and forms the foundation of the Suit. AIR 1970 SC 1059. Cause of action is bundle of essential facts which are necessary for the plaintiff to prove before he can succeed in the suit. (1978) 2 SCC 91(Para10). Cause of action means every fact which it would be necessary for the plaintiff to prove, if traversed in order to support his right to the judgment of the court. It doesn't comprise every piece of evidence which is necessary to prove each fact but every fact but every fact which is necessary to be proved .Everything which, if not proved, gives the defendant an Immediate right to judgment must be part of cause of action. Read Vs Brown (1888) 22 Q.B.D 128. From the aforesaid interpretations given by various courts it can be said that cause of action means every fact which is necessary for the plaintiff to prove to support his right to the judgment of the court and everything which if not proved, gives the immediate right to the defendant for the judgment.

WHAT FACTS ARE NECESSARY TO BE PROVED IN AN ACTION OF PASSING OFF

In Trade Mark Act 1999, the term Passing off is nowhere defined, however some guidance can be taken from the interpretation given to the term Passing Off by different courts.

In N.R.Dongre Vs Whirlpool Corporation 1996 (5) SCC 714 case the Hon'ble Apex Court observed: "The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of the another man". The Apex court further clearify in Kaviraj Durga Dutt Sharma Vs Navratna Pharmaceutical Laboratories AIR 1965 SC 980. " The use by the defendant of the trade mark of the plaintiff is essential in an action of Passing off". In Ruston & Hornby Ltd Vs Zamindara Engineering Co AIR 1970 SC 1649,the Hon'ble Court observed that " In a passing off action the issue is as follows - Is the defendant is selling his goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's good." In Laxmikant V Patel Vs Chetanbhai Shah AIR 2002 SC 275,The apex Court observed " the law does not permit anyone to carry on his business in such a way as would persuade the customers or client in believing that the goods or services belonging to someone are his or associated therewith. In Ellora Industries Vs Banarasi Dass Gupta AIR 1980 Del 254 the Hon'ble Delhi Court observed as follow " In an action of passing off all that is needs to be proved is that the defendant's Goods are so marked ,made up or described by them as to calculated to mislead ordinary purchasers and to lead them to mistake the defendant's goods for those of the plaintiff's and it is the tendency to mislead or to confuse that forms the gist of passing off action.

In an action of passing off the plaintiff is required to prove (1) Reputation (2) Deception and (3) Damage . P. Narayanan (Para 25.13 ,Vol VI,Page 696).

Section 134 (1) (c) of Trade Marks Act 1999,also helps us in understanding that what are the things/facts, which the plaintiff is not required to establish in an action of passing off. Section 134 (1) (c) of Trade Marks Act 1999 reads as follows:-

"No suit for passing off arising out of use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered ,shall be instituted in any court inferior to a District court having jurisdiction to try the same."

Bare perusal of the above mention section makes it quite clear that an action of passing off has got nothing to With the plaintiff's Trade Mark being registered or unregistered. Further reading of the section clearly establishes this fact that the cause of action for Passing off arise only by the use of impugned Trade Mark by the defendant. This fact has been confirmed by the various courts.

To appreciate the term use by the defendant of any trade mark, it is necessary to understand the term trade mark, as defined in Trade Mark Act 1999.

Section (zb) of Trade Mark Act 1999, reads as follows:

2(zb)Trade Mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and-

(i) In relation to chapter XII(other than Section 107), a registered trade mark or a mark used in relation to goods or services for the purposes of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii)In relation to other provisions of this Act , a mark used or proposed to be used in relation to goods or services for the purposes of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either by way of permitted user ,to use the mark whether with or without ant indication of the identity of that person and includes a certification trade mark or collective mark.

The above mentioned section makes it clear that for a mark, to be qualified as a trade mark, its user; inter-alia has to in the course of trade. In other way the user of the trade mark has to be in the course of trade or a commercial user. It is submitted that a user which does not pertain to user of a mark in the course of trade and/or a commercial user it can never amount to user of a trade mark and by necessary implication the same can never be basis of bringing an action of either Infringement of trade mark or an action of passing off.

From the above discussion, it is quite clear that in an action of passing off, the cause of action can be based on every fact which

(a) establishes tremendous reputation of plaintiff's trade mark,

(b) proves misrepresentation/user by the defendant in the course of trade, that his good are the goods of the plaintiff, and

(c) pertains to damage occurred to the plaintiff because of impugned activity of the defendant. Every fact which establishes these facts, can be said to form the part of cause of action in an action of passing off.

SIGNIFICANCE OF TRADE MARK APPLICATION IN CREATING JURISDICTION IN AN ACTION OF PASSING OFF.

In para 38 of the Dhodha House case (Supra) the Hon'ble Apex Court, after relying on the Premier distelleries Pvt Ltd Vs Shashi Distilleries cae [2001 PTC 907(Mad)],held that the cause of action in a suit for passing off has nothing to do with the location of Registrar's office or the factum of applying or not applying for registration. In AIR 1991 Karnataka 303 and 2002 ( 25) PTC 704 (Karnataka) , it has been held that registration of trade mark is wholly irrelevant for the action of passing off. In AIR 1978 Delhi250, the Hon'ble court observed that the registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action of passing off.

CONCLUSION: From above discussions it is quite clear that in an action of passing off, the filing of trade mark application either by the plaintiff or by the defendant is totally irrelevant and no cause of action can be based thereon. It is trite to say that cause of action constitutes every fact, which if not proved, gives the defendant an immediate right to judgment. In an action of passing off, every fact which is necessary in establishing goodwill and reputation of the plaintiff's trade mark can be said to gives accrual of cause of action. Now question is that whether filing the trade mark by the plaintiff, establishes the goodwill and reputation of the plaintiff's trade mark or not? Answer is no. As the goodwill and reputation of a trade mark can be established only by the commercial user of the same in the market and filing of trade mark application has got nothing to do with commercial user of the same. Thus trade mark application filing by the plaintiff does not give rise to accrual of cause of action in an action of passing off.

More so in an action of passing off, the plaintiff is not required to establish that he is registered proprietor of the trade mark. In the other way it can be said that an action of passing off lies irrespective of this fact that whether the plaintiff is registered proprietor of trade mark or not? It has also been observed by the Apex Courtin Corn Products Refining Co Vs Shangrilla Food Products Ltd AIR 1960 SC 142 that preserve of mark in the register doesn't prove its user at all. This view was supported by various courts AIR 1978 DELHI250. Thus the factum of plaintiff, being registered proprietor of a trade mark also does not give rise to accrual of cause of action in an action of passing off.

Moreover filing of trade mark application by the defendant doesn't correspond to defendant's user. In other way filing of trade mark application by the defendant has got nothing to do with the user in the course of trade and by mere filing trade mark application, the defendant is not trying to misrepresent in the course of trade that his goods are the goods of the plaintiff. It is well settled proposition of law that registration is prima facie evidence of the validity and preserve of a mark on the register does not proves the user at all. Hence filing of trade mark application by the defendant and/or registered trade mark of defendant is irrelevant in an action of passing off. In other way it can be said that in an action of passing off, the locus of trade mark office, in no way gives rise to cause of action. The same view has been duly supported by the Apex court in Dhodha House(Supra) Judgment.

With due respect to the Hon'ble Delhi High Court, it is submitted that the in its recent judgment viz: Pfizer Products Inc Vs Rajesh Chopra & others 2006 ( 32) PTC 301 (Del) the Hon'ble court did not perceive the ratio of Dhodha House Judgment in right perspective in as much as in an action of passing off the Hon'ble court relied on the filing of trade mark application.

In a very recent Judgment titled as M/s Parle Products Pvt. Ltd Versus M/s Surya Food 7 Agro Ltd , reported as 2007 (35) PTC 542 (Mad), the Hon'ble Madras High Court observed ' in order to establish his right to an injunction in an action for passing off, it is wholly un necessary for the plaintiff to demonstrate that he had applied for registration of the mark under the Trade Mark Act . His failure to demonstrate that he had applied an application for registration will not clothe the defendant with a right to obtain dismissal of the suit. The application for registration is therefore , a factor of no relevance in an action for passing off(para 6)'.

In the said judgment the Hon'ble Court further observed ' the essence of the action of passing off id deceit on the part of the defendant in trying to pass off his goods as that of the plaintiff. That is a pure question of fact to be established by the proper evidence. The cause of action can arise where deceit is practiced. It can not arise at a location where the plaintiff who claims the relief, chooses to lodge an application for registering his mark, without any deceit having been practiced within that Jurisdiction.(para 7)'.

In para 9 of the said Judgment the Ho'ble have gone one step further in observing that that in an action for passing off , the cause of action has got nothing to do with the location of the registrar's office or factum of applying or not applying for registration. Filing of an application for registration of a trade mark therefore doe snot constitute a part of cause of action where the suit is one for passing off'.

By necessary implication it is clear that filing of trade mark application either by the plaintiff or by the defendant has got nothing to do with the passing off action. Or in other words it can safely be said that locus of office of trade mark office, either qua the plaintiff's trade mark application filing or qua defendant's trade mark application filing do not form part of cause of action in an action of passing off. Any reliance on the same is extraneous and irrelevant in such cases.

WHAT FACTS ARE NECESSARY/RELEVANT IN AN ACTION OF INFRINGEMENT OF TRADE MARK

In order to understand that what facts are necessary/relevant in an action of Infringement of trade mark, few relevant sections of the Trade Marks Act 1999 are required to be gone through.

Section 27(1) of trade marks act 1999 reads as follows:
No person shall be entitled to institute any proceeding to prevent, or to recover damages for, infringement of an unregistered trade mark.

While Section 134(1)(a)and (b) or trade marks act 1999 reads as follows:
No Suit (a) for infringement of a registered trade mark, or (b) relating to any right in a registered trade mark; shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

Combined reading of section 27(1) and section 134 (1)(a) and (b) of Trade Marks act 1999 makes it quite clear that for the purposes of bringing an action of Infringement of a trade mark, plaintiff is required to establish that he is the registered proprietor of the trade mark. In other way it can be said that in an action of infringement of trade mark, the factum of plaintiff in failing to establish that he is registered proprietor of the trade mark, gives an immediate right of judgment to the defendant. The logical conclusion is that, every fact which establishes that the plaintiff is registered proprietor of the trade mark, gives rise to cause of action in an action of infringement of trade mark. Prima facie it appears that locus of trade mark office, qua the plaintiff's trademark application filing, gives rise to cause of action.

More so same view was supported by Division Bench, Madras High Court in Premier Distilleries Pvt Ltd Vs Shashi Distilleries Case 2001 PTC 907 (Mad)(DB) Where the Hon'ble DB observed as follows' The right to bring an action for infringement in the court within whose jurisdiction the trade mark registry is located ,is founded on the fact that the relief sought in the action one for infringement and not merely for passing off. Where it is alleged that a trade mark is infringed, it is essential for the plaintiff to show that the mark had, in fact, been registered. The failure to establish that fact will result in the dismissal of the suit for infringement, satisfying the test formulated by Fry, L.J. 'for ascertaining the cause of action, namely everything which, if not proved, entitles the defendant to an immediate right to judgment'.

With due respect to the Hon'ble DB it is submitted that mere the locus of trade mark registry , qua the plaintiff's trade mark application filing can not be basis in assuming the jurisdiction of court.

Let us examine relevant section of the Act. Section 134(2)of Trade Marks Act1999 provides for additional forum to the plaintiff according to which the suit for infringement of trade mark can be filed to the court, in whose jurisdiction, at the time of institution of suit, the plaintiff actually and voluntarily resides or carries on business or works for gain. This additional forum was not there in the old Trade & Merchandise Marks Act 1958.Had the presumption 'that the locus of trade mark registry, qua the plaintiff's trade mark application filing can provide the jurisdiction of court' be taken to be reasonable, then there would not have been any occasion for the legislature to providing for additional forum to the plaintiff by virtue of Section 134 (2) of Trade Mark 1999. Let this proposition be explained by one example.

A legal entity namely X carries on its business in Delhi. A files trade application before the trade mark registry, at Delhi office and after some time the same gets registered in his name. A files a suit for infringement against Y(residing at Ghaziabad )before the Delhi High Court in the old Trade & Merchandise Marks Act1958.In old Act additional forum was not there. If we take the above presumption to be reasonable i.e.( the locus of trade mark registry , qua the plaintiff's trade mark application filing can provide the jurisdiction of court), then mere this fact that plaintiff's trade mark was filed and registered from trade mark registry, Delhi, could give rise to accrual of cause of action even in old Act. Hence even in old act , for the purposes of conferring jurisdiction to Delhi High Court this fact became irrelevant, whether the plaintiff was actually carrying on its business or works for gain at Delhi or not? The insertion of additional forum by legislature in Section 132(2)Trade Marks Act 1999 creates clouds over this proposition. There are also many other reasons which further fortify this argument that in infringement case ,trade mark application filing by the plaintiff cannot give rise of accrual of cause of action, or in other words it can be said that the same can not be a basis of conferring jurisdiction in such cases.

Bare perusal of Scheme of the Trade Mark Act 1999 and rules framed there under clearly establishes this fact that location of trade mark registry is not based on jurisdiction basis, rather it meant for facilitating the registration of trade marks only.

Section 5 of the Trade Marks Act 1999 provides for head office and branch offices of Trade Mark Registry. In fact in Mumbai, there is head office of Trade Mark Registry while branch offices are located in Delhi, Chennai,Calcutta and Ahmedabad. Section 6 of the Trade Mark Act provides for the register where entry shall be entered pertaining to all the registered trade mark. The compilation and publication of the trade mark journal is handled only by the head office. Thus it is quite clear that different branch offices are not intended to work as independent offices. Rule 4(a)(ii) of Trade Marks Rule 2002 provides that where there is no any entry in the register as to principal place of business in India ,Appropriate office of trade mark registry for the purposes of making trademark application, or for the purposes of filing notice of opposition would be guided by the place mentioned in addresses for service in India. Thus the locus of appropriate trade mark office does not correspond to actual place of business of the applicant. Rule 5 of the Trade Marks Rules 2002 provides that jurisdiction of the appropriate Trade Mark office is not altered by change in the principal place of business or address for service in India. Under Trade Marks Act 1999,all the appeals against the order of Registrar of Trade Marks, instead of going to Different High Court according to the Jurisdiction, has to go before the Intellectual Property Appellate Board at Chennai only, irrespective of the jurisdiction. Thus in view of scheme of the Trade Marks Act 1999 and rules made there under it is clear that locus of trade mark registry cannot be taken to be one of the basis for the purposes of conferring jurisdiction in Infringement of Trade Marks cases. More so, in AIR 1974 DELHI 40 the Hon'ble High Court also returned this finding that the registration in plaintiff's favour of the trade mark by itself is not sufficient to support the action of infringement.

Now let us examine that whether in infringement cases, jurisdiction can be based on the factum of trade mark application filed by the defendant? Let us examine Dhodha House Case in this behalf. In Dhodha House case(Supra) the Apex court dealt With two civil appeals.

In Civil Appeal no 6248 of 1997,the plaintiff was carrying on its business in the District of Ghaziabad while the defendant was based in Faridkot. Plaintiff claimed to be registered proprietor of Trade Mark Dhodha House under no 277714-B in class 30 and registered copyright holder under no A-5117/1970 and A-5330/1970.The Plaintiff filed composite suit of infringement of trade mark/passing off/infringement of copyright against the defendant before the District Judge Ghaziabad. It is important to mention here that no trade mark application was filed by the defendant.

In Civil Appeal No.16/1999,both the plaintiff and the defendants were based at Rajkot. The plaintiff claimed to be registered proprietor of Trade Mark and copyright Field Marshal. The first defendant was alleged to be registered under the Companies Act in Delhi. The impugned Trade Marks of defendant were published in India by trade mark registry in respect of defedant's applications for registration, including the Union Territory of Delhi. The Plaintiff filed composite suit of infringement of trade mark/passing off/infringement of copyright against the Defendant before the Hon'ble Delhi High Court.

In Civil Appeal no 6248 of 1997, counsel for the plaintiff relied on M/S Jawahar Engineering Company Vs M/S Jawahar Engineers Pvt Ltd 1983 PTC 207. In Jawahar Engineers Case, plaintiff was registered proprietor of Trade Mark Jawahar whereas the defendant has applied for registration of the trade mark Jawahar for few states of India. In that case it was held ' having regard to the fact that an advertisement had appeared in the trade mark journal as regard application for registration of the trade mark of defendant therein, the Delhi high Court would have jurisdiction in the matter.'

In para no 31 of the Dhodha House Judgement, the Hon'ble Supreme Court discussed the Jawhar Engineering case and returned the finding as follows:-The said decision has no application in the instant case for more than one reason. For the purposes of registration of a trade mark,an application must be filed in the branch office of registrar of trade mark. In the said para the Hon'ble Court further observed, 'An advertisement by itself in a journal or a paper would not confer jurisdiction upon a court.

In para 32 the Dhodha House Judgement, the Apex Court further observed' a cause of action will arise only when a trade mark is used and not when an application is filed for registration of the trade mark. In a given case an application for grant of registration certificate may or may not be allowed. In said para the Hon'ble Apex Court further observed ' In other words a suit may lie where an advertisement of trade mark or copyright has taken place but a cause of action for filing the suit would not arise within the jurisdiction of court only because an advertisement has been issued in the Trade Mark Journal or any other Journal notifying the factum of filing of such an application'.

Thus it is quite clear that the Hon'ble Apex Court returned the finding that cause of action for infringement of trade mark shall arise only when the trade mark is used and not an trade mark application is filed. By logical conclusion it can be said that no cause can be based on defendant's application, as the same does not correspond to defendant's commercial user.
Even Section 31 of trade marks Act 1999 says as follows:- Registration to be prima facie evidence of validity.

Section 29 of trade marks act provides that in what circumstances it can be said that a registered trade mark is being infringed.

29 (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade ,a trade mark which is identical with ,or deceptively similar to ,the trade mark in relation to goods or services in respect of which the trade mark is registered and in such a manner as to render the use of the mark likely to be taken as being used as a trade mark.

29(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use ,uses in the course of trade ,a mark which because of ---------

29(4) A registered trade mark is infringed by a person who not being a registered proprietor or a person using by way of permitted use, uses in the course of trade , a trade mark which --------

29(5) A registered trade mark is infringed by a person if he uses such registered trade mark as his trade name or part of his trade name or name of the business concern or part of the name ,of his business concern dealing in goods or services in respect of which the trade mark is registered.

29(6) For the purposes of this section, a person uses a trade mark, if, in particular, he-

(a) affixes it to the goods or the packaging thereof;
(b) Offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark , or offers or supplies services under the registered trade mark
(c) imports or exports goods under the mark;

(d) uses the registered trade mark on business papers or in advertising.

29(7) A registered trade mark is infringed by a person who supplies such registered trade mark to a material intended to be used for labeling or packaging goods, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.

29(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to distinctive character; or
(c) is against the reputation of the trade mark.

29(9) Where the distinctive elements of a registered trade mark consists of or includes words, the trade mark may be infringed by spoken use of those words as well as by their visual representation and reference in this section to use of a mark shall be construed accordingly.

It is clear that for an action of Infringement, the commercial user of impugned trade mark by the defendant has to be established.

Now let us examine that on the question of infringement of trade marks, what stand has been taken by the various courts.

Infringement is use by the defendant for trading purposes upon or in connection with the goods of the kind for which the plaintiff's right to exclusive use exists, not being the goods of the plaintiff, of a mark identical with the plaintiff's mark or comprising something some of its essential features or colorably resembling it so as to be calculated to cause goods to be taken by ordinary purchasers for the goods of the plaintiff. Abbey Sports Co Ltd Vs Priest Brothers, (1936)53 RPC 300 at 304.

A Plaintiff , in a suit on the basis of infringement, has to provide not only that his trade mark is infringed but a person who is not a registered proprietor of the mark or the registered user thereof but that the said person is using a mark in the course of trade. S.M.Dychem Ltd Vs Cadbury (India) LTD AIR 2000 SC 2114.

The use by the defendant of the trade mark of the plaintiff is sine qua non in an action for infringement of trade mark. Kaviraj Pandit Durga Dutta Sharma Vs Navratna Pharmaceutical Laboratories AIR 1965 SC 980. In the same judgment it was further held that, 'When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be in the course of trade, the question whether there has been an infringement is to be decided by the comparison of the two trade mark.

From above mentioned discussions it can be said that in order to bring an action of infringement of registered trade mark, the plaintiff has to establish the user/proposed user of trade mark by the defendant in the course of trade. Any user, which is not in the course of trade, cannot be said to form cause of action in infringement of trade mark cases.

Now let us examine the term Use in the course of trade. The term use in the course of trade has no where been defined in the Trade Mark Act 1999.In Hermes Tm (1982)RPC 425 AT 432 it is observed that 'In the course of trade is wide enough to cover the steps necessary for the production of goods as well as their actual placing on the market.'

The user of trade mark can further be explained by bare perusal of a recent judgment of Hon'ble Delhi high Court titles as M/s Yonex Kabushiki Kaisha Versus M/s Phillips International & others, reported as 2007 (35) PTC 345 (DEL), where in para 14 of the judgment the Hon'ble Court observed as follows' the plaintiff has sought to establish the allege use of the trade mark YONEKA in the India on account of the letter dated 06.08.2005 purported to have been issued by the Badminton Association of India. The said declaration also did not prove use of the trade mark on commercial basis in any manner whatsoever. The said letter talks about supply of the shullecocks 'free of costs'. The question whether any shuttlecocks, as per alleged agreement with association, were supplied or not remains unanswered on the part of the plaintiff. Furthermore , distribution of free samples does not constitute commercial use of the trade mark'.

It is submitted that the Hon'ble Delhi High Court emphasized on this fact that alleged user of the trade mark has to be commercial user and in the given case the Hon'ble Court returned the finding that distribution of free samples does not constitute commercial use of the trade mark. The facts remains that use of a trade mark has to be commercial in nature.

Further it is observed in para no. 23.24 of Trade Marks & Passing off, Volume VI, P.Narainan , relying on theIrvings Vs Horsenail (1934) 51 RPC 110 at 116 case explained the term "use as a trade mark". The expression (use as a trade mark) means ' in such a manner as to render the use of the mark likely to be taken as being use as a trade mark'. Thus it is clear that in order to constitute infringement the defendant must use the offending mark as a trade mark within the meaning of definition under 2 S(1)(Zb).It is submitted that Section 2 S(1)(Zb) of the act contemplates the user by the defendant in the course of trade. In para 2.21 of the said book, P.Narainan further observed 'it is fundamental principle of law that the function of a trade mark is to indicate the origin of the goods to which it is applied. Aristoc Vs Rysta (1945) 62 RPC 65 at 79. Connection in the course of trade would therefore, mean any kind of connection consistent with this principle. A connection with the goods in the course of trade means an association with the goods in the course of their production and preparation for the market.

CONCLUSION: From combined reading of section 2 (zb)(i)(ii)of Trade Mark Act 1999 [as already mentioned in passing off section of this article],section 29 of Trade Mark Act 1999, and also from perusal of the above mention judgments of the courts, it is quite clear that in order to succeed in an action of Infringement of trade mark, the plaintiff is required to prove the user/proposed user of the impugned trade mark by the defendant in the course of its trade activity. The said user has to be commercial user.Thus every fact which proves the actual commercial user and/or proposed commercial user of impugned trade mark by the defendant is a relevant fact and the same gives rise to cause of action.

Defendant's filing of application and/or advertisement thereof in the trade mark journal does not amount to commercial user/proposed commercial user at all. Even Hon'ble Delhi High Court observed in AIR 1972DELHI 248 that mere acceptance of an application for registration of a trade mark or its advertisement confers no right. Mentioning of user column in the application is not conclusive proof of the commercial user/proposed commercial user by the defendant. That's why there is provision of opposition so that the claimed user and or proposed user(remember, the same doesn't qualify for proposed commercial user) of the defendant can be challenged. Even if the defendant's application qualifies the opposition and gets registered, even then there is provisions for rectification of the same whereby the proprietary rights of the defendant over the impugned trade mark including its user can also be challenged. Even various court also held that registration is prima facie evidence of validity (AIR 1972 DELHI 248 , AIR 1972 DELHI 46). The defendant is not getting any right in the trade mark by filing application or by its advertisement nor the same is any proof the user of the defendant's trade mark, leave aside the commercial user. This is the reason why the legislature, while enacting the Trade Mark Act 1999, did not include the act of trade mark application filing by the defendant as infringement of trade mark (Section 29 of Trade Mark Act 1999).While bringing an action of infringement of trade mark, onus heavily lies on the plaintiff to establish the infringement of his trade mark by the defendant and the same cannot be discharged only qua defendant's trade mark application filing. Thus it can be safely be said that in an action of infringement of trade mark/passing off, no cause of action can be based on trade mark application filling, either by plaintiff or by defendant.