M. L. Varma ( 1 ) THIS order will dispose of these two applications. LA- No. 514"790 has been filed by the plaintiff, under Order 39 Rules 1 and 2. An ex parts restraint order was passed on this application on 16. 7. 1990. The defendant has filed LA. 3465/91 under Order 39, Rule 4, Civil Procedure Code. The main plank for seeking to have the ex-parte injunction order vacated is that the defendant has since been granted registration in respect of word "sarishta" per se, under the Trade and Merchandise Marks Act (for short the Act ). ( 2 ) THE documents at annexures "a" and "b" filed by the plaintiff are the cartons in which the hair dyes in questions is sold by the plaintiff and the defendant respectively. There is another bigger carton in which the smaller cartons are put and sold. They have been filed at pages 28 and 29 in the list of documents of the defendants. The documents at these two pages have been denied on behalf of the plaintiff. But there is no serious dispute at the Bar that the document at page 28 is the bigger carton in which the smaller cartons containing the hair dye of the plaintiff is sold ; and further that the document at page 29 is the bigger carton in which the hair dye of the defendants is sold. The defendant has also filed smaller cartons at pages 32, 33 and 34 of its documents to show that they are similar to the carton of the plaintiff at annexure "a" as noticed above to show that others are also using similar carton for selling hair dye. ( 3 ) THE dispute relates to the similarity of the cartons as per annexures "a" and "b" and it is the case of the plaintiff that the defendant is passing off the goods of the plaintiff as that of the defendant in deceptively similar cartons. There does not appear to be any dispute with regards to the bigger cartons which are at pages 28 and 29 of the documents filed by the defendant. ( 4 ) AT the outset, it may be noticed that Mr. Ghiraya, appearing for the defendants has fairly conceded that the defendant shall not sell its hair dye in the smaller carton with the same colour combination. ( 4 ) AT the outset, it may be noticed that Mr. Ghiraya, appearing for the defendants has fairly conceded that the defendant shall not sell its hair dye in the smaller carton with the same colour combination. He has stated that after exhausting the stock of cartons already with the defendant ; which in any event would be done latest within 1 months from the date of the order; the defendants shall replace the light blue colour on the smaller carbon with navy blue colour and the yellow colour on the smaller carton will be replaced by red colour. He has also stated that the registered trade name "sarishta" would be printed on the smaller carton above the words "mashhoor" prominently, so as not to cause any deception. ( 5 ) MR. Ghiraya has referred to two judgments of this court in the case of M/s. Anil Food Industries v. M/s. Alka Food Industries1 as well as in the case of P. M. Dissels Pvt. Ltd. v. Thukral Mechanical Works2. In these cases interim injunction was not granted on a suit for passing off against the owner of a registered trade mark. Mr. Ghiraya has also referred to paragraphs 17 and 18 of P. M. Dissels s case (supra ). In paragraph 17 it has been noticed that it was observed by S. S. Chadha, J. of this court in another case that the defendants as registered owner of the trade mark were entitled to use that mark till the registration stands, because those rights were conferred on the defendants by virtue of provisions of Section 28 of the Trade and Merchandise Marks Act even though the marks may be similar. Again in paragraph 18 of P. M. Dissels case (supra), it has been noticed that D. R. Khanna, J. had ordered in another case that as long as the mark is allowed to subsist as registered mark under the Act, no injunction against its user can be issued. Mr. Ghiraya has also drawn my attention to an order passed by D. P. Wadhwa, J. on 29. 10. 1990 in S. No. 2475/90. wherein the defendant became the registered owner of trade mark tesco" and on that basis the interim orders passed were modified and the restraint against use of the said trade mark was vacated. The order has, however, been made subject to further order?. 10. 1990 in S. No. 2475/90. wherein the defendant became the registered owner of trade mark tesco" and on that basis the interim orders passed were modified and the restraint against use of the said trade mark was vacated. The order has, however, been made subject to further order?. ( 6 ) MR. Bansal, appearing for the plaintiff, in support of the application for injunction has vehemently argued that an injunction can be granted on the facts of this case against the defendants for restraining the defendant from passing off the goods of the defendant as those of the plaintiff. He has, however, fairly conceded that no action for infringement would lie I against the defendant in view of the fact that the defendant is now holding a registered trade mark in respect of the name "sarishta" per se, in view of the Section 30 (l) (d) of the Act. Mr. Ghiraya also points out that under Section 28 of the Act a registered owner of a trade mark cannot take an action against another registered owner of the mark. ( 7 ) MR. Bansal, has, however, urged that the judgment in the cases of M/s. Anil Food Industries (supra) and P. M. Dissels case (supra) are not under Section 27 of the Act. His contention is that under the said Section 27 of the Act, action for passing off would lie against a person even if such a person was the owner of a registered trade mark. In this connection he has referred to a judgment of High Court of Punjab and Haryana in the case of Delco Engineering Works v. General Motors Corporation3. He has referred to paragraphs 7 and 37 in support of this contention. However, it may be noticed here itself that Section 27 (2) of the Act does not mention that an order of injunction can be passed restraining a person from using a mark which is registered in his name. ( 8 ) MR. Bansal has placed strong reliance on the judgment of this court in the case of Century Traders v. Roshan Lal Duggar and Company and others4. He has referred to the observations made in paragraphs 9, 11, 12 and 14 of this case. In paragraph 9 it has been observed that in a passing off action registration of trade mark is immaterial. He has referred to the observations made in paragraphs 9, 11, 12 and 14 of this case. In paragraph 9 it has been observed that in a passing off action registration of trade mark is immaterial. However, a perusal of this paragraph shows that this observation was made while dealing with the argument that there were other persons, i. e. third parties, who held registrations in their favour and, therefore, there was no question of an action for passing off. It may benoticed that in this case neither of the parties had a registered trade mark in its favour and the case was that of passing off based on prior user. ( 9 ) MR. Bansal has also referred to a judgment of the Supreme Court in the case of Wander Limited and another v. Antox India (Private) Limited5 and has urged that an action for passing off would lie against the owner of a registered trade mark. There is no doubt that under the heading "important Point", the Editor of the law report has pointed out that prior registration. of trade mark is not necessarily evidence of prior user and that passing off action can be based on proof of prior user of the trade mark despite its registration by the other party. It may also be noticed here that the words "despite its registration by the other party" does not appear in the body of the judgment nor has Mr. Bansal been able to show me these words in the body of the judgment. ( 10 ) IN Wander s case (supra) the facts were somewhat peculiar. In any event the right of the owner of a registered trade mark has been upheld in this case and the injunction granted by the Appellate Court reversing the order of the Trial Court was vacated by the Supreme Court in favour of the owner of the registered trade mark. In this case the Trial Court had found that the appellant before the Supreme Court had given evidence of prior user of the mark which had not been disturbed by the Appellate Court. However, this judgment is not any authority on the point that an owner of the registered trade mark can be injuncted from using such mark and deriving benefit under Sections 28 and 30 of the Act. However, this judgment is not any authority on the point that an owner of the registered trade mark can be injuncted from using such mark and deriving benefit under Sections 28 and 30 of the Act. As a matter of fact in this case the argument that the owner of the registered trade mark should be restrained from using that mark on the ground that it was passing off its goods as those of the other party was not accepted by the Supreme Court. ( 11 ) FINALLY, Mr. Bansal referred to a judgment in the case of Van Zeller v. Mason Cattley and Company6. ( 12 ) IN view of the statement made by Mr. Ghiraya as noticed above there does not appear to be any necessity for deciding at this stage as to whether in a suit for passing off an order of injunction can be passed against the owner of registered trade mark restraining htm from using the said mark. At the interim stage such an injunction has not been granted in various cases to which reference has been made by Mr. Ghiraya. The defendant shall modify the colour scheme of the smaller carton and will also print "sarishta" on the smaller carton as per the statement of Mr. Ghiraya. I am of the opinion that prima facie, thereafter, there will be no chance that the goods of the plaintiff can be passed off as that of the defendant. The defendant will use, consume and destroy within 1 months all the offending smaller cartons as per annexure "b" of the list of documents of the plaintiff and shall file an affidavit to this effect within two months from today. The "defendant shall also file in court its modified smaller cartons within two months from today. The order of 16. 7. 1990 is modified accordingly. These applications stands disposed of.