C. L. Chaudhry ( 1 ) THIS appeal is directed against the order dated 18. 5. 1992 by which the application of the appellant under Order 39 Rules 1 and 2 was dismissed by the trial court. Brief facts giving rise to this appeal are that the appellant filed a suit for permanent injunction before the District Judge on the allegations that since the year 1980 the plaintiff company had been manufacturing and selling various goods. In the year 1986 the plaintiff and its predecessors started manufacturing and selling television picture tubes, parts thereof, video tapes and cassettes and television tuners etc. The said goods were sold under the trade mark prakash used in stylish manner. The trade mark of the appellant had become a symbol of quality with the consumers. The plaintiffs are the proprietors of the trade mark prakash in respect of the goods of the plaintiff since 1986. The goods are being sold on a large scale through out the length and breadth of the country. The trade mark" PRAKASH was used in a distinguishing manner in relation to the aforesaid goods on account of its open, regular, continuous and extensive user, coupled with large scale publicity and advertisement throughout the country and abroad through various media has acquired a secondary meaning and distinctiveness so much so that the said artistic trade mark prakash has come about to be exclusively identified and recognised with the said products of the appellants manufacture and none else. The appellants, during the past many years, have established large and extensive sale of their said products under the aforesaid artistic trade mark prakash which runs in several crores of rupees annually, and have acquired unique reputation and goodwill on account of the superior and high-standard quality of products. The appellants, therefore, have a right to restrain any person from using a trade mark or name which is identical with and/or deceptively similar to that of the appellants and such right extends not only to the particular goods sold by the appellants but alse to cognate/allied classes of goods as it is bound to lead unwary customers to mistake the goods manufactured by any other person for those goods, manufactured by the appellant. The goodwill and the reputation which the appellants have built up over the years had vitally helped them in increasing the annual turnover the years. The goodwill and the reputation which the appellants have built up over the years had vitally helped them in increasing the annual turnover the years. ( 2 ) IT is further alleged that from an advertisement inserted in Navbharat Times dated 11. 11. 1991 the appellant came to know that the respondent also had adopted/started using the reputed artistic trade mark prakash of the appellants in respect of their products such as televisions, tuners, and T. V. Kits which are identical, cognate, allied and connected goods of the same description, nature as those of the plaintiffs, falling in the same class, without the permission, consent or authority of the appellants, is a mis-representation made by the defendants in the course of the trade to injure the business or goodwill of the plaintiffs and to cause potential damage to such business or goodwill. The use of the artistic word prakash with the identical or deceptively similar logo by the respondents is clearly mala fide and dishonest. The use by the respondents of the mark prakash in relation to their goods would be taken as indicating that such goods were the products of the manufacture of the appellant under their reputed and well known trade mark prakash or of a concern, associated or connected with the plaintiffs and would, therefore amount to passing off and would enable others to pass off. The appellant and the respondent s goods are identical, cognate, allied connected or associated goods of the same nature and description and are associated on account of the fact that these are displayed and sold side by side across the same counters in retail outlets such as electrical/electronic shops. The appellant s goods and those of respondent s have common trading channel as the class of customers are almost the same. There would be confusion as a substantial number of persons including traders, unwary buyers, manufacturers of televisions would think and believe that the appellant s business under their reputed artistic trade mark prakash is diversifying and the impugned goods, namely-televisions, tuners and T. V. Kits of the defendants have something to do with the appellants. There would be confusion as a substantial number of persons including traders, unwary buyers, manufacturers of televisions would think and believe that the appellant s business under their reputed artistic trade mark prakash is diversifying and the impugned goods, namely-televisions, tuners and T. V. Kits of the defendants have something to do with the appellants. If the respondents are not restrained now from using the trade mark prakash in the same fashion, the plaintiffs will lose potential for exploiting their reputation and goodwill in their reputed and long used artistic trade mark prakash in the area of electrical and electronic by marketing good. In these premises relief of perpetual injunction is claimed. ( 3 ) NEEDLESS to say that the suit is being contested on behalf of the respondent. The case set up by the respondent is that the appellant is not the proprietor of the alleged trade mark prakash in relation to picture tubes, parts thereof, video tapes, cassettes and T. V. tuners etc. The appellant has never extended the use of said trade mark in relation to the said goods. The goods of the appellant under the trade mark parkash are not available in Indian markets and therefore, the user claimed by the plaintiff in relation to the above goods since the year 1986 is false to the knowledge of the appellant. The appellant cannot claim exclusive rights to the use of the trade mark prakash in relation to the goods. The trade mark prakash when used in relation to the said goods has so direct reference to the character and quality of the goods that the said trade mark cannot be regarded as inherently capable of distinguishing the appellant s goods from similar goods of other traders and manufacturers. The trade mark prakash in relation to picture tubes, is highly laudatory having direct reference to the character and quality of the goods, therefore, the monopoly over the use of the trade mark prakash in relation to the said goods cannot be exercised. The appellant is claiming proprietorship of the trade mark prakash in relation in television picture tubes, parts thereof, video tapes, cassttes and television tuners while the respondent is using the trade mark prakash in relation to television tuners and T. V. Kits. The goods of the respondents are absolutely different and distinct from the goods of the plaintiff. The appellant is claiming proprietorship of the trade mark prakash in relation in television picture tubes, parts thereof, video tapes, cassttes and television tuners while the respondent is using the trade mark prakash in relation to television tuners and T. V. Kits. The goods of the respondents are absolutely different and distinct from the goods of the plaintiff. Therefore, the possibility of confusion and deception is negligible. The respondent is the proprietor of the trade mark prakash in relation to television tuners and T. V. Kits. The respondent adopted the said trade mark in the year 1987 and had been continuously using the same since then without any interruption or interference from any corner whatsoever. The respondent has already build up a valuable trade under the said trade mark. The suit has been filed after a very long delay and is liable to be dismissed. The appellant has not stated the exact date since when he is manufacturing the said goods. The appellant has also concealed the name of its predecessor-in- interest. The goods of the appellant under the mark prakash are not available in the Indian Markets. It is denied that the appellant and its predecessors are the owners and proprietors of the mark prakash . ( 4 ) IT is further denied that the appellant has acquired high reputation in the market under the mark prakash . The goods of the appellant are absolutely different and distinct from the goods of the appellant. It is denied that the appellants are spending substantial amount on the publicity of the trade mark. It is also denied that the sales of the appellant under the said mark are running in several crores of rupees. There is no mis-representation on the part of the respondent. There is no question of deception and confusion. It has been denied that the goods of the appellant and that of the respondent are cognate and identical and are of the same description. ( 5 ) APPELLANT filed the replication denying the pleas set up by the respondent and reaffirming the allegations made in the plaint. Alongwith the plaint, the appellant filed an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure seeking interim injunction restraining the respondent from using the mark prakash . The interim relief was claimed on same allegations as made in the plaint. Alongwith the plaint, the appellant filed an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure seeking interim injunction restraining the respondent from using the mark prakash . The interim relief was claimed on same allegations as made in the plaint. In the application it is further alleged that the effect of the respondent continuing to use the mark prakash in relation to their products would be to destroy that part of the appellant s reputation in their mark prakash and the goodwill attached thereto which extends to such goods. The respondent s use of the mark prakash in respect of their goods is calculated to injure and damage the appellant s business goodwill in the sense that it will do so and further that such damage must result if the respondent s improper and unproprietary use is allowed to continue. The appellant will suffer irreparable injury and the pecuniary compensation will not afford the appellant adequate remedy. The appellant has a strong prima facie case and the balance of convenience lies in favour of the appellant. ( 6 ) THE application was contested on behalf of the respondent on the same pleas as set up in the written statement. ( 7 ) THE trial court heard and disposed of the application by the impugned order. It was found by the trial court that so far as the question of prima facie case is concerned as per the case of the respondent, he also had been using the same name prakash since February, 1987 in respect of their products and whether those products constituted cognate and allied products and the products similar to those being manufactured by the appellant was a question which needed thorough investigation which was possible only during the trial of the case. The Additional District Judge held that there was no prima facie case or balance of convenience in favour of the appellant as the appellant who was admittedly doing business in lakhs of rupees will not suffer any loss or injury whereas the respondent who was a poor manufacturer and doing business since February 1987 will suffer irreparable loss in terms of his business since business of the respondent will abruptly come to a stand still. On these grounds, the application was dismissed. Aggrieved by this order the appellant has approached this court by way of this appeal. On these grounds, the application was dismissed. Aggrieved by this order the appellant has approached this court by way of this appeal. ( 8 ) I have heard the learned counsel for the parties. Mr. Aggarwal appearing for the appellant contended that the appellant and its predecessor- in-interest had been manufacturing the goods in question since 1986. The predecessor-in-interest of the plaintiff was M/s. Prakash Pipes and Industries Limited, a company which was incorporated on 31. 7. 1980 under the Companies Act, 1956. In support of his contention true copy of the certificate of incorporation from the Registrar of Companies has been placed on record. M/s. Prakash Pipes and Industries Limited changed its name to M/s. Prakash Industries Limited w. e. f. 1. 11. 1990. A true copy of the certificate issued by the Registrar of Companies certifying that Prakash Pipes and Industries Limited which was originally incorporated on 31. 7. 1980, changed its name to Prakash Industries Limited w. e. f. 1. 11. 1990. The contention is that Prakash Pipes and Industries Limited changed its name to Prakash Industries Limited. He further contended that the appellant is the successor-in-interest of M/s. Prakash Pipes and Industries Limited and the goods sold by M/s. Prakash Industries are deemed to be the goods of the appellant company. The appellant can maintain an action on the basis of the user of the mark by the predecessor-in-interest of the appellant company. ( 9 ) ACCORDING to him M/s. Prakash Pipes Industries, the predecessor- in-interest of the appellant started using the mark in the year 1986, and since then the goods are being marketed under the same trade mark continuously and without any break. The sales of the goods run into crores to Rupees and the appellant has acquired goodwill and reputation and the goods are associated with the mark of the appellant. Huge amount is being spent for advertising and on building the reputation and goodwill. The trade mark is the proprietary right of the appellant and its lien has to be protected. The appellant is in prior use of the mark and the respondent has no right to adopt this mark. This is a case of mis-representation on behalf of the respondent and this mis-representation is intentional and wilful. The respondent adopted this mark knowing fully well that the appellant was already marketing its goods under the trade mark prakash . The appellant is in prior use of the mark and the respondent has no right to adopt this mark. This is a case of mis-representation on behalf of the respondent and this mis-representation is intentional and wilful. The respondent adopted this mark knowing fully well that the appellant was already marketing its goods under the trade mark prakash . He further argued that if the marks are identical or deceptively similar, the plaintiff is entitled to an interim injunction, even if the goods are different provided there is a trade connection between the appellant and the respondent s goods and the appellant has considerable goodwill and reputation in their mark. It was further argued that the goods which are being sold by the respondent have a trade connection with the goods of the appellant and the goods of the respondent are cognate and allied to the goods of the appellant, the appellant s rights extends to goods which are cognate or allied to the goods of the appellant. Appellant s goods have acquired reputation in the market through the trade mark with which their goods have become associated, have right to restrain the respondent from using the trade mark or name which is identical with or similar to that of the appellant s, and such right extends not only to the particular goods sold by the appellant but also to cognate classes of goods, provided the cumulative effect of the similarity of the mark, the commercial connection between the appellant s goods and those of the respondents and surrounding circumstances is such as to lead the unwary customers to mistake the respondent s goods for those of the appellants. ( 10 ) HE sought to fortify his contention by relying upon various judgments. The first judgment in line is in the case of Bata India Limited vs. M/s. Pyare Lal and Co. 1. In this case Bata Company filed a suit for injunction against the defendant restraining them from using the mark batafoam or otherwise associating the name of bata in any manner or form of advertisement etc. and further restraining them from passing off or enabling others to pass off mattresses, sofa cushions and other articles associating them with the name of bata in any manner or form. It was held that plaintiffs bad cause of action for instituting the proceedings for passing off. and further restraining them from passing off or enabling others to pass off mattresses, sofa cushions and other articles associating them with the name of bata in any manner or form. It was held that plaintiffs bad cause of action for instituting the proceedings for passing off. The plaintiff had made out a case of issuance of an interim order of injunction in respect of the user of the name bata to any of their products by the defendants. The name bata was well known in the market and the user of such name was likely to cause not only deception in the mind of ordinary customer but could also cause injury to the plaintiff company. The fact that the 1. AIR 1975 All 242. plaintiff was not producing foam was not enough to hold that there could be no passing off action in respect of the user of the name bata to the products marketed by the defendants. The use of the name or the mark bata by the defendants is indicative of their intent. . . . . . . . . It was also held in this case that where a trader uses the name or the mark or sign deceptively similar to that of the second trader in relation to goods marketed by the former even though it may not be the same goods or the same type of goods as produced by the second trader, yet a question of passing of may arise. The main consideration will be whether there is a misrepresentation. If there is a prima facie case of misrepresentation made by the defendants in the course of trade to prospective customers and which is likely to cause injury to the business and the goodwill of the plaintiff company, he would be entitled to the protection by a Court when a suit of this nature may take years to be decided. In the meantime, the defendants may go on usingdecentively similar mark in trade and marketing their goods representing or giving an impression as if the said goods are produced by the plaintiff company. An injunction to restrain the defendants in such a case would be justified. In the meantime, the defendants may go on usingdecentively similar mark in trade and marketing their goods representing or giving an impression as if the said goods are produced by the plaintiff company. An injunction to restrain the defendants in such a case would be justified. After all a person long established in business, who has been using a particular mark in this product or products for a long number of years is entitled to protect the same against inroad of another proprietor or producer. This is necessary not only to give protection to the goods and the business of the original producer but also to protect the public at large being duped by such unfair trade practice. ( 11 ) THE next judgment on which reliance is placed is in the case of M/s. Parkash Metal Works v. M/s. Square Automation (P) Ltd. 2. In this case the plaintiff came to the court seeking relief against the defendant on the ground of passing off his trade mark with the word hot Flo by the defendant. In this case the view taken is that the registration of mark in the Trade Mark Registry would be irrelevant in an action of passing off. It was further held that in order 10 succeed in passing off action plaintiff has to establish use of hot Flo prior in point of time. The gist of the action is that the plaintiff, by using and making known the mark or get up in relation to his goods and thus causing it to be associated or identified with those goods has acquired a quasi proprietary right to the exclusive use of the mark or get up in relation to goods of that kind, which right is invaded by any person who, by using the same or some deceptively similar mark or get up in relation to goods not of the plaintiff s manufacture, thereby diverting to himself orders intended for and rightfully belonging to the plaintiff. It was also held that actual damage need not be proved in a passing off action. Reliance is also placed on a judgment in the case of Charandas and Veer Industries v, Bombay Crockery House3. In this case the plaintiff based his claim for passing off. It was also held that actual damage need not be proved in a passing off action. Reliance is also placed on a judgment in the case of Charandas and Veer Industries v, Bombay Crockery House3. In this case the plaintiff based his claim for passing off. The objection of the defendant was that the word perfect being an adjective or a laudatory epithet could not be registered and in the absence of registration he had no exclusive right to use that trade mark for his goods. This court repelled the objection of the defendant on the ground that the right against passing off did not arise out of a registration of trade mark. "it was an independent right and, therefore, granted the stay. 2. Rep. as 1992 PTC 29, 3. 1984 PTC 102, ( 12 ) THE next judgment relied upon is in the case of Munday v. Carey4. In this case M. was the registered proprietor of a trade mark consisting of an ace of clubs with the word club upon it, and used the same on labels pasted on stone bottles in which he sold "club Black Enamel" with descriptive letter-press. C. commenced to "hub Black Enamel" in similar bottles carrying similar labels with the device of an "ace of spades" with very similar letter-press. An action was brought by M. against C. claiming an injunction, damages and costs. It was held that it was a rank case of dishonesty, and an injunction was awarded to restrain infringement of Trade Mark and passing off, with one guinea damages and costs. ( 13 ) RELIANCE is also placed upon a judgment of a Division Bench of this court in the case of B. K. Engineering Co. Delhi v. U. B. H. I. Enterprises (Regd. ). Ludhiana and another5. In this case the plaintiff sold cycle bells under the trade mark b. K. . The defendants were using the trade mark "b. K. 81" for their cycle bells. Plaintiff brought an action against the defendants for an injunction. The plaintiff succeeded on the ground that the defendant s mark was deceptively similar and likely to cause confusion in the mind of general public. It was further observed as under : "competition must remain free, it is true. It is the life blood of free enterprise system. Plaintiff brought an action against the defendants for an injunction. The plaintiff succeeded on the ground that the defendant s mark was deceptively similar and likely to cause confusion in the mind of general public. It was further observed as under : "competition must remain free, it is true. It is the life blood of free enterprise system. Yet it is essential that trading must not only be honest but must not even unintentionally be unfair . If it is shown that a product or a business of a trader has acquired a distinctive character the law will restrain a competitor from using that other s name. A line must be drawn some where between honest and dishonest trading, between fair and unfair competition. The setting of the law of passing off is competition between traders. There is a real risk of injury to the reputation of the plaintiffs if the defendants are not prevented from selling cycle bells under the name b. K. 81 . This is a misappropriation of plaintiff s name. b. K. 81 is strongly suggestive of association with the plaintiffs, or some licence or endorsement from them. This is called "misappropriation of business reputation". This is a conduct which will come into the new, generalised idea of "unfair competition". ( 14 ) RELIANCE was also placed on a judgment of this court in the case of Kumar Electric Works v. Anuj Electronics6. In this case the following view was expressed : "admittedly the plaintiff was not using the trade mark olympus in respect of televisions-the goods which the defendant was marketing under this name. However, the fact remains that, prima facie the plaintiff s electronic and electrical goods namely electric fans, heat convector, air coolers, juicer-blender-grinder, washing machine, cooler pump, cooler fan and sandwich toaster were being marketed through 4 Rep. as 1905 RFC 273. 5. Rep. as AIR 1985 Delhi 210. 6. Rep. as 1989 (2) Arb LR 133. 390 the trade mark olympus . Plaintiff s right to restrain the defendant from using the trade mark, prima facie extends to cognate classes of goods. Televisions, which are being sold by the defendant under exactly the same trade mark prima facie were in the same trading channel and were cognate goods. This view finds support from the decision of this court in Creative Handicrfts v. Sadana Electric Co. and another. Televisions, which are being sold by the defendant under exactly the same trade mark prima facie were in the same trading channel and were cognate goods. This view finds support from the decision of this court in Creative Handicrfts v. Sadana Electric Co. and another. In the circumstances, prima facie, second requirement has also been made out. " ( 15 ) THE other authority cited on behalf of the appellant is a Division Bench Judgment of this court in the case of Century Traders v. Roshan Lal Duggar and Co. 7, wherein the following view was expressed : "in an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants. The registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purposes of deciding the application for interim injunction unless evidence has been led or is available of user of their registered trade mark. " ( 16 ) ON the other hand the respondents contended that the appellant company was incorporated in the year 1990 whereas the respondent started the use of the mark much before the appellant company was incorporated. The appellant had not disclosed in the plaint as to who were the predecessor- in-interest of the appellant and as such no evidence could be led to prove that M/s. Prakash Pipes Industries was the predecessor-in-interest of the appellant. The next contention is that the respondents are using the mark prior in time than that of the appellant. It was also contended that the mark prakash wasdescriptive and laudatory and the appellant could not maintain an action on the basis of their mark. It was also contended that the goods which were sold by the respondents were quite different from the goods which were being marketed by the appellant. There is no evidence placed on record by the appellant to show that the goods were sold under the trade mark prakash . It was also contended that the goods which were sold by the respondents were quite different from the goods which were being marketed by the appellant. There is no evidence placed on record by the appellant to show that the goods were sold under the trade mark prakash . Whereas there is ample evidence on the record to show that the respondent has been selling the goods under the mark prakash . The goods of the appellant and the respondent are of distinct and different nature. There is no question of any deception. The respondent started using the mark in the year 1987 and this mark is being continuously used by the respondents without any interruption. Goods of the respondents are television tuners, and T. V. Kits. Respondents also deal in picture tubes but not under the trade mark prakash . In order to substantiate his contentions reliance is placed upon a number of judicial pronouncements. ( 17 ) THE first authority is in the case of M/s. Om Prabha v. Abnash Chand8. The view taken by the Apex court in this case is as under : 7. Rep. as AIR 1978 Delhi 250. 8. Rep. as AIR 1968 SC 1083 . "the ordinary rule of law is that evidence is to be given only on a plea properly raised and not in contradiction of the plea. " Similar view was also taken by the Supreme Court in the case of G. S. Mahalaxmi v. Shah Ranchhoddas9, in the following words : "in other words the plea taken in the written statement is that the suit properties were the private properties of the Maharaj and that there was no trust, private or public. But the case argued before this court is a wholly different one viz. the suit properties were partly the properties of a private trust and partly the private properties of the Maharaj. The 1st defendant cannot be permitted to take up a case which is wholly inconsistent with that pleaded. " ( 18 ) IN Balaji Chettiar v. Hindustan Lever Ltd. 10, the following observations were made : "it is important to bear in mind that the concurrent user must be of the entire trade mark and it would not be enough if one feature of it alone had been used. " ( 18 ) IN Balaji Chettiar v. Hindustan Lever Ltd. 10, the following observations were made : "it is important to bear in mind that the concurrent user must be of the entire trade mark and it would not be enough if one feature of it alone had been used. The evidence must be evidence of the user of the trade mark as a whole and documentary evidence must be furnished to prove the same when challenged. User by different persons at different times cannot avail and the applicant must prove that the alleged prior users are his predecessors in title, one claiming through the other. In other words independent user to some trade mark by independent unconnected persons cannot constitute concurrent user. As observed already there is no proof how the applicant (in the claim of title) delivered title and bacame the owner of the trade mark and how he is entitled to rely upon prior user of other persons. " ( 19 ) IN the case of S. N. Banade v. Union of India11, the apex court ruled as under : "variance between pleadings and proof. Inamdar of Village claiming compensation for diversion of water from river on ground of his title to the flowing water. Plaint making no allegation about his right as riparian owner. Inamdar cannot take an alternative case on the ground of his rights as riparian owner. " ( 20 ) THE principles regarding passing off were enumerated by the Apex court in the case of Corn Products v. Shangrila Food Products12, in the following words : "it seems clear to us that what is necessary is that the reputation should attach to the trade mark ; it should appear that the public as-sociated the trade mark with certain goods. The reputation with which we are concerned in the present case is the reputation of the trade mark and not that of the marker of the goods bearing that trade mark. A trade mark may acquire a reputation in connection with 9. Rep. as AIR 1970 SC 2025 . 10. AIR 1967 Mad 148 p. 156. 11. Rcp. asair1964scp. 24. 12. AIR 1960 SC 142 . the goods in respect of which it is used though a buyer may not know who the manufacturer of the goods is. " ( 21 ) IN the case of London Rubber Co. Rep. as AIR 1970 SC 2025 . 10. AIR 1967 Mad 148 p. 156. 11. Rcp. asair1964scp. 24. 12. AIR 1960 SC 142 . the goods in respect of which it is used though a buyer may not know who the manufacturer of the goods is. " ( 21 ) IN the case of London Rubber Co. Ltd. v. Durex Products Incorporated and another13, the Supreme Court observed as under : "the question of volume of use is always a relevant question in considering honest concurrent use under Section 10 (2) of the Act. It depends on the facts of each case. There is no express statutory emphasis that the use should be large and substantial. Kerly at page 235 of the 7th edition on Trade Marks quotes Re : Lyle and Kinahan Ltd. s Application (1907) 24 RPC 249 and other cases for the proposition that it is not necessary for the applicant s trade to be larger than that of the opponent. My own opinion is that the use has to be a business use. It has to be a commercial use. It certainly will not do if there is only a stray use. " After pointing out that it is not possible to lay down a hard and fast rule on the volume of use necessary under Sub-section (2) of Section 10, he gave a pertinent illustration of a small trader who sold goods under a particular trade mark for a long time though his use or sales were small in comparison with big international traders dealing in similar goods bearing a similar trade mark and then observed : "even so, if there is honest concurrent use I should think the small trader is entitled to protection of his trade mark. Trade mark is a kind of property and is entitled to protection under the law, irrespective of its value in money so long as it has some business or commercial value. Not merely the interest of the public but also the interest of the owner are the subject and concern of trade mark legislation". ( 22 ) IN the case of M/s. Victory Transport Co. Pvt. Ltd. v. Distt. Not merely the interest of the public but also the interest of the owner are the subject and concern of trade mark legislation". ( 22 ) IN the case of M/s. Victory Transport Co. Pvt. Ltd. v. Distt. Judge, Ghaziabad14, it was observed as under : "in regard to a passing off action according to settled law, there are broadly two tests which have to be applied for determining the question whether the plaintiff is entitled to an injunction. The tests are : (1) Whether the words used in the trade name of the plaintiff are mere descriptive words of common use or have they come to acquire a distinctive or secondary meaning in connection with the plaintiff s business so that the use of those words in the trade name adopted by another was likely to deceive the public ? This test relates to the reputation which the plaintiff claims for itself. (2) Whether there is a reasonable probability that the use of the name adopted by the defendants was likely to mislead the 13. Rep. as AIR 1963 SC 1882 . 14. Rep. as AIR 1981 All 421 . customers of the plaintiff by reason of similarity of the two trade names. In order to succeed the plaintiff has to establish both these things. The court shall insist on a very high standard of proof before it would grant injunction in favour of the plaintiffs, in view of the seriousness of the repercussions which such an injunction is bound to have on the rights of the defendants. The injunction prayed for in such cases prohibits the defendants altogether from carrying on their existing business under a trade name adopted by it at the instance of a plaintiff whose claim is founded on no more than such illusive concepts as reputation or goodwill and so forth. In the case of infringement of trade marks, the right is found on registration of the mark which per se is property. It must be borne in mind that in the case of an action oninfringement of trade mark in view if a statutory provisions, a similarity in the trade marks is per se actionable. In passing off actions, however, the plaintiff has to prove further that his trade name has by reputation and use, come to acquire a secondary meaning indicating distinctiveness and quality of the business being carried on by him. In passing off actions, however, the plaintiff has to prove further that his trade name has by reputation and use, come to acquire a secondary meaning indicating distinctiveness and quality of the business being carried on by him. " ( 23 ) IN Hindustan Pencils Pvt. Ltd. v. Prem Chand Gupta, Trading as Universal Trading Co. 15, it was held as under : "addressing oneself to the facts of the present case in the light of the statutory position as well as the principles that emerge from the decided cases, I find it difficult to say that the respondent s goods are of the same description as those for which the petitioner s registration enures or that their use on the respondent s goods is likely to create or cause confusion in the minds of the users of the petitioner s goods. The class of goods in respect of which the petitioner was registered are articles that are used for or in connection with, writing pens, pencils, erasers, clips, ball point refills and so on. But the nature and purpose of a geometrical or mathematical instrument box is widely different. " ( 24 ) THE next judgment relied upon by the learned counsel for the respondent is a Division Bench Judgment in the case of M/s. Johnson and Johnson and another v. Christine Hoden India (P) Ltd. and another16. In this case the plaintiff brought a passing off action on the ground that the mark stay FREE has acquired wide reputation and goodwill in India and has come to be associated by the traders and members of public in India exclusively with the plaintiffs. It was claimed that the defendants had also used the mark stayfree in respect of sanatory napkins and have sub-stantially copied the plaintiff s pack and the mark stayfree . According to the plaintiff the defendant had also adopted their packing which had a deceptively similar get up and colour scheme as that of the packing of the plaintiffs viz. blue, yellow and white combination. It was held that there being very much difference between the packings of the appellants and that of the respondents there was no likelihood of confusion or deception. Moreover, the ultimate customers being literate or semi-literate ladies, prima facie 15. Rep. as 1985 PTC 33. 16. Rep. as 1988 PTC 39. blue, yellow and white combination. It was held that there being very much difference between the packings of the appellants and that of the respondents there was no likelihood of confusion or deception. Moreover, the ultimate customers being literate or semi-literate ladies, prima facie 15. Rep. as 1985 PTC 33. 16. Rep. as 1988 PTC 39. it was difficult for anyone to take the goods of the respondents thinking that they are the goods of the appellants. The main question was not the intention of the defendant in using certain words, but was the probable effect of such action on the minds of the customers. The packing of the appellants showed the trade origin as that of Johnsons whereas that of the respondents showed of Christine Hoden. The colour scheme was different, lettering style was also different. In these circumstances, the temporary injunction was rightly refused by the learned Single Judge. As regards the question whether the word stayfree was a distinctive word or descriptive word would be decided during the course of trial. The injunction was rightly refused by the learned Single Judge. ( 25 ) I have given my thoughtful consideration to the respective contentions of the parties. The first contention of the learned counsel for the respondent is that the appellant has not mentioned in para 4 of the plaint as to who is the predecessor-in-interest of the appellant and as such the appellant cannot be allowed to lead evidence on this point to show the name of its predecessor. In my opinion the contention is without force. The appellant has clearly stated that the predecessor of the appellant started with the mark prakash in the year 1986. Previously the name of the company was M/s. Prakash Pipes and Industries and thereafter the name of the company was changed to M/s. Prakash Industries Ltd. which is evident from the documents placed on record. To my mind there is no variance between the pleadings and the proof. The appellants are not leading evidence which is contrary to the pleadings. ( 26 ) PASSING off action is not a trade mark action. This action is based on common law right or the Law of Torts. To my mind there is no variance between the pleadings and the proof. The appellants are not leading evidence which is contrary to the pleadings. ( 26 ) PASSING off action is not a trade mark action. This action is based on common law right or the Law of Torts. When one person s goods are sold on the reputation and goodwill of another person s unregistered trade mark, get up or even business name or trading style, it may be brought within the purview of the term passing off . ( 27 ) LORD Diplock in the case of Erven Warnik B. V. v. J. Townend and Sons (Hull) Ltd. 17, set forth the following five characteristics for a valid cause of action in passing off: (1) There must be a misrepresentation ; (2) The misrepresentation should be in the course of trade ; (3) The misrepresentation is to be to the prospective customers or ultimate consumers of goods or services supplied or rendered ; (4) The misrepresentation should be calculated to injure the business or goodwill of another trader (in the sense that it is a reasonably foreseable consequence) ; and (5) The misrepresentation should cause an actual damage to a business or goodwill of the trader, by whom the action is brought or (in a quia timet action) will probably do so. 17. 1980 RPC 32. Therefore, misrepresentation and damage goodwill are two essential elements for a valid cause of action in passing off, and both must be proved by the plaintiff for an interlocutory injunction. ( 28 ) THE court will insist on a very high standard of proof before it could grant injunction in favour of the plaintiff in view of the seriousness of the repercussions which such injunction was bound to have on the rights of the defendant. If the name of the company is descriptive of its goods, it cannot secure a monopoly and restrain others in using such name ; but it may be successful in a passing off action provided it is proved that the name has been worked upto such an extent (by extensive sale and advertisement etc.) that it has acquired a secondary meaning such that it has been associated in the minds of the purchasing public with its goods only. Proof of actual damage or fraud is unnecessary in passing off action whether the relief asked for is injunction alone or injunction, account and damages. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out. ( 30 ) IN this case the appellant has placed on record bills which would show that they started selling their good? under the trade mark prakash from the year 1986 and the goods were continuing to be sold without any interruption. The appellant has also placed on record the balance sheets of the appellant company showing the figures of sales. It runs into crores of rupees. The trial court has also observed that the appellants are selling goods worth lakhs of rupees. The appellant has also placed material on record to show that lot of advertisement has been conducted in order to acquire reputation and goodwill of their mark. From the balance sheets, it is clear that the amount spent on advertisement runs into lakhs of rupees. From the sales figures prima facie it can be said that the appellant has large scale proceeds and huge market. It has acquired good reputation and goodwill and the goods of the appellant seems to be associated with the mark of the appellant. On the other hand the material placed on the record by the respondent would show that they started marketing their goods under the trade name prakash in 1991. In view of this the appellant is an earlier user in point of time. The respondents have no right to invade the proprietary rights of the appellant. This is a clear case of misrepresentation on the part of the respondent. The appellant s goods were being sold in the market under the mark prakash . It is unbelieveable that the respondent would not know that the goods of the appellant were not available in the Indian markets. The conduct of the respondents in using the mark prakash does not seem to be clean and honest. Rather they are guilty of fraud and deceit. ( 31 ) THE other contention of the respondent that the trade mark of the appellant prakash is descriptive and laudatory in nature and it cannot be registered under the Trade Marks Act. The conduct of the respondents in using the mark prakash does not seem to be clean and honest. Rather they are guilty of fraud and deceit. ( 31 ) THE other contention of the respondent that the trade mark of the appellant prakash is descriptive and laudatory in nature and it cannot be registered under the Trade Marks Act. In the absence of registration the appellant cannot maintain an action for passing of In my opinion this contension is without force. The right of passing of action is does not arise from registration. The gist of the action is that the plaintiff, by using and making known the mark or get up in relation to his goods and thus causing it to be associated or identified with those goods has acquired a quasi proprietary right to the exclusive use of the mark or get up in relation to goods of that kind, which right is invaded by any person who, by using the same or some deceptively similar mark or get up in relation to goods not of the plaintiff s manufacture, induces customers to buy goods not of the plaintiff s manufacture as goods of the plaintiff manufacture, thereby diverting to himself orders intended for and rightfully belonging to the plaintiff, (See 1956 RPC page 1 ). The plaintiff whose goods have acquired a reputation in the market through a trade mark or name with which the goods have become associated has a right to restrain the defendant from using the trade mark or name which is identical with or similar to that of the plaintiff and such right extends not only to the particular goods sold by the plaintiff but also to cognate classes of goods provided the commulative effect of the similarity of the mark, the commercial connection between the plaintiff s goods and those of the defendant s goods and surrounding circumstances is such as to lead the unwary customers to mistake the defendant s goods for those of the plaintiff. ( 32 ) IN the case of Rawal Industries Pvt. Ltd. v. Duke enterprises18, it was held that the trade mark duke was used by both parties, the plaintiff in respect of oil seals for automobiles and the defendant for PVC cables. ( 32 ) IN the case of Rawal Industries Pvt. Ltd. v. Duke enterprises18, it was held that the trade mark duke was used by both parties, the plaintiff in respect of oil seals for automobiles and the defendant for PVC cables. On evidence it was found that the plaintiff acquired reputation and goodwill on duke by prior user, and that there was a trade connection between the goods of both the parties. Hence interim injunction was allowed. ( 33 ) THE next question that arises for determination is that whether the goods of the respondent are cognate and allied. The goods of the appellant which are being sold under the trade mark prakash are television picture tubes, parts thereof, video tapes and cassettes and television tuners etc. whereas the goods of the respondent which are being sold under the same trade mark are televisions, tuners and T. V. Kits. Prima facie the goods are of the same nature and they are definitely cognate and allied to each other. There is a trade connection between the goods of both the parties. The appellant s goods and those of the respondents goods have a common trading channel and class of customers are the same. These can be displayed and sold side by side across the same counter in retain outlets such as electrical electronics shops. ( 34 ) PRIME facie I am of the view that the appellants have been able to establish that they are an earlier user in point of time and that their goods have become by user distinctive of the appellant s goods. The conduct of the respondents is calculated to pass off their goods as those of the appellant s. The appellants are likely to sustain substantial injury by respondents misuse of their goodwill. The mark prakash is distinctive of the appellant s goods. The respondents have misappropriated the mark which is distinctive of the goods manufactured by the appellant. The conduct of the respondents is such that they do not deserve any protection under the law. Equity is also against them. The main concern of the law is to protect appellant s property in the goodwill. The respondents entered the market 18. Res. as 1983 IPLR 121. recently in the year 1991. The appellant took action promptly and without undue delay. Balance of convenience is in favour of the appellants. Equity is also against them. The main concern of the law is to protect appellant s property in the goodwill. The respondents entered the market 18. Res. as 1983 IPLR 121. recently in the year 1991. The appellant took action promptly and without undue delay. Balance of convenience is in favour of the appellants. ( 35 ) FOR the reasons stated above. I would allow the appeal and set aside the order of the trial court. Injunction is issued against the respondents restraining them, their servants, agents, from manufacturing, selling or offering for sale or otherwise dealing and passing off their product of Televisions, Tuners and T. V. Kits under the trade mark prakash or under any other identical and/or deceptively similar trade mark, as and for the goods of the manufacture of the appellant/plaintiffs. Before parting, I may, observe that nothing expressed herein shall affect or prejudice the rights of the parties at the trial. The parties are left to bear their own costs.