Judgment :- R.R. Jain, J. Plaintiffs in Civil Suit No. 311/97, filed under Sections 105 and 106 of the Trade and Merchandise Marks Act, 1958 are the appellants before us in this Appeal, whereas defendants are the respondents. The plaintiffs are engaged in the business of publishing Tamil Notes for the school students since 1953 under the trade mark "KONAR TAMIL URAI". Claiming prior usage and proprietory right of the trade mark and apprehending infringement as well as passing of goods by the defendants, the plaintiffs moved two applications namely No. 336/97 and 337/97 for injunction, restraining the defendants from infringing the plaintiffs' well established trade mark and passing of the goods respectively. The learned Judge, after hearing both the parties, dismissed both the applications by his order dated 12.6.1997. Aggrieved by this order, the plaintiffs have filed this appeal. For the sake of convenience, the parties are referred hereinafter as they are ranked in the original proceedings. 2. Initially, the plaintiffs filed two appeals namely Nos. 215/97 and 216/97 against the impugned order. Appeal No. 215/97 was filed against the order of dismissal of Application No. 336/97, seeking injunction against infringement of the plaintiffs' well established trade mark "Konar Tamil Urai", whereas Appeal No. 216/97 is filed against the order of dismissal passed in Application No. 337/97, seeking injunction against passing of goods. As per the documents placed on record admittedly, the plaintiffs are not the registered proprietors of the trade mark "Konar Tamil Urai", but have only applied for registration on 16.5.97, just two days prior to the institution of the suit, whereas during the course of hearing, it has come on record that the defendants are the registered proprietors of the trade mark "Konar Tamil Urai". In fact, treating the application for registration as the actual registration, the plaintiffs prayed for injunction against infringement of the trade mark. But legally, as the application itself does not confer any proprietory right qua the trade mark and in particular when the trade mark in question had already been registered in favour of the defendants, the plaintiffs' action against alleged infringement was not maintainable and could not be pursued as per law; consequently, the learned counsel Mr. But legally, as the application itself does not confer any proprietory right qua the trade mark and in particular when the trade mark in question had already been registered in favour of the defendants, the plaintiffs' action against alleged infringement was not maintainable and could not be pursued as per law; consequently, the learned counsel Mr. Mohan Parasaran for the appellants, accepting the dismissal of the application, fairly conceded to the legal position and did not press the Appeal No. 215/97 preferred against the refusal to grant injunction against alleged infringement of the trade mark. So, now the controversy between the parties remains confined to the act of passing of goods in the name of the well established and registered trade mark "Konar Tamil Urai". 3. It is the case of the plaintiffs that they are engaged in carrying on business of publishing Tamil notes for school students since 1953 by adopting the trade mark "Konar Tamil Urai", and since then, having earned reputation and goodwill, the publication has become very popular amongst the school students, hence extensive business is done to the tune of several crores of rupees. As alleged, the defendants have also now launched their publication in the market under the trade mark "Konar Tamil Urai" and are trying to pass of their publication as that of the plaintiffs. It is further alleged that the trade mark being identical in all respects and for the same goods, the actual users are likely to be misled to purchase the defendants' publication as that of the plaintiffs' publication, therefore, the plaintiffs have approache for injunction against passing of goods. The defendants have resisted the action contending that the plaintiffs have not come before the Court with clean hands for seeking equitable relief, and are guilty of suppressing material facts. It is also contended that the defendants are the registered proprietors of the trade mark "Konar Tamil Urai" and though this fact being within the knowledge of the plaintiffs, have not disclosed before the court. It is further contended that the defendants have been publishing the publication with the said trade mark even before 1965 and are prior users in point of time and hence, the action for passing of is not maintainable. It is further contended that the defendants have been publishing the publication with the said trade mark even before 1965 and are prior users in point of time and hence, the action for passing of is not maintainable. Giving the history of the publication, it is stated that one Vidwan Ayyan Perumal Konar, a celebrated scholar in Tamil used to prepare answers for detailed and non-detailed texts in Tamil from 1940 onwards and they were published under the name "Konar Tamil Urai" by the plaintiffs and the first defendant. The said notes were published under authority from the author, hence, after the death the authority had come to an end and the plaintiffs could not have published, yet even after the death of Ayyan Perumal Konar in 1969, the plaintiffs continued to publish and sell notes prepared by other authors with the same trade mark "Konar Tamil Urai". That, Dr. A. Rangarajan, M.A., Ph.D., the son of late Ayyan Perumal Konar had also associated himself with the activities of his late father and claiming right to the intellectual properties, prepared model questions and answers and got them published in the name of "Konar Tamil Urai" through the first defendant - Konar Publications and thus, the first defendant has been selling the notes prepared by Dr. A. Rangarajan in the name of "Konar Tamil Urai". Thus, as alleged by the first defendant, having continuously used the trade mark acquiring reputation and goodwill, applied for registration in Clause 16 for Books in the year 1982. The application for registration filed in 1982 came to be allowed in the last quarter of 1996 and the registration has been received by the first defendant in the first quarter of 1997. Thus having become proprietor, is entitled to publish and there is no question of passing of goods. 4. In light of aforesaid rival contentions and appreciating the material placed before the Court, the learned Single Judge rejected the plaintiffs' application mainly on the following grounds: (i) that the plaintiffs have not come before the Court with clean hands and have suppressed material facts, therefore, are not entitled to equitable relief of injunction; and (ii) that the defendants are the proprietors of the registered trade mark "Konar Tamil Urai" since 1982 and even had been continuously using since more than two decades prior to the registration. 5. 5. While going through the impugned order, we feel that the learned Single Judge was overwhelmed with the contention that the plaintiffs are guilty of suppression of material facts and have not come with clean hands, but on facts, we feel that it is not so. It is true that the trade mark has been registered in the name of the defendants since 1982. But, the order of registration itself has been passed in the last quarter on 1996 and the Certificate of Registration has been issued in favour of the defendants for the first time in March/April 1997. Even before the receipt of registration certification in March/April 1997, the defendants were not aware about their registration. In fact, the competent authority has taken more than 14 years for allowing the application for registration and as per rules, the order of registration relates back to the date of application; therefore, the order of registration passed in the last quarter of 1986 related back to the date of application, i.e. 1982 and thus, the registration is claimed from 1982. It is true that the registration granted in 1996 relates back to the date of application, i.e., 1982, yet till March/April 1997, nobody was aware about this fact, including the defendants, the proprietors. Thus, it cannot be said that this fact, though being within the knowledge of the plaintiffs, did not disclose and hence are guilty of suppression of material facts and not coming with clean hands. 6. The second limb of this contention is that the defendants are continuously using the said trade mark even prior to 1965 within the knowledge and notice of the plaintiffs and yet the plaintiffs have deliberately made a false statement that they have come to know about such use for the first time in the month of May 1997 only. This contention requires appreciation in light of admitted facts on record. From the tenor of arguments and the relevant documents produced before the court, it becomes abundantly clear that the defendants have been publishing notes under the trade mark "Konar Tamil Urai" for college students only, whereas the plaintiffs have been publishing notes under the said trade mark for school students. From the tenor of arguments and the relevant documents produced before the court, it becomes abundantly clear that the defendants have been publishing notes under the trade mark "Konar Tamil Urai" for college students only, whereas the plaintiffs have been publishing notes under the said trade mark for school students. As evident from para 10 of the judgment, even during the course of arguments also, learned counsel for the plaintiffs made a statement that they want to protect their right for publication of notes under the said trade mark for school students alone and shall have no objection for the defendants publishing their books under the said trade mark for college students. The learned counsel for the plaintiffs, adhering to his case, reiterates the same statement before us, stating that the plaintiffs are interested in protecting their rights for publication of notes for school students only and have no objection if the defendants publish for college students, using the same trade mark. Even from the documents produced by the defendants, it is clear that their publication is for college students only. In this background, now the plaintiffs apprehending that the defendants have started publication of notes for school students, brought the action against passing of goods, contending that only in May 1997 they have come to know about these facts. In this background, we feel that the statement of the plaintiffs in the plaint is not misleading and does not amount to suppression of material and relevant facts. Therefore, in our view, the learned Single Judge was not right in rejecting equitable relief by placing heavy reliance on this count. 7. Now coming to the contentious question of passing of goods, we have no hesitation in saying that a passing of action is maintainable in law even against the registered owner of a trade mark, as held by the Supreme Court in the case of N.R. Dongre v. Whirlpool Corporation. Even the learned Single Judge has also subscribed to this view in para 16 of his judgment. Hence, even if the defendants are the registered proprietors of the trade mark, the question of passing of goods requires consideration in light of the facts and circumstances of this case. Before dealing with no merits, we may say that the controversy is very narrow, i.e. the right to use the trade mark for publishing notes for school students. Hence, even if the defendants are the registered proprietors of the trade mark, the question of passing of goods requires consideration in light of the facts and circumstances of this case. Before dealing with no merits, we may say that the controversy is very narrow, i.e. the right to use the trade mark for publishing notes for school students. The plaintiffs claim use of the disputed trade mark for publication of notes only for school students continuously from 1940. It is also an admitted fact that the defendants have been publishing notes under the disputed trade mark only for college students since around 1965 and the plaintiffs have no objection even if the defendants continue to publish so. The plaintiffs' use of the trade mark since 1940 for publication for school students is admitted by the defendants in the counter-affidavit. It is stated by the defendants that a celebrated scholar one Sri Ayyan Perumal Konar used to prepare model questions and answers for detailed and non-detailed text in Tamil from 1940 onwards and had given the publication rights under an agreement to the plaintiff by accepting royalty and that, even after the death of Ayyan Perumal Konar in 1969, the plaintiffs continued to publish notes for school students under the same trade mark, but prepared by other authors. The defendants also claim publication under the same trade mark since 1965 but their publication is only for college students. Not an iota of evidence has been produced on record to show that at any point of time, the defendants had published notes under the said trade mark for school students. Thus, the defendants cannot be said to be using the said trade mark for school students. Even assuming that they used this trade mark for school students, then also the claim is since 1965 only, whereas the plaintiffs' use is admitted since 1940; therefore, under no circumstances, the defendants could be prior user. In such circumstances, despite registration of the trade mark in favour of the defendants, we have no hesitation in saying that the plaintiffs are prior users of the trade mark in relation to the notes prepared for school students. It is an admitted fact that the plaintiffs' publication for school students has acquired reputation and goodwill amongst the users and they have been doing extensive business to the tune of several crores of rupees. It is an admitted fact that the plaintiffs' publication for school students has acquired reputation and goodwill amongst the users and they have been doing extensive business to the tune of several crores of rupees. Despite these facts, if the defendants are allowed to publish notes under the said trade mark for school students, then the defendants are likely to be benefited by the reputation and goodwill established by the plaintiffs, adversely affecting the monetary interest of the plaintiffs. It is true that the defendants are the registered proprietors of the trade mark, but only for college students, consequently, shall have no right to publish for school students for which goodwill has already been acquired by the plaintiffs. 8. In the background of the aforesaid facts, it is abundantly clear that since decades, both the parties have earned and acquired reputation and goodwill in relation to the publication for a particular class and category of users, namely the plaintiffs for school students and the defendants for college students. This is the settled position and the plaintiffs have no objection if the same settled position is continued. As a cardinal rule, by grant of refusal of interim relief, the effect should not be to unsettle the things which are settled. In this case, it is a settled position that the plaintiffs are publishing notes for school students and the defendants have been publishing notes for college students. As apprehended by the plaintiffs, if the plaintiffs' interest is not protected, then the defendant would also start publishing notes for school students and thus, the refusal to grant injunction would tantamount to unsettle the existing and settled position, adversely affecting the plaintiffs' rights. Therefore, we are of the opinion that the plaintiffs have established prima facie case for an injunction against the defendants for passing of goods under the said trade mark in relation to the notes published for school students. Even by recognising this position, no damage is going to be caused to the defendants, who would be at liberty and continue to publish such notes for college students. As against this, refusal to grant injunction would permit the defendants to trespass upon the well established and recognised rights of the plaintiffs, adversely affecting the goodwill and business of the plaintiffs. Therefore, balance of convenience also tilts in favour of the plaintiffs. As against this, refusal to grant injunction would permit the defendants to trespass upon the well established and recognised rights of the plaintiffs, adversely affecting the goodwill and business of the plaintiffs. Therefore, balance of convenience also tilts in favour of the plaintiffs. In the result, we pass the following order:- The appeal is allowed. The order of the learned Single Judge, rejecting the plaintiffs O.A. No. 337/97 is hereby set aside. Interim relief as prayed for in O.A. No. 337/97 stands granted in relation to the publication of notes under the trade mark "Konar Tamil Urai" for school students only. We hereby clarify that the defendants shall be at liberty to publish notes under the said trade mark "Konar Tamil Urai" for college students. The above arrangement shall remain in force during the pendency of the suit and shall be without prejudice to the rights and contentions of the parties raised in the suit. The appeal stands disposed of accordingly with no order as to costs. As a consequence garded as goods of same description. The rival goods under question are totally different in composition though they may be used in association. No doubt, both are catables and are consumed as food items but chocolate is consumed to satisfy the taste-bud of children and to add flavour to milk and ice-creams whereas bread is consumed to satisfy the appetite of all human being. In my considered view, the rival goods are of totally different description. Since the second condition of this section, i.e., the rival goods should be the same or of the same description remains unfulfilled in these cases, I am left with no choice but to reject the opponents' objection under this section. Trade Mark Adoption of--Explanation for--No presence of other mark--Probable explanation for adoption found to be honest--Registration of mark cannot be refused.