Judgment :- K.P. Sivasubramaniam, J. 1. This appeal is directed against the judgment of the learned District Judge, Srivilliputhur, in O.S. No. 58 of 1999. The plaintiff is the appellant before this Court. Even though miscellaneous petitions were posted for hearing, since the prayer as well as the arguments in the petitions as well as the appeal being the same, at the request of both sides the appeal itself had been taken up for disposal and heard. 2. The suit had been filed for the following reliefs by the plaintiff : "It is therefore prayed that this Hon'ble Court may be pleased to pass judgment and decree : (a) Granting a declaration to the effect that the Registered Trade Mark No. 282340 for label 'BULB' is applicable to goods safety matches to be packaged in 'veneer' match boxes ; but not in the cardboard match boxes. (b) Granting a declaration to the effect that the first defendant has not made any substantial use of Registered Trade Mark No. 282340 in Class 34' for label 'BULB' during the last twenty years and thereby the said Registered Trade Mark No. 282340 appears to have lost its distinctiveness due to continuous non-user. (c) Granting a declaration to the effect that the so-called assignment of unused and abandoned Trade Mark No. 282340 by the first defendant in favour of the third defendant is not valid as the execution of Assignment Deed dated 17.3.1999 is forged one by the second defendant. (d) Granting a declaration to the effect that the substantial alteration or variation of the colour combination and get up by the third defendant in the unused and abandoned Trade Mark No. 282340 to make it use in cardboard match boxes will effect the right of the plaintiff in respect of their use of Registered Trade Mark No. 455169 for goods safety matches to be packaged in cardboard match boxes. (e) Granting a permanent injunction restraining the second and third defendants by themselves, their partners, servants licensees, agents, printers, carriers, distributors or anyone claiming through them from using the altered or varied Trade Mark No. 282340 for label 'BULB' in relation to goods safety matches packed in cardboard match boxes. (e) Granting a permanent injunction restraining the second and third defendants by themselves, their partners, servants licensees, agents, printers, carriers, distributors or anyone claiming through them from using the altered or varied Trade Mark No. 282340 for label 'BULB' in relation to goods safety matches packed in cardboard match boxes. (f) Granting a permanent injunction restraining the second and their defendants by themselves, their partners, servants, licensees, agents, printers, laminators, screen printers, scourers, carriers, distributors or any one claiming through them from committing passing off 'their goods safety matches in 'cardboard match boxes' bearing the so-called assigned and altered label mark 'BULB' (No. 282340) as and for being connected with the safety matches in cardboard boxes of the plaintiff Trade Marks "BULB"(No. 455169) in any modified form or by imitation, any portion of the colour scheme or portion of the get-up as found in the plaintiff's registered label mark 'BULB'. (g) Granting a permanent injunction restraining the second the their defendants by themselves their partners servants, licensees, agents, printers, laminators, screen printers, scourers, carriers, distributors or any one claiming through them from committing infringement of plaintiff's registered Trade Mark No. 455169 for label 'BULB' by altering or varying the so-called assigned and abandonment Trade Mark No. 282340 for 'BULB". (h) Directing the second and third defendants to surrender to the plaintiff all the unused, altered or varied 'Bulb' labels printed in cardboard, wrappers and other printed matters containing or consisting of the offending altered trade mark together with blocks used for the purpose of printing the same for destruction. 3. The plaintiff contended that they are manufacturers of safety matches and card board matches. They were selling their safety matches under various brand names for the past 23 years and the plaintiff has gained reputation and goodwill attached to the brand name. One of the trade marks of the goods marketed by the plaintiff is the label trade mark "BULB" with the device of the Bulb and the same was being continuously used since 18.8.1983 and the present green colour combination was adopted from the year 1984. Therefore, he has acquired the right of the property in the said trade mark by such wide use of the said label in relation to the safety matches. Thereby he has obtained exclusive right to use the label trade mark 'BULB'. Therefore, he has acquired the right of the property in the said trade mark by such wide use of the said label in relation to the safety matches. Thereby he has obtained exclusive right to use the label trade mark 'BULB'. The plaintiff has also obtained registration of the same under Trade and Merchandise Marks Act, 1958, (hereinafter called "the Act") and the plaintiff has been assigned with registered No. 455169 in Class 35. The trade mark contains pictorial representation of the device electrical Bulb printed on cardboard. The front side of the label trade mark contains the device of Bulb which has been printed in white colour with yellow neck on the black background encircled by the yellow border drawn on green background. The back side of the said label trade mark contains the contents the printed paralled black lines drawn on green background with device of three similar Bulbs and such pictorial representation along with green colour combination. The said product has been associated in the minds of the customers and with the product of safety matches of the plaintiff. They are selling the said product in cardboard match box almost in all the Districts of Andhra Pradesh, some Districts in Maharashtra, Orissa, Gujarat, Karnataka, Kerala, West Bengal, Assam, Bihar, Tripura and Union territorial of Delhi and Pondicherry, Tamil Nadu and all North-Eastern States, Rajasthan and Madhya Pradesh. The plaintiff has given vide publicity to the trade mark and had gained popularity and demand for their safety matches "Bulb". They have employed more than 300 persons in their match units and thousands of workers as a whole in the associated units. More than 45 agents have been appointed throughout India. They had earlier permitted the bona fide user of trade mark by their associated units on job work basis to meet out the demand and supply position. The plaintiff had established their own market and each year they have gained total turn over from the year 1982-83. From the sales turn over of Rs. 20, 00, 000 during the year 1982 to 1983 the turn over for the year 1998-99 is Rs. 9, 37, 44, 616. Of the above sales turn over 75 per cent represents safety matches bearing label trade mark BULB. The plaintiff has already spent considerable amounts in advertising their safety matches. 4. From the sales turn over of Rs. 20, 00, 000 during the year 1982 to 1983 the turn over for the year 1998-99 is Rs. 9, 37, 44, 616. Of the above sales turn over 75 per cent represents safety matches bearing label trade mark BULB. The plaintiff has already spent considerable amounts in advertising their safety matches. 4. It is further submitted that usually two types of packages are being used in the safety matches trade. One type of package being 'Vendor' which is made out of thin layer of wood. Hence, it is called as wooden box. The other types of package is called cardboard match box made out of heavy paste board which was introduced in late seventies. The plaintiff's label Trade Mark No. 455169 is in relation to the goods of safety matches is cardboard match boxes. The first defendant was carrying on business in Vendor safety matches is Chittoor District of Andhra Pradesh under the name and style of "The Andhra Pradesh Company". But it is understood that the production had been closed in late seventies and in fact now he has settled in Bangalore along with his sons. It is true that he had obtained a registered Trade Mark 282340 used by the first defendant as "Bulb" and it was registered in the year 1972. There was no substantial or continued use of the registered Trade Mark for the past 20 years after the introduction of cardboard match box. But it is understood that the registration was being renewed periodically without any use. Therefore, according to the plaintiff the registration appears to have lost its distinctiveness due to non-user for more than 20 years. The plaintiff therefore, reserves their right to file their rectification petition to expunge the Trade Mark 282340. The plaintiff made the application for registration of his trade mark in the year 1983, but was not accepted by the Registrar. Therefore, the plaintiff filed second application on the ground of long user and also on the ground of honest, concurrent user registration under Section 12(3) of the Act. The second application was accepted and advertised in the Trade Marks Journal No. 1031 dated 16.5.1992. The first defendant did not oppose the trade mark and therefore, the plaintiff's application was registered as Trade Mark No. 455169. The second application was accepted and advertised in the Trade Marks Journal No. 1031 dated 16.5.1992. The first defendant did not oppose the trade mark and therefore, the plaintiff's application was registered as Trade Mark No. 455169. The non-opposition itself would show that the plaintiff was not carrying on business for the past more than 20 years. The plaintiff further submits that the registration as it stood originally contains lot of variations and the plaintiff's work in their label was entirely different from the first defendant's label as registered. It is only in those circumstances the Registrar was pleased to accept the plaintiff's trade mark as there was no incident of confusion. The second defendant is the son of the first defendant and was now carrying on the business under the name and style of "The Andhra Match Company". The second defendant was using another label "Master" for wax safety matches packed in cardboard box, therefore, the first and second defendants were not using the registered label BULB in their "Vendor safety matches boxes" for the past 20 years. Therefore, their trade mark met its natural death as a result of continuous non-user. The third defendant was carrying on business at Rajapalayam and the partners of the third defendant are family members of the partners of the plaintiff. They were previously associated with the plaintiff's sister concern in the product of safety matches during the past 13 years. The partners of the third defendant retired from the sister concern group of the plaintiff and started their own safety match business in the year 1998. The third defendant negotiated with the plaintiff and in order to market agreed to execute the agreement on 1.4.1998. But without the knowledge of the plaintiff the third defendant had clandestinely negotiated with the second defendant for the purchase of abandoned and unused Trade Mark No. 282340 which stood registered in the name of the first defendant. According to the plaintiff, by virtue of an Assignment Deed dated 17.3.1999 without the knowledge of the plaintiff and with the sole mala fide intention to curtail the business of the plaintiff, the said assignment deed had been executed by the defendant. The said assignment was not true and valid. The contention of the third defendant that he had become the proprietor of the abandoned Trade Mark No. 282340 is not correct. The said assignment was not true and valid. The contention of the third defendant that he had become the proprietor of the abandoned Trade Mark No. 282340 is not correct. On the other hand, the third defendant hand voluntarily altered and varied the sale registered trade mark 'BULB' according to their wish with green colour combination in order to make it appeal like the production of the plaintiff. Thereby the third defendant had substantially altered the identity of the abandoned trade mark considering that the registration of the plaintiff's was only for using the cardboard box while the registration of the first defendant was only for veneer match box. Therefore, allowing the petitioner to manufacture and trade by altering or varying the abandoned trade mark was prejudicial to the interest of the plaintiff. It was likely to mislead the ordinary and unwary purchasers into the belief that they are getting plaintiff's goods as they have become associated with the product of the plaintiff. The conduct of the third defendant amounts to fraud on the plaintiff as well as the consumer public. It exhibits commercial dishonesty on the part of the third defendant. The unwary purchaser who takes a look at the plaintiff's "BULB" in the cardboard match box would easily mistake the third defendant's altered registered trade mark in the cardboard match box and it is likely to deceive the public. Therefore, the variation of the abandoned trade mark would affect the rights of the plaintiff in their registered Trade Mark No. 455169. The defendant had conspired to injure the business of the plaintiff and had deliberately committed infringement of their registered trade mark. Further the third defendant was bound to obtain permission from the Registrar of Trade Marks for addition or alteration in the registered trade mark. The Registrar has certain discretionary powers either to grant or refuse the permission. The Registrar will not allow any addition or alteration which would sufficiently affect the identity of the registered trade mark. The Registrar has certain discretionary powers either to grant or refuse the permission. The Registrar will not allow any addition or alteration which would sufficiently affect the identity of the registered trade mark. The third defendant started to use the assigned trade mark in respect of safety match box in cardboard box by totally altering and varying the rights granted under Trade Mark No. 282340. The Registrar will not allow any addition or alteration which would sufficiently affect the identity of the registered trade mark. The third defendant started to use the assigned trade mark in respect of safety match box in cardboard box by totally altering and varying the rights granted under Trade Mark No. 282340. Therefore, the third defendant was also guilty of passing off their goods in safety matches in cardboard match boxes after altering and varying Trade Mark No. 282340 and thereby the third defendant had committed infringement of the plaintiff's Trade Mark No. 455169. The said action of the defendant are therefore, illegal and unsustainable. 5. In the written statement of defendants 1 and 2 the contention that they have closed their business at Andhra Pradesh and had settled in Bangalore, was denied. The allegation that they had not been making continuous use of the registered Trade Mark No. 282340 for the past 20 years was also denied. According to them from 1955 they were carrying on business in safety matches under the name and style of "The Andhra Match Company" for which they have obtained registration under No. 282340 dated 24.8.1972 for the label "BLUB". They have been dealing in safety match business for more than 3 decades. It was also being periodically renewed. Therefore, there is no question of non-user of the trade mark. During 1999 after due negotiation and consideration the rights were assigned to the third defendant in a lawful manner by executing a deed of assignment on 17.3.1999. The contention that it has been executed without the knowledge of the plaintiff with mala fide intention to curtail the business of the plaintiff was also incorrect. The allegation that the deed was forged by the second defendant, was also incorrect. The parties had executed Assignment at Chittoor and it was notarised by the Advocate in Chittoor. The plaintiff has no right to question the validity of the assignment. The relief sought in paragraph No. 23(b) does not disclose any cause of action, since the plaintiff has not acquired any right to seek for such relief. The relief claimed thereunder was barred under Section 46 of the Act. The first defendant registered the trade mark in the year 1972 after having been the pioneer in introducing the said trade mark, both in the Veneer box and cardboard box. The relief claimed thereunder was barred under Section 46 of the Act. The first defendant registered the trade mark in the year 1972 after having been the pioneer in introducing the said trade mark, both in the Veneer box and cardboard box. Cardboard box came into use only later after the defendants had obtained registration. While the cardboard box came into use only in late seventies, the registration of the first defendant was effected in the earlier part of seventies. As such the first defendant has been using the trade mark long prior to the plaintiff's alleged registration. The execution of the assignment is valid and the plaintiff has no cause of action. 6. In the written statement filed by the third defendant, the various allegations in the plaint were denied. They were previously partners of Thendral Match Industries and Sangeetha Match Works, one of the so-called sister concern of the plaintiff. As the affairs of the said industry were not being conducted properly and as it was sustaining loss the third defendant retired from the said firm with effect from 1.4.1998. It was the plaintiff's partners who approached the third defendant and requested the third defendant to enter into an agreement for doing business in safety matches as a bona fide user of the blub. The third defendant was unaward of the ulterior motive of the plaintiff. Soon after the said agreement the third defendant realised that the plaintiff had entered into an agreement only to have full control over the business and to restrict their business potential and in order to restrict their business in safety matches. The third defendant's partners Revindran was in the business for more than a decade and a half. He came to know that the first defendant was willing to assign his trade mark for proper consideration since the first defendant's son was otherwise settled separately in the business of manufacturing and selling safety matches. Therefore, after due negotiations the aforementioned assignment was entered into. The third defendant further stated that it was perfectly lawful for any proprietor of a registered trade mark to effect changes in the features of the marks contained in the label and therefore the third defendant had effected minor changes in the get up of the label without in any manner affecting the salient features and characters of the trade mark. The plaintiff was only continuing the harassment meted out to them and in order to wipe out any sort of healthy competition, have no come forward with the present suit. The contention of the plaintiff appears to be raised on their assumption as though the assignment executed in favour of the third defendant was invalid since according to the plaintiff it was forged by the second defendant. The said allegation was totally without any basis. There was no basis for the contention of the plaintiff that the first defendants had lost his right due to continuous non-user. The said issue can be adjudicated only in a rectification petition for rectification of the register. The plaintiff has not acquired any right of property of exclusive right to use the label trade mark with green colour in relation to the safety matches. The plaintiff cannot claim any exclusive right over the green colour. The plaintiff having permitted the third parties to use their registered trade mark, had lost their right to exclusive use. They have also resorted unlawful trafficking in the trade mark and on that ground alone the registration in favour of the plaintiff was liable to be expunged as regards using cardboard box the defendant contended that in the match industry as a result of depleting veneer material, the industry had to use alternative packing material and, therefore, there can be no restriction in such use by the manufacturers. The business of the first defendant had never been closed down and the contention of the plaintiff in the said context was without any substance. The registration was promptly renewed periodically. Even otherwise the label of the third defendant was not in any manner similar to that of the plaintiff and there was not question of losing the distinct veneer as alleged by the plaintiffs. The third defendant further submitted that in fact that the attempt of the plaintiff initially to have the word 'Bulb' registered in his favour was rejected on opposition by the first defendant. The plaintiff has deliberately suppressed the full facts relating to the previous application and its rejection. The Trade Mark No. 282340 was in continuous business in connection with the production of safety matches and the said trade mark had been validly assigned by the first defendant to the third defendant. The plaintiff has deliberately suppressed the full facts relating to the previous application and its rejection. The Trade Mark No. 282340 was in continuous business in connection with the production of safety matches and the said trade mark had been validly assigned by the first defendant to the third defendant. The changes effected will have to be approved by the Registrar of Trade Marks and their defendant has filed requisite application in the registry at Chennai and the same was yet to be disposed by the Deputy Registrar of Trade Marks. The third defendant in his written statement had also pointed out the various features which according to him, are totally different from the label used by the plaintiff and the label used by the third defendant. The variations are very minor in nature and is not in any manner similar to the label used by the plaintiff. It is the plaintiff who had originally invaded the property right of the first defendant. The third defendant further claimed that their product will not in any manner mislead the ordinary or unwary purchasers to believes that they are purchasing the plaintiff's goods. Therefore, the suit was liable to be dismissed. 7. The Trial Court on a consideration of the said contentions and the evidence framed the following issues for trial. (1) Whether the plaintiff is entitled to relied of declaration that the registered Trade Marks No. 282340 for label "BULB" obtained by the 1st defendant in intended only for manufacture safety matches packed in Veneer Match Boxes and not in the Card Board Match Boxes ? (2) Whether the contention of the plaintiff that the 1st defendant has not substantial use of Registered Trade Mark No. 282340 in Class 34 for label "BULB" for the last twenty years is true ? (3) Whether the plaintiff is entitled to the relief of declaration that the 1st defendant's registered Trade Mark No. 282340 lost its distinctiveness due to continuous non-user and abandoned ? (4) Whether the 3rd defendant is entitled to use the registered Trade Marks No. 282340 deed dated 17.3.1999 ? (5) Whether the plaintiff is competent to question the genuineness of the Assignment dated 17.3.1999 executed by 1st defendant in favour of the defendant ? (4) Whether the 3rd defendant is entitled to use the registered Trade Marks No. 282340 deed dated 17.3.1999 ? (5) Whether the plaintiff is competent to question the genuineness of the Assignment dated 17.3.1999 executed by 1st defendant in favour of the defendant ? (6) Whether the contention of the plaintiff that the 3rd defendant had made any substantial alteration or variation in the Registered Trade Mark No. 282340 is true ? and it will affect right of the plaintiff in respect of their registered Trade Mark No. 455169 ? (7) Whether the plaintiff is entitled to permanent injunction as against the 2nd and 3rd defendants and others in using the registered Trade Mark No. 282340 for label "BLUB" safety matches packed in card Board Match Boxes ? (8) Whether the plaintiff claims to be the concurrent user is entitled to maintain a suit and ask for the relief of permanent injunction in the ground of infringement and passing off as against the 2nd and 3rd defendants is maintainable ? (9) Whether the plaintiff has exclusive right to use the brand BULB as contended by the plaintiff ? (10) Whether the plaintiff is entitled to relief of permanent injunction against 2nd and 3rd defendants and other on the grounds of passing off as contended by the plaintiff ? (11) Whether the 2nd and 3rd defendants and others passing off the registered Trade Mark No. 282340 as the goods of the plaintiff's registered Trade Mark No. 455169 is true ? (12) Whether the plaintiff is entitled to the relief of surrender of printed card Board wrapper and other printed matters from and 3rd defendants as claimed in the plaint ? (13) Whether Court has jurisdiction to try the case for the reliefs claimed in the plaint as against the 1st and 2nd defendants ? (14) Whether the plaintiff has cause of action to file the suit ? (15) Whether the suit is bad for mis-joinder as cause of action ? (16) Whether this suit is bad for mis-joinder of parties ? (17) Whether the Label 'Bulb' registered in favour of the plaintiff ? (18) Whether the plaintiffs have been using the trade label 'Bulb' continuously for their product ? (19) Whether the plaintiffs have good very good market for their product affixed with label "BULB"? (16) Whether this suit is bad for mis-joinder of parties ? (17) Whether the Label 'Bulb' registered in favour of the plaintiff ? (18) Whether the plaintiffs have been using the trade label 'Bulb' continuously for their product ? (19) Whether the plaintiffs have good very good market for their product affixed with label "BULB"? (20) Whether the assignment of the infringed label in favour of the 3rd defendant is true ? (21) Whether the 3rd defendant went only designed the infringed label in the very same got up with same colour combination ? (22) Whether the 3rd defendant passing of their product affixed with the infringed label in the manner of the plaintiff ? (23) Whether the infringed label is exactly and actually colourable initiation of the plaintiffs label ? (24) To what relief if any ? 8. The Trial Court after due trial dismissed the suit after concluding that the plaintiff was not entitled to the relief as prayed for by him. The trial Court held that there was no infringement of the trade mark registered by the plaintiff under No. 455169 and that it was not possible to hold that the plaintiff had any exclusive right to the name of the brand is bulb. The trial Court also held that the action of the first defendant and after the first defendant, the third defendant were entitled to protected as honest concurrent user, the Trial Court however, dismissed issue Nos. 14 to 15 as against the defendants and held that the suit was maintainable and not bad for misjoinder of party. With the result, the suit was dismissed on merits. Hence, the present appeal by the plaintiffs. 9. Mr. 14 to 15 as against the defendants and held that the suit was maintainable and not bad for misjoinder of party. With the result, the suit was dismissed on merits. Hence, the present appeal by the plaintiffs. 9. Mr. K. Alagirisamy learned senior counsel for the plaintiff/appellant had at the outset conceded that the plaintiff was giving up his prayer for the reliefs (a, b and c in the plaint) seeking for declaration that the registered Trade Mark No. 282340 will apply only to goods to be packed in veneer match box and not the cardboard box and that the first defendant had not made substantial use of the said trade mark during the last 20 years and thereby had lost its right due to continuous non-user and that the assigning of the abandoned registered No. 282340 by the first defendants in favour of the third defendant was no valid and that the Assignment deed was forged one by the second defendants. The submissions on behalf of the appellant were restricted to the allegations of (a) infringement of the plaintiff's trade mark and (b) passing off by the defendant. 10. Learned senior counsel contends that the third defendant had wanted a licence the manufacture matches and by agreement dated 1.4.1988 Ex. P-5 he was permitted to use on the plaintiff's trade mark for a period of two years commencing for 1.4.1998. The said period was over by 1.4.2000 and there was no renewal. But in the mean time even during the said period itself the third defendant had illegally negotiated with the second defendant and on the basis of an alleged Assignment Deed dated 17.3.1999 claimed to have obtained assignment of an unused and abanded Trade Mark. Therefore, he assignment was not sustainable. After executing the assignment deed the third defendant had also man averred and converted the product with green colour combination with the sole intention of producing match boxes identical or resembling the plaintiff's produce. He would also submit that the contention of the defendants that it was open to them to effect minor changes in the get up of it enables was incorrect. Such action was invalid and specifically prohibited under Section 58 of the Act. Any alteration can be effected only after application before the Registrar. He would also submit that the contention of the defendants that it was open to them to effect minor changes in the get up of it enables was incorrect. Such action was invalid and specifically prohibited under Section 58 of the Act. Any alteration can be effected only after application before the Registrar. Reliance is placed on Sections 27, 28, 29 in support of this contention that after alteration, the holder cannot rely on the earlier registration of the original trade mark. Detailed references were also made to oral and documentary evidence. Learned senior counsel also contends that as far as the same and design of the bulb was concerned even though the first defendant had obtained registration earlier to the plaintiffs, the first defendant did not use the same and had abandoned it even otherwise, there was never any objection from the defendant till now and hence as a concurrent user the plaintiff's rights were protected under Section 12(3) of the Act. The entire action of the defendants was mala fide and the evidence would clearly establish that it was not an accidental or innocent user by the third defendant. The third defendant was in fact related to the plaintiff and had been involved in the business and know the implications of the business. Learned senior counsel contends that the trial Court did not properly appreciate the legal position in considering the appearance of the two rival products and was indulging in microscopic scrutiny and side by side comparison which was not permissible as held by several rulings. Reliance was placed on some of the rulings which would be dealt with subsequently. He would also contend that a mere look at the products would clearly establish that the defendants are at least guilty of passing off and hence the plaintiff would be entitled to protection. 11. Mr. R. Krishnamoorthy, learned senior counsel for the respondents/defendants, contends that the evidence as accepted by the trial Court clearly establishes that the first defendant had been using the design from 1955 itself and had obtained the registration No. 282340 on 28.4.1972 itself. In fact, the plaintiff had applied for registration in 1984 and the same was rejected specifically because of the registration and use by the first defendant. The plaintiff managed to obtain registration only in the year 1996 with effect from 9.6.1993 to 8.6.2000. In fact, the plaintiff had applied for registration in 1984 and the same was rejected specifically because of the registration and use by the first defendant. The plaintiff managed to obtain registration only in the year 1996 with effect from 9.6.1993 to 8.6.2000. Learned senior counsel also points out that the registration of the plaintiff does not extend to the colour and hence the plaintiff does not extend to the colour and hence the plaintiff cannot be heard to raise any objection as regards the colour adopted by the third defendant. Assignment in favour of the third defendant was valid considering that the registration in favour of the first defendant was earlier in point of time. The plaintiff is a person who came very late in the scene and hence, has no right to complain against the user of the copyright of a person who has been using the trade mark for a very long time prior to the registration by the plaintiff. Therefore, the third defendant being an assignee for the valuable consideration from a prior user had better rights that the plaintiffs. As regards the colour of the produce the third defendant was entitled to use any colour and if the registration does not extend specifically to the colour as provided under Section 10 of the Act. The plaintiff cannot claim any vested right over the colour. Learned senior counsel also contends that even otherwise on a comparison there are many distinctive features and there is absolutely no comparison between the two products. He would point out that the variations are manifold as follows : Plaintiff Defendant (1) Bulb in vertical position Bulb in titled position (2) Black background for the Bulb No such Background (3) Bulb is plain white Bulb with filament (4) Plaintiff's metal portion of the Bulb is in yellow Plain white (5) On the rear side small partition with 3 Bulbs Only the Bulb (6) On the front portion, the word "Bulb" is printed alongside the word "Power". Bulb is the onlyword 12. Learned senior counsel further contends that is between the concurrent user, both cannot prevent each other having regard to Sections 28(3) and 32. Reliance is placed on Section 44 which entitles the registration of Assignment. Bulb is the onlyword 12. Learned senior counsel further contends that is between the concurrent user, both cannot prevent each other having regard to Sections 28(3) and 32. Reliance is placed on Section 44 which entitles the registration of Assignment. Learned senior counsel also contends that in view of the glaring variations in both the products, no case was made out for action for passing off also. 13. In reply Mr. K. Alagiriswami contends that till now the assignment has not been registered and therefore, the assignment cannot be relied upon by the third defendant even though the first defendant may have the right for use, the said user. The assignee cannot claim the right of the user unless the assignment had been registered with reference to the action for passing off the colour was very important and the similar appearance was very obvious on a comparison. 14. I have considered the contentions raised on behalf of both sides and also various rulings relied on by both senior counsel. The following points arise for consideration : (i) Whether there is any infringement of the plaintiff's right under trade mark registration No. 455169. (ii) Whether assignment in favour of the third defendant is valid and if so whether the product of the third defendant infringes the right of the plaintiff ? (iii) As a concurrent user whether the plaintiff is deprived of the reliefs claimed by him. (iv) Whether the action of the respondents amounts to passing off. 15. Point Nos. 1 to 3 : There is no dispute over that fact that the first defendant respondent had been using the trade mark of "BULB" prior to the plaintiff. If not from 1958 as claimed by the defendants at least from 1972 when the first defendant had obtained his registered No. 2622340 on 24.8.1972. It is also positively asserted that when the plaintiff applied for registration in the year 1984, the application was specifically rejected on the ground of the registration in favour of the first defendant. These facts are not seriously disputed by the plaintiff. It is also positively asserted that when the plaintiff applied for registration in the year 1984, the application was specifically rejected on the ground of the registration in favour of the first defendant. These facts are not seriously disputed by the plaintiff. Therefore in this context, there need not be much exercise on the legal outcome on the basis of the said facts Section 28 of the Act deals with the rights conferred under the registration and sub-section (3) is very specific to the effect that where two or more persons are registered proprietors of trade marks which are identical or merely resembled each other, the exclusive right to use the trade mark shall not be deemed to have been acquired by one of the persons as the agent of the other. Each of the persons would have the same rights against other persons as if he was the sole registered proprietor. Section 33 of the Act also protects such rights as vested rights. Therefore, it is clear that the rights of the plaintiff is no better than the first respondent and the plaintiff cannot be heard to complain as against the first defendant. 16. As regards reliefs claimed as against the third defendant, it would depend upon the rights flowing under the Deed of Assignment. The allegation by the plaintiff that the first defendant had abandoned the user had not been pressed before me. The truth and validity of the deed appears to have been challenged before the trial Court by the plaintiff. But the reliefs prayed for under paragraphs (a), (b) and (c) had been given up and not such argument had been advanced before me. Therefore, we have to proceed on the basis that there has been a valid assignment is favour of the third defendant and to see as to what are the rights of the said assignee. Learned senior counsel for the appellant specifically contended that the assignment had not yet been registered and therefore, the assignee cannot exercise any of the rights of the assignor until, the registration is completed. This fact that the registration by the authorities under the Trade Marks Act has not been effected is not disputed. Learned senior counsel for the appellant specifically contended that the assignment had not yet been registered and therefore, the assignee cannot exercise any of the rights of the assignor until, the registration is completed. This fact that the registration by the authorities under the Trade Marks Act has not been effected is not disputed. In fact in paragraph No. 4(vi) of the written statement of the third defendant, it is only stated that the assignment had been duly intimated to the Registrar and Application in Form No. 23 dated 23.3.1999 had been filed for registration of the assignment and that as on the date of filing the written statement. It was pending for disposal on the file of the Deputy Registrar of Trade Marks, Mumbai. Learned senior counsel for the respondent contends that under Section 36 of the Act, the holder of the trade mark is given the right to assign or to transfer the trade mark under Section 2(a) of the Act the word "assignment" has been defined as on assignment in writing by Act of the parties concerned. Under Section 2(r) the words "registered trade mark" as defined as a trade mark which is actually on the register. Therefore, according to learned senior counsel the registration is only a formal clerical requirement. But the transfer having taken effect on the execution of the Deed of Assignment all the rights of the registered proprietor are transferred to the assignee. 17. Per contra Mr. K. Alagirisamy learned senior counsel contends that any right under the Act can be exercised only by the registered proprietor and under Section 2(g) the registered proprietor in relation to a trade mark has been defined as the person for the time being entered in the register as proprietor. Therefore, as long as the registration of the assignment had not been completed the assignee cannot seek to exercise any right. 18. I am inclined to agree with the contention of Mr. K. Alagirisamy learned senior counsel for the appellant having regard to the rigour of Section 44 of the Act. While Section 44(1) entitles registration of an assignment and a mandatory duty is cast upon the Registrar to register the assignment subject only to his satisfaction of proof of titles, the proviso to Section 44(1) of the Act entitles the Registrar to refuse to register the assignment if there was any dispute between the parties. While Section 44(1) entitles registration of an assignment and a mandatory duty is cast upon the Registrar to register the assignment subject only to his satisfaction of proof of titles, the proviso to Section 44(1) of the Act entitles the Registrar to refuse to register the assignment if there was any dispute between the parties. It is not known as to what is the reason and why the Registrar had not passed orders on the application, but the fact remains that the assignment had not been registered. The consequences of non-registration appear to be rigorous on a reading of sub-section (2) of Section 44 of the Act which is as follows : "(2) Except for the purpose of an application before the registrar under sub-section (1) of an appeal from an order thereon, or an application under Section 56 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1) shall not be admitted in evidence by the Registrar or any Court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Court as the case may be otherwise directs." 19. Therefore on a reading of sub-section (2) of Section 44 of the Act, it is clear that unless there is a direction by the Registrar or the competent Court the document or assignment which has not been registered as provided under sub-section (1) shall not be admitted in evidence in proof of the title to the trade mark by assignment. The document of assignment thus becomes inadmissible to prove the title to the trade mark by assignment. In this context, the third defendant had not moved any Court of Registrar to accept the assignment with the result I am inclined to hold that the third defendant cannot claim to have stepped into the shoes of the assignor or to exercise any of the rights of the assignor/registered proprietor. This statutory bar has not been considered by the Trial Court in the proper light before holding that the third defendant had validly acquired the rights of the first defendant with the result, to the said extent the plaintiff is entitled to succeed namely, reliefs claimed against the third defendant. 20. In the result, I am inclined to hold as follows with reference to point Nos. 20. In the result, I am inclined to hold as follows with reference to point Nos. 1 to 3. (a) Insofar as the claims against the first defendant is concerned, he being an earlier and concurrent user, the plaintiff no right to prevent the first defendant from enforcing his rights under Registration No. 282340. (b) Though the assignment in favour of the third defendant is not vitiated by any illegality the non-registration of the assignment by the Registrar renders the assignment inoperative and unenforceable and as such the third defendant has not acquired any of the rights of the first defendant. 21. Point No. 4 : As regards the allegations of passing off, learned senior counsel for the appellant states that the appellant has no objection for the defendants to continue to use the original packing and the artistic work as registered under No. 282340. But the conduct of the third defendant in having effected variations in the label is nothing but an imitation of the plaintiff's product. On the other hand, the contention on behalf of the respondents, is that there is no registration of the colour by the plaintiff and also on overall view, there is no semblance or similarity between the two products. I have already referred to the contentions on behalf of respondents regarding the similarities or otherwise between the two products. 22. It is entitled proposition of law that in a case where the plaintiff allege passing off, it does not depend upon any registration under the Act. Passing off action is a common law remedy and can be pleaded also as an alternative relief in the action alleging infringement. 23. Section 27(2) of the Act very needlessly excluded the applicability of the Act as regards the right of action against any person or the remedies in respect thereof. In N.R. Dongre v. Whirlpool Corporation, 1996 (7) JT 555 the Supreme Court has held that an action for passing off was maintainable in law been as against the registered owner of the trade mark. 24. In N.R. Dongre v. Whirlpool Corporation, 1996 (7) JT 555 the Supreme Court has held that an action for passing off was maintainable in law been as against the registered owner of the trade mark. 24. Though the expression "passing off" has not been defined under the Act, it has been held time and again that it is an action wrong for a trader conducting his business in such a manner as would lead to the people to think that his goods or business are the goods or the business of another person and is calculated to mislead ordinary customer. In Wander Ltd. v. Antox India P. Ltd., 1990 SCC 727 , the Supreme Court has held as follows : "An infringement action is available where there is violation of specific property right acquired under the recognised by the statute. In a passing-off action, however, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendants which leads to is intended or calculated to lead to deception. Passing-off is said to be a specifies of unfair trading by which one person through deception attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The Action is regarded as an action for deceit. The tort of passing-off involves a mis-representation made by a trader to his prospective customers calculated to injure, as a reasonably foreseeable consequences, the business or good will of another which actually or probably causes damaged to the business or good of the other trader." 25. Therefore, in the present case, we have to see whether overall similarity in both the products would mislead the ordinary customer. According to learned senior counsel for the appellant, the Trial Court had exercised a microscopic and side by side examination and analysis of the appearance of both the products and such an approach was impermissible. It would be enough if the marks are deceptively similar and bears an overall similarity sufficient to mislead a person dealing with one product to accept the other product if offered to him. It is of no use to see on how many points there is similarity or absence of similarity. For the said proposition reliance is placed on the following rulings : (i) Haw Par Bros. Internationals Ltd. v. Tiger Balm Co. It is of no use to see on how many points there is similarity or absence of similarity. For the said proposition reliance is placed on the following rulings : (i) Haw Par Bros. Internationals Ltd. v. Tiger Balm Co. (P) Ltd. and others, 1996 PTC 311 (ii) T.B. & Sons v. Prayag Narain, 1940 AIR(PC) 86 (iii) Parle Products v. J.P. & Co., Mysore (iv) A. Shanmuga Mudaliar v. A. Abdul Kareem, 1975 AIR(Mad) 248 (v) A.V. Rajadurai Nadar v. P. Ayya Nadar, 1977 AIR(Mad) 237 (vi) Anglo-Dutch P.C. & V. Works v. India Trading House, 1977 AIR(Delhi) 41 (vii) National Match Works v. S.T. Fardudanna, 1979 AIR(Mad) 157 (viii) Tata Oil Mills Co. Ltd. v. M/s. Wipro Ltd., (ix) G.T.C. Industries Ltd., Bombay v. I.T.C. Limited, Madras 26. I have heard the contentions of both learned senior counsel in the context of passing-off-action and also had independently considered the packing and the get up and appearance of both the disputed products. 27. It is true that as pointed out by learned senior counsel for respondent there are certain features in the product which are different from each other, such as the filament in the Bulb, the slanting position of the Bulb, the rear side of the plaintiff's packing containing images of three bulbs while that of the defendant contains only one Bulb. But we have only to consider as to whether the similarities are sufficient to mislead the ordinary purchaser who is not expected or supposed to make a microscopic and minute examination of these differentiating features before he chooses to buy. The change of colour had made a lot of different loading to similarity. Though the colour is not a feature of registration held by the plaintiff in an action for passing off we are only concerned with overall similarity and appearance and whether it could mislead or confuse the buyer. The plaintiff has no objection for the respondent to continue to manufacture their product under the very same registration No. 282340 in which colour and the entire packing is totally different. But the packing which is now impugned, does result in misleading any ordinary buyer. The plaintiff has no objection for the respondent to continue to manufacture their product under the very same registration No. 282340 in which colour and the entire packing is totally different. But the packing which is now impugned, does result in misleading any ordinary buyer. The size of the box, the colour, the common trade name "Bulb" the images of the Bulb, similar colour of the sliding container, the designs on the striking side are all features which are definitely or likely to create an impression in the mind of the buyer that both the products belong to the manufacturer. The design of both sides of packing being the sticking side for igniting the matches is of the same colour pattern and artistic work of four rows of "heart" shape figures which are identical. Such a similarity would not have been an innocent or accidental outcome. The third defendant is a person very much acquainted with the trade and business of the plaintiff and in fact the averments in the written statement would disclose that both nurture rival ambitions in the trade and the third defendant had openly expressed that their relationship as partners earlier in a sister concern and later as an agreement holder for the period between 1.4.1998 to 1.4.2000 was not a pleasant one and that the third defendant had thought that the terms of agreement with the plaintiff were too restrictive. He would proceed further to state that on coming to know that the first defendant was having a registered trade mark of "Bulb" was willing to assign the same for consideration he had negotiated with him. Rivalries in trade and business are neither a crime no illegal ; but the facts admitted by the third defendant are sufficient to indicate an ulterior motive and that she design of the packing now ventured by him is not an innocent product or outcome. 28. There are, no doubt, certain variations between the products, but they are not sufficient to dislodge the immediate response of the buyer who would undoubtedly be led to mistake the product as belonging to the plaintiff. The third defendant who has obtained the assignment of Registration No. 282340 has admitted that he had effected "minor changes in the set up of the label" but according to him they do not affect the salient features and characteristics of the trade mark. The third defendant who has obtained the assignment of Registration No. 282340 has admitted that he had effected "minor changes in the set up of the label" but according to him they do not affect the salient features and characteristics of the trade mark. I am unable to sustain the said claim and a comparison of the registered design and the impugned design and packing discloses glaring and sweeping changes. 29. Apart from the fact that the changes brought out by the third defendant amount to passing off, it is also such that he is not entitled to any protection of the registered trade mark said to have been assigned to him. Having admitted that he has effected changes in the pattern of registered design, he is obliged to comply with the requirements under Section 58 of the Act which requires the holder of the trade mark to apply in the prescribed manner if he chooses to alter the trade mark. The Registrar is vested with the discretion to allow or reject the claim after hearing the aggrieved parties after due advertisement. In fact, the surprising feature of this case is that the third defendant had applied for the alternation of the trade mark and is awaiting approval of the same and this is what he says in paragraph No. 20 of the written statement. "The changes effected nevertheless will have to be approval by the Registrar of Trade Mark and the 3rd defendant firm has filed by the requisite application in the registry at Chennai, and the same is yet to be disposed of by the Deputy Registrar of Trade Marks." 30. Having said so, the third defendant on his own pleading cannot hope of disentitle the plaintiff from being granted appropriate relief of declaration and injunction. The fact that the defendant himself had sought for alteration of the Trade Mark, would mean that he cannot claim that the changes are minor and insignificant in nature. If they are minor and insignificant he is not obliged to ask for approval of alteration. Approval of alteration under Section 58 of the Act is contemplated when the alteration would result in "substantially affecting the identity thereof". Therefore, the very action a court of law and (4) that the said marks were not, at the commencement of the proceedings distinctive, that is, adopted to distinguish the goods of the respondent-company. Mr. Approval of alteration under Section 58 of the Act is contemplated when the alteration would result in "substantially affecting the identity thereof". Therefore, the very action a court of law and (4) that the said marks were not, at the commencement of the proceedings distinctive, that is, adopted to distinguish the goods of the respondent-company. Mr. Agarwala, on the other hand, argued that, (1) the two marks having been registered in 1953 and seven years since then having elapsed at the commencement of these proceedings, the question where they were distinctive at the time of registration was not open to dispute, (2) that being so, there was no question of any alleged piracy by the respondent-company of the marks of Lucas and other concerns, and therefore, the marks could not be said to be disentitled to protection by a court, (3) that the marks had not lost their distinctiveness at the dates of these proceedings under Sections 56 and (4) that the Letters Patent bench was, therefore, justified in dismissing these proceedings by the appellant-companies. 8. A mark under Section 2(j) includes a word, letter or numeral or any combination thereof. A trade mark, as defined in Section 2(v) means in relation to Chapter X (i. e., for offences and penalties provided in that Chapter) a registered trade mark or a mark used in relation to the f the third defendant seeking approval for alteration and his own pleadings extracted above is nothing less than an admission that he cannot market the product under the impugned packing and design until he obtains a proper approval under Section 58 of the Act. 31. Therefore, under point No. 4, I am inclined to hold that the third defendant is not only disentitled to use the impugned packing without proper approval of the alteration by the Registrar but also the said product amounts to a clear case of passing off and hence the plaintiff is entitled to the consequential reliefs. 32. In the result, the appeal is allowed and the suit is decreed granting prayers (d) to (h) in paragraph No. 23 of the plaint with costs as against defendants 2 and 3 only. No costs, Consequently, connected C.M.Ps. are closed as unnecessary.