Judgment :- I. David Christian, J. C.S. No. 311 of 1997 1. Suit for permanent injunction, rendition of accounts and surrender of stock in hand. Plaint allegations briefly stated are as follows:- Plaintiffs are publishers of Tamil notes for school students and they are publishing the same from 1953 onwards. During the course of business, the plaintiffs have adopted the trademark Konar Tamil Urai. First plaintiff publisher is selling them through the second plaintiff. Tamil notes published by the first plaintiff and sold through the second plaintiff are well known among the school students and they command a wide circulation. Plaintiffs are doing extensive business under the trademark Konar Tamil Urai. Notes published under the trademark Konar Tamil Urai has acquired great popularity among the students community and there is ever increasing demand for the notes published by the plaintiff and the total turnover for the past many years runs to several crores. The annual sales turnover has been stated in the annexure filed along with the plaint. The plaintiffs have been spending lot of money for advertising their publication 'Tamil Konar Urai'. By long and extensive user, the public have come to associate 'Konar Tamil Urai' as that of the plaintiffs and none else. The first plaintiff has applied for registration of trademark Konar Tamil Urai under the Trade and Merchandise Marks Act, 1958 and the application is pending. While so, in 1997 the plaintiffs came to know that the defendants are selling their publications under the similar trademark 'Konar Tamil Urai'. The first defendant was previously only publishing notes using the name Kanna Tamil Urai and only in May, 1997 he adopted the name of the Plaintiffs 'Konar Tamil Urai' and this was purely done by the defendants to cut into the market of the plaintiffs. The defendants are trying to enrich themselves unjustly by using the trademark used by the plaintiffs for long time and which has become very popular among the students community. The action of the defendants have caused confusion among the consuming public and the unwary students are mislead by the publications made by the defendants under the trademark Konar Tamil Urai and they are passing off their goods as and for that of the plaintiffs. The act of the defendants clearly comes within the ambit of passing off. The action of the defendants have caused confusion among the consuming public and the unwary students are mislead by the publications made by the defendants under the trademark Konar Tamil Urai and they are passing off their goods as and for that of the plaintiffs. The act of the defendants clearly comes within the ambit of passing off. The plaintiffs have established a market for their publications under the trademark Konar Tamil Urai and their publications are having very good market and enjoys very great reputation and the defendants are trying to catch on the reputation of the plaintiffs and using unlawful means. The defendants have no right to use the trademark Konar Tamil Urai for the notes published by them. The plaintiffs have been put to great loss and it cannot be exactly calculated in terms of money and therefore the plaintiffs are entitled to a permanent injunction restraining the defendants from making publication of notes using the trademark Konar Tamil Urai or any other similar deceptive trademark. The plaintiffs have to be injuncted from passing off their goods as and that of the plaintiffs by falsely adopting the trademark Konar Tamil Urai. Since the defendants have enriched themselves unlawfully they are bound to give accounts for their dealings and they should be directed to surrender the current stock on hand. Hence the suit. The annual turnover of the plaintiffs in the year 1961-62 was Rs. 4.17 lakhs which has risen to Rs. 111.65 lakhs for the year 1996-97. 2. The first defendant contested the claim of the plaintiffs by filing a written statement raising the following allegations:- The plaintiffs cannot complain of infringement of trademark rights in respect of 'Konar Tamil Urai' because they have not obtained registration of their trademark under the Trade and Merchandise Marks Act, 1958 Even assuming that the first plaintiff is the Proprietor of the registered trademark, since the first defendant is also the Proprietor of identical trademark Konar Tamil Urai, suit for infringement is not maintainable under Section 30(1)(d) of the Act. The plaintiffs have also produced a specimen of the defendants' publication bearing Konar Tamil Urai. But, since the first plaintiff is not publisher of Konar Tamil Urai there cannot be any prayer for injunction against the defendants in passing off his publication as that of the plaintiffs. Passing off action will arise only in case of deceit. The plaintiffs have also produced a specimen of the defendants' publication bearing Konar Tamil Urai. But, since the first plaintiff is not publisher of Konar Tamil Urai there cannot be any prayer for injunction against the defendants in passing off his publication as that of the plaintiffs. Passing off action will arise only in case of deceit. The plaintiffs must have produced their notes and the notes produced by the defendants which is sought to be passed off as the notes of the plaintiffs. Since the notes produced by the plaintiffs do not even belong to the plaintiffs but emanate from a totally different source, the prayer for injunction on account of passing off also is not maintainable. The first plaintiff has published notes using the trademark Konar Tamil Urai initially for SSLC only as they were authored by Ayyam Perumal Konar. Konar Tamil Urai was never intended to be a trademark but only to indicate authorship in a bona fide description of the source of the article within the meaning of Section 34 of the Act. The expression "KONAR" was used at the inception both by the first plaintiff and the first defendant not as a trademark but only to indicate authorship of the notes by Vidwan Ayyam Perumal Konar. Therefore, the claim of the first plaintiff that he adopted Konar as trademark is incorrect and not allowed by law. The first plaintiff never assigned any rights to the second plaintiff. Moreover, under law unregistered trademark is assignable and transmissible only with the goodwill of the business. There is no averment in the plaint and no documents are produced to substantiate that the first plaintiff assigned trademark Konar with goodwill in favour of the second plaintiff. The plaintiffs were not continuously using the trademark Konar and there is no evidence to show that he was doing so in his individual capacity. Even assuming that they adopted the trademark Konar in 1953 and used it for sometime, the first plaintiff has abandoned the same subsequently. The second plaintiff has not asserted that they are the proprietors of the trademark 'Konar'. The first plaintiff is only claiming user of the trademark. The first defendant is the prior user of the trademark Konar Tamil Urai. The second plaintiff has not asserted that they are the proprietors of the trademark 'Konar'. The first plaintiff is only claiming user of the trademark. The first defendant is the prior user of the trademark Konar Tamil Urai. On enquiry, the first defendant came to know that a firm M/s. Palaniappa Brothers has been registered as such in the office of the Registrar at Trichy with seven partners including the first plaintiff Palaniappa Chettiar. The second plaintiff cannot therefore claim to have made a turnover even from 1953 because it has been registered only in 1975. Even if the plaintiffs have used the trademark Konar Tamil Urai from 1975 they are only subsequent user and they cannot file a suit against a prior user, namely the first defendant who is using the trademark Konar Tamil Urai even from 1956. The use of trademark by the plaintiffs after 1969 is illegal because Ayyan Perumal Konar died on 1.1.1969. So, the use of expression 'Konar' after his death by the plaintiffs is illegal and it amounts to false trade description punishable under Section 78 of the Act. The use of false description by the plaintiffs cannot create any right in favour of them. The first defendant Konar Publications is carrying on business since 1956. Their publication is named after "Konar" and it was only a bona fide description of their own business. The first defendant Konar Publications is entitled to use the trading style "Konar" in all the books published. Mere application for registration of trademark does not entitle the plaintiffs to seek the relief of infringement of trademark rights. On the other hand the first defendant has secured registration for the expression "Konar" under the Trade and Merchandise Marks Act, 1958 with effect from 6.7.1982 under Registration No. 392714/B. This number is prominently printed in the second page in the rear cover of the publications from that year onwards. The notation (R) is prominently printed and shown in Konar Tamil Urai published by these defendants and it indicates that it is a registered trademark. Therefore, the averments of the plaintiffs that they came to know of the use of "Konar Tamil Urai" by the defendants recently is totally false. The notation (R) is prominently printed and shown in Konar Tamil Urai published by these defendants and it indicates that it is a registered trademark. Therefore, the averments of the plaintiffs that they came to know of the use of "Konar Tamil Urai" by the defendants recently is totally false. The first defendant has been using the trademark Konar Tamil Urai for all its publications since 1956 and these publications were printed by Asian Printers situated in the same premises which belongs to the first plaintiff Palaniappa Chettiar. Therefore, the statement that the plaintiffs came to know the use of Konar Tamil Urai by the defendants only in May, 1997 is a deliberate falsehood uttered with a view to get an ex parte order against the defendants. The origin of the expression "Konar Tamil Urai" has to be traced to one Vidwan Ayyan Perumal Konar, a celebrated scholar in Tamil. He used to prepare model questions and answers both for detailed and non-detailed texts in Tamil. Those notes came to be published as Konar Tamil Urai to indicate the authorship of the published material. The publication of the said Konar Tamil Urai was entrusted with the first plaintiff and not to the second plaintiff. The first defendant also was entrusted with the publication of Konar Tamil Urai. Ayyan Perumal Konar died in 1969 and even thereafter the plaintiffs continued to publish notes prepared by other authors not connected with Ayyan Perumal Konar or his community, even though they continued to sell the same as Konar Tamil Urai. This amounted to false trade description which has remained unchallenged so far. But the plaintiffs on this account cannot claim adoption of Konar Tamil Urai as their trademark. Dr. A. Rangarajan is one of the sons of Ayyan Perumal Konar and he retired after working as Professor of Tamil in Urumu Dhanalakshmi College, Tirchirapalli. Dr. Rangarajan has studied upto M.A. and has also secured Doctorate in Tamil. After he obtained degree, he came to collaborate with his father, Ayyan Perumal Konar in preparation of Konar Tamil Urai and he is continuing the same work till this date. The first defendant has been continuously publishing the notes earlier written by Ayyan Perumal Konar and later prepared by Rangarajan as Konar Tamil Urai. The original tradition set up by late Ayyan Perumal Konar is being continued by the first defendant through his son Rangarajan. The first defendant has been continuously publishing the notes earlier written by Ayyan Perumal Konar and later prepared by Rangarajan as Konar Tamil Urai. The original tradition set up by late Ayyan Perumal Konar is being continued by the first defendant through his son Rangarajan. The first defendant was founded and owned by one Srinivasa Konar whose sister was married to Ayyan Perumal Konar. After the demise of Srinivasa Konar his heirs have come to own the first defendant firm. The notes are being prepared by Dr. Rangarajan, son of late Ayyan Perumal Konar. The first defendant is justified in selling the notes of Konar Tamil Urai because of the authorship of Rangarajan and also of reputation acquired by their publication and selling their notes as Konar Tamil Urai. It was on the basis of continuous user of the first defendant firm, the Registrar of Trade Marks granted registration for the expression "Konar Tamil Urai" as a trademark in favour of the first defendant in Class-16 for books. The plaintiffs have no manner of right, title or interest in the expression "Konar Tamil Urai" and there is no justification for the plaintiffs in filing the suit for infringement of any of his rights. C.S. No. 284 of 1998 This suit is filed by Konar Publications, Madurai against the defendants alleging that Ayyan Perumal Konar was the author of notes for text-books prepared for B.A., and B.Sc. courses, that the publication of notes for colleges was entrusted to the plaintiff from 1956, that Konar Publications originally was a proprietary concern owned by Srinivasa Konar, who is brother-in-law of Ayyan Perumal Konar, that after the death of Srinivasa Konar, his heirs became owners of Konar Publications, that now the firm is a registered partnership, that after the demise of Ayyan Perumal Konar in 1969 notes were prepared by Dr. A. Rangarajan, son of said Ayyan Perumal Konar, that these notes are continuously published by the plaintiff with the trademark Konar Tamil Urai right from 1956 till date, that previously Ayyan Perumal Konar started writing guides for Tamil text-books and poetry from time to time for schools and colleges even from 1940's that he used to prepare model questions and answers, that notes became popular, that notes were published as Konar Tamil Notes and right from 1956 they were published as Konar Tamil Urai, that the publication of the abovesaid notes for SSLC and PUC were entrusted to one Palaniappa Brothers, that they were only paying royalty or author's remuneration to Ayyan Perumal Konar, that this arrangement has continued till Ayyan Perumal Konar's demise in 1969, that even after the death of Ayyan Perumal Konar, Palaniappa Brothers have been publishing similar notes written by various authors without disclosing their names, but those notes were published under the trade name Konar Tamil Urai, that the publications have been divided and shared among three other concerns, namely Karthikeyan & Co., Madras Karthikeyan & Company and Madras Palaniappa Brothers, that the present suit is filed against Karthikeyan and Company, that after the death of Ayyan Perumal Konar, the defendants have no right to publish Konar Tamil Urai, that the first defendant is not a member of the Konar family or a relation, that the use of trademark 'Konar Tamil Urai' after the death of Ayyan Perumal Konar is a false trade description within the meaning of Trade and Merchandise Marks Act, 1958, that the plaintiff started publishing notes for SSLC and other High School classes from 1974, that they were prepared by Dr. A. Rangarajan, son of Ayyan Perumal Konar whose name is also displayed as author of the notes, that the plaintiff publications has got a turnover of huge amount, that in 1982 the plaintiff has obtained registration of the name "Konar" with the expression "Tamil Urai" under the Trade and Merchandise Marks Act, that therefore they are the registered trademark owner entitled to use the trademark Konar, that nobody else has got a right to use similar trademark 'Konar', that the defendants have absolutely no right to sell their publications as "Konar Tamil Urai" nor they obtained registration of the trademark and that therefore this suit is filed praying for a permanent injunction restraining the defendants and persons claiming under them from printing or publishing or selling Tamil notes or any other notes in the form of Guides using the expression "Konar" and also a permanent injunction restraining them from infringing the plaintiff's trademark 'Konar' and directing the defendants to render true accounts and profits obtained so far and they may also be directed to deliver to the plaintiff the goods with the impugned trademark, wrappers, etc. 2. 2. The first defendant M/s. Karthikeyan and Company filed a written statement contesting the claim of the plaintiff by contending that the plaintiff has not published any school Tamil notes with the name 'Konar Tamil Urai' at any time prior to filing of the suit, that the claim made by the plaintiff for exclusive use of the name 'Konar Tamil Urai' in respect of school books is false and unsustainable, that the defendants along with sister concerns, namely Madras Karthikeyan and Company, Madras Palaniappa Brothers and Palaniappa Brothers have been using the trade name Konar Tamil Urai since 1940, that for the past many years M/s. Palaniappa Brothers have been publishing and selling Konar Tamil Urai for school students and the turnover has exceeded huge amount, that after the death of Ayyan Perumal Konar also the defendants continued to publish the notes using the trade name 'Konar Tamil Urai', that is the course of business the trade name 'Konar Tamil Urai' has acquired high commercial value, that as a prior user, this defendant is entitled to continue to publish the notes under the trade name 'Konar Tamil Urai', that the plaintiff has no right to prevent this defendant from publishing Konar Tamil Urai for high school students, that previously the plaintiff was only publishing 'Konar Tamil Urai' for college classes only, that even when this plaintiff published notes for high school students, they were only publishing the same under the trade name 'Kanna Tamil Urai; that only recently prior to the suit the plaintiff has started publishing notes using the trademark 'Konar Tamil Urai' for high school classes, that they have no right to do so, that this defendant and other sister concerns have been continuously using the trademark 'Konar Tamil Urai' with reference to Tamil notes for high school students, that they have got right to make use of the same, that there was no objection from Ayyan Perumal Konar himself while he was alive, that Ayyan Perumal Konar was only writing notes published by this defendant's predecessor, namely M/s. Palaniappa Brothers, that therefore, the plaintiff has no right to restrain the defendants from publishing 'Konar Tamil Urai' for school students and that the suit may by dismissed. 3. C.S. No. 285 of 1998 This suit has been filed by Konar Publications, Madurai against M/s. Palaniappa Brothers and Asian Printers raising the same contentions. 3. C.S. No. 285 of 1998 This suit has been filed by Konar Publications, Madurai against M/s. Palaniappa Brothers and Asian Printers raising the same contentions. Claim is answered by the defendants also by filing a written statement countering the claim of the plaintiff on the same grounds taken in the other suit. C.S. No. 286 of 1998 This suit is filed by Konar Publications as against M/s. Madras Palaniappa Brothers. C.S. No. 287 of 1998 This suit is filed by Konar Publications against M/s. Madras Karthikeyan and Company. In all these suits, the second defendant is the Asian Printers, who are printing the notes published by the first defendant in all the suits. In fact Asian Printers is also a sister concern of Palaniappa Chettiar. The second defendant has adopted the contentions raised by the first defendant. 4. On the above pleadings, following issues were framed for trial:- In C.S. Nos. 284 to 287 of 1997 :- (1) Is the first defendant entitled to publish and sell School and College Notes with the expression "Konar Tamizh Urai" after the demise of Ayyam Perumal Konar in 1969? (2) Whether the use of the expression "Konar Tamizh Urai" by the defendant for marketing the notes for the schools amount to false trade description and/or false warranty falsification of Trade mark and/or unfair trade practice? (3) Whether the plaintiff has ever published school notes with the expression "Konar Tamizh Urai" prior to May, 1997? (4) Whether the plaintiff alone is entitled to publish school and college notes with the expression "Konar Tamizh Urai" since the publishers belong to "Konar" family and the publications are authored by Dr. A. Rangarajan, son of late Ayyam Perumal Konar? (5) Whether the Trade Mark Registration obtained by the plaintiff without disclosing about the actual prior user of the said Trade Mark "Konar Tamizh Urai" by the defendant valid or is vitiated by fraud or misrepresentation? (6) Are the defendants not entitled to print, publish and sell Notes for Tamil Text with the expression "Konar Tamil Urai", after the demise of Ayyam Perumal Konar in 1969? (7) Is the plaintiff entitled as of right to use the expression "Konar" for all books under the Trade & Merchandise Marks Act, 1958 by virtue of registration and otherwise under Section 34? (7) Is the plaintiff entitled as of right to use the expression "Konar" for all books under the Trade & Merchandise Marks Act, 1958 by virtue of registration and otherwise under Section 34? (8) Are the defendants disentitled and precluded from questioning the validity of the registered trade-mark of the plaintiff for "Konar" in this suit for relief on account of infringement of registered trade-mark? (9) Are the defendants not entitled to claim proprietary trade-mark for "Konar Tamil Urai" at any time? (10) Is Palaniappa Chettiar not entitled to claim "Konar Tamil Urai", as his trade-mark? (11) Is there any proof for the transmission of the alleged rights of Palaniappa Chettiar in favour of the registered firms, Madras Karthikeyan, Palaniappa Bros., Karthikeyan & Co., Madras and Palaniappa Brothers? (12) Is the claim of Palaniappa Chettiar that he permitted Vidvan Ayyam Perumal Konar's family to publish Tamil Notes for Colleges alone under the trade name "Konar Tamil Urai" legally sustainable? (13) Was Palaniappa Brothers as a registered firm, in existence prior to 1975? (14) Whether the plaintiff is entitled to any reliefs? In C.S. No. 311 of 1997 (1) Is the prayer for injunction on account of infringement liable to be dismissed under Section 27 of the Trade & Merchandise Marks Act, 1958? (2) Is the prayer for injunction on account of passing off liable to be rejected in limine as the subject-matter of passing off, i.e., M.O. No. 1 is not that of the plaintiff? (3) Was the expression KONAR used at the inception both by the plaintiff-1 and Defendant-1 only as a descriptive of authorship of Ayyan Perumal Konar and not as a trade-mark? (4) Even assuming Plaintiff-1 acquired any right of the trade-mark over the expression KONAR, is there any proof of the assignment of the same in favour of Plaintiff-2? (5) Is the claim of Plaintiff-1 that adoption and use of the expression KONAR TAMIL URAI through Plaintiff-2 since 1953 false? (6) Is the Plaintiff-2 a firm came into existence only in September 1975? (7) Was the Defendant-1 using the expression KONAR since 1956 till date? (8) Does the claim of Plaintiffs-1 and 2 of having used KONAR TAMIL URAI even after 01.01.1969 when Vidwan Ayyan Perumal Konar died, amounts to false trade description? (9) Can the use of false trade description create any trade-mark right over the expression KONAR? (7) Was the Defendant-1 using the expression KONAR since 1956 till date? (8) Does the claim of Plaintiffs-1 and 2 of having used KONAR TAMIL URAI even after 01.01.1969 when Vidwan Ayyan Perumal Konar died, amounts to false trade description? (9) Can the use of false trade description create any trade-mark right over the expression KONAR? 10) Is the Defendant-1 legally entitled to use KONAR as a trade-mark in view of the Registration No. 392714-B in Class-16 for books? 11) Is the averment in the plaint that the plaintiffs came to know of the use of KONAR TAMIL URAI by the Defendant-2 only recently false? 12) Did Ayyan Perumal Konar authorise publication of his notes by Plaintiff-1 and Defendant-1 till his demise in 1969 and permit the use of expression KONAR TAMIL URAI? 13) Was Defendant-1 founded and owned by one Srinivasa Konar, the brother-in-law of the late Ayyan Perumal Konar? 14) Is the use of the expression "Konar" by Konar Publication the Defendant-1 not entitled for protection under Section 34 of the Act? 15) Is not the suit liable to be dismissed with costs? 16) Did the plaintiffs have a right to adopt the name "Konar" during the lifetime of Ayyan Perumal Konar? 17) Whether the plaintiffs are entitled to direction against the defendants for rendition of true and faithful accounts of the profits earned through the publication of the materials with trademark 'Konar Tamil Urai'. 18) Whether the first defendant has published any books under the name 'Konar Tamil Urai' prior to May, 1997? 19) Whether the registration obtained by the first defendant in 1997 and the trade mark 'Konar Tamil Urai' with effect from 7.7.1992 valid and binding on the plaintiffs? Since all the suits relate to the right to use the trademark 'Konar Tamil Urai' in respect of notes and since parties are same and since issues involved are all common, all the five suits were ordered to be tried jointly and common evidence was recorded in C.S. No. 311 of 1997. Parties are referred to as they are ranked in C.S. No. 311 of 1997. Plaintiffs examined P.Ws. 1 to 5 and have filed and exhibited Exs. A-1 to A-documents. The defendants examined D.Ws. 1 & 2 and have filed Exs. B-1 to B-documents. 5. Issue Nos. Parties are referred to as they are ranked in C.S. No. 311 of 1997. Plaintiffs examined P.Ws. 1 to 5 and have filed and exhibited Exs. A-1 to A-documents. The defendants examined D.Ws. 1 & 2 and have filed Exs. B-1 to B-documents. 5. Issue Nos. 3 and 5 The plaintiffs are Palaniappa Chettiar in his individual capacity and M/s. Palaniappa Brothers, a partnership firm wherein Palaniappa Chettiar and his family members are the partners. The plaintiffs have come forward with the suit praying for a permanent injunction restraining the defendants from passing off their goods as that of the goods of the plaintiff and also restraining the use of trademark 'Konar Tamil Urai' in respect of high school classes. The claim is resisted by the defendants Konar Publication and its Printers on various grounds, chiefly on the ground that they have become the registered owner of the trade mark 'KONAR TAMIL URAI' by virtue of the registration obtained by them in the year 1997, but with effect from the date of application made in 1982. Certain conditions have also been raised by the defendants questioning the propriety of Palaniappa brothers, Karthikeyan & Co., Madras Palaniappa Brothers, and Madras Karthikeyan & Co. having obtaining any rights from Palaniappa Chettiar, the first plaintiff. It is also stated by the defendants that the plaintiffs have been publishing notes with the caption 'Konar Tamil Urai' only for the purpose of indicating Author's name, namely Ayyan Perumal Konar and after the death of Ayyan Perumal Konar, the plaintiffs have no right to use the title 'Konar Tamil Urai' and if they have used it, it amounts to unfair trade practice. It is also contended by the defendants that the plaintiffs have no right to make use of the trade mark or trade name 'Konar Tamil Urai because 'Konar Tamil Urai' was originally used only as a descriptive mark of publications made by the plaintiff and indicating authorship of the notes and nothing else. 6. Certain facts have emerged out of the evidence adduced on the side of the plaintiffs and the defendants. The plaintiffs have examined P.Ws. 1 to 5 and the defendants have examined D.Ws. 1 & 2. Ayyan Perumal Konar was a great scholar and Vidwan working in St. Joseph High School in early 1940's. Ayyan Perumal Konar has been publishing notes to help SSLC students in writing their Tamil examinations. The plaintiffs have examined P.Ws. 1 to 5 and the defendants have examined D.Ws. 1 & 2. Ayyan Perumal Konar was a great scholar and Vidwan working in St. Joseph High School in early 1940's. Ayyan Perumal Konar has been publishing notes to help SSLC students in writing their Tamil examinations. Originally Ayyan Perumal Konar published notes under the title "Tamil Examiner" and thereafter known as "Konar Notes". Ayyan Perumal Konar who started his career as a teacher, as a Vidwan in St. Joseph High School, Trichirapalli, is a resident of Trichirapalli. First plaintiff Palaniappa Chettiar was then residing at Trichirapalli and was carrying on business as a publisher and book seller, running a proprietary concern under the name and style 'Palaniappa Brothers'. This business started by the first plaintiff appears to have been started or established as a proprietary concern, but within few years, it was converted to partnership firm consisting of the first plaintiff Palaniappa Chettiar and his brother. 7. Palaniappa Chettiar originally started Palaniappa Brothers with the object of dealing in textbooks and other books connected with academic education. Since both of them were in Trichirapalli and Palaniappa Brothers have been engaged in publication of textbooks for school students, both Ayyan Perumal Konar and Palaniappa Chettiar became acquainted with each other even from the year 1941 and Ayyan Perumal Konar started publishing his notes which was then known as 'Tamil Examiner' through Palaniappa Chettiar and notes were published under the banner of Palaniappa Brothers. It seems from the evidence available, Palaniappa Brothers undertook publication of Tamil Examiner written and prepared by Ayyan Perumal Konar from 1949. There was no bickering and the pair did extremely well and they had established a good market for their publications 'Tamil Examiner' and the notes of Ayyan Perumal Konar became popular among the students of S.S.L.C. Ayyan Perumal Konar was working as Vidwan in St. Joseph High School and later only became a Professor in St. Joseph College, Trichirapalli. Originally Till 1956, Ayyan Perumal Konar only prepared notes for SSLC examination to help the students to acquaint themselves well in Tamil Public examination. What was originally started under the caption 'Tamil Examiner' was later known to be published as 'Konar Notes', the caption itself appears only in English even though notes was in Tamil and for the benefit of Students. What was originally started under the caption 'Tamil Examiner' was later known to be published as 'Konar Notes', the caption itself appears only in English even though notes was in Tamil and for the benefit of Students. From 1948 Konar Notes was becoming Popular among the students community and as the name itself indicates, it was only a notes or annotation prepared to help the students to understand the original textbook and literature then being prescribed for the students of public examination. It was the first plaintiff Palaniappa Chettiar, through his publications Palaniappa Brothers has been publishing books of Konar right from 1941 and this is also not disputed by the defendants. 8. In 1948 the notes of Ayyan Perumal Konar was published under the caption 'Konar Notes' and only later in 1950's 'Konar Notes' become to be published under the caption 'Konar Tamil Urai' [(sic).......2000]. So, the fact remains that the notes prepared by Ayyan Perumal Konar was being published by Palaniappa Chettiar through Palaniappa Brothers which was then stationed at Trichirapalli and the publication became popular and the pair did extremely well, both financially and otherwise. There was absolutely no bickering or any fude between Ayyan Perumal Konar and Palaniappa Chettiar, the former being the author of the notes and the latter being the publisher. 9. The first plaintiff, Palaniappa Chettiar who is in his late 70's when he gave evidence before the Court, frankly admitted that initially he was paying some remuneration in total and subsequently a working arrangement was arrived at between them as per which he started giving royalty to Ayyan Perumal Konar, who was the author of Konar notes. It is now sought to be made by D.W.1 as if Palaniappa Chettiar made a fortune by publishing Konar Notes authored by Ayyan Perumal Konar, wherein a pritence was given to Ayyan Perumal Konar. This is far from true and D.W.1 has admitted that because of the association of Ayyan Perumal Konar with Palaniappa Chettiar, Ayyan perumal Konar when he died in 1969 was enabled to leave a very good fortune and number of immovable properties behind him which were all his earnings. It is common knowledge that in those days teachers were paid only a small salary and there was even disparity between the salary paid to a trained teacher and a Vidwan, who was permitted to take classes only for Tamil. It is common knowledge that in those days teachers were paid only a small salary and there was even disparity between the salary paid to a trained teacher and a Vidwan, who was permitted to take classes only for Tamil. D.W.1 is not telling the truth when he stated that the properties left behind by Ayyan Perumal Konar are all ancestral properties. Obviously when he started his career as Vidwan, there was no ancestral propert. D.W.1 evidence was that even through Konar was only a Vidwan he was a member of a joint family and Konar's mother was engaged in milk business and she had earned lot of money with which all the properties have been subsequently purchased. But, it has been elicited from D.W. 1 himself that Ayyan Perumal Konar's mother died in 1950's and when she died, Konar was possessed of only one house property wherein they were residing and it seems to be the only ancestral property which Konar was possessed of in those days. But, when Konar died in 1969, he has acquired number of valuable properties in Trichirapalli town itself and he left behind about 5 or 6 buildings situated in Trichirapalli town which were very valuable even in those days. As already stated what Konar has earned as Vidwan must be a very little sum which would have been hardly sufficient to maintain his family. Ayyan Perumal Konar had a large family to support, his wife, six sons and three daughters. P.W.1 and D.W.2 are brothers and P.W.1 is the eldest in the family and he has acquired a degree in Engineering and was later employed gainfully as an Engineer in the service of Tamil Nadu Government. D.W. 2 Rangarajan is also another son of Ayyan Perumal Konar who has also studied upto M.A., and later acquired M.Phil degree also. Following the foot-steps of Ayyan Perumal Konar, D.W.2 was also a teacher in Tamil in a High School and later became a Professor of Tamil in Urumu Dhanalakshmi College in Trichirapalli. 10. It has been also admitted by D.W. 2 that even though all the children of Ayyan Perumal Konar are in sound conditions, P.W. 1 is better placed than other brothers. 10. It has been also admitted by D.W. 2 that even though all the children of Ayyan Perumal Konar are in sound conditions, P.W. 1 is better placed than other brothers. Any how Ayyan Perumal Konar was able to educate all his children giving them decent education and he must have also provided well for his three daughters and when he died in 1969 he left behind five or six buildings in Trichirapalli and all the acquisitions worth mentioning were the acquisitions made by Ayyan Perumal Konar because of the money he got from publishing his notes. 11. The publication was entirely taken by the first plaintiff Palaniappa Chettiar through Palaniappa Brothers and there was perfect understanding between the publisher and the author and there is nothing to indicate that huge income was made by Palaniappa Chettiar at the cost of Konar or by exploitation of the author to the advantage of the publisher. Anyhow Ayyan Perumal Konar never felt cheated of his earnings and there was harmonious and cordial relationship between Ayyan Perumal Konar and Palaniappa Chettiar so long as the latter lived. What was started in 1948 as Tamil Examiner was subsequently (christened) as Konar Notes and from early 1950's the caption was changed to 'Konar Tamil Urai' and the notes for S.S.L.C. has been through-out being published by the first plaintiff exclusively. 12. It is also stated by P.W. 5 Palaniappa Chettiar and it is also not specifically disputed by D.W.1 or D.W. 2 that Ayyan Perumal Konar had a brother-in-law by name Srinivasan, whose sister he has married. Srinivasa Konar was originally an agriculturist, subsequently entered as a distributor in films and in 1956 he was encouraged by Palaniappa Chettiar and Ayyan Perumal Konar to come into the field of publication. It was only with blessings and guidance of Palaniappa Chettiar and Ayyan Perumal Konar, that Srinivasa Konar started publishing text-books written by Ayyan Perumal Konar for the first time in 1956. By this time, 'Konar Notes' published for S.S.L.C. students have become so popular and was commanding very good turnover. Therefore, Palaniappa Chettiar and Ayyan Perumal Konar contemplated publishing notes for B.A., and B.Sc. courses. It must be remembered that in those days i.e., in late 1950's Tamil was a subject for public examination not only for S.S.L.C., but also for B.A., and B.Sc. degree courses also. Therefore, Palaniappa Chettiar and Ayyan Perumal Konar contemplated publishing notes for B.A., and B.Sc. courses. It must be remembered that in those days i.e., in late 1950's Tamil was a subject for public examination not only for S.S.L.C., but also for B.A., and B.Sc. degree courses also. So, after coming to know that the notes published for S.S.L.C. has become very popular, both Palaniappa Chettiar and Ayyan Perumal Konar thought of publishing Konar Notes for college students also who were studying B.A., and B.Sc. Palaniappa Chettiar did not want to grab this opportunity also for his own publications but encouraged Konar and wanted the Notes to be published by Srinivasa Konar, his brother-in-law. So, in 1956 when Ayyan Perumal Konar started writing notes for B.A., and B.Sc., the right to publish the same was given to his brother-in-law Srinivasa Konar, who initially started his proprietary concern of publication under the name and style "Konar publications" and "Vaasan Pathipagam". Through the aegis of two publishing firms which were the proprietary concerns of Srinivasa Konar, Tamil notes authored by Ayyan Perumal Konar started being published for college students. So, only for the first time in 1956, the brother-in-law of Ayyan Perumal Konar, namely, Srinivasa Konar started publishing notes prepared by Ayyan Perumal Konar for college students separately. There is nothing to disbelieve the claim of the first plaintiff Palaniappa Chettiar and there is also no contra evidence to the statement of P.W.5 that in fact wrappers for Vaasan Pathipagam of Srinivasa Konar were got printed by Palaniappa Chettiar through his printers because Palaniappa Chettiar was already successful in publication of books. Absolutely there is nothing to show that there was any business rivalry between Palaniappa Chettiar and Srinivasa Konar, who incidentally happened to be the brother-in-law of Konar. 13. It has been also elicited from P.W.5, D.Ws. 1 & 2 that Palaniappa Chettiar started to publish SSLC Konar Notes and he contended into this while Srinivasa Konar confined himself by publishing Konar Tamil Urai for B.A. and B.Sc. students only. After 1956, the ten year S.S.L.C. course was followed by a pre-university course consisting of one year and three years degree course after which graduation was contemplated. Whereas Srinivasa Konar through his Vaasan Padhipagam was publishing Konar Notes for B.A. and B.Sc. students and Palaniappa Chettiar continued to publish 'Konar Notes' for S.S.L.C and P.U.C. examination. students only. After 1956, the ten year S.S.L.C. course was followed by a pre-university course consisting of one year and three years degree course after which graduation was contemplated. Whereas Srinivasa Konar through his Vaasan Padhipagam was publishing Konar Notes for B.A. and B.Sc. students and Palaniappa Chettiar continued to publish 'Konar Notes' for S.S.L.C and P.U.C. examination. P.U.C. was abolished and later changed into Higher Secondary Course and three years degree course. Plus 2 examinations became the final examination for school students and 10th standard which was equivalent to old SSLC also had a public examination and Palaniappa Chettiar only was publishing Konar Tamil Urai for Plus 2 and S.S.L.C. 14. From 1956, Srinivasa Konar through his own publications was bringing out 'Tamil Konar Urai' for B.A. and B.Sc. students, whereas Palaniappa Chettiar continued to publish Konar Tamil Urai for High School and Higher Secondary School. Somewhere in 1968 the publication of text books for all classes in high schools was taken over by the Government by bringing into existence a Text book Corporation and this also synchronised with Chettiar Publication started publishing 'Konar Tamil Urai for students even for other standards in high school i.e. from 3rd to 12th standard. So, initially from 1941 notes were prepared and published for S.S.L.C. public examination only and subsequently note were published for S.S.L.C. and Plus 2 and after 1968 since the Government has taken over publication of all text books, Palaniappa Chettiar started publishing Konar Tamil Urai even for lower standards from third to twelfth standard. Srinivasa Konar continued publishing notes only for college courses. It is also not very much in dispute from the evidence let in by P.Ws. 3 & 4 that Konar Tamil Urai for high school and higher secondary schools commanded a very good turnover whereas comparatively turnover for college notes was very much less. The sales turnover of 'Konar Tamil Urai' for school standards reached the limit of more than Rs. 40 lakhs and therefore Palaniappa Chettiar, who was previously publishing through one Partnership firm Palaniappa Brothers, started other publishing houses under the name and style Karthikeyan & Co., Madras Karthikeyan & Co., and Madras Palaniappa Brothers. The sales turnover of 'Konar Tamil Urai' for school standards reached the limit of more than Rs. 40 lakhs and therefore Palaniappa Chettiar, who was previously publishing through one Partnership firm Palaniappa Brothers, started other publishing houses under the name and style Karthikeyan & Co., Madras Karthikeyan & Co., and Madras Palaniappa Brothers. P.W. 5 Palaniappa Chettiar himself admitted that he is the founder of all the partnership firms of which initially he was the proprietor and all these firms are partnership firms and partners are confined to the family members of Palaniappa Chettiar. 15. In fact originally Palaniappa Brothers, established by Palaniappa Chettiar in 1940's was a proprietary concern of himself, but soon became a partnership firm with himself and his brother. M/s. Palaniappa Brothers originally was an unregistered partnership firm and the registration was obtained somewhere after 1953 only. Palaniappa Brothers Partnership firm was first established at Trichirapalli and according to P.W. 5 after 1956 he shifted his residence to Madras, where he started a branch of Palaniappa Brothers and other publishing houses, namely Madras Palaniappa Brothers, Karthikeyan & Co., and Madras Karthikeyan & Co. Even though all these four partnership firms have got separate identity, they are all established and started by Palaniappa Chettiar and all of them are sister concerns, the partnership firms being confined to the family members of Palaniappa Chettiar. P.W. 2 Meena is a partner of Karthikeyan & Co., and other firms who is none-else than the daughter-in-law of P.W.5. So, all these firms continue to publish Konar Tamil Urai for school students even after 1956. 16. Ayyan Perumal Konar died on 1.1.1969. During his lifetime Konar Notes were being written by himself and when publications became popular and when there was huge demand and when publication started publishing notes for various classes from third to 12th standards, Ayyan Perumal Konar was not the only author but he was also assisted by a band of teachers. But, it was Ayyan Perumal Konar, whose name was shown as author. Even after 1969 Palaniappa Chettiar continued to publish Konar Tamil Urai or Konar notes for school students whereas Srinivasa Konar continued publishing notes for college students. But, it was Ayyan Perumal Konar, whose name was shown as author. Even after 1969 Palaniappa Chettiar continued to publish Konar Tamil Urai or Konar notes for school students whereas Srinivasa Konar continued publishing notes for college students. There was absolutely no friction or dispute with regard to publishing Konar Notes so long as Ayyan Perumal Konar was alive and there was clear demarcation of spheres of business on the part of Chettiar and on the part of Srinivasa Konar and the latter confined himself to publishing notes for college students only. Palaniappa Chettiar never intended to publish notes or Konar Tamil Urai for college students and this was left to the exclusive monopoly of Srinivasan. Similarly neither Ayyan Perumal Konar nor Srinivasan tried to interfere with the publication of Konar Notes or Konar Tamil Urai for high school students and this was done exclusively by Palaniappa Chettiar. After the death of Ayyan Perumal Konar in 1969, the publications continued and in view of the popularity given to the trade name 'Konar Tamil Urai', both Palaniappa Chettiar and Srinivasan continued to publish notes under the same caption 'Konar Tamil Urai' even though Ayyan Perumal Konar was no more to write the notes and subsequent to his death the notes were prepared by band of teachers employed for the purpose, whose names were not published as authors in the Notes. 17. No doubt originally the title Konar Notes and Konar Tamil Urai was conceived and started being used indicating that Author was Ayyan Perumal Konar. The name of Ayyan Perumal Konar as the author was published in all the publications so long as he was alive, but when the notes became popular as Konar Notes, the name of the author was not very much mentioned or remembered. One must also take note of the fact that Konar Tamil Urai is only a notes containing annotations for the text books in respect of original Tamil literary works. There is nothing original in the notes prepared by Konar and it was only intended to supplement the literary works prescribed for examinations and Konar Notes were to help the students appearing for the public examinations in Tamil. There is nothing original in the notes prepared by Konar and it was only intended to supplement the literary works prescribed for examinations and Konar Notes were to help the students appearing for the public examinations in Tamil. Therefore, there is nothing original in the notes as such and Ayyan Perumal Konar started preparing notes which in course of time became popular and therefore the publisher has conceived of the trade name of trademark as 'Konar Tamil Urai' which was continued beyond 1969, after the death of Ayyan Perumal Konar. 18. I have already stated that there was perfect understanding and cordial relationship between Ayyan Perumal Konar and Palaniappa Chettiar and after Palaniappa Chettiar shifted his place of business to Madras, Ayyan Perumal Konar used to visit Madras and during summer vacation and May in the house provided of Chettiar from where he used to prepare notes published for the following academic year. In the meantime Srinivasan who has started publishing colleges notes under the aegis of 'Vaasan Pathipagam' started another publication in the name and style "Konar Publications". But, Konar Publications confined its activities only by publishing Konar Notes for college examinations. Konar Publications and before that Srinivasan Konar was the agent and distributor for the school notes 'Konar Tamil Urai' published by Palaniappa Brothers for Madurai. Another two sons of Ayyan Perumal Konar were agents for the sale of Palaniappa Brothers' Konar Tamil Urai for Trichirapalli. So, the first defendant Konar Publications and the sons of Ayyan Perumal Konar were all agents of Palaniappa Brothers and they were selling Konar Tamil Urai intended for high school students even after 1980's. 19. P.W.3 Daniel Raj is the proprietor of Guna Puthakka Nilayam at Rajapalayam. Said Book depot was started by his father somewhere in 1950 and P.W. 3 has taken charge of the shop from 1954. P.W. 4 is the proprietor of Arumugham Pillai and Sons and they were dealers in text books and notes and it was started by the father of P.W.4 in the year 1957 and P.W. 4 himself was in charge of the business from 1967. Both P.Ws. P.W. 4 is the proprietor of Arumugham Pillai and Sons and they were dealers in text books and notes and it was started by the father of P.W.4 in the year 1957 and P.W. 4 himself was in charge of the business from 1967. Both P.Ws. 3 & 4 have been selling Konar Notes, Konar Tamil Urai right from 1950's and both of them have spoken to the fact that the first plaintiff Palaniappa Chettiar alone was through out publishing Konar Tamil Urai for high schools and Konar Publications or Srinivasa Konar have not published Konar Tamil Urai for School students at any time prior to 1997. Moreover, P.Ws. 3 & 4 themselves have spoken to the fact that they were selling the notes of Konar Publications for college students and they are positive that the first defendant Konar Publications never ventured to publish 'Konar Tamil Urai' for high school students. It is not as if Konar Publications did not venture into publishing notes for high school students at all. In fact during the period of Srinivasa Konar, they published notes for high school students but only under the name and style 'Kanna Notes'. They themselves have adopted the trademark 'Konar Tamil Urai' for publishing notes for college students whereas when they wanted to publish notes for high school students, they have conspicuously refrained from using the trade name 'Konar Tamil Urai' but instead published the notes under the name and style 'Kanna Notes'. P.Ws. 3 & 4 have been dealing with such Kanna Notes published by Konar Publications and at no point of time 'Konar Tamil Urai' for high school students was published by the first defendant. 20. Konar Tamil Urai for high school students has been throughout published by Palaniappa Chettiar through Palaniappa Brothers and his sister concerns right from 1943 till 1997. That there was complete understanding between Palaniappa Chettiar and Konar Publications in their respective spheres is also fortified by the fact that the book-sellers like P.Ws. 3 & 4 have been throughout receiving supplies for the respective classes from both Palaniappa Chettiar and Srinivasa Konar. Srinivasa Konar is the brother-in-law of Ayyan Perumal Konar, who was the only other family member who ventured into the field of publication, died in 1989. After the death of Ayyan Perumal Konar in 1969, till the death of Srinivasa Konar in 1989, their relationship was smooth and cordial. Srinivasa Konar is the brother-in-law of Ayyan Perumal Konar, who was the only other family member who ventured into the field of publication, died in 1989. After the death of Ayyan Perumal Konar in 1969, till the death of Srinivasa Konar in 1989, their relationship was smooth and cordial. Srinivasa Konar has scrupulously avoided publishing Konar Tamil Urai for high school students which was monopolised by Palaniappa Chettiar. In fact Palaniappa Chettiar encouraged Srinivasa Konar to publish notes and Srinivasa Konar continued to publish Konar Tamil urai for college course. It was started during the life time of Ayyan Perumal Konar in 1956 and continued beyond 1969 and till 1989 Srinivasa Konar confined himself in publishing books under the aegis of Konar Publications only to college students. It is not as if Srinivasa Konar has not ventured into publishing other books and even notes for high school students. But, when he published notes for high school students, he has scrupulously avoided using the trade name 'Konar Tamil Urai' and instead published notes for high school students only under the caption 'Kanna Notes'. 21. Srinivasa Konar died in 1989 and the management has been taken over by D.W. 1 Hariharan, son of Srinivasa Konar. D.W.1 also admitted that prior to 1997 they did not publish any Konar Tamil Urai for high school or higher secondary school students. So, the evidence and history of publication jointly run by Palaniappa Chettiar and Ayyan Perumal Konar would clearly show that even though initially the Konar Tamil Urai was started indicating the name of the author, the trademark 'Konar Tamil Urai' was adopted by the publisher even beyond his lifetime and definitely has acquired a distinctive mark to identify the products published by both Palaniappa Chettiar and Srinivasa Konar. The plaintiffs are justified and correct in stating that Konar Tamil Urai has acquired a distinctive trademark and it is being used as such till date. In fact the first defendant has started claiming registration right for the trademark 'Konar Tamil Urai' by virtue of the registration obtained in 1997. So, it is not correct as contended by the defendants that the description of notes as Konar Notes after the death of Ayyan Perumal Konar is a false trade description. In fact the first defendant has started claiming registration right for the trademark 'Konar Tamil Urai' by virtue of the registration obtained in 1997. So, it is not correct as contended by the defendants that the description of notes as Konar Notes after the death of Ayyan Perumal Konar is a false trade description. Konar Tamil Urai in course of time has acquired a reputation of its own and was being used as a trademark both by the plaintiffs and the defendants and till 1997 no dispute has been raised by Srinivasa Konar or any body claiming under Ayyan Perumal Konar for the use of the trademark Konar Tamil Urai by Palaniappa Chettiar in respect of the goods published by him under the said caption and intended for high school students. 22. P.W. 1 is the elder son of late Iyyam Perumal Konar and D.W. 2 Rangarajan is another son P.W.5 is Palaniappa Chettiar and D.W. 1 is the son of Srinivasa Konar. All these four witnesses are competent to speak about the earlier relationship between Iyyam Perumal Konar and Palaniappa Chettiar and also the history of publication of Konar notes which started somewhere in 1941. All these witnesses have uniformly stated that initially in 1941 Palaniappa Chettiar started publishing notes prepared by Iyyam Perumal Konar for SSLC public examination and when Palaniappa Chettiar started publishing them, it was published under the caption or title "Tamil Examiner". In 1949, the notes of Iyyam Perumal Konar were published under the caption "Konar Notes". In early 1950's Palaniappa Chettiar started publishing notes prepared by Ayyam Perumal Konar for SSLC examination under the caption "Konar Tamil Urai". After that there was no turning back and Palaniappa Chettiar admittedly continued the publication year after year under the caption "Konar Tamil Urai". Palaniappa Chettiar has confined himself by publishing Konar Notes for SSLC and Intermediate examinations. In 1957 Intermediate Examination was abolished and in its place, Pre-University Course was started. Palaniappa Chettiar only published Konar Notes for P.U.C and S.S.L.C. examinations. P.U.C. system also gave way to 12 years schooling and Palaniappa Chettiar himself continued publishing Konar Tamil Urai for SSLC and Plus 2 examinations. In 1968 after the Government took over publication of textbooks for all high school standards, Palaniappa Chettiar started publishing Konar Tamil Urai for all classes from third to 12th standards. P.U.C. system also gave way to 12 years schooling and Palaniappa Chettiar himself continued publishing Konar Tamil Urai for SSLC and Plus 2 examinations. In 1968 after the Government took over publication of textbooks for all high school standards, Palaniappa Chettiar started publishing Konar Tamil Urai for all classes from third to 12th standards. This is also admitted by all these witnesses, who are competent to speak about the past history, that Palaniappa Chettiar never intended to publish notes for degree courses, namely B.A. and B.Sc. 23. Iyyam Perumal Konar was writing notes exclusively for Palaniappa Chettiar till 1956. In 1956 Iyyam Perumal Konar's brother-in-law Srinivasa Konar ventured into the business of publication first by starting Vassan Padhipagam and later by starting Konar Publications, which is the defendant in the main suit and the plaintiff in all other suits. There is nothing to discredit the claim made by P.W.5 Palaniappa Chettiar that Srinivasa Konar was brought into the business with the guidance and blessings of Palaniappa Chettiar and perhaps by the suggestion of Palaniappa Chettiar himself. This is also proved by the admissions made by D.Ws. 1 & 2 that Vaasan Padhipagam and Konar Publications were also running book stalls and the sons of Ayyam Perumal Konar and brother-in-law of Ayyam Perumal Konar, namely Srinivasa Konar were all acting as agents for the plaintiffs for Trichy and Madurai districts for selling Konar Tamil Urai published by the plaintiffs. So also it was Palaniappa Chettiar and its Asian Printers who were printing wrappers for the books published by Vassan Pathipagam and Konar Publications. While Palaniappa Chettiar was publishing notes for Plus 2 and S.S.L.C. examinations, Konar Publications started publishing Konar Notes or Konar Tamil Urai for degree courses, namely B.A., and B.Sc. Where in those days, Tamil was a second language for University examinations, Palaniappa Chettiar himself through his own book stalls and also through agents like P.Ws. 3 & 4 started selling college Konar Tamil Urai published by Konar Publications while acting as agents for Palaniappa Chettiar publications. P.Ws. 3 & 4 are two persons who have been examined to speak to there dealings with M/s. Palaniappa Brothers and M/s. Konar Publications. These two witnesses have not even been cross-examined by the defendants. 24. The evidence of P.Ws. P.Ws. 3 & 4 are two persons who have been examined to speak to there dealings with M/s. Palaniappa Brothers and M/s. Konar Publications. These two witnesses have not even been cross-examined by the defendants. 24. The evidence of P.Ws. 3 & 4 have proved that right from 1954 P.W.3 owner of Guna Puthaga Nilayam, Rajapalayam was selling agents for Konar Tamil Urai for S.S.L.C. and later for Plus 2 and they were simultaneously acting as selling agents for Konar Publications also who have started publishing notes for college courses after 1956. The evidence of P.Ws. 3 & 4 would show that while the sale turnover of S.S.L.C notes published by Palaniappa Chettiar was phenominal, the sales turnover of college notes published by Konar Publications was somewhat marginal compared to the former. But, their evidence would show that there was absolutely no business rivalry so long as Srinivasa Konar was alive and they have divided their spheres of business. While Palaniappa Chettiar has chosen to publish notes upto 12th standard, Konar Publications started publishing notes Konar Tamil Urai for B.A., and B.Sc. courses. In view of the close relationship between the founders of these publications, there was also no rivalry among the traders and they have been without any grudge selling Konar Notes for school classes and college classes without any demur being made by Palaniappa Chettiar and Konar Publications respectively. In fact it is not as if that Palaniappa Chettiar prevented the brother-in-law of Iyyam Perumal Konar, namely Srinivasa Konar from entering into publication of notes for high school classes also. But, Srinivasa Konar scrupulously avoided using the caption "Konar Tamil Urai" when he chose to publish notes for high school classes and he published them under the caption "Kanna Notes". Even as early as 1974 Srinivasa Konar published Tamil notes only under the caption "Kanna Notes" and "Konar Tamil Urai" was only used by Palaniappa Brothers and its sister concerns for publishing notes for school classes. So, the plaintiffs are perfectly justified when they stated that till 1997 Konar Publications never ventured into Konar Notes or Konar Tamil Urai for high school classes and Konar Tamil Urai was exclusively published by Palaniappa Chettiar for high school classes throughout. So, the plaintiffs are perfectly justified when they stated that till 1997 Konar Publications never ventured into Konar Notes or Konar Tamil Urai for high school classes and Konar Tamil Urai was exclusively published by Palaniappa Chettiar for high school classes throughout. Even though initially some captions were used like "Tamil Examiner" and "Konar Notes" somewhere before 1956 "Konar Tamil Uraititle was adopted by Palaniappa Brothers for publishing notes for high school classes. The trademark "Konar Tamil Urai" thus was conceived by Palaniappa Chettiar and he has been using the same right from 1950's till date without any interruption. 25. As admitted by D.Ws. 1 & 2 Iyyam Perumal Konar never objected to the use of caption "Konar Tamil Urai" and he never allowed even his brother-in-law or his sons to publish "Konar Tamil Urai" for high school classes. It is how both Palaniappa Chettiar and the first defendant have been publishing Konar Tamil Urai for high school classes and college classes respectively and nobody interfered with the publication of others and both of them have been acting as agents for selling the notes published by the other. So, Konar Tamil Urai in course of time has acquired a distinctive trademark and Palaniappa Chettiar was the prior user of the trade name "Konar Tamil Urai" since he started even earlier to 1956 and Konar Publications have also been using the trade name Konar Tamil Urai for publishing notes for college courses and these two publications were smoothly carrying on their business using their trademark "Konar Tamil Urai" exclusively reserved for themselves for high school and college classes respectively till 1997, when for the first time Konar Publications started publishing Konar Tamil Urai for S.S.L.C and plus 2 classes. The dispute arose and suit has been filed immediately. Therefore, even though initially Iyyam Perumal Konar started writing notes from 1940's which were published by Palaniappa Chettiar, within the course of few years even during the life time of Iyyam Perumal Konar, Palaniappa Chettiar conceived and adopted the trademark "Konar Tamil Urai" and has been continuously using the same from about 1956 till date. Therefore, even though initially Iyyam Perumal Konar started writing notes from 1940's which were published by Palaniappa Chettiar, within the course of few years even during the life time of Iyyam Perumal Konar, Palaniappa Chettiar conceived and adopted the trademark "Konar Tamil Urai" and has been continuously using the same from about 1956 till date. Iyyam Perumal Konar died in 1969 and thereafter also till 1997 there was no conflict and neither brother-in-law of Iyyam Perumal Konar nor the sons of Iyyam Perumal Konar have ever objected to Palaniappa Chettiar using the trademark "Konar Tamil Urai" so far as notes for school students are concerned. Similarly Palaniappa Chettiar never objected to Konar Publications publishing notes under the trademark "Konar Tamil Urai" for college courses which also commenced by about 1956. Therefore, in the course of time and for the past more than four decades, the trademark and trading style "Konar Tamil Urai" was being used by both the plaintiffs and the first defendant even though they have confined their spheres of publications for schools and colleges respectively. Therefore, there is abundant evidence to show that the trade name and style" . Konar Tamil Urai was adopted by Palaniappa Chettiar followed by Srinivasa Konar and even long after the death of Iyyam Perumal Konar in 1969, they were trading under the same trade name and style. So, by such a long user, both the plaintiffs and the first defendant have acquired rights to use their trademark for high school and college classes respectively. 26. The plaintiffs have produced number of specimen copies published by Palaniappa Chettiar right from the year 1945 and they have been marked as Ex.A-10 etc. As seen from these exhibits, in 1945, we find publication of Konar Notes for S.S.L.C. under the caption "Tamil Paada Pudhaka Vilakka Urai". The specimen books of the year 1953 & 1955 are produced and marked which would show that Palaniappa Brothers of Trichy and Madras have been publishing Konar Tamil Notes for S.S.L.C. For the one year in 1956 Palaniappa Brothers, Trichy have published Konar Tamil Notes for S.S.L.C authored by Iyyam Perumal Konar under the caption "Everest Guide". Similarly in 1951 for one year Palaniappa Brothers have chosen to publish "Popular Tamil Notes" offered by Iyyam Perumal Konar for S.S.L.C examination and this is also marked as exhibits. Similarly in 1951 for one year Palaniappa Brothers have chosen to publish "Popular Tamil Notes" offered by Iyyam Perumal Konar for S.S.L.C examination and this is also marked as exhibits. So, right from 1945, books have been published by the plaintiffs and SSLC notes were prepared by Iyyam Perumal Konar and published by Palaniappa Chettiar. From 1953 to 1955 they were published under the caption "Konar Notes and Palaniappa Chettiar started publishing from their branches at Trichirapalli and Madras. Similarly the specimen copies of SSLC notes have been produced and exhibited which would show that from 1958 till date Konar Tamil Urai was published by Palaniappa Chettiar through his branches at Madras, Trichirapalli, Salem and Coimbatore and they were all meant only for school classes. 27. The plaintiffs themselves have produced "Konar Tamil Urai" Published by Konar Publications and they have also been exhibited and we find those notes for the period between 1958 and 1974 and Konar Publications have scrupulously avoided publishing notes for high school classes and all these publications are confined to college classes, namely B.A. and B.Sc., degree courses. So, there is abundant evidence available in this case and much of the evidence is not controverted which has proved that Palaniappa Chettiar has been throughout publishing Konar Tamil Urai for high school classes right from 1956 till date, whereas the first defendant Konar Publications have been also simultaneously publishing Konar Tamil Urai for B.A. and B.Sc. courses. So, both of them have started trading in publication of notes using the trademark and style 'Konar Tamil Urai'. So, by no stretch of imagination it can be stated that Konar Publications have got exclusive right to use the caption "Konar Tamil Urai" because they happened to be the relation of Iyyam Perumal Konar or they belong to the same community. In course of time, the caption "Konar Tamil Urai" has acquired a separate identity of its own and has acquired reputation as a trademark and trading style and in view of the prior user, the plaintiffs are definitely entitled to make use of the trademark. The plaintiffs never objected to the first defendant in making use of the trademark for publishing notes for college classes. P.W. 5 Palaniappa Chettiar has made in abundantly clear and the evidence of D.Ws. The plaintiffs never objected to the first defendant in making use of the trademark for publishing notes for college classes. P.W. 5 Palaniappa Chettiar has made in abundantly clear and the evidence of D.Ws. have also affirmed the claim of the plaintiffs that right from 1958 till 1997 Konar Publications never published Konar Tamil Urai for school classes. 28. At this late hour, it is futile for the defendants to contend that the expressions 'Konar Tamil Urai' and 'Konar' are only descriptive of the books published by Palaniappa Chettiar because of the Authorship of Iyyam Perumal Konar. Palaniappa Chettiar has conceived this trademark and trading style and has been adopted by him from early 1950's and has been using the same continuously even after 1969, after the death of Iyyam Perumal Konar. Iyyam Perumal Konar has never objected to the use of trading style adopted by Palaniappa Chettiar. In fact Iyyam Perumal Konar was patronised by Palaniappa Chettiar and Iyyam Perumal Konar by himself had a vested interest in the plaintiffs adopting the trademark and trading style which in course of time has acquired reputation and goodwill and by cashing the same, Iyyam Perumal Konar was also benefited. Therefore, I hold on Issue No. 3 in C.S. No. 311 of 1997 that the expression "Konar" used by the plaintiff for their "Konar Tamil Urai" for high school classes is a trademark conceived and adopted by the plaintiffs and it cannot be dismissed as a mere descriptive title showing the nature of the books or the author of the books. On issue No. 5, I hold that the plaintiffs have been using the trademark "Konar Tamil Urai" right from 1953 till date in respect of Tamil notes published by them for school classes. 29. Issue No. 4 in C.S. No. 311 of 1997:- The first defendant Konar Publications has also raised some technical pleas with regard to right of M/s. Palaniappa Brothers, M/s. Madras Palaniappa Brothers, M/s. Karthikeyan & Co., and M/s. Madras Karthikeyan & Co., for using the trade name "Konar Tamil Urai" in their publications. 29. Issue No. 4 in C.S. No. 311 of 1997:- The first defendant Konar Publications has also raised some technical pleas with regard to right of M/s. Palaniappa Brothers, M/s. Madras Palaniappa Brothers, M/s. Karthikeyan & Co., and M/s. Madras Karthikeyan & Co., for using the trade name "Konar Tamil Urai" in their publications. It is sought to be made that there is no assignment of trademark rights given by Palaniappa Chettiar in favour of these firms and therefore those firms have no proprietary right to use the trademark even if it is conceded that the first plaintiff Palaniappa Chettiar has acquired such a proprietary right over the trademark "Konar Tamil Urai". This argument or objection is only stated to be rejected. There is evidence to show that Palaniappa Chettiar originally started Palaniappa Brothers as a Proprietary concern somewhere in 1940's or in late 1930's and subsequently it was converted into a partnership firm where his brother was also taken as a partner. Even though Palaniappa Brothers as a partnership firm commenced business as early as 1946, it was not a registered firm and registration was done later in 1960's or 1970's. It was the first plaintiff who was the Founder and Patron of all the four publishing houses, namely Palaniappa Brothers. Madras Palaniappa Brothers, Karthikeyan & Co., and Madras Karthikeyan & Co. Palaniappa Chettiar has been the founder and patron of all these firms and they are even now managed only by Palaniappa Chettiar. Palaniappa Chettiar has also given the reason for starting four sister concerns because of high turnover of his business. P.W. 5 Palaniappa Chettiar has stated that any firm having a turnover of more than Rs. 40 lakhs must have statutory auditing and therefore when the business exceeded 40 lakhs, he started other sister concerns and that is the explanation as to how four concerns have come into existence. But all of them are sister concerns and all of them are controlled by Palaniappa Chettiar even to-day. Moreover, partners in all these firms are family members of Palaniappa Chettiar and there are no strangers. It was Palaniappa Chettiar who founded and patronised all these firms and he continued to have interest in all these firms and he is the person who is controlling and managing all these firms till date. Moreover, partners in all these firms are family members of Palaniappa Chettiar and there are no strangers. It was Palaniappa Chettiar who founded and patronised all these firms and he continued to have interest in all these firms and he is the person who is controlling and managing all these firms till date. Therefore, there is no question of Palaniappa Chettiar assigning any rights but he has been using the proprietary right through these partnership firms founded by himself, wherein he has taken only the members of his own family as partners. 30. Even the first defendant Konar Publications was originally started as proprietary concern by Srinivasa Konar, the brother-in-law of Iyyam Perumal Konar and later he took as partners the sons of himself and Ayyam Perumal Konar and only subsequently they also got registered. Srinivasa Konar also has never assigned his rights in favour of this firm and therefore there is no question of assignment of trademark rights by Palaniappa Chettiar in favour of his sister concerns. Palaniappa Chettiar is part and parcel of all these four family concerns and there is absolutely no question of any conflicting interest between Palaniappa Chettiar and these firms or partners of the firms. Moreover, Palaniappa Chettiar continues to be in management of all these firms and therefore, there is no necessity for any assignment of trademark rights acquired by Palaniappa Chettiar in favour of these firms. Issue No. 4 is therefore answered against the defendants. 31. Issue No. 6 in C.S. No. 311 of 1997 :- The second plaintiff is M/s. Palaniappa Brothers and the office of the firm is stated to be in Madras. According to the defendants, the second plaintiff has come into existence only in September, 1975 and it cannot claim any right or assignment prior to 1975. I have already stated that Palaniappa Brothers, concern was started in 1940's by Palaniappa Chettiar, the first plaintiff as a proprietary concern and it soon became a partnership firm since his brother also came and joined the firm as a partner. As seen from various publications which were produced and marked in this case as exhibits, originally it was described that Palaniappa Brothers have branches at Trichirapalli, Salem, Coimbatore and Madras. Subsequently when the turnover exceeded Rs. As seen from various publications which were produced and marked in this case as exhibits, originally it was described that Palaniappa Brothers have branches at Trichirapalli, Salem, Coimbatore and Madras. Subsequently when the turnover exceeded Rs. 40 lakhs, Palaniappa Chettiar started other partnership firms and all of them continue to trade using the trademark "Konar Tamil Urai" and therefore all the sister concerns have been making use of the trade name "Konar Tamil Urai" right from 1953 till date and therefore it cannot be stated that the second plaintiff M/s. Palaniappa Brothers came only into existence in September, 1975. This issue is therefore found against the defendants. 32. Issue No. 7 in C.S. No. 311 of 1997:- I have already given my findings while discussing the Issue Nos. 3 & 5 that Konar Publications also have been using the trademark and trading style "Konar Tamil Urai" from 1956 till date, but till 1997 they have been using the trademark confining themselves for the notes published for college classes. Therefore, this issue is accordingly answered. 33. Issue No. 11 in C.S. No. 311 of 1997:- The plaintiffs have stated that they came to know the use of "Konar Tamil Urai" by the defendants only recently. This issue has been framed obviously in view of the averments made by Palaniappa Chettiar to the effect that the first defendant, namely Konar Publications have only started using the words "Konar Tamil Urai" for the first time in 1997. Even though it is not specifically stated in the plaint that Konar Publications have been using the trade name and trading style "Konar Tamil Urai" for college classes, the substance of the claim made in the plaint is only to the effect that the plaintiffs have been using the trademark "Konar Tamil Urai" exclusively for their publications of notes for high school classes. They never claimed that they have been using the same trademark for publishing notes for college classes also. In fact Palaniappa Chettiar seems to have been ventured into publishing notes for college classes, but never adopted "Konar Tamil Urai" when he published notes for college students. 34. Konar Publications have been publishing "Konar Tamil Urai" for college classes from 1956 onward and this is now conceded by the plaintiffs. In fact Palaniappa Chettiar seems to have been ventured into publishing notes for college classes, but never adopted "Konar Tamil Urai" when he published notes for college students. 34. Konar Publications have been publishing "Konar Tamil Urai" for college classes from 1956 onward and this is now conceded by the plaintiffs. The plaintiffs also have made it very clear that they do not object to the use of the trademark "Konar Tamil Urai" by the first defendant in respect of notes published for college classes. It is a fact that Konar Publications for the first time started using the trademark "Konar Tamil Urai" for school classes only in 1997 and the plaintiffs also could have come to know of this only in 1997 and therefore, it is correct to state that the plaintiffs were made aware of the venture made by the defendants in publishing "Konar Tamil Urai" for school classes when it first made publication in 1997 and therefore this issue is also answered in favour of the plaintiffs. The plaintiffs admit that the first defendant has been publishing "Konar Tamil Urai" for college courses even from 1956. 35. Issue Nos. 12 & 13 in C.S. No. 311 of 1997 :- Ayyam Perumal Konar throughout his life has allowed Palaniappa Chettiar to publish notes for high school only. Notes for high school and higher secondary classes have been exclusively published by Palaniappa Brothers under the caption "Konar Tamil Urai" and Ayyam Perumal Konar never objected to the same and in fact the trademark "Konar Tamil Urai" has been conceived and adopted by Palaniappa Chettiar in course of his business and Ayyam Perumal Konar never objected to the same and it was not in his interest also to object the same because Palaniappa Chettiar was able to command very good circulation and the notes has also earned reputation and goodwill thanks to the efforts of Palaniappa Chettiar. As already stated in fact it was Palaniappa Chettiar who suggested Ayyam Perumal Konar for the entry of Srinivasa Konar, his brother-in-law into publication business and that is how the first defendant came into existence in the year 1956 and Ayyam Perumal Konar by this time also started writing notes for college courses and this was published by the first defendant under the trademark "Konar Tamil Urai and" naturally Ayyam Perumal Konar never objected to the same. So, on these issues, I hold that Ayyam Perumal Konar never objected the first plaintiff using the trademark "Konar Tamil Urai" so far as notes for high school students are concerned and he also did not object the first defendant using the same trademark so far as college students are concerned. There is no dispute that the first defendant Konar Publications was originally started as a Proprietary concern of Srinivasa Konar, the brother-in-law of late Ayyam Perumal Konar and it was subsequently converted into partnership firm. These two issues are accordingly answered. 36. Issue Nos. 8, 9 & 14 in C.S. No. 311 of 1997 :- Since the plaintiffs have filed the suit complaining of passing off against the first defendant claiming exclusive proprietary right over his trademark or tradename "Konar Tamil Urai", the defendants would counter the claim by stating that the plaintiffs cannot claim rightful use of the caption "Konar Tamil Urai" because it is a false description of goods sold by Palaniappa Chettiar and it amounts to unfair trade practice. The first defendant is trying to make out that trading style and trademark "Konar Tamil Urai" is only descriptive of the goods dealt by the plaintiffs and it cannot be made use of as a trademark. According to them, the words "Konar Tamil Urai" were used only because Ayyam Perumal Konar was the author of the goods and therefor the caption was only descriptive of the authorship of the book and nothing more and the plaintiffs can never claim and proprietary right over the expression "Konar Tamil Urai". The words Tamil Urai are descriptive inasmuch as they indicate that the publication contains only notes or explanation for the text prescribed for public examinations. But, "Konar Tamil Urai" was conceived and adopted by the plaintiffs right from 1956 and it cannot be stated that the use of the same after 1969 is a false description or unfair trade practice. 37. Konar Tamil Urai has been published by the plaintiffs' right from 1956 and the notes were authored or prepared by Ayyam Perumal Konar of course. But, the trade name has acquired a reputation and goodwill not because of the author but this was adopted as a trading style. 37. Konar Tamil Urai has been published by the plaintiffs' right from 1956 and the notes were authored or prepared by Ayyam Perumal Konar of course. But, the trade name has acquired a reputation and goodwill not because of the author but this was adopted as a trading style. The defendants are trying to make out that so long as Ayyam Perumal Konar was alive, the plaintiffs were correct in trading under the trademark "Konar Tamil Urai", but after his death from 1.1.1969, the plaintiffs ought not to have carried the business using the same trademark thereby suggesting that the notes are still prepared by Ayyam Perumal Konar. Ayyam Perumal Konar started writing notes even in late 1930's and till about 1948, his notes were published by the plaintiffs under the caption "Tamil Text Examiner" and only in late 1940's they were published under the caption "Konar Notes". Initially even though notes was for Tamil examination, the title was printed in English as "Konar Notes" and Konar Tamil Urai was first adopted in the year 1956 and thereafter the same trademark continued till date. The author of the notes paled into insignificance and the trademark has acquired its own goodwill and reputation and the publication commanded very good sales turnover because of the trademark adopted by Palaniappa Chettiar. This is only quiet but natural in view of the fact that there was nothing original about the book because it was only notes prepared to help the students to understand the original text prescribed both in poetry and prose and also in Non-detail. Konar cannot claim any originality in view of the fact that the notes were only intended to highlight the correct and true meaning of the original text and it is also not a treatise or a commentary upon the original text. Therefore, the fact that Ayyam Perumal Konar prepared notes is not important or significant and the fact remains that the notes were sold under the caption and trademark and trading style "Konar Notes" and subsequently as "Konar Tamil Urai". 38. Even though the word "Konar" has been used initially to denote the name of the author, it has acquired reputation of its own and has got nothing to do with the authorship of the notes. 38. Even though the word "Konar" has been used initially to denote the name of the author, it has acquired reputation of its own and has got nothing to do with the authorship of the notes. It is the reason why even after the death of Konar, Palaniappa Chettiar and the first defendant also continued to publish notes under the same trading style, even though Ayyam Perumal Konar could not prepare notes after his death and he has also not left any script to be adopted by these people. It has also come out in evidence that even during the lifetime of Ayyam Perumal Konar, he used to have the assistance of four or five Tamil Teachers or Vidwans and they have been spending their time and talent in preparing the notes because at that time the turnover has run into several lakhs and Ayyam Perumal Konar could not reasonably claim to have authored all the notes. Konar also during his lifetime never insisted or cared to publish the names of co-author teachers or Vidwans who assisted him in preparing the notes. Therefore, when Ayyam Perumal Konar died on 1.1.1969, the publication did not stop and it continued under the same trademark and Palaniappa Chettiar never made any false claim after the death of Ayyam Perumal Konar that the notes are being authored by Ayyam Perumal Konar. So long as Ayyam Perumal Konar was alive no doubt his name was mentioned as author in the inside cover of the publications and subsequent to his death, there was no mention about the author's name. The notes continued to be prepared by four or five teachers or Vidwans and Palaniappa Chettiar continued to publish them under the trade name "Konar Tamil Urai" which has acquired a trading style and goodwill and reputation among the consuming public. If Palaniappa Chettiar has claimed even after the death of Ayyam Permumal Konar in 1969 that the notes are authored by Ayyam Perumal Konar, one can find fault with his claim, but Palaniappa Chettiar never used the name of Ayyam Perumal Konar after his death and therefore it cannot be stated the trademark "Konar Tamil Urai" after the death of Ayyam Perumal Konar was a false trade description or an unfair trade practice. Konar Notes continued to be popular because of the trademark and it was never suggested by Palaniappa Chettiar that the notes were still authored by Ayyam Perumal Konar. 39. In fact the first defendant also did not stop publishing college notes under the trademark "Konar Tamil Urai" after the death of Ayyam Perumal Konar in 1969. They also continued their publication of college notes under the trading style "Konar Tamil Urai" and they never objected to the plaintiffs doing the same thing so far as school notes are concerned. A suggestion is made on behalf of the defendants that they are justified in using that trade name "Konar Tamil Urai" after 1969 because after the death of Ayyam Perumal Konar, his son Rangarajan, D.W.2 started authoring the notes. Rangarajan never seems to have published his name as "Rangarajan Konar". The first defendant also did not publish the name of D.W. 2 as the author indicating that he is Rangarajan Konar. If really the plaintiffs adopted the name Konar Tamil Urai as a false description or unfair trade practice, it does not lie in the mouth of the first defendant to say, because they did not change their trademark as Rangarajan Konar Tamil Urai and they also continued to publish their college notes under the trademark "Konar Tamil Urai". As already stated in course of business and in course of time, 'Konar Tamil Urai' had acquired a very good reputation and the name of the author or the person or persons who had actually prepared the notes became insignificant and therefore there is no question of the plaintiffs indulging in any unfair trade practice or making any false claim when they continued publication under the trademark "Konar Tamil Urai" even after 1.1.1969, when Ayyam Perumal Konar died. 40. The factual claim of the defendants that D.W. 2 Rangarajan was actually assisting Konar in preparing the notes and after 1969 he authored the notes also does not appear to be true or correct. According to D.W.2 himself, he acquired B.A. degree and also B.T in Maths only and by about 1960 he acquired a post Graduate degree in Tamil and initially he was employed as a Teacher for Maths and he became a lecturer of Tamil only in 1970. Therefore, Rangarajan could not have assisted his father Ayyam Perumal Konar in preparing the notes during the course of his lifetime. Therefore, Rangarajan could not have assisted his father Ayyam Perumal Konar in preparing the notes during the course of his lifetime. Subsequently his name has been printed as author, but his name has been not written as Rangarajan Konar and he has also not claimed any monopoly to use the word "Konar" and even he admitted that Konar Tamil Urai was adopted by both of them. D.W. 2 also admitted that through out till 1997, they never objected to the plaintiffs using the trademark "Konar Tamil Urai". So, the defendants have now only raised the contention of false trade description or unfair trade practice only after the plaintiffs have started asserting their exclusive trademark right of "Konar Tamil Urai" for publication of their goods for high school students. Only by way of defence and as an after thought, the defendants have raised the plea that the plaintiffs' action in continuing to use the trademark after the death of Ayyam Perumal Konar in 1969 amounts to false trade description of unfair trade practice. On this ground the claim of the plaintiffs can never be turned down. It is the first plaintiff who conceived and adopted the trademark "Konar Tamil Urai" and the word "Konar" is not a descriptive name, but a trade name acquired, used and adopted by the first plaintiff right from 1953. Therefore, all these issues are found against the defendants and in favour of the plaintiffs. 41. Issue Nos. 10 & 19 :- The main ground on which the claim of the plaintiffs is sought to be resisted by the defendants is that the first defendant is the registered owner of the trademark "Konar Tamil Urai" and that the word "Konar" is the trademark exclusively to be used by the first defendant and the plaintiffs cannot therefore seek any relief or injunction against the proprietor of the registered trademark. The answer of the plaintiffs is that even though the defendants seem to have obtained registration of the trademark "Konar Tamil Urai", this has been done behind his back stealthily, that this was not known, and that anyhow they have been using the trademark "Konar Tamil Urai" right from 1953, that since they are the prior user of "Konar Tamil Urai", they are entitled to ask for injunction on passing off cause of action. The case of the plaintiffs is that they have been exclusively publishing notes for school students right from 1953 using the trade name "Konar Tamil Urai", that their trademark has been associated with the plaintiffs' publication of notes for school students and since they have been using the name for the past many years, they can resist the attempt of the defendants to pass off their goods as emanating from the plaintiffs. 42. So far as the question of passing off is concerned, it is not a valid defence for a subsequent user that he has obtained trademark registration and notwithstanding the registration under the Trade and Merchandise Marks Act, 1958, the plaintiffs can maintain a suit for injunction against the subsequent user and they have got common Law remedy for passing off. The fact that Palaniappa Chettiar and the firms started by him have adopted the trademark "Konar Tamil Urai" even from 1953 and he has been continuously publishing notes for school students exclusively till 1997 has been proved by abundant evidence available in these suits. Even the defendants do not dispute the fact that Palaniappa Chettiar and Palaniappa Brothers have been publishing "Konar Notes and Konar Tamil Urai" even from 1953 even though it is contended by them that it is not a trademark, that "Konar Tamil Urai" is only a descriptive term of the goods produced by the plaintiffs in asmuchas the notes were written by Ayyam Perumal Konar till he died in 1969. So, the defendants would deny the use of "Konar Tamil Urai" as a trademark by the plaintiffs. But, on the other hand they would contend that it was a descriptive mark which was rightly used by the publishers till 1.1.1969, when Konar died and thereafter the use of the name "Konar Tamil Urai" is a false description and an unfair trade practice, which cannot be tolerated much less recognised by any Court of law. I have already held that Konar Tamil Urai was conceived and adopted as a trade mark and this has been done in course of long period when the plaintiffs were publishing the notes and it has acquired a reputation and goodwill because of the long user and therefore, it is not correct to state that "Konar Tamil Urai" is not a trademark, but only a descriptive mark of the goods marketed by the plaintiffs. So, the use of the trademark "Konar Tamil Urai" even after the death of Ayyam Perumal Konar cannot be called as false description and cannot be termed as an unfair trade practice because the plaintiffs never gave out that even after the death of Konar, the notes are being written or authored by Ayyam Perumal Konar. The plaintiffs have never even suggested to make it appear as if the notes published by them are authored by Ayyam Perumal Konar after 1969. The death of Ayyam Perumal Konar was not sought to be suppressed by the plaintiffs at any time. The plaintiffs never published after 1969 the name of Ayyam Perumal Konar as the author of the notes. In fact since the notes have been prepared subsequent to the death of Ayyam Perumal Konar by a team of teachers or Vidwans, they have not chosen to publish any name as the author. Originally Ayyam Perumal Konar wrote the notes by himself and in course of time after the publishers have started even publishing notes for smaller classes and for college classes, Ayyam Perumal Konar himself did not exclusively write or prepare the notes and he was assisted by three or four persons. In fact D.W. 2 Rangarajan, son of Ayyam Perumal Konar would even claim to have assisted his father in his last days in preparing the notes for publication. So, even during the lifetime of Ayyam Perumal Konar, the notes were not prepared by one person or exclusively by Ayyam Perumal Konar and the author or the source for writing the notes never assumed any importance atleast after Konar Notes have become popular, commanding wide circulation and therefore, there is absolutely nothing unethical or unfair in the plaintiffs continuing to publish the notes under the same trademark". Konar Tamil Uraeven after the death of Ayyam Perumal Konar in 1969. 43. It is also significant to note that after 1969 also, the plaintiffs have been continuously publishing "Konar Tamil Urai" for school students and the first defendant and even the sons of Ayyam Perumal Konar have been acting as selling agents for the plaintiffs till recent times and they never objected to the plaintiffs using the trade mark "Konar Tamil Urai". It is also significant to note that after 1969 also, the plaintiffs have been continuously publishing "Konar Tamil Urai" for school students and the first defendant and even the sons of Ayyam Perumal Konar have been acting as selling agents for the plaintiffs till recent times and they never objected to the plaintiffs using the trade mark "Konar Tamil Urai". The first defendant "Konar Publications" also never questioned the right of the plaintiffs to publish Konar Tamil Urai for school students even after the death of Ayyam Perumal Konar and they have also confined themselves as before to publish Konar Tamil Urai only for college classes. Therefore, there is abundant evidence to hold that the trademark "Konar Tamil Urai" was being used by the plaintiffs with regard to their publication of notes for school students right from 1953 till 1997 and this was not challenged or questioned by the defendants at any time till 1997. 44. It is now learnt that the first defendant has applied for registration of the trademark "Konar Tamil Urai" in respect of the notes published by them and they have also been using the trademark "Konar Tamil Urai" for publishing notes, but confined only to college classes. But, this has not been disclosed to the registration authorities and obviously the first defendant must have claimed exclusive right to use Konar Tamil Urai stating that the registration was sought for generally in respect of notes published by them. The application for registration seems to have been made by the first defendant somewhere in 1982 or thereafter. It is not even stated or proved even by the first defendant that the application for registration was made by Srinivasa Konar. If Srinivasa Konar has applied for registration, definitely he would have divulged the fact that Registration of Konar Tamil Urai is sought for confined to college notes produced by the first defendant. Anyhow in the application made by the first defendant, the first defendant has suppressed the fact that the plaintiffs are also using the trademark "Konar Tamil Urai". While the application was made in 1980's, this was not made known to the plaintiffs or anybody else for that matter and the defendants also do not claim to have issued any public notice. While the application was made in 1980's, this was not made known to the plaintiffs or anybody else for that matter and the defendants also do not claim to have issued any public notice. Therefore, even after making the application in 1982 or thereafter, the defendants have never objected to the use of the trademark "Konar Tamil Urai" by the plaintiffs in respect of publication of notes for school students. Not only that the first defendant has not objected to the use of the trademark for school students by the plaintiffs, but they themselves have not chosen to use the trademark for publishing any notes for school students. 45. In 1997 as per Ex. B-9 the first defendant has obtained registration of their trademark 'Konar Tamil Urai' and they have also made a disclaimer in respect of "Tamil Urai" because it is only a descriptive term with reference to the notes published by them. So, the word "Konar" has been registered and this has been obtained in 1997. No doubt when the registration is given ultimately, it will definitely date back to the date of the application and therefore from the year 1982, the registration has become effective and valid. But, the fact remains that the first defendant never made use of the trademark "Konar Tamil Urai" by publishing notes for school students and they never objected the plaintiffs using the same trademark so far as Tamil notes for school students are concerned. So, till 1997, the plaintiffs and the first defendant have been using the trademark "Konar Tamil Urai", the former confined to the notes published for school students and the latter confining themselves in using the same trade mark in respect of the goods for college students. It cannot be also disputed while Konar Publications came into existence in 1956, Palaniappa Brothers and Palaniappa Chettiar, namely the plaintiffs have been using the trademark "Konar Tamil Urai" even from 1953. So, the plaintiffs are prior user in point of time to the first defendant of the trademark "Konar Tamil Urai. Even after 1956 both of them have been using the trademark "Konar Tamil Urai" and therefore it can never be disputed that the trademark "Konar Tamil Urai" was being used by the plaintiffs even though confined to their notes for school students. 46. Even after 1956 both of them have been using the trademark "Konar Tamil Urai" and therefore it can never be disputed that the trademark "Konar Tamil Urai" was being used by the plaintiffs even though confined to their notes for school students. 46. The first defendant seems to contend that once they have got registration of their trademark "Konar", they can rightly prevent the plaintiffs from making use of the same trademark by virtue of the rights flowing from the registration under the Trade and Merchandise Marks Act, 1958. By becoming proprietor of the registered trademark, the first defendant not only justify their claim for injunction against the plaintiffs in the suits filed by them, but also they would resist the claim for injunction made by the plaintiffs in their suit and this is the main argument advanced on the side of the first defendant. 47. The plaintiffs even though complained of infringement of trademark rights, they now concede that in the absence of registering their trademark under the provisions of the above said Act, they cannot claim any injunction on the basis of infringement of trademark rights. The fact that the plaintiffs also have made an application after 1997 praying for registration of the same trademark makes no difference. Mere application for registration will not confer any right on the plaintiffs to ask for injunction on the ground of infringement of trademark rights as against the registered proprietor or even as against a third party user. Therefore, the learned counsel for the plaintiffs have made it very clear that they do not claim any injunction against the defendants for infringement of their trademark rights. 48. On the other hand the plaintiffs would justify their claim that they have got cause of action under the Common Law of passing off and they can always ask for injunction and other reliefs restraining the defendants from passing off their goods as and that of the plaintiffs. It is only on this ground, the plaintiffs would justify the prayer for permanent injunction and other reliefs sought for against the first defendant. In fact the first defendant after registration has first published notes "Konar Tamil Urai" for school students also and after the suit has been filed, an exparte injunction has been granted restraining the defendants from publishing school notes under the registered trademark. In fact the first defendant after registration has first published notes "Konar Tamil Urai" for school students also and after the suit has been filed, an exparte injunction has been granted restraining the defendants from publishing school notes under the registered trademark. If the plaintiffs are able to prove that they have been using the trademark for the past many years and if they are able to prove that they are the prior user to the first defendant, they are definitely entitled to injunction as Common Law remedy provided under the cause of action for passing off. 49. Number of authorities have been cited by both the sides in support of their rival claims. Let me first discuss the rulings relied upon by the defendants in their proposition that against the registered trademark proprietor, there cannot be any injunction. In Sona Ana Pana Balraj and Others v. S.P. Vadivel Nadar and Sons and Another, 1963 AIR(Madras) 12, a Bench of this Court has held that in the context of Sections 23 and 24, it is clear that the validity of a registered trade mark cannot be canvassed in a suit for injunction resulting from an alleged infringement of trademark. The person aggrieved must adopt, in such a case, the special procedure provided in Section 46 read with Section 72 of the Act for modification or cancellation of the registered trademark. Where such a special proceeding is already pending in another Court, it is not proper in the interests of justice for the Court dealing with the suit for injunction to express any opinion upon the merits of the controversy regarding validity of the trademark. That was a case where the plaintiffs sought for reliefs against the defendant who was the proprietor of registered trademark and the validity of the registration was questioned and an injunction was sought for under the provisions of the Trade and Merchandise Marks Act, 1958. Therefore, their Lordships have held that as against the registered proprietor of the trademark, no injunction will be granted for infringement of trademark rights. Therefore, their Lordships have held that as against the registered proprietor of the trademark, no injunction will be granted for infringement of trademark rights. This authority is not helpful to the defendants because the cause of action for the plaintiffs in the suit is passing off and no infringement of trademark rights because they themselves have not applied for nor obtained registration and they have not filed any petition under the provisions of the same Act for cancellation of the registration of the first defendant or seeking for any modification in their registration. Therefore the ruling cited by the defendants is of no help to defendants who are defending an action for passing off who have merely obtained registration of the trademark. 50. In P.M. Diesels Private Limited v. Thukral Mechanical Works, 1988 Indlaw DEL 77, a single Judge of Delhi High Court had an occasion to deal with the main question which arose for consideration as to whether notwithstanding the application of the plaintiff for cancellation or rectification of the above said mark, can the plaintiff ask for the grant of or for the continuance of an interim injunction restraining the registered proprietor of a trademark from using that trademark. The claim was sought to be resisted under Section 33 of the Act, but the Judge held that the said provision has no application. Observing that Section 33 gives a right of user to the prior user of the trademark, but it does not in any way take away the right of the registered proprietor from using the said trademark. 51. Learned counsel appearing for the first defendant has also relied upon a ruling of this Court made in Hardie Trading Limited, Melbourne, Australia and another v. Addisons Paints and Chemicals Limited, Madras and another, 1991 MLJ 218 , wherein it was held that once a trademark is assigned, the assignor cannot, in the eye of law, have any interest in the trademark assigned and the assignee alone, as a person interest in the trade mark assigned can represent in opposition proceedings as a party to protect his interest. This ruling is sought to be pressed into service by the defendants to contend that if Palaniappa Chettiar, the first plaintiff is the owner or proprietor of the trademark "Konar Tamil Urai", after he has assigned the same in favour of the second plaintiff or his sister concerns, the first plaintiff cannot maintain the suit and since other companies have come into existence only after the first defendant has started using the trademark, they cannot also justify their claim under passing off. But, there is no question of any assignment of trademark rights by the first plaintiff in favour of other firms. Palaniappa Chettiar originally started using the trademark Konar Tamil Urai in 1953, when Palaniappa Brothers was a proprietary concern and subsequently it was converted into a partnership firm in 1956 and Palaniappa Chettiar is also a partner of the said firm and as the turnover increased, Palaniappa Chettiar himself has started all the sister concerns of which he had the control and management and therefore, there is no question of Palaniappa Chettiar assigning his rights in favour of those firms or those firms acquiring any rights against the interest of Palaniappa Chettiar. There is also no conflict between these four partnership firms and Palaniappa Chettiar is the founder and patron of all these firms and Palaniappa Chettiar is the person who conceived and adopted the trademark and it is he who is using the trademark through the firms of which he is the controlling authority. Therefore, under such technical pleas, the defendants cannot defeat the claim of the plaintiffs. 52. My attention has been also drawn to a ruling made in Mohan Meakin Breweries Limited v. The Scotch Whisky Association, IPLR 70. That was a decision delivered by a Division Bench of the Delhi High Court wherein the opposition raised by Scotch Whisky Association to the use of the plaintiff of their trademark Highland Chief in respect of whisky manufactured by them was cancelled and injunction was vacated because it was held that the trademark Highland Chief used by the plaintiff is an act of false trade description within the meaning of Section 2(1)(f) of the Act. The word "Highland" connotes whisky produced in Scotland and when Indian manufacturer of the liquor started using the trademark "Highland Chief" his prayer for injunction was turned down holding that notwithstanding the words used in the same label that it is a 'produce of India', the trademark "Highland Chief" is likely to create deception among the consuming public to take it that the Whisky is produced by the Scotch Whisky Association. Perhaps this ruling has been cited by the defendants in their contention that "Konar Tamil Urai", the trademark adopted and used by the plaintiffs amount to an act of false description and unfair trade practice. I have already held that the trademark "Konar Tamil Urai" is not misleading and there was no attempt on the part of the plaintiffs to make it appear that Ayyam Perumal Konar continued to write the notes for their publications. 53. In M/s. Power Control Appliances and Others v. Sumeet Machines Private Limited, 1994 (1) MLJ 74, the Supreme Court has held as follows:-" It is a settled principle of law relating to trademark that there can be only one mark, one source and one proprietor. It cannot have two origins. Where, therefore, the first defendant has proclaimed himself as a rival of the plaintiff and as joint owner it is impermissible in law. Even then, the joint proprietors must use the trade mark jointly for the benefit of all. It cannot be used in rivalry and in competition with each other. "This ruling is cited perhaps with a view to counter the claim of the plaintiffs that they only claim user of the trademark "Konar Tamil Urai" for the notes published by them for school students and they do not oppose the use of the same trademark by the defendants so long as they confine their publication to college students. The claim of the plaintiffs in not inconsistent with the proposition laid down by the Supreme Court in this case. In fact there can be more than one user of a trade mark. 54. In B.S. Ramappa v. B. Monappa and Another, 1957 AIR(Madras) 76, a Bench of this Court has held that Section 10(2) of the Act refers to concurrent user which is honest, that is independent concurrent user which is honest, that is user which cannot be traced to the same source. 54. In B.S. Ramappa v. B. Monappa and Another, 1957 AIR(Madras) 76, a Bench of this Court has held that Section 10(2) of the Act refers to concurrent user which is honest, that is independent concurrent user which is honest, that is user which cannot be traced to the same source. Before a joint registration is ordered under Section 17 there should be applications from at least two persons and the Registrar should have an opportunity of forming an opinion by reason of special circumstances existing in the case. That was also a case where two sons of a registered proprietor sought to justify their exclusive right to the trademark and one of the sons has falsely obtained registered user certificate suppressing the fact that his father was the proprietor and he left behind two sons and suppressing the fact that there is another son who is also entitled to succeed to the proprietary rights of the father. This ruling has no application to the present case. 55. On the other hand, there are number of authorities wherein various High Courts and the Supreme Court have held that a prior user and the person who is suing for Common Law remedy under the cause of action for passing off is entitled to maintain a suit even against the registered proprietor of the trademark, provided he is able to establish that he is the prior user. 56. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 Indlaw SC 202, the difference between an action for passing off and action for infringement of trade mark has been stated clearly as follows:-" An action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action for infringement. The action for infringement in a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trademark in a passing off action would be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff." 57. In Wander Limited and Another v. Antox India Private Limited, 1990 Indlaw SC 820, the Supreme Court has held as follows :- "An infringement action is available where there is violation of specific property right acquired under and 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 defendant which leads to or is intended or calculated to lead to deception. 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 defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable 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 misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or goodwill of the other trader." 58. In Consolidated Foods Corporation v. Brandon and Company, 1965 AIR(Bombay) 35, it was held that a trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection when, the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what was already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration. For the purpose of claiming such proprietorship of a mark, it is not necessary that the mark should have been used for considerable length of time. As a matter of fact, a single actual use with intent to continue such use instantly confers a right to such mark as a trade-mark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its production and sales. As a matter of fact, a single actual use with intent to continue such use instantly confers a right to such mark as a trade-mark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its production and sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trade-mark is the test rather than the extent or duration of the use. "In the case on hand, the plaintiffs adopted and used the trademark 'Konar Tamil Urai' even prior to the first defendant adopting it and they are the prior user of the trademark 'Konar Tamil Urai'. The evidence has also established that the plaintiffs have been using it continuously from 1953 till date. It has been clearly proved that the trade mark has been used by the plaintiffs in respect of their publication of notes for school students and the defendants have been using the same trademark subsequently and their use has been confined only in respect of their notes published for college classes only. The first defendant has never made use of the trademark in respect of their publications for school students. In fact the first defendant himself has published high school notes not adopting the trademark "Konar Tamil Urai", but adopting another trade name "Kanna Notes". So, the defendants themselves have consciously restrained themselves from using the trademark in respect of the goods published by them for high school classes. In the same ruling His Lordship has also taken up for consideration as to what must be done, in case more than one person using the same trademark applied for registration and the question is answered in the following manner:- But, where more than one had in the past been using a Trade Mark, there were rules settled by decisions to this effect, that up to the number of three there would be registration of persons who had bona fide used the same mark, but if more than three applied and said they had used the mark, then the mark was really such common property in the trade that it was not registrable at all. So, it is not necessary as contended by the first defendant that regarding the use of trademark, there can be only one user. The use of "Konar Tamil Urai" by the plaintiffs even from 1953 would definitely show the intention of the plaintiffs to use the said mark as a trade mark and not merely a descriptive mark of the nature of the goods sold by them. 59. In N.R. Dongre and Others v. Whirlpool Corporation and Another, 1996 Indlaw SC 200, the Supreme Court has again held that a passing off action is maintainable in law even against the registered owner of the trade mark and therefore, the fact that the defendants have obtained registration itself is not sufficient for dismissing the suit. The Supreme Court also observed as follows:-" The concept and principle on which passing-off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in his favour. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off it should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trade mark. He cannot represent his own goods as the goods of somebody else. No one can be permitted to trade by deceiving or misleading the purchasers or unauthorisedly divert to itself the reputation and goodwill of others. Under Section 27(2) of the Act, an action for passing off against the registered user of the trade mark is maintainable at the instance of a prior user of the same, similar or identical mark. Since such a remedy is available against the registered user of a trade mark, an interim injunction restraining to use the trade mark can also be granted for making the remedy effective. 60. Since such a remedy is available against the registered user of a trade mark, an interim injunction restraining to use the trade mark can also be granted for making the remedy effective. 60. In Bajaj Electricals Limited, Bombay v. Metals & Allied Products, Bombay and Another, 1988 AIR(Bombay) 167, the Bombay High Court has held that use of the family name as trade name cannot be a defence to the action of passing off and even though the family name of the defendant was identical to the trade name of the plaintiff and when the defendant was passing off the goods as that of the plaintiff, it was held that the defendant is not entitled to use the family name and the plaintiff is entitled to an injunction. This proposition of law is sufficient to rebut the contention of the defendant that their trademark "Konar Tamil Urai" is justified because the proprietors of the firm are legal heirs and close relations of late Ayyam Perumal Konar and the author, namely Rangarajan is also a Konar and therefore, their justification for using the trademark "Konar Tamil Urai" even prior to the registration. 61. In Amritdhara Pharmacy v. Satya Deo Gupta, 1962 Indlaw SC 517, the Supreme Court approvingly quoted the passage from Halsbury's Laws of England, Vol 32 (second edition) pages 656-657, paragraph 966, which is an follows:- "If a trader allows another person who is acting in good faith to build up a reputation under a trade name or mark to which he has rights, he may lose his right to complain, and may even be debarred from using himself such name or mark." I have already held that there is absolutely no question of any dishonest intention when the plaintiffs conceived and adopted the trademark "Konar Tamil Urai" and the evidence has also established that the defendants for the past many decades have never objected to the plaintiffs using the trademark even after the death of Ayyam Perumal Konar in 1969. 62. A Division Bench of this Court in Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. & Others, 1996 PTC (16) 311, has discussed the question of entitlement of injunction in respect of unregistered trademark as against the registered holder of trademark and has reviewed the earlier case law also. 62. A Division Bench of this Court in Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. & Others, 1996 PTC (16) 311, has discussed the question of entitlement of injunction in respect of unregistered trademark as against the registered holder of trademark and has reviewed the earlier case law also. That was a case where an International Company wanted to restrain the defendants from using their registered trademark "Tiger Balm" on the ground that they are the prior user and that their company has got trans border reputation, goodwill and the company products are sold throughout the world. In fact the plaintiff has earlier applied before the Registry of Trade Mark for rectification of the defendants' trademark and that has been negatived by the Registry. One of the argument advanced against the grant of injunction was that the plaintiff company having failed to obtain an order of rectification of the defendants' trademark is precluded from claiming any relief on the basis of passing off. Admittedly even though the plaintiff's trademark "Tiger Balm" has been registered in number of countries, they have not cared to obtain registration in India and for a petty long time, the import of their products was prohibited by the Government of India as per the Import Policy and the evidence was to the effect that "Tiger Balm" product of the plaintiff, no doubt had its own circulation in India through authorised and unauthorised channels and the Indians who are going abroad to Singapore and other countries used to purchase them and bring them to India. So, notwithstanding the fact that the defendants had the trademark "Tiger Balm" registered under the Act, the plaintiff filed the suit and prayed for injunction on the cause of action on the basis of passing off. Srinivasan, J. (As he then was) while delivering judgment on behalf of the Bench, has posed the following questions among others:- Whether the registration of Trade Mark No. 204951 disentitles the appellants to any relief on the basis of passing off? and Whether the orders passed in the proceedings for rectification of trade mark No. 204951 and for registration of first appellant's trade mark preclude the appellants from getting relief in C.S. No. 1464 of 1994 and from resisting C.S. No. 257 of 1995? and Whether the orders passed in the proceedings for rectification of trade mark No. 204951 and for registration of first appellant's trade mark preclude the appellants from getting relief in C.S. No. 1464 of 1994 and from resisting C.S. No. 257 of 1995? His Lordship has approvingly quoted from Kerly's Law of Trade Marks and Trade Names - Supplement - pages 42 and 43, paragraph 16-02 wherein the Law is stated thus:- "The Law of passing-off can be summarised in one short general proposition no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. Firstly, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to belief that the goods or services offered by him are the goods or services of the plaintiff. Thirdly, he must demonstrate that he suffers or, in a Quick time action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or service is the same as the source of those offered by the plaintiff..." In Parker-Knoll Limited v. Knoll Internationals Ltd, . 1962 RPC 265, the House of Lords held that trading must not only be honest but must not even unintentionally be unfair. The Court also observed that the law of passing off is not different with respect to unintentional misrepresentation and that if a true statement conveys a falsehood to the public, it is a misrepresentation. 1962 RPC 265, the House of Lords held that trading must not only be honest but must not even unintentionally be unfair. The Court also observed that the law of passing off is not different with respect to unintentional misrepresentation and that if a true statement conveys a falsehood to the public, it is a misrepresentation. In Kaviraj Pandit Durga Dutt Sharma v. Navartna Pharmaceutical Laboratories, 1964 Indlaw SC 202, the Supreme Court has said that an action for passing off is a common law remedy going in substance an action for deceit, that is, a passing off by a person of his own goods as those of another and that it is not the gist of an action for infringement, which is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. While the use by the defendant of the trade mark of the plaintiff is not essential in the case of passing off, it is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential feature of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark to a passing off action would also be such in an action for infringement of the same trade mark. In a passing off action, the defendant may escape liability, if he can show that the features of a mark used by him are sufficient to distinguish his case from those of the plaintiff. In Ruston and Hornby Limited v. Zamindara Engineering Company, 1969 Indlaw SC 494, the Supreme Court brought out the distinction between the two actions in the following words:- "The distinction between an infringement action and passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows:-" Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods? In a passing off action the issue is as follows:-" Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods? Repelling the extreme contention that the action for passing off is barred by the registration of the trade mark. His Lordship has held that Section 27(2) of the Act is a complete answer to the contention. Section 27 reads as follows :- "Nothing in this Act shall be deemed to affect right of action against any person for passing off goods as the goods of another person or the remedies in respect thereof." His Lordship again has quoted Kerly's Law of Trade Marks and Trade Name, 12th Edition, at page 356, in paras 16-14 and the following passage occurs:- "Subject to two qualifications, nothing in the Trade Marks Act affects a trader's right against another in an action for passing-off. It is therefore, no bar to an action for passing off that the trade name, get-up or any other of the badges identified with the plaintiff's business, which are alleged to have been copied or imitated by the defendant, might have been, but are not registered as trade marks, even though the evidence is wholly addressed to what may be a mark capable of registration. Again, it is no defence to passing-off that the defendant's mark is registered. The Act offers advantages to those who register their trade marks, but imposes no penalty upon those who do not. It is equally no bar to an action for passing-off that the false representation relied upon in imitation of a trade mark that is incapable of registration. A passing-off action can even lie against a registered proprietor of the mark used upon." In 'Trade Marks and Passing Off IV Edition, Para 22.03 at pages 410 and 411, the author Narayanan has stated thus:- "The provisions of the Act including those of registration do not affect rights of action against any person for passing off goods as the goods of another or the remedies in respect thereof. Thus in an action for passing off the defendant cannot plead that the mark he is using, which has resulted in passing off, is registered. Thus in an action for passing off the defendant cannot plead that the mark he is using, which has resulted in passing off, is registered. This would appear to follow from the use of the words "subject to the other provisions of this Act" in the opening part of Section 28(1) defining the right conferred by registration. The "other provisions of the Act" would obviously include Section 27(2) dealing with rights of action for passing off. Section 27(2) overrides the provisions of Section 28." Finally answering the questions raised in the discussion in the negative in favour of the appellants, it was held that registration of the trade mark does not disentitle the appellants to the relief on the basis of passing off. 63. The evidence available in the case on our hand has clearly established that the plaintiffs have been using the trademark "Konar Tamil Urai" right from 1953 and they have been publishing notes originally for S.S.L.C and subsequently for school classes upto 12th standard and they have refrained themselves from publishing Konar Tamil Urai for college classes. The trademark "Konar Tamil Urai" was conceived and adopted by the first plaintiff, who was the publisher of the notes prepared by Ayyam Perumal Konar and it was a trademark under which the plaintiffs were selling their goods and the trademark cannot be stated to be mere descriptive of the goods sold by them. It is only a coincidence that the author of the notes was Ayyam Perumal Konar, but the trademark was continued to be used for the notes published by the plaintiffs even after the death of Ayyam Perumal Konar and in adopting the said trademark, the plaintiffs were not motivated by any ill-will or greed. They never gave out that the notes are still written by Ayyam Perumal Konar. On the other hand they have stopped putting the name Ayyam Perumal Konar as author after his death and no name was put in the books indicating the author's name because notes were joint efforts of three or four Vidwans who have been engaged by the plaintiffs. It can never be stated that the use of the trademark "Konar Tamil Urai" is a false trade description or an unfair trade practice. 64. It can never be stated that the use of the trademark "Konar Tamil Urai" is a false trade description or an unfair trade practice. 64. It is also equally established that after 1956 the first defendant Konar Publications have also started publishing Konar Tamil Urai, but they never published notes for school students and they have confined their trademark only in respect of notes prepared for B.A., and B.Sc. classes. There was complete understanding and agreement between the plaintiffs and the first defendant till 1997 and both of them have been using the trademark "Konar Tamil Urai", but for different classes. The plaintiffs are using the trademark only with reference to notes published for school students and Konar Publications confined in publishing notes for college classes. Even wrappers for the notes published by Konar Publications were got printed by M/s. Asian Printers, which is a firm belonging to Palaniappa Chettiar's family. In fact Konar Publications and before that Vaasan Padhipagam, which belonged to Srinivasa Konar, themselves were acting as agents for Palaniappa Brothers in respect of Konar Tamil Urai published for school students. Somewhere in 1982, Konar Publication seems to have made an application for registration of the trade mark "Konar Tamil Urai" and this was never made known to the plaintiffs. There was no publication claiming right to use the trademark or intimation about the application made by the first defendant. Inspite of having made the application in 1980's, even thereafter the first defendant never published Konar Tamil Urai for school students, but continued only to publish notes for B.A. and B.Sc., classes. The registration was granted in the year 1997 and only after this, the first defendant ventured in publishing "Konar Tamil Urai" for school classes and immediately thereafter the plaintiffs have come forward with the suit. If the defendants are allowed to publish Konar Tamil Urai for school students also, the public will be misguided by purchasing the notes published by the first defendant believing that they are the products or goods made by the plaintiffs. The first defendant for the first time tried to publish school notes under the trademark "Konar Tamil Urai" only with a view to enter into the market established by the plaintiffs over the years. The first defendant for the first time tried to publish school notes under the trademark "Konar Tamil Urai" only with a view to enter into the market established by the plaintiffs over the years. If the first defendant is allowed to publish and sell "Konar Tamil Urai" for high school classes also, it will definitely affect the goodwill, reputation and turnover enjoyed by the plaintiffs which they have assiduously cultivated for the past more than four decades. Therefore, the plaintiffs are perfectly justified in resisting the attempts of the first defendant in passing off their goods as that of the plaintiffs and the defendants shall not be permitted to mislead or misguide the public from believing that the source of their products is also the source of the plaintiffs. Therefore, notwithstanding the fact that the defendants have obtained registration of the trademark "Konar Tamil Urai" generally in respect of the goods or notes intended for students, they have to be restrained from passing off their goods as that of the plaintiffs. The plaintiffs never questioned the right of the defendants to publish notes under the trademark "Konar Tamil Urai" for college classes. Therefore, I hold on Issue No. 10 that the first defendant is entitled to use "Konar" as a trademark in view of their registration obtained by them only in respect of books for college classes. Only in 1997, after the first defendant has published Konar Tamil Urai for high school classes also, the plaintiffs have come to know of that and soon after they have filed the present suit. In view of the findings and discussions made above, I hold on Issue No. 19 that the registration obtained by the first defendant in 1997 and use of the trademark "Konar Tamil Urai" is not valid so far as publication of notes for high school classes are concerned and is not binding upon the plaintiffs, who have got the right of prior user. Therefore, these two issues are also answered against the defendants. 65. Issue No. 16:- in C.S. No. 311 of 1997 Ayyam Perumal Konar started writing notes even prior to 1941 and we do not know whether it was published by himself or somebody else. Therefore, these two issues are also answered against the defendants. 65. Issue No. 16:- in C.S. No. 311 of 1997 Ayyam Perumal Konar started writing notes even prior to 1941 and we do not know whether it was published by himself or somebody else. Anyhow from 1941, Ayyam Perumal Konar started writing notes which were published by the first plaintiff through M/s. Palaniappa Brothers from 1941 and thereafter till his death, Ayyam Perumal Konar did not write notes for anybody other than the plaintiffs. Initially the trademark and style "Konar Tamil Urai" was conceived and adopted by Palaniappa Chettiar only from 1953. Even though Palaniappa Chettiar might have conceived the trading name and style Konar Tamil Urai originally because the notes were authored by Ayyam Perumal Konar, in course of time it became a trademark and was adopted as such and used by Palaniappa Chettiar even from 1953 and became a trading name and style and it cannot be stated that the user was descriptive of the goods or the name was adopted only to indicate the author. 66. Ayyam Perumal Konar never claimed to have discovered or conceived of the caption or trade name "Konar Tamil Urai". Ayyam Perumal Konar also has not even asked for copyright in the title and he never questioned the right of Palaniappa Chettiar to make use of the trade name and style "Konar Tamil Urai". So long as Ayyam Perumal Konar was alive, he has also approved the act of Palaniappa Chettiar in adopting the trading name "Konar Tamil Urai" as a distinctive mark to identify his publication of notes separately from others. Ayyam Perumal Konar also even according to D.Ws. 1 & 2 never had any idea of objecting to the use of Konar Tamil Urai after his death. In fact D.W.2, the son of Ayyam Perumal Konar also admits that Ayyam Perumal Konar has not bequeathed the title "Konar Tamil Urai" to anybody because he knew that "Konar Tamil Urai" is a trading name and style conceived and adopted by the first plaintiff and therefore he has nothing to say about the same. In fact D.W.2, the son of Ayyam Perumal Konar also admits that Ayyam Perumal Konar has not bequeathed the title "Konar Tamil Urai" to anybody because he knew that "Konar Tamil Urai" is a trading name and style conceived and adopted by the first plaintiff and therefore he has nothing to say about the same. So, the evidence has established that the trading name and style "Konar Tamil Urai" was conceived and adopted by Palaniappa Chettiar for distinctively marketing his product and this was done even during the lifetime of Ayyam Perumal Konar and by such a long user, they became entitled to the said trademark and during the lifetime of Ayyam Perumal Konar himself. This issue is therefore found in favour of the plaintiffs. 67. Issue No. 18 in C.S. No. 311 of 1997:- D.Ws. 1 & 2 themselves admitted during the course of their evidence that prior to 1997 they have not published any notes under the trade name "Konar Tamil Urai" so far as school students are concerned. D.W. 1 is the son of Srinivasa Konar, who has been associated with Konar publication ever since he became an adult and he himself has stated that they have been also adopting Konar Tamil Urai as their trademark and trading style, and both D.Ws. 1 & 2 have specifically admitted that prior to 1997 they never published any Konar Tamil Urai for school students. It is not as if that only after 1997 the first defendant has started publishing notes for school students. In fact they have been publishing Tamil notes for school students also even prior to 1997, but they have scrupulously avoided using the trademark "Konar Tamil Urai" and instead when they choose to publish notes for school students, they adopted the trade name "Kanna Notes". Even after the death of Ayyam Perumal Konar in 1969 and as late as 1975, the first defendant has published Tamil notes for high school students as seen from Ex. A-27 series only under the trade name "Kanna Notes". It is also significant to note that D.Ws. 1 & 2 have stated that they have applied for registration of their trademark "Konar Tamil Urai" as early as 1982, but till they obtained registration in 1997, they have not chosen to use the trademark "Konar Tamil Urai" for publishing any notes for school students. It is also significant to note that D.Ws. 1 & 2 have stated that they have applied for registration of their trademark "Konar Tamil Urai" as early as 1982, but till they obtained registration in 1997, they have not chosen to use the trademark "Konar Tamil Urai" for publishing any notes for school students. So, there can be no controversy in answering this issue that the first defendant has not published "Konar Tamil Urai" for school students prior to May, 1997 and they have been publishing only "Konar Tamil Urai" for college classes B.A. and B.Sc. after 1956. This issue is accordingly answered. 68. Issue No. 17 in C.S.No. 311 of 1997 The plaintiffs filed the suit C.S. No. 311 of 1997 on 28.5.1997 and have obtained an injunction restraining the first defendant from publishing notes under the trademark "Konar Tamil Urai". It has been proved and it is also now conceded by the plaintiffs that they never objected and they do not object also for the first defendant publishing Tamil notes for college classes under the trading style "Konar Tamil Urai" and the injunction obtained by them also can be only effective against the act of the first defendant in publishing Konar Tamil Urai for school students. It is the case of the plaintiffs that even after the injunction order, the first defendant has been publishing and selling "Konar Tamil Urai" for school students and therefore they are liable to render accounts in respect of their turnover for high school notes. Since the plaintiffs' right to use the trademark "Konar Tamil Urai" for school students has been upheld, the defendants are liable to render accounts of their sales of disputed "Konar Tamil Urai" for school students published by them from 1997, after the injunction. Therefore, I hold on this issue that the first defendant is to render accounts for the sale of "Konar Tamil Urai" published by them from 1997 for the school students. 69. Issue No. 1 in C.S. No. 311 of 1997 :- Even though the plaintiffs have also prayed for injunction on the cause of action of infringement of trademark rights, it is now conceded by the plaintiffs that they are not entitled to any reliefs on the cause of action of infringement of trademark rights under the Trade and Merchandise Marks Act, 1958 since their trademark "Konar Tamil Urai" has not been registered. P.W. 5 Palaniappa Chettiar also stated that they have also made an application for registration only in 1997. Anyhow merely because an application has been made, the plaintiffs are not entitled to ask for any reliefs alleging infringement of trademark rights in the absence of registration of trademark in their favour. Therefore, issue No. 1 is answered against the plaintiffs. 70. Issue No. 15 in C.S. No. 311 of 1997:- The plaintiffs have proved that Palaniappa Chettiar has invented and adopted the trademark "Konar Tamil Urai" in respect of publication for school students and that he has been using the same right from 1953 continuously all these years and therefore as a prior user, he is entitled to injunction under the cause of action of a passing off against the defendants and injunction is confined only to notes meant for school students. No injunction can be granted and it is also now conceded by the plaintiffs that they have no objection for the defendants publishing "Konar Tamil Urai" so far as college classes are concerned. Therefore, the Suit C.S. No. 311 of 1997 is decreed and a permanent injunction is granted against the defendants from using the trademark "Konar Tamil Urai" in respect of Tamil notes published for school students. The defendants are also liable to render accounts of their sales or turnover of Konar Tamil Urai for school students, published and sold by them from 1997. 71. Issue No. 1 in C.S. Nos. 284 to 287 of 1997:- The plaintiffs do not question the right of the first defendant to publish college notes with the trademark "Konar Tamil Urai" and it is also proved that the first defendant Konar Publications has been doing so ever since 1956. The death of Ayyam Perumal Konar in 1969 has in no way altered the situation and the trademark "Konar Tamil Urai" was being used by the plaintiffs in respect of their Tamil notes published for the benefit of school students and similarly the first defendant has been using the very same trademark in respect of the notes for college classes. So, the demise of Ayyam Perumal Konar has not brought any change and has no effect on the use of the trademark "Konar Tamil Urai" by the plaintiffs for the school students and by the defendants for college classes. So, the demise of Ayyam Perumal Konar has not brought any change and has no effect on the use of the trademark "Konar Tamil Urai" by the plaintiffs for the school students and by the defendants for college classes. D.W.2 also admitted that they have been adopting "Konar Tamil Urai" as a trademark after they started publishing college notes after 1956. So, Palaniappa Chettiar and his firm are entitled to make use of the trademark "Konar Tamil Urai" after the death of Ayyam Perumal Konar in 1969 in respect of their notes for school students. The plaintiff in these suits is M/s. Konar Publications, who have got right to make use of "Konar Tamil Urai" so far as college classes are concerned and the right of publication of Tamil notes under the trademark "Konar Tamil Urai" for school students exclusively vest with Palaniappa Chettiar and his firms, who are the defendants in these suits. This issue is accordingly answered. 72. Issue No. 2 in C.S. Nos. 284 to 287 of 1997:- While discussing other issues in the main suit, I have already held that the expression "Konar Tamil Urai" by Palaniappa Chettiar and his firm will never amount to false trade description or false warranty or unfair trade practice. The evidence available has proved that trading style "Konar Tamil Urai" was conceived and adopted by Palaniappa Chettiar and Palaniappa Brothers and other sister concerns have been through out using the name as trademark and it has also in course of time has become a distinctive trademark to denote the publication of Palaniappa Chettiar and his firms of the notes for school students. Palaniappa Chettiar or other firms never made any attempt to show that the author is Ayyam Perumal Konar or it has got anything to do with Ayyam Perumal Konar after his demise in 1969. Since they have adopted "Konar Tamil Urai" as their trademark and trading style, they continued to use it after the demise of Ayyam Perumal Konar and the death of Ayyam Perumal Konar makes no difference and Palaniappa Chettiar and his firms never made any attempt that the notes are being authored by Ayyam Perumal Konar after his demise. Since they have adopted "Konar Tamil Urai" as their trademark and trading style, they continued to use it after the demise of Ayyam Perumal Konar and the death of Ayyam Perumal Konar makes no difference and Palaniappa Chettiar and his firms never made any attempt that the notes are being authored by Ayyam Perumal Konar after his demise. Therefore, I hold on this issue that "Konar Tamil Urai" is a trademark adopted by Palaniappa Chettiar and his firms right from 1953 and it has acquired a distinctive mark denoting the goods of Palaniappa Chettiar and it is being used by them only as a trading mark and style and it can never be stated that it is a false trade description or false warranty or an unfair trade practice. In fact D.W. 2 himself admitted that while they publish notes for college students under the trademark "Konar Tamil Urai" Palaniappa Chettiar published Konar Tamil Urai for school students and it is also being used by them as such. Konar Publications continued to publish college notes under the trademark "Konar Tamil Urai" even after the demise of Ayyam Perumal Konar in 1969 and therefore it does not lie in the mouth of the defendants to say that continuation of trademark "Konar Tamil Urai" by the plaintiffs is a false trade description or unfair trade practice. 73. Issue No. 3 in C.S. Nos. 284 to 287 of 1997:- In view of my findings on other issues, I hold on this issue also that Konar Publications, the plaintiff in these suits have never published school note with the trademark "Konar Tamil Urai" at any time prior to May, 1997. On the other hand Konar Publications have been publishing Tamil notes for school students also, but under the trade name "Kanna Notes". Therefore, this issue is answered against the plaintiff Konar Publications. 74. Issue No. 4 in C.S. Nos. 284 to 287 of 1997:- The plaintiff, namely Konar Publications can never claim any exclusive right to use the word "Konar Tamil Urai" just because Ayyam Perumal Konar was a Konar or the partners of the plaintiff firm are members of Konar family. Therefore, this issue is answered against the plaintiff Konar Publications. 74. Issue No. 4 in C.S. Nos. 284 to 287 of 1997:- The plaintiff, namely Konar Publications can never claim any exclusive right to use the word "Konar Tamil Urai" just because Ayyam Perumal Konar was a Konar or the partners of the plaintiff firm are members of Konar family. There is no evidence to show that it was Ayyam Perumal Konar who conceived or adopted the trademark "Konar Tamil Urai" and there is absolutely nothing to indicate that Ayyam Perumal Konar intended to bequeath the right of using "Konar" as trade mark by his son by his brother-in-law Srinivasa Konar. So, the plaintiff Konar Publications cannot claim any right to make use of the trademark "Konar Tamil Urai" just because the partners happened to be the members of the family of Ayyam Perumal Konar or that they belong to Konar community. Dr. Rangarajan, D.W. 2 is no doubt the son of Ayyam Perumal Konar, but he also cannot claim use of the trademark "Konar Tamil Urai" because he happens to be the son of Ayyam Perumal Konar. Konar Publications are entitled to make use of the trademark "Konar Tamil Urai" because of their long user after 1956, but their rights are confined only to publication of notes for college classes. Now that they have obtained registration in 1997, they can also make use of the trademark as a matter of right, but it can only relate to college classes. This issue is therefore answered against the plaintiff, Konar Publications in these suits. 75. Issue No. 5 in C.S. Nos. 284 to 287 of 1997:- D.Ws. 1 & 2 have stated that somewhere in 1982 they have applied for registration of the trademark "Konar Tamil Urai". Ex. A-26 is the application made by Konar Publications for using the trademark "Konar Tamil Urai". D.W.1 is the son of Srinivasa Konar and Srinivasa Konar is the first member in the family to enter into publication business. Srinivasa Konar is none-else than the brother-in-law of Ayyam Perumal Konar. Srinivasa Konar has never objected to use of the trademark by Palaniappa Chettiar during the lifetime of Ayyam Perumal Konar or thereafter and Srinivasa Konar died somewhere in 1989 and the relationship between Srinivasa Konar and Palaniappa Chettiar has been throughout cordial and smooth. Srinivasa Konar is none-else than the brother-in-law of Ayyam Perumal Konar. Srinivasa Konar has never objected to use of the trademark by Palaniappa Chettiar during the lifetime of Ayyam Perumal Konar or thereafter and Srinivasa Konar died somewhere in 1989 and the relationship between Srinivasa Konar and Palaniappa Chettiar has been throughout cordial and smooth. Srinivasa Konar even acted as the agent of M/s. Palaniappa Brothers for selling Konar Tamil Urai for school students in Madurai and the son of Ayyam Perumal Konar was agent for selling the same in Trichirapalli district. 76. D.Ws. 1 & 2 have also admitted that for the first time in 1941 Ayyam Perumal Konar's notes were published by the second plaintiff Palaniappa Brothers and from 1956 Srinivasa Konar started publishing Tamil notes for college students under the banner of "Vaasan Padhipagam" and later under Konar Publications. From 1941 to 1948, the notes prepared by Ayyam Perumal Konar were being sold under trade name "Tamil Examiner". From 1948, the plaintiffs started publishing notes using the caption "Konar Notes". Some time after 1948 and prior to 1953 Palaniappa Chettiar and Palaniappa Brothers started publishing school notes adopting the trademark "Konar Tamil Urai". Originally M/s. Palaniappa Brothers was a proprietary concern of Palaniappa Chettiar and in 1943 it became a partnership firm with Palaniappa Chettiar and his brother and registration of Palaniappa Brothers was first made in 1945 at Madras. Even during 1960's M/s. Palaniappa Brothers had its branches in Madras, Salem and Coimbatore. Karthikeyan & Co. was started in 1991. Same Partners in M/s. Palaniappa Brothers were partners in Karthikeyan & Co. Madras Palaniappa Brothers and Madras Karthikeyan & Co. are also sister concerns started in 1991 and all these firms are being managed by Palaniappa Chettiar and they were using the trademark "Konar Tamil Urai". 77. While both Palaniappa Cheittar through his publications and Konar Publications have been publishing notes under the trademark "Konar Tamil Urai" for school and college classes respectively at least from 1956, Konar Publications have made an application for registration of the trademark "Konar Tamil Urai" in 1982. It is also admitted by D.W. 1 that in the application Ex. A-26 Konar Publications have claimed only user of the trademark "Konar Tamil Urai" from 1971. It is also admitted by D.W. 1 that in the application Ex. A-26 Konar Publications have claimed only user of the trademark "Konar Tamil Urai" from 1971. It is further admitted by D.W. 1 that even when they made the application in 1982 they were aware of the fact that Palaniappa Chettiar and his firms have been using the trademark "Konar Tamil Urai" long prior to and even after the demise of Ayyam Perumal Konar, but they never mentioned in their application that Palaniappa Chettiar has also been using the same trademark. Konar Publications never divulged their application for registration of the trademark to Palaniappa Chettiar and his firms. No advertisement was made in any newspapers claiming exclusive user of the trademark "Konar Tamil Urai" on the part of Konar Publications even after they have chosen to make an application for registration in 1982. 78. Significantly even though Konar Publications have made the application Ex. A-26 for registration and even though they have made a claim that they have been using the trademark "Konar Tamil Urai" from 1971, there was not even an attempt on the part of Konar Publications to publish or sell "Konar Tamil Urai" for high school students till 1997, when registration was actually granted to them. Registration will usually date back to the date of the application, but in this case Konar Publications have scrupulously avoided in using the trademark "Konar Tamil Urai" for publishing Tamil notes for school students till 1997. Suppressing the fact of user of the same trademark by Palaniappa Chettiar and his firms and without intimating to Palaniappa Chettiar that they have made an application for registration of the trademark, Konar Publications have managed to obtain registration of the trademark "Konar Tamil Urai" and therefore, definitely there is an element of fraud. But, the registration obtained by Konar Publications in respect of Konar Tamil Urai in this account alone cannot be held to be invalid or vitiated by fraud because they have been making use of the trademark "Konar Tamil Urai" for publication of college notes right from 1956. Therefore, even though there is an element of fraud and misrepresentation when Konar Publications made Ex. A26 application for registration of their trademark, the registration is not vitiated so far as publication of college notes by Konar Publications is concerned. Therefore, even though there is an element of fraud and misrepresentation when Konar Publications made Ex. A26 application for registration of their trademark, the registration is not vitiated so far as publication of college notes by Konar Publications is concerned. Palaniappa Chettiar and his firms also have no objection for Konar Publications using the trademark "Konar Tamil Urai" for publication of college notes therefore, this issue is accordingly answered. 78A. Issue No. 6 in C.S. Nos. 284 to 287 of 1997:- I have already held that Palaniappa Chettiar and his firms Palaniappa Brothers, Karthikeyan & Co., Madras Palaniappa Brothers and Madras Karthiekyan & Co., are entitled to print, publish and sell notes with the trademark "Konar Tamil Urai" because of long user and therefore, they are entitled to make use of the same trademark notwithstanding the death of Ayyam Perumal Konar in 1969. Even after Konar Publications have obtained registration of the trademark "Konar Tamil Urai, the plaintiffs by prior and long user are entitled to use the trademark "Konar Tamil Urai" so far as school classes are concerned. This issue is also accordingly answered in favour of Palaniappa Chettiar and his firms. 79. Issue No. 7 in C.S. Nos. 284 to 287 of 1997 :- I have already discussed while answering other issues in the main suit with regard to the effect of registration of trademark by Konar Publications. The registration of the trademark is no defence or no answer to the plaintiffs using the trademark because of prior and long user and therefore, this issue is answered against the plaintiff in these suits. 80. Issue No. 8 in C.S. Nos. 284 to 287 of 1997 :- Palaniappa Chettiar and his firms do not question the validity of the registration or use of the trademark by Konar Publications so long as they confine their trade in respect of college classes. The objection of Palaniappa Chettiar and his firms for making use of the trademark "Konar Tamil Urai" is based on cause of action of passing off and not on account of any infringement of registered trademark. This issue is answered accordingly. 81. Issue No. 9 in C.S. Nos. The objection of Palaniappa Chettiar and his firms for making use of the trademark "Konar Tamil Urai" is based on cause of action of passing off and not on account of any infringement of registered trademark. This issue is answered accordingly. 81. Issue No. 9 in C.S. Nos. 284 to 287 of 1997 :- Palaniappa Chettiar and his four firms are entitled to claim proprietary rights over the trademark "Konar Tamil Urai" because they have been using it as a trademark from 1953 continuously for more than four decades, and this right is confined to publication of notes for school classes only. This issue is therefore answered in favour of Palaniappa Chettiar and his firms. 82. Issue Nos. 10, 11 & 13 :- It was Palaniappa Chettiar, who conceived and adopted the trademark "Konar Tamil Urai" and started using it from 1953 during the lifetime and after the death of Ayyam Perumal Konar and it was he who was the proprietor of Palaniappa Brothers which subsequently became a partnership concern and other three concerns are all sister concerns managed by Palaniappa Chettiar and therefore Palaniappa Chettiar and his four firms have acquired right to make use of the trademark "Konar Tamil Urai" and the question of assignment of rights do not arise because Palaniappa Chettiar has been using the trademark only through his firms. The notes were first published under the banner Palaniappa Brothers in 1941, when it was a proprietary concern of Palaniappa Chettiar and then it became a partnership firm in 1943 when Palaniappa Chettiar took his brother also in the business and this was registered somewhere in 1945 at Madras and Palaniappa Brothers, Trichirapalli was registered in 1975 and other two concerns were started and registered in 1991. All the four firms are brain child of Palaniappa Chettiar and it is Palaniappa Chettiar who is managing the affairs of the four concerns. M/s. Palaniappa Brothers originally was registered even in 1945. It is wrong to state that Palaniappa Brothers was only registered in 1975. These issues are answered against Konar Publications. 83. Issue No. 12 in C.S. Nos. 284 to 287 of 1997 :- Palaniappa Chettiar has never claimed in the plaint that he permitted Vidwan Ayyam Perumal Konar and his family to publish Tamil notes for college classes alone under the trademark "Konar Tamil Urai". These issues are answered against Konar Publications. 83. Issue No. 12 in C.S. Nos. 284 to 287 of 1997 :- Palaniappa Chettiar has never claimed in the plaint that he permitted Vidwan Ayyam Perumal Konar and his family to publish Tamil notes for college classes alone under the trademark "Konar Tamil Urai". On the other it is stated by Palaniappa Chettiar that in 1956 Srinivasa Konar, the brother-in-law of Ayyam Perumal Konar was only encouraged by him to enter the business of publication and it was with his blessings and patronage, Srinivasa Konar started Konar Publications and he also used the trademark "Konar Tamil Urai" for publishing notes for college classes. Palaniappa Chettiar never claimed that he assigned the trademark rights in favour of Srinivasa Konar or Konar Publications. But, at the same time Palaniappa Chettiar never objected to Srinivasa Konar or Konar Publications also using the trademark "Konar Tamil Urai", but they confined their activities only by publishing notes under the said banner for college classes only. It must have been mutually agreed between Palaniappa Chettiar and Konar Publications that the former would be using the trademark "Konar Tamil Urai" for publication of notes for school students and the latter will do the same thing for college classes. There is nothing illegal in more than one person claiming ownership for the same trademark. In fact The Trade and Merchandise Marks Act, 1958 itself permits registration of the same trademark in respect of more than one owner, but not more than three at a time. There is nothing illegal in Palaniappa Chettiar and Konar Publications making use of trade mark Konar Tamil Urai, but engaging themselves in different spheres and separately doing their business for school and college classes respectively. Therefore, this issue is accordingly answered. 84. Issue No. 14 in C.S. Nos. 284 to 287 of 1997 :- In view of my findings on other issues and in view of my findings in the suit filed by Palaniappa Chettiar and Palaniappa Brothers, I hold that Palaniappa Chettiar and his firms are all entitled to make use of the trademark "Konar Tamil Urai" for publication of Tamil notes in respect of school classes and they are also entitled to an injunction against Konar Publications so far as notes in respect of school classes are concerned. Konar Publications are free to use and publish the trademark "Konar Tamil Urai" so far as college classes are concerned. In view of my findings, Konar Publications in all the suits are not entitled for any injunction against Palaniappa Chettiar and his firms. 85. In the result, C.S. No. 311 of 1997 is decreed and a permanent injunction is granted in favour of the plaintiffs restraining the defendants from using the trademark" "Konar Tamil Urai" ". It is also alleged that on the top of the containers the defendants were using the words" manufactured and processed at West Germany plant of John Waldherr O.H.G. Revlon ". These containers were allegedly filed in Court, however, they are not available on record. Defendant No.1 is stated to have brought into market "Revlon" brand goods, namely, "Revlon Charlie" perfumes, "Charlie" perfumes, spray in bottles and other products like "Revlon Intimate" talc, Revlon video tape head cleaner, etc. These acts of the defendants are stated to be the infringement of the plaintiffs registered trade marks being Nos.188919, 229004 and 369145. 5. Along with the suit, the plaintiffs had also filed an application for the grant of ad- interim injunction restraining the defendants from selling the perfumes, cosmetics and toiletries under the trade marks "Revlon"," Intimate "and "Charlie" or any other mark which was in infringement of the plaintiffs registered trade marks being Nos.188919, 229004 and 369145. It is this application of the plaintiffs which I intend to dispose of by this order. 6. In paragraphs 14 to 18 of the plaint it was stated by the plaintiffs that the" defendants 1 to 3 have now started infringing the plaintiffs trade marks with impunity"and" recently the defendant No.1 had started advertisement on All India Radio and in The Times of India, New Delhi of their products". It was also stated in the said paragraphs that" the defendants 2 and 3 recently started manufacturing perfumes, cosmetics, etc. under the trade mark "Charlie" which belongs to the plaintiffs and thereby infringing the plaintiffs trade mark". When the application for injuncti onar Tamil Urai" for school classes and they are also entitled for a decree calling upon the first defendant to render accounts in respect of publication of Konar Tamil Urai for school students from 1997. C.S. Nos. under the trade mark "Charlie" which belongs to the plaintiffs and thereby infringing the plaintiffs trade mark". When the application for injuncti onar Tamil Urai" for school classes and they are also entitled for a decree calling upon the first defendant to render accounts in respect of publication of Konar Tamil Urai for school students from 1997. C.S. Nos. 284 to 287 of 1997 filed by Konar Publications are all dismissed, however, parties are directed each to bear their own costs.