JUDGMENT (Prayers: This Original Application is filed under Order XIV Rule 8 of Original Side Rules and Order 39 Rule 1 and 2 of CPC praying to grant ad interim injunction restraining the Respondents/Defendants its men agents and servants from in any manner passing off its business as that of the Applicant's by using the name ''Chennai Race Coaching Private Limited'' ''Chennai Race Coaching Private Limited'' & logo ''RACE'' with or without a similar logo, or by any other identical name or deceptively similar name as that of the Applicant/Plaintiff with or without any deceptively similar or similar logo as that of the Applicant/Plaintiff in its registered mark bearing No.3604877 or any of the other names and logs for which registration has been applied for by Applicant/Plaintiff pending disposal of the suit. This Original Application is filed under Order XIV Rule 8 of Original Side Rules and Order 39 Rule 1 and 2 of CPC praying to grant ad interim injunction restraining the Respondents/Defendants, their men, agents, or persons acting on their behalf, from in any manner infringing the Applicant's/Plaintiff's right in trademark bearing No.3604877 in respect of its business under the name ''Chennai Race Coaching Private Limited'' & logo ''RACE'' by running a competitive exam coaching institute with identical name or in any manner similar name and logo to that of the Applicant/Plaintiff pending disposal of the suit.) COMMON ORDER: 1. These two applications were filed to restrain alleged infringement of trademark and passing off by use of the name Chennai Race Coaching Private Limited and the logo Chennai Race Coaching Institute Private Limited. 2. The Applicant is an assignee of a registered device mark, which was registered under No.3604877 in Class 41 in favour of the Chennai Race Coaching Institute Private Limited. Class 41 pertains to education, providing of training, entertainment, sporting and cultural activities. The Plaintiff states that the trademark was assigned to it by the original registered proprietor under a Deed of Assignment dated 31.12.2020 (the Deed of Assignment) and Addendum Agreement dated 12.11.2021(which, however has not been filed by the Applicant). In order to transfer the registration of the trademark in its name, the Plaintiff states that it submitted an application on 25.11.2021, which is pending as on date. 3. The Plaintiff states that its predecessor-in-interest started a coaching institute under the name and style of Chennai Race Coaching Institute Private Limited. In order to transfer the registration of the trademark in its name, the Plaintiff states that it submitted an application on 25.11.2021, which is pending as on date. 3. The Plaintiff states that its predecessor-in-interest started a coaching institute under the name and style of Chennai Race Coaching Institute Private Limited. The said Institute provides coaching services for competitive examinations such as TNPSC, SSC, banks, etc. In relation to the said coaching centre, the trademark has been used continuously from 2012. The Plaintiff refers to several awards which were bestowed on it for excellence in coaching. As a result of prior adoption followed by long, extensive and continuous use, it is stated that the trademark has attained distinctiveness and has also acquired substantial good will. In September 2021, the Plaintiff states that it discovered the use of the mark Trichy Race Academy by the Defendants. The Plaintiff further states that the Defendants are operating from the same premises from which the Plaintiff operated earlier. Therefore, it is stated that there is considerable likelihood of confusion among the public. According to the Plaintiff, its training centre is colloquially referred to as Race and, therefore, the adoption of the mark Trichy Race Academy is dishonest and aimed at riding piggy back on the reputation and good will of the Plaintiff. 4. The Defendants refute the contentions of the Plaintiff. The Defendants state that the rights of the Plaintiff are confined to the rights assigned under the Deed of Assignment. By drawing reference to the annexure thereto, which sets out the assigned items, the Defendants state that only the device mark, Chennai Race Coaching Institute Private Limited, was assigned and not the word mark. The Defendants also state that the service tax registration produced by the Plaintiff is in a different name. The Defendants state that the Race Group of Institutions have functioned from the year 2014, which is prior to the establishment of the Chennai Race Coaching Institute Private Limited in 2016. Therefore, it is stated that the Defendants are the prior users of the mark 'Race' and, therefore, the Defendants should not be restrained from using the said mark. By virtue of the use of the mark 'Race' from the year 2014, it is stated that the balance of convenience is not in favour of granting interim relief to the Plaintiff. 5. By virtue of the use of the mark 'Race' from the year 2014, it is stated that the balance of convenience is not in favour of granting interim relief to the Plaintiff. 5. The Plaintiff submits, in rejoinder, that there is no continuity between the Race Group of Institutions and the Defendants. By referring to the documents submitted by the Defendants, the Plaintiff states that these documents relate to the period ended on 30.11.2017. To put it differently, the Plaintiff states that the Defendants stopped using the mark 'Race' in November 2017 and resumed such use recently so as to unfairly capitalize on the reputation and good will of the Plaintiff. 6. Upon considering the contentions of the Plaintiff and the Defendants, at the outset, it is necessary to examine whether the Plaintiff is entitled to sue for infringement at this juncture. Section 2(v) of the Trade Marks Act defines a registered proprietor. The said definition is as under: ''Registered proprietor'', in relation to a trade mark, means the person for the time being entered in the register as proprietor of the trade mark.'' Under Section 28(1) of the Trade Marks Act, the registered proprietor of the trade mark is entitled to obtain relief in respect of infringement of the trade mark. The admitted position, which is evident from paragraph 4 of the plaint, is that the Plaintiff applied for change in the name of the owner on 25.11.2021, and the said application is pending as on date. Therefore, the Plaintiff is not the registered proprietor of the trademark in question as on date. Since the Plaintiff is not a registered proprietor, the Plaintiff is not entitled to sue for infringement or seek interim relief in relation to infringement at this juncture. It should be noted, however, that once the assignment is registered by the trademarks registry, it would take effect from 25.11.2021(the date of the application). Since the suit was instituted on 25.01.2022, the relief in respect of alleged infringement would become maintainable in that event. Nonetheless, as indicated above, at this juncture, the Applicant/Plaintiff is not entitled to prosecute the application for interim injunction for alleged infringement. Therefore, the said application is liable to be rejected. As regards the application for interim injunction for passing off, Section 27(2) of the Trade Marks Act saves the common law remedy of passing off. Nonetheless, as indicated above, at this juncture, the Applicant/Plaintiff is not entitled to prosecute the application for interim injunction for alleged infringement. Therefore, the said application is liable to be rejected. As regards the application for interim injunction for passing off, Section 27(2) of the Trade Marks Act saves the common law remedy of passing off. As such, the application for passing off should be considered on merit. 7. The Plaintiff asserts that the trademark Chennai Race Coaching Institute Private Limited was used by its predecessor-in-interest from the year 2014. In order to substantiate use from 2014, the Plaintiff relies upon the returns filed by Bharath Seeman, who is one of the assignors. On perusal thereof, it appears that R.A.C.E. was used as the acronym for the Rapid Academy of Competitive Exams. The Trade Mark Registration Certificate, which is on record, indicates that the application for registration was presented on 02.08.2017 and the registration certificate was issued on 29.01.2018. This registration certificate is in respect of the device mark Chennai Race Coaching Institute Private Limited with clock hands within the alphabet 'e' in 'Race' and the device of a degree holder's top hat above the alphabet 'R' in the word Race. As correctly pointed out by learned counsel for the Defendants, under the Assignment Agreement, four device marks were assigned to the Plaintiff. Out of the four, the only mark of relevance is the device mark Chennai Race Coaching Institute Private Limited, which was described above. Therefore, the question that arises for consideration is whether the use of the mark Trichy Race Academy by the Defendants, including on banners and advertisement, constitutes passing off. 8. In order to determine whether the Plaintiff has established a case for the grant of interim relief in respect of passing off, the question as to prior use should be examined prima facie. The Defendants produced the partnership deed dated 01.04.2014 in relation to the partnership firm Race Group of Institutions, which was constituted by its partners, R.Satishkumar and P.Sundaramoorthy. R.Satishkumar is the second Defendant in the suit. The Defendants also produced the certificate of registration of the firm, Race Group of Institutions. The said certificate is dated 10.07.2014. Besides the above, the Defendants produced documents indicating that the Race Group of Institutions was assessed to income tax for the financial year 2014 - 2015. R.Satishkumar is the second Defendant in the suit. The Defendants also produced the certificate of registration of the firm, Race Group of Institutions. The said certificate is dated 10.07.2014. Besides the above, the Defendants produced documents indicating that the Race Group of Institutions was assessed to income tax for the financial year 2014 - 2015. A copy of the trademark application filed by the second Defendant for registration of the trade mark RACE IAS Academy is also on record. In the said application, it is stated that the mark RACE IAS Academy is in use since 01.04.2014. The Defendants have also produced a rental agreement dated 01.01.2017 in the name of RACE IAS Academy and the receipt issued by an advertisement agency in respect of payments made by RACE IAS Academy in the years 2017 to 2019. In addition, the partnership deed dated 30.07.2021 in respect of the constitution of the partnership firm, Trichy Race Academy, by G.Anbumurugan, P.Senthilkumar, R.Satishkumar, G.Malathy and M.Ravindran is on record. The registration certificate dated 21.06.2021 in the name of Trichy Race Academy is also on record. 9. From the above documents, it appears that the mark RACE has been used by Mr.R.Satishkumar as a Partner of the Race Group of Institutions from the year 2014. Similarly, the mark RACE IAS Academy has also been used from the year 2014. Even the mark Trichy Race Academy has been used at least from mid 2021. Thus, the Defendants have used the impugned mark and, in particular, the word Race, for a considerable period of time. Therefore, the balance of convenience is not in favour of granting an order of interim injunction. In fact, as regards the use of the device mark, Chennai Race Coaching Institute Private Limited, the said device mark appears to have been adopted in the year 2017. 10. For the reasons set out above, O.A.No.74 of 2022 is dismissed as not maintainable. O.A.No.73 of 2022 is disposed of by declining an interim injunction but by directing the Defendants to maintain accounts of revenues earned from the use of the impugned mark Trichy Race Academy and profits derived on such account. The said accounts shall be provided if called for by the Court in course of final disposal.