In the case of J.P. Engineering Works, through its
proprietor (Appellant) vs. Manoj Jain and Anr.
(Respondent), the Allahabad High Court was faced with the question
of whether a suit in respect of infringement of a trademark would
be maintainable, when the said trademark has not been allotted by
the competent authority in favour of the Plaintiff.
J.P. Engineering works, in this case appealed against an order
passed by a lower court on an application filed by the Plaintiffs/
Respondents as 7-Ga for injunction restraining the J.P. Engineering
from using the trademark, which was being used by them.
The main contention of J.P. Engineering was that, as no
registered trade mark was allotted by the competent authority in
favour of the Plaintiff/Respondent, therefore in view of Section 27
of the Trademarks Act, 1999, a suit in itself was not maintainable.
Section 27 of the Trademarks Act provides:
27. No action for infringement of unregistered
trademark – (1)No person shall be entitled
to institute any proceeding to prevent, or to recover damages for,
the infringement of an unregistered trade mark.
They further contended that owing to the averments made in the
plaint as well as from the judgment, it was evident that although
the Respondents had made an application for registration, the same
had not been granted at the time of the present suit. Further, the
trademark had been in fact been registered in the name of the
Petitioner i.e. J.P. Engineering and as such, only they could use
Manoj Jain on the other hand placed reliance on the provisions
of Clause 2 of section 27 which provides that:
Nothing in this Act shall be deemed to affect rights of
action against any person for passing off goods or services as the
goods of another person or as services provided by another person,
or the remedies in respect thereof.
The appellate court observed that the said matter had been
listed for 7th April, 2011 for final hearing by the lower court
when such order restraining J.P. Engineering was passed on
21.02.2011, the Court thus opined that the objection regarding
maintainability of the suit in view of Section 27 of the Act could
be taken by J.P.Engineering on 07.04.2011. Further, the Court
stated that the Defendant/ Appellant could file an objection,
taking support of Section 27 of the Act, and in such event the
lower court is obliged to take into consideration the same and to
record a finding, accordingly.
In light of the above, the Court, directed that in the event of
J.P.Engineering raising objections regarding the maintainability of
the suit, then the lower court was to decide the same on the date
fixed or within the period of one month from the date of passing of
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