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 it.
Manoj Jain on the other hand placed reliance on the provisions of Clause 2 of section 27 which provides that:
Section 27(2):
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 such order.
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