J.K.Biswas, J. - (1.) This is an interlocutory application by the plaintiff in its passing off action. The prayers in this application are as follows: "a) Interim order of injunction restraining the respondents, their agents, assigns employees, servants, dealers, retailers and all persons acting on their behalf or under them from passing off their goods and/or service and/or business by marketing, selling, advertising, or otherwise dealing in goods/services under the trade mark/name "CAPITAL ONE", or otherwise using the expression CAPITAL ONE, whether in isolation or in conjunction with any other word/expression, in respect of any goods or services or as corporate name or domain name or in any other manner whatsoever; b) Ad interim order in terms of prayer (a) above; c) Receiver; d) costs; e) Any other order or orders as this Hon'ble Court deems fit and proper in the facts and circumstances of the present case be passed in favour of the petitioner and against the respondents."
(2.) The plaintiff is a corporation organized and existing under the law of the State of Delaware in the United States of America. It was promoted in 1994 with the expression "CAPITAL ONE" as the key and principal part of its incorporate name. In November 1998 through its subsidiary Capital One Services Inc. it set up its liaison office at Mumbai in India. Defendant 1 was incorporated in 1999. It was incorporated with the expression "CAPITAL ONE" as the key and principal part of its corporate name. In December 2002 the plaintiff received permission from the Reserve Bank of India for moving its office from Mumbai to Bangalore. It is now running its activities in India from 139/1 Hosur Main Road, Aditya Complex, Koramangala, Bangalore-560095. It applied for registration of the trade mark "CAPITAL ONE" in classes 9 and 16; the application filed at the Calcutta office of the Trade Mark Registry is pending. It caused a notice dated January 17th, 2003 issued to the defendants through its advocate. The defendants were asked to discontinue use of the mark/name "CAPITAL ONE" and to execute the undertaking, draft whereof was enclosed. The defendants, however, by their reply dated January 31st 2003 declined to comply with such requisition, and they alleged that the plaintiff was indulging in acts of deceit. Hence the suit is filed by the plaintiff.
(3.) Mr. Sarkar appears for the plaintiff. He submits that though all international registrations of the plaintiff relate to service marks, this passing off action can be maintained by it, since in India its applications are regarding goods. The single expression "CAPITAL ONE" can be used interchangeably as a corporate name and trade mark of service mark. The definition of the word ?mark? in section 2(1)(j) of the Trade and Merchandise Marks Act, 1958 includes name. So corporate name can be registered, and passing off action can be brought to stop use of same or deceptively similar corporate name. In Aktiebolaget Volvo v. Volvo Steel Ltd., 1998 PTC (18) 47 (Bom) (DB) the legal position was discussed. Under the law of passing off, imitation and use of a corporate name can be prevented, as was held in Simatul Chemical Industries Pvt. Ltd. Nandeshari v. Cibatul Ltd., a Company, Atul, AIR 1978 Guj 216(DB). A concern not dealing in goods, but providing service only, is also entitled to protect its corporate name by a passing off action. The view on the issue expressed in Passing Off Law and Practice, by John Drysdale & Michael Silverleaf (2nd ed., p. 27, para 3.04) is authoritative for this purpose. The view finds support also from the decision in Legal and General Assurance Society Ltd. v. Daniel & Ors., (1968)9 RPC 253.;