ORDER
M.S.A. Siddiqui, J.
1. The plaintiff has filed this suit seeking injunction against the defendant to prevent passing off and rendition of accounts. Along with the plaint, the plaintiff has also filed an application under Order 39 Rules 1 and 2 C.P.C. for interim injunction.
2. The plaintiff is a company incorporated under the laws of England and has its principal office at 30, Duke Street, St. Jame’s London, Swix6DL, United Kingdom. The plaintiff is a highly reputed company engaged in the business, inter alia of manufacturing and marketing a wide variety of goods including ready-made garments and other textile articles under the trademark ‘DUNHILL. The trade mark ‘DUNHILL’ has been used on a very extensive scale for very many years. The products of plaintiff are known all over the world and the trademark ‘DUNHILL’ belonging to plaintiff company has acquired global reputation. Plaintiff’s various products are available for sale at the duty free shops and stores of the Indian Armed Services. The plaintiff is the exclusive owner of the following registrations of the trade mark ‘DUNHILL’ in India as detailed in para No.16 of the plaint:-.
"Trademark Class Date Goods
DUNHILL 9 16.5.83 Optical apparatus and
instruments including
spectacles
(anti-dazzle), spectacle
cases and magnifying
glasses, electrical
apparatus and
instruments, all being
goods included in class 9.
DUNHILL 18 16.6.86 Articles included in
in long tail class 18 made wholly or
form principally of leather
and of imitation
leather.
DUNHILL 9 1.6.66 Scientific, nautical,
Longtail surveying and electrical
form apparatus and
instruments (including
wireless), photographic,
cinematographic, optical
weighing, measuring,
signalling, checking
(supervision)
life-saving and teaching
apparatus and
instruments, coin or
counter feed apparatus,
talking machines, cash
registers, calculating
machines, fire
extinguishing apparatus.
DUNHILL 14 1.4.85 Precious metals and
their alloys and in
goods in precious metals
or coated form therewith
(except cutlery, forks
and spoons)jewellery,
precious stones,
horological and other
chronometric
instruments.
DUNHILL 16 16.1.87 Paper and paper articles
cardboard and cardboard
articles; printed
matter newspapers and
periodicals, books;
bookbinding material,
photographs, stationary,
adhesive materials
(stationery) artists'
materials; paint
brushes; typewriters
and office requisites
(other than furniture),
instructional and
teaching material (other
than apparatus) playing
cards; printers type
and cliches
(stereotype); all being
goods included in class
do 26 Pending Lace and embroidery,
ribbons and press
buttons, hooks and
eyes, pins and needles;
artificial flowers.
DUNHILL 28 1.6.85 Games and playthings
in longtail gymnastic and
sporting form articles
(except clothing);
ornaments and decorations
for Christmas trees.
do 33 Pending Wines, spirits
and Liqueurs.
do 33 Pending -do-
DUNHILL 1 1.8.86 Chemical products used
in industry, science,
photography, agriculture,
horticulture, forestry,
and manures (natural &
artificial); fire
extinguishing
compositions, tempering
substances and Chemical
preparations for
soldering; Chemical
substances for
preserving foodstuffs;
tanning substances;
adhesive substances used
DUNHILL 2 16.4.86 Paints, varnishes,
lacquers, preservatives
against rust and against
deterioration of wood,
coloring matters,
dyestuffs, mordants
resins; metals in foil
and powder form for
painters and decorators.
DUNHILL 4 1.6.86 Industrial oils and
greases (other than
edible oils and fats and
essential oils);
lubricants, dustlaying
and absorbing
compositions; fuels
(including motor spirit)
and illuminants;
candles, tapers,
nightlights and wicks.
DUNHILL 5 16.8.86 Pharmaceutical,
veterinary and sanitary
substances; infrants
and invalids foods,
plasters material for
bandaging, materials for
stopping teeth, dental
wax, disinfectants;
preparations for killing
weeds and distroying
vermin.
DUNHILL 6 16.3.87 Unwrought and partly
wrought common metals
& their alloys anchors,
anvils, bells rolled and
cast building materials;
rails and other metallic
materials for chains
(for vehicles); cables
and wires
(non-electric);
locksmiths work,
metallic pipes and
tubes; safes and
cashboxes; steel bells;
horse-shoes; nails and
screws; other goods in
non-precious metal not
included in other
classes; ores.
DUNHILL 8 16.6.88 Hand tools and
instruments, cutlery;
forks and spoons; side
arms.
DUNHILL 10 16.8.86 Surgical, medical,
dental & veterinary
instruments and
apparatus (including
artificial limbs, eye
and teeth).
DUNHILL 12 Pending Parts included, in class
12 of bicycles,
motorcycles and motor
DUNHILL 3 Pending Bleaching preparations
and other substances for
laundry use; cleaning,
polishing scouring and
abrasive preparations;
soaps; perfumery;
essential oils,
cosmetics, shaving
creams, hair lotions and
dentifrices.
DUNHILL 16 Pending Paper and paper
articles, cardboard and
cardboard articles;
printed matter,
newspapers and
periodicals, books,
bookbinding material,
photographs, stationery;
adhesive materials
(stationery) artists
materials; paint
brushes; typewriters
and office requisites
(other than furniture)
instrumental and
teaching material (other
than apparatus) playing
cards; printer's type
and cliches(streotype).
3. According to the plaintiff, defendants are engaged in the business of manufacturing and marketing textile articles. Sometime, in 1990, plaintiff received a communication from the Trade Marks Registry, Mumbai that defendant No.2 had filed an opposition to the plaintiff’s application under No.395483 B in Class 24 for registration of the trade mark DUNHILL claiming proprietorship and user thereof since 31.5.1986. However, the said opposition proceedings were dismissed vide order dated 10.2.1995 passed by the Assistant Registrar of Trade Marks on the ground that defendant had failed to establish prior user of the trade mark DUNHILL. Thereafter, in 1992, defendant No.2 filed yet another opposition to the registration of the plaintiff’s application No.390002 B in Class 25 for the trade mark DUNHILL. On 28.3.1994, plaintiff filed an opposition before the Registrar Trade Marks, Mumbai to defendant No.2’s application No.450058 dated 24.2.1986 for registration of trade mark DUNHILL, which was published in the Trade Mark Journal dated 1.12.1993. Subsequent to the filing of the opposition proceedings, plaintiff learnt that defendants had discontinued the use of the mark DUNHILL. However, sometime prior to the institution of the present suit, it came to plaintiff’s notice that defendants have again started manufacturing and marketing their textile articles under the trade mark DUNHILL and they are passing off their products as those of plaintiff. The plaintiff, therefore, sought and prayed, inter alia, for permanent injunction to prevent passing off and rendition of accounts.
4. The defendants resisted the suit contending that plaintiff has not used the trade mark DUNHILL in India and so plaintiff has no right in respect of the said trade mark in this country. The plaintiff’s textile products are not available in India and plaintiff’s alleged reputation and goodwill of the trade mark DUNHILL stood extinguished due to the restriction on import of foreign goods in India. The defendants have been using the mark DUNHILL since 31.5.1986, and thus there is an inordinate delay of 11 years in bringing action which is fatal to the present suit. According to defendants, the user of the mark Dunhill by them does not amount to passing off.
5. It was made clear by the learned counsel for plaintiff that the grievance in the present suit relates only to action in passing off. The first question to be determined is whether plaintiff has made out a prima facie case for grant of ad interim injunction. It has to be borne in mind that prima facie case is not to be confused with prima facie title, which has to be established on evidence at the trial. To establish a prima facie case, the party seeking ad interim injunction should show that there is a credible dispute with respect to a right or title which it seeks to protect and it has a real prospect of succeeding in its claim at the trial. In the instant case, there is no serious dispute that plaintiff company is the proprietor of the trade name and trade mark DUNHILL and the said mark is attributable to the surname of Alfred Dunhill. It is also beyond the pale of controversy that defendants have been using the mark DUNHILL in respect of their textile articles since 31.5.1986. It is pleaded in the plaint that the purpose and intent of defendant company in adopting the word ‘DUNHILL’ as part of its corporate name is to trade upon and encash on the name, fame, reputation, image and goodwill acquired by the DUNHILL group of companies. It is also pleaded that defendant company is passing off its goods as those of plaintiff’s goods with intent to affect the goodwill and reputation of plaintiff.
6. It is well settled that an action for passing off is a common law remedy being an action in substance of deceit under the law of Tort. In Warnink Vs. Townend & Sons (HULL) Ltd. 1979 A.C. 731, Lord Diplock identified the following five characteristics which must be represented in order to create a valid cause of action for passing off:
i) a misrepresentation,
ii) made by a trader in the course of trade,
iii) to prospective customers of his or ultimate customers of goods or services supplied by him,
iv) which is calculated to injure the business or goodwill of another trader (in the sense that there is a reasonably foreseeable consequence) and
v) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in quia timet action) will probably do so.
7. In Reckitt & Cdman Products Ltd. Vs. Borden Inc & Ors. (1990 J R.P.C. 341), it was held that proof of fraudulent intention is not a necessary element in a cause of action for passing off. The relevance of fraud to this tort is simply that “if the intention to deceive is found, it will be readily inferred that deception will result.” In Century Traders Vs. Roshanlal Duggar & Co. , a Division Bench of this Court has held;
“In a passing off cases, however, the true basis of action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business….. this right is to be protected and the balance of convenience is in favour of the person who has established a prima facie right to property.”
8. In N.R. Dongre Vs. Whirlpool Corporation , it was held that the concept and principle on which passing off action is grounded is that no man has any right to represent his goods as the goods of another. A trader needs protection of his right of prior user of a trade mark/trade name as the benefit of the name, fame, reputation and image and goodwill earned by him cannot be taken advantage by another trader by passing off his goods as those of the prior user of the trademark or trade name.
9. In the instant case, there is no serious dispute with regard to the fact that plaintiff company had for many years carried on business in the United Kingdom and, through various subsidiary and associated companies through out the world in the sale of pipes tobacco products, smokers’ requisite and a wide range of luxury goods. It is also undisputed that all of the goods sold by plaintiff company are sold under the trade name and trade mark “DUNHILL”. In this view of the matter, it can safely be inferred that the trade mark/trade name DUNHILL meant and means plaintiff and its products to the purchasing public. The averments made in the plaint and the application filed under Order 39 Rule 1 and 2 C.P.C. clearly show that as a result of extensive advertising and promotional efforts, plaintiff’s products including textile articles, have acquired global reputation and goodwill and the trade mark and trade name DUNHILL is being associated with the goods of plaintiff. Plaintiff’s advertising has appeared in news and magazines having both national and international circulation. It is also alleged that the trade name and trademark DUNHILL has become distinctive of plaintiff’s goods as a result of substantially exclusive and continuous use in commence since 1893. Plaintiff’s constituted attorney Mr. Melanie Blakeman has filed his affidavit in support of the said application. I have no reason to disbelief the said affidavit. In this view of the matter, it can safely be held that plaintiff successfully promoted a conscious connection in public mind between ‘DUNHILL’, mark and its products. The word ‘DUNHILL’ when used as a trade mark or trade name is recognized by one and all in the relevant trade as denoting plaintiff’s goods. Thus, plaintiff has prima facie established valuable rights in the trade mark and trade name ‘DUNHILL’ as a result of exclusive and extensive use thereof over many years.
10. It is, undisputed that the defendant No.1 has been using the mark ‘DUNHILL’ as a part of its corporate name since 31.5.1986. The plaintiff has filed a copy of the order dated 10.2.1995, passed by the Assistant Registrar Trade Marks, Mumbai, which shows that on 21.9.1982, plaintiff company filed an application (No.395483) in Class 24 to register the trade mark ‘DUNHILL’ in respect of Tissues (piece-goods), bed and table covers and other textile articles. On 27.9.1990, defendant No.1 company filed a notice of opposition mainly on the ground that it has adopted the trade mark ‘DUNHILL’ in respect of textile articles since 31.5.1986 and by virtue of honest adoption and continuous use of the trade mark in respect of the textile articles, it has acquired proprietary rights of the said trade mark within the meaning of Section 18(1) of the Trade and Merchandise Marks Act. The defendant company had also filed an application (No.518177) for registration of the said trade mark in class 24. Rejecting the application No.518177 and the objections raised by defendants, the Assistant Registrar Trade Marks held that plaintiff company is the registered proprietor of the mark ‘DUNHILL’ in a number of classes in India since the year 1923. He further held that plaintiff company is the prior user and adopter of the mark ‘DUNHILL’ in India in respect of Tissues (piece-goods) bed and table covers, and textile articles included in class 24. He, therefore, allowed plaintiff’s application for registration of the trade mark ‘DUNHILL’ and rejected defendant’s application No.518177. Admittedly, defendants have not preferred any appeal against the said order of the Assistant Registrar, Trade Marks.
11. It is significant to mention that the aforesaid order clearly shows that plaintiff company is the registered proprietor of the mark ‘DUNHILL’ in a number of classes in India since 1923. This circumstance, to a great extent, probably the case of plaintiff that defendants were aware of plaintiff’s use of trade mark and trade name ‘DUNHILL’ much before incorporation of defendant company and defendants adopted the ‘DUNHILL’ mark and name with a consciousness of plaintiff’s mark and of the aura surrounding it and further, defendants were well aware of the benefits which would accrue to them from its use. As noticed earlier, plaintiff company is in the field of trade and commerce for more than 100 years and it has acquired global reputation, image and goodwill. Plaintiff’s products are generally very high in price and cater to those who are affluent or sophisticated. Plaintiff’s products in general convey the impression of high quality. Thus, the image conveyed by plaintiff’s goods is one of sophistication and high quality. By using the name of DUNHILL in respect of their goods, the image sought to be conveyed by defendants in the marketing of their goods is precisely the same. It follows that an average customer would find an association or relationship between the textile articles purveyed by plaintiff company on the one hand and the textile articles with the trade name DUNHILL as marketed by defendants. The reason being that goods are related if they are used in conjunction with one another or are associated together in some way in the minds of the consuming public.
12. In the suit of instant nature, the real test is whether defendants have any right to represent their business as the business of plaintiff. It ultimately leads to the question as to why defendants were using the trade name DUNHILL to their products. The defendants have not offered any explanation whatsoever as to why the mark ‘DUNHILL’ was being used by them. The name ‘DUNHILL’ is neither parental name of defendants nor in any way connected with them. As noticed earlier, the mark ‘DUNHILL’ is attributable to the surname of Alfred ‘DUNHILL’. All of the goods marketed by plaintiff company are sold under the trade mark and trade name ‘DUNHILL’. The trade mark and trade name DUNHILL has become distinctive of the plaintiff’s goods as a result of substantially exclusive and continuous use in commerce since 1893. Thus, in my opinion, the user of the trade name ‘DUNHILL’ by defendants is indicative of their intent. It follows that defendants desire to market their goods under the name or mark ‘DUNHILL’ with a view to trade upon and encash on the name, fame, reputation, image and goodwill acquired by the plaintiff company.
13. Learned counsel for defendants contended that the mark ‘DUNHILL’ not having been associated in the public mind of this country with textile articles, these goods being of a totally different character from those of the plaintiff’s goods, defendants’ user of the said mark or name in respect of textile articles cannot constitute any passing off of their goods as those of plaintiff. In my opinion, the said submission of the learned counsel does not hold much water. It is well settled that a passing off action would lie even if the plaintiff is not manufacturing or producing in this country any goods similar to that of the defendants. (N.R. Dongre Vs. Whirlpool Corporation (supra); Apple Computer Inc. Vs. Apple Leasing and Industries 1992(1) Arbitration L.R. 93). A passing off action would lie where a misrepresentation is likely to be caused or a wrong impression is created as if the product was of some one else. In Ellora Industries Vs. Banarsi Dass , it was held that “confusing customers as to source, is an invasion of another’s property right.” As noticed earlier, the word ‘DUNHILL’ when used as a trade mark or trade name is recognized by one and all in the relevant trade as denoting goods of the plaintiff company. It has to be borne in mind that a consumer buys an article because of its source and the features by which the consumer distinguishes that source. The plaintiff has prima facie established a distinctive reputation, image and goodwill in the trade mark and trade name ‘DUNHILL’ and it has a valuable right in that distinctive reputation and goodwill. Admittedly, defendant No.1 has adopted the mark ‘DUNHILL’ as part of its corporate name. On a balance of probabilities, I am of the opinion that the consuming public will confuse the source of defendants’ goods with the mark ‘DUNHILL’ with the source of the textile articles and other items marketed by plaintiff. In order words, defendants’ use of plaintiff’s mark ‘DUNHILL’ is likely to cause confusion as to the source or origin of its product. The likelihood of confusion is further enhanced by the relationship between plaintiff and defendants’ goods. The standard of consumer to be regarded is that of an ordinary shopper, going about his shopping in an ordinary way. There is bound to be confusion in shopper’s mind in relation to the trade mark and trade name ‘DUNHILL’ on the textile articles marketed by defendants. An ordinary average shopper, shopping in the places in which the textile articles are available for purchase, and under the usual conditions under which such a purchase is likely to be made, is likely to be deceived.
14. On the basis of the foregoing facts, I am of the opinion that the plaintiff’s trade mark and trade name DUNHILL is entitled to protection and the defendants’ use of ‘DUNHILL’ on their goods is likely to cause confusion or to deceive consuming public in the belief that such goods of defendants are made by, sponsored by or connected in some way in trade with plaintiff and to cause confusion or mistake or to deceive consuming public as to the source or origin of defendants’ goods.
15. Learned counsel for defendants contended that plaintiff company was fully aware that defendants have been using the mark ‘DUNHILL’ since 1986 and it has approached this court after a lapse of 11 years. This delay, according to the learned counsel, is fatal to the plaintiff’s application for temporary injunction. In M/s. Hindustan Pencils (Pvt) Ltd. Vs. M/s. India Stationary Products Co. , it was held that in the case of passing off action or infringement of trade mark, delay by itself cannot come in the way of granting injunction. That apart, it is also significant to mention that the order dated 10.2.1995 passed by the Assistant Registrar of Trade Marks Mumbai clearly shows that on 21.9.1982, plaintiff company filed an application No.395483 in Class 24 to register the trade mark DUNHILL in respect of textile articles. In 1990, defendant No.1 company filed application to the said application and the Assistant Registrar passed the order on 10.2.1995. This suit has been instituted in 1997. It appears that the plaintiff company refrained from instituting common law action presumably with the belief that the matter would be resolved in the aforesaid proceedings. Thus, plaintiff co. had acted reasonably and had not slept on its rights. The defendant company acted on its own peril by continuing to use the mark ‘DUNHILL’. The delay of 11 years was excusable because plaintiff was engaged in the legal proceedings on the same subject against defendants.
16. In a last ditch attempt and indeed what appears to me an argument of desperation, learned counsel for defendants has attempted to contend that plaintiff company had abandoned the mark ‘DUNHILL’. It is significant to mention that the written statement is conspicuous by the absence of the plea of abandonment of the mark ‘DUNHILL’ by plaintiff. Learned counsel for the defendants has invited my attention to para No.16 of the written statement in support of the plea of abandonment. Para No.16 of the written statement is as under:-
“16. Regarding para 16 the particulars of 13 registration and 6 application for registration of trade marks DUNHILL are matters of the record of the Registry. According to the enquiry made by the defendants, all the plaintiff’s DUNHILL trade marks are not use in India and all the plaintiff’s registered trade marks were liable to be removed from the register on the ground of non use.”
16. How the intention to abandon on the mark is to be proved has been laid down in ‘Law of Unfair Competition and Trade Marks’ by Harry D. Nims, Vol.2, 4th Edition. Reference may, in this connection be made to Article 408 at page 1264, which reads as under:
“Abandonment in industrial property is an act by which the public domain originally enters or re-enters into the possession of the thing (commercial name, mark or sign), by the will of the legitimate owner. The essential condition to abandonment is that the one having a right should consent to the dispossession. Outside of this there can be no dedication of the right, because there cannot be abandonment in the juridical sense of the word. Abandonment results in a forfeiture and must be strictly proved, and the burden of its establishment is upon the party affirming it. Abandonment is purely a question of intent.”
17. Bearing in mind the aforesaid observations, I am constrained to observe that the averments made by defendants in para No.16 of the written statement do not constitute the plea of abandonment. It was nowhere pleaded in the written statement that plaintiff company had abandoned its exclusive rights to its corporate title and the trade name ‘DUNHILL’. On the contrary, defendants have not denied the averments made in para No.16 of the plaint to the effect that plaintiff holds trade mark registrations in India in respect of wide variety of goods detailed in the said paragraph of the plaint. The defendants simply pleaded that these registrations were liable to be removed from the register on the ground of dis use. The defendants have not pleaded the length of the alleged period of disuse. There is nothing on record to show or suggest that plaintiff company has abandoned the mark ‘DUNHILL’.
18. It is an admitted position that plaintiff’s products are being sold at the duty free shops in India. Transborder reputation of the trade mark and trade name DUNHILL has been, in my view, established in this country by means of the fact that plaintiff products are available on duty free shops in India, by the fact that advertisement of plaintiff’s goods under the trademark and trade name ‘DUNHILL’ are to be found in various magazines like the Newsweek, Time and the Asia Magazine, which are freely available in India. In this view of the matter, it can safely be inferred that plaintiff’s trade mark and trade name DUNHILL has a live reputation in this country. This circumstance alone is sufficient to counter the contention of the learned counsel for the defendants that the plaintiff had abandoned the mark ‘DUNHILL’.
19. Assuming for the sake of arguments that textile articles manufactured by plaintiff are not available for sale in India, yet plaintiff company is entitled to protect its global reputation, image, name, fame and goodwill as the goodwill or image or reputation of goods and marks does not depend upon its availability in a particular country. In this connection, I may usefully excerpt the following observations of a Division Bench of this Court in N.R. Dongre Vs. Whirlpool Corporation supra:
“The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same which is even the shores of those countries where the goods have not been marketed. When a product is launched and hits the market in one country,k the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinema etc. even though there may not be availability of the product in those countries because of import restrictions of other factors. In today’s world it cannot be said that product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit and disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of the information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market.”
20. On the foregoing discussion, I find and hold that plaintiff company has made out a prima facie case for grant of an ad interim injunction against defendants. Balance of convenience is clearly in favour of grant of an ad interim injunction inasmuch as in the suit of instant nature, not only the interest of a proprietor of the mark but also the interest of the consuming public has to be protected from likely deception or confusion in the goods which he intends to buy and the goods which are likely to be offered to him. Unless defendants are restrained by grant of temporary injunction during pendency of suit, irreparable loss and injury will be caused to plaintiff by defendants continuing to pass off their goods as those of plaintiff.
21. For the foregoing reasons, the application is allowed and defendants, their directors, officers, agents, servants, employees and all those acting otherwise in privity or in concert with defendants are restrained from using plaintiff’s trade mark and trade name DUNHILL in connection with the sale of their goods and/or articles or from using any words or letters which in any way imitate or stimulate the trade mark and trade name DUNHILL so as likely to cause confusion or mistake or to deceive.
22. Before I part with this order, I would like to make it clear that the said order shall remain in operation till the disposal of the suit and nothing stated herein shall affect the rights of the parties that are being agitated in the suit.