JUDGMENT
N.V. Balasubramanian, J.
1. These appeals are preferred by the appellant against the common order passed by the learned Single Judge of this Court in O.A.Nos.553 and 554 of 2000 and Application Nos.2558 to 2560 of 2000 in C.S.No.397 of 2000 dated 14.8.2000. By the said common order, the learned Judge vacated the interim injunction already granted and dismissed O.A. Nos. 553 and 554 of 2000 and allowed the two applications filed by the respondents to vacate the interim injunction in Application Nos.2559 and 2560 of 2000. Learned Judge also allowed the application No.2558 of 2000 filed to revoke the leave granted to the appellant/plaintiff. Hence, there are three appeals filed against the order in O.A. Nos. 553 and 554 of 2000 and Application No.2558 of 2000.
2. The appellant herein filed the suit on the file of this Court in C.S.No.397 of 2000. Along with the suit, two applications in O.A.Nos.553 and 554 of 2000 were filed for the relief of interim injunction restraining the respondents from indulging in any action amounting to infringement of the appellant’s copyright in the artistic work JOLEN crme bleach carton, container and JOLEN written in distinctive script and also restraining the respondents from passing off their goods as the goods of the appellant. This Court granted interim injunction by order dated 19.6.2000. Thereafter the respondents filed counter affidavit along with two applications in A.Nos.2559 and 2560 of 2000 to vacate the interim injunction. Learned Judge, by order dated 14.8.2000 dismissed the applications preferred by the appellant for injunction and consequently allowed the applications preferred by the respondents to vacate the injunction and also revoked the leave granted to the plaintiff to institute the suit.
3. The case of the appellant is that the appellant is carrying on the business of manufacture and selling of cosmetics including crme bleach to pale hair. It is stated that the appellant was established in the year 1955 in United States of America and it started business with the trademark, JOLEN. According to the plaint, the appellant’s crme bleach sold under the trademark JOLEN is used to lighten/decolour facial hair, hair on the arms, legs and any other parts of the body that a person desires to bleach. It is stated that the appellant’s JOLEN crme bleach is sold in a bluish green carton with white lettering and the trademark JOLEN is written in an unique and highly distinctive stylized script wherein the initial “j” appears in small alphabet but in the same size as the remaining letters of JOLEN. It is also stated that a white line runs atop the entire length of the letters JOLEN and the trademark JOLEN in stylized script in bluish green colour appears within a white oval on the top of the carton. It is further stated that the trademark JOLEN in stylized script in white lettering with the words ‘CRME BLEACH and lightens excess dark hair’ appears on the front and back of the cartons with bluish green background. It is stated that the containers inside the carton are white plastic containers of a distinctive shape with the trademark JOLEN in stylized script and the words CRME BLEACH. It is stated that the appellant’s trademark JOLEN is an invented word derived from the names of its founders, JOHN and EVELYN and the letters JO were taken from JOHN and the letters LEN were taken from EVELYN and the trademark JOLEN also forms predominant part of the corporate name and trading style JOLEN Inc. It is stated that the appellant’s trademark JOLEN is registered in respect of crme bleach in the united Sates of America and in several countries all over the world including Austria, Australia, Baharain, Cyprus, Fiji, France, Greece, Hong Kong, Iran, Japan, Jordan, Kuwait, Lebanon, Mexico, New Zealand, Netherlands, Panama, Portugal, Qatar, Saudi Arabia, Singapore, South Africa, Sultanate of Oman, Sweden, Turkey and United Arab Emirates (UAE). In the plaint, the appellant has also given the sales turnover in U.S. Dollars in several countries all over the world for the period from 1986-87 to 1998-99. It is stated that the appellant’s crme bleach sold under the trademark JOLEN is advertised through various media including television, radio, newspapers and magazines. It is also stated that the appellant’s crme bleach with the trademark JOLEN is advertised in international magazines having large circulation in India. It is stated that the appellant’s crme bleach bearing the trademark JOLEN is brought into India by Indians visiting from abroad and distributed as gifts to friends and relatives and the appellant’s crme bleach bearing the trademark JOLEN is freely available in several shops in India such as (a) Haris Gift Centre, Shop No.43, 44, parsn Manere, 602, Anna Salai,Chennai-6, (b) Roshan Cario, Shop No.47, Parsn Burma Centre, Parsn Manere (Basement),602, Anna Salai, Chennai-6, (c) Sunil Fancy Store, F/10, Spencer Plaza, 769, Anna Salai, Chennai-2, (d) Amma Nana, 82, Chamiers Road, Chennai-18, (e) Fairlands, 83, Chamiers Road, Chennai-18, (f) Five Stars, 53/2, Cathedral Road, Gopalapuram, Chennai-86, (g) Angels, Shop No.14 and 29, Olsons Complex, 150, Montieth Road, Chennai-8, (h) Tikamchand and Ghanaram, Shop No.29, New Hong Kong Bazaar, Thribhuvan Talkies Basements, Gandhi Nagar, Bangalore 560 009, (i) Indra Prasth Collections, Shop No.30, Mahaveer Plaza, National Market Cellar, Gandhi Nagar, Bangalore 560 009 and (j) Donald Duck United Colours, No.101/57, Opera Compound, Brigade Road, Bangalore-560 001. The case of the appellant is that by virtue of long, extensive and continuous use, its trademark enjoys great reputation and goodwill and the trademark JOLEN forms a dominant feature of the appellant’s corporate name and trading style. It is also stated that the appellant’s trademark JOLEN is extensively used in the middle East/Gulf countries including UAE, Kuwait, Baharain, Qatar where from substantial number of immigrant Indian population frequently are visiting India who bring with them perfumes, cosmetics including crme bleach for their personal use and as gifts for friends and relatives. It is stated that the survey conducted in a few cities in India reveals that the trademark JOLEN is a well known brand name in India. It is stated that the India is a member of Paris Convention and under Art.6-B of the Paris Convention, an internationally well reputed trademark ought to be protected in India and section 11 of the Trade Marks Act, 1999 also provides for the protection of internationally well reputed trademarks. It is stated that the distinctive script with the letter J written with an elongated top line which extends over the letters JOLEN, the entire script having an aesthetic appeal to the eye. It is stated that the appellant is the proprietor of copyright in the artistic work JOLEN in script with a distinctive bluish green carton with white letter and the said artistic work was first published in the year 1956 in U.S.A. and since then has been continuously published till date in U.S.A. and in several countries all over the world. It is stated that India and U.S.A. are members of Berne Convention and under section 40 of the Copyright Act, the works which enjoy protection in U.S.A. enjoy automatic protection in India. It is stated that the appellant applied for registration of the trademark JOLEN under No.522509 dated 9.1.1990 in class-3 in respect of hair bleach, skin cream and lotions, astringents, toilet waters, colognes, perfumes, eye make-up, face power, rouge, nail polish. It is stated that the application was advertised in Trade Marks Journal No.1109 dated 16.8.1995 and the application was opposed by the respondents and the application was ultimately dismissed by order dated 11.3.1999 by the Assistant Registrar of Trade Marks, New Delhi. It is stated that the appellant has filed an appeal against the order of the Assistant Registrar of Trade Marks and the same is pending before the Delhi High Court and it is not clear whether the said appeal has been transferred to the Intellectual Property Appellate Board. It is stated that the second respondent has registered the trademark JOLEN in clause-3 in respect of tooth paste and perfumes. It is stated that the appellant has filed a rectification petition for the removal of second respondent’s registration in class-3 and the same was pending before the Registrar of Trade Marks, New Delhi. It is stated that the second respondent has applied for registration of trademark JOLEN under No.555920 dated 6.8.1991 in class-3 in respect of cosmetic goods included in class-3 and the appellant has filed an opposition to the said application and the same was pending before the Registrar of Trade Marks, New Delhi. It is stated that the first respondent has claimed that he had assigned his rights in the trademark JOLEN to Jolen International Private Limited, a company promoted by the first respondent’s son Vikas Jain by a deed of assignment dated 8.90.1998. It is also stated that the first respondent has claimed that the trademark was reassigned by Jolen International Private Limited in favour of the second respondent and registered. It is stated that the respondents claimed to have a collaboration with M/s. Laboratoire Nouveau, U.S.A. but a search carried out in the Registrar of Companies in U.S.A. reveals that there is no such company. It is stated that the respondents are selling inferior quality crme bleach bearing the appellant’s internationally well known trademark, JOLEN. It is stated that the appellant has received several complaints from customers in India who purchased the respondents’ crme bleach assuming it to be original JOLEN crme bleach manufactured by the appellant and there have been instances of actual confusion among the customers in India by sale of crme bleach bearing identical trademark JOLEN by the respondents. It is stated that the respondents copied the appellant’s artistic work JOLEN Carton in its entirety including the distinctive style in which JOLEN is written by the appellant and the respondents also copied the colour scheme, get-up and layout of the appellant’s JOLEN Carton and container in their entirety. It is stated that the respondents made a slavish imitation of the appellant’s JOLEN Carton and container with dishonest intention and ulterior motive and the use of the appellant’s JOLEN Carton and container including the distinctive script in which the word JOLEN is written by the respondents would amount to infringement of appellant’s copyright in the artistic work JOLEN Carton, Container and JOLEN written in distinctive script. It is the case of the appellant that the respondents copied the trademark JOLEN and the colour scheme, get up and layout of the appellant’s JOLEN Carton and container with a view to trade upon and benefit from the international reputation and goodwill enjoyed by the appellant’s trademark JOLEN and the respondents are using the trademark JOLEN for a product identical to the appellant’s product sold under the trademark JOLEN. It is therefore stated that the use of identical trademark JOLEN with carton and container identical to the appellant JOLEN crme bleach container and carton would amount to passing off and enable others to pass off the respondents goods as and for the appellants goods.
4. The suit has been filed on the ground that the cause of action arose in April, 2000 when the appellant received complaints from customers in India that they purchased the respondents’ crme bleach assuming it to be genuine JOLEN crme bleach manufactured by the appellant and the cause of action continues to accrue everyday till the respondents continue to use the trademark JOLEN and carton/container identical to the appellant’s JOLEN crme bleach carton and container. It is also stated that the respondents goods bearing the trademark JOLEN and carton/container almost identical to the appellant’s JOLEN carton/container are sold in Chennai within the jurisdiction of this Court. It is stated that the respondents have advertised their JOLEN crme bleach in magazines which have a circulation in Chennai and this Court has jurisdiction to entertain the suit. Hence, the appellant has come forward with the suit along with two applications for interim injunction restraining the respondents from indulging in infringement of copyright and passing off action.
5. Along with the plaint, the appellant filed 78 documents and also two material objects, namely, specimen of appellant’s JOLEN carton and specimen of respondents’ JOLEN carton.
6. The first respondent filed a counter affidavit for the respondents raising a plea that the third respondent is not a private limited company, but it is a public limited company and the suit is liable to be dismissed for want of jurisdiction. It is stated that the respondents have registered the trademark JOLEN as a proposed mark for tooth paste and perfumes included in class-3 and the trademark is duly renewed and same is in force. It is also stated that they have registered the artistic work JOLEN carton under the Copyright Act claiming first publication in India in 1987. The respondents have also furnished the sales turnover for the years 1987-88 to 1999-2000. It is stated that the appellant applied for the registration of trademark JOLEN under No.522509 on 9.1.1990 as a proposed mark and the same was published in the Trade marks Journal No.1109 dated 16.8.1995 and the respondents have filed necessary opposition. It is stated that the opposition of the respondents was allowed and the application of the appellant was refused by order dated 11.3.1999 passed by the Assistant Registrar of Trademarks, New Delhi. It is stated that the appellant preferred an appeal before the High Court of Delhi and the same is pending. It is stated that when the respondents filed the Notice of Opposition the appellant was fully aware of the existence of the respondents mark and its large user and the appellant did not take any legal action against the respondents till they chose to file the present suit. It is stated that the respondents were not aware that the appellant was using the trademark JOLEN till August 1995 when the application of the appellant was published in the Trade Marks Journal dated 16.8.1995. It is stated that the appellant has not chosen to furnish any sales turnover figures to prove its sales in India and the appellant is not interested in doing sales in India. It is stated that the respondents are not aware of the registration of trademark by the appellant in various countries as mentioned in paragraph-6 of the plaint. It is stated that the appellant has not used the trademark JOLEN and the respondents are not admitting the sales turnover furnished by the appellant in paragraph Nos.7 to 9 of the plaint. As far as the averments made in paragraph-10 of the plaint are concerned, it is stated that the respondents are not aware of the advertisements mentioned therein and some of the shops mentioned therein are not selling the appellant’s products. It is stated that the sales in Chennai is not relevant and the same does not confer any jurisdiction on this Court. It is stated that the prices of the appellant’s goods vary from the prices of the respondents’ goods and the respondents are carrying on their business in New Delhi. It is stated that the Indians who visit India will bring with them the perfumes, cosmetics including crme bleach for their personal use and as gifts does not mean that the products of the appellant are freely marketed in India. It is also stated that even in the Trade Mark Application filed by the appellant, the appellant has only applied for registration of its trademark JOLEN only as a word mark and not for the carton and the appellant has not furnished in the plaint the date of first publication of its carton in India. It is stated that the appellant has made application in Form TM-28 for recording M/s. Cosmo International as a registered user. It is also stated that it is not correct to state that there is no company called M/s. Laboratorie Nouveau in U.S.A. and the said company is very much in existence in U.S.A. It is stated that the letter dated 28.7.1998 issued by the Reserve Bank of India, New Delhi addressed to the respondents shows that the technical collaboration of the respondents with M/s. Laboratorie Nouveau, U.S.A. is approved. The case of the respondents is that the appellant has not marketed its products in India whereas the respondents honestly adopted the trademark and the artistic work JOLEN. It is denied that the respondents have sold their products in Chennai within the jurisdiction of this Court. It is also stated that the respondents are carrying on business since 1987 adopting the trademark in honest and bona fide manner. It is stated that the respondents have also obtained Copyright registration for JOLEN carton.
7. During the course of arguments, learned senior counsel for the respondents submitted the following facts: The first respondent, Shoban Lal Jain is carrying on the business under the name and style, Hindustan Rimmer (second respondent) and he has been adopting the trademark JOLEN from the year 1985. A request was made to the Registrar of Trade Marks to find out whether the said trademark conflicted with any registered trademark or pending applications on record. Since there was no conflicting trademark on record, the first respondent adopted the trademark JOLEN honestly and submitted an application for registration on 25.2.1985 proposing to use the same for cosmetics. It is submitted that on 15.5.1987 the first respondent entered into a licence agreement with M/s. Cosmo International, Delhi whose owner is A.K. Jain son of the first respondent herein. Learned senior counsel also submitted that the a licence was granted to Cosmo International to manufacture cosmetics under the trademark JOLEN of the first respondent and Cosmo International obtained necessary permission from the Drug Controller to manufacture cosmetics under the trademark JOLEN on 10.6.1987 and started commercial use of the trademark JOLEN by manufacturing and marketing bleach cream. It is submitted that from 1987 to 1996 the licensee was using the trademark under the licence from the first respondent. He also referred to the sales figures of the licensee and also the order passed by the Registrar of Trade Marks. He submitted that on 5.1.1990 the appellant filed an application for registration of the trademark JOLEN under No.522509 proposing to use the trademark. It is stated that on 16.3.1991, the application No.434499 of the first respondent for registration of trademark JOLEN was advertised in the Trade Marks Journal and none including the appellant filed any objection and Registration Certificate was issued to the first respondent on 15.11.1991. It is stated that the first respondent filed an application for registration of the trademark JOLEN under No.555920 in Class-03 with the claim of user. It is also stated that in 1993 the first respondent caused Caution Notices advertised in three leading newspapers stating that the first respondent is the registered owner of the trademark JOLEN and if anyone is found to be using the same legal action would be taken. It is stated that in the year 1993 the appellant filed a suit against M/s. Doctor & Co. in Suit No.1398 of 1993 on the file of Delhi High Court and the first respondent also filed a suit against M/s. Doctor & Co. for infringement of the trademark JOLEN in suit No.410 of 1993 before the Delhi High Court which was later transferred to the District Court, Delhi. It is stated that both the suits were taken up together for some time by the Delhi High Court. It is brought to the attention of the Court by the learned counsel for the respondents that in that suit an order of injunction was passed against M/s. Doctor & Co. It is stated that in the year 1994, the application of the appellant for registration of trademark JOLEN was examined by the Examiner of Trade Marks and since it was conveyed to the appellant that the trademark JOLEN was registered in the name of the first respondent, on 6.5.1994, the appellant filed a petition for rectification under No.DWL-T-694 before the Registrar of Trademarks, New Delhi. It is stated that the application of the appellant for registration of the trademark JOLEN was advertised in the Trade Marks Journal on 16.8.1995 for which the first respondent filed Notice of Opposition under No.DEL-9820 and Cosmo International, the licensee under the first respondent also filed opposition under No.DEL-9821 before the Registrar of Trade Marks. It is stated that the main ground of opposition was that the first respondent who is carrying on business under the name and style of the second respondent is the owner of the trademark JOLEN and the same is being used by Cosmo International under licence from the first respondent. It is stated that in the year 1997 evidence was let in by the first respondent and his licensee by filing affidavits and supporting documents. It is also stated that copies of evidence were also provided to the counsel for the appellant. It is stated that on 1.8.1997 the application of the first respondent for registration of the trademark JOLEN was advertised in the Trade Marks Journal and on 22.9.1997 the appellant filed Notice of Opposition. It is stated that on 11.3.1999 the application of the appellant for registration of the trademark JOLEN was refused and the opposition of the first respondent was allowed by the Registrar of Trade Marks. It is stated that in June, 1999 the appellant filed appeal against the order of the Registrar of Trade Marks wherein the appellant did not seek stay of operation of the order and then, the present suit was filed.
8. The above facts have been stated during the course of arguments by learned senior counsel for the respondents. Learned Single Judge, while considering the application for injunction noticed that the suit is filed not on the basis of infringement of registration of trademark, but on the basis of infringement of copyright and also on the ground of passing off action. He also noticed that the first respondent is the registered owner of the trademark JOLEN. Learned Judge was of the view that for the trans-border reputation of the products in question, the same must be available in the country through official source and in the instant case, there was no material to show that the goods of the appellant were marketed through official source. He was of the view that the goods of the appellant brought to India by means of smuggling and other non-official sources cannot be taken note of to give rise to cause action to the appellant. Learned Judge was of the view that the appellant made a false declaration and the appellant was aware of the fact that the respondents were doing business under the trademark JOLEN even from 1985 and the appellant set the law in motion against another company, namely, M/s. Doctor & company before the Delhi High Court in 1993. Learned Judge found that there is no reasonable explanation for the delay of seven years. He was of the view that there is nothing to show that the goods were sold in Chennai and only after securing leave to sue, the bills were secured and there is nothing to show that the shopkeepers are the dealers of the respondents’ products. He was of the view that there is nothing to show that the respondents sold their products to any person within the jurisdiction of this Court and the jurisdiction has been invented only for the purpose of this case. Learned Judge was of the view that a comparison of the sales figures furnished in the plaint with the affidavit filed in support of the application before the authority shows that actual sales figures were furnished in the affidavit whereas in the plaint approximate sales figures were given. He was of the view that the appellant has not come to the Court with clean hands. He was also of the view that the plaint has been presented through the Power of Attorney Agent, Arulselvan. Learned Judge found that a Xerox copy of the Power of Attorney Agent was produced and original was not produced. In this view of the matter, learned Judge came to the conclusion that even assuming that the appellant has trans-border reputation in respect of its goods in the market in India through non-official sources, the appellant cannot claim any superior right over the right of the respondents who have acquired valid rights in accordance with law. He was of the view that the appellant has not come to the Court with clean hands and the application of the appellant for registration was rejected and when it filed a suit against Doctor & Company in the year 1993, the appellant could have filed a suit against the respondents also. Learned Judge was therefore of the view that the appellant was prima facie guilty of acquiescence and the appellant cannot take advantage of its own mistake to restrain the respondents from carrying on their business. Learned Judge came to the conclusion that the appellant has failed to establish that it has prima facie case and also failed to establish that the balance of convenience is in its favour and on the other hand, the respondents were able to establish that they have prima facie case and the balance of convenience is in their favour. Apart from that, learned Judge held that the respondents have established that the appellant is prima facie guilty of laches and acquiescence. In this view of the matter, learned Judge dismissed the injunction applications filed by the appellant.
9. Before going into the merits of the case, it is necessary to refer to one of the reasonings of the learned Single Judge that the Power of Attorney produced before the Court was not original deed of Power of Attorney. We have called for the original Power of Attorney executed by JOLEN Inc., a company incorporated under the laws of United States of America and under the Power of Attorney, the company appointed one Arulselvan and Dineshkumar to act on its behalf. Learned Judge proceeded on the basis that the original Power of Attorney was not produced and hence, the suit instituted was not correct. We find from the endorsement by the Assistant Registrar (Original Side-II) of this Court that the Original deed of Power of Attorney executed by JOLEN Inc. in favour of Arulselvan, Chennai was produced and verified. It is also stated in the endorsement that Arulselvan is authorized to make, declare, swear, affirm, sign, verify, execute, register and deliver all pleadings, applications, affidavits, declarations, petitions, etc. on behalf of the appellant. We have called for the original Power of Attorney and we find that the original deed is dated 17.10.1998 and executed by JOLEN Inc. by its President Evelyn Kossak. It is clear from the endorsement made by the Assistant Registrar of this Court that at the time of filing of the suit, the original Power of Attorney was produced and verified and replaced by a Xerox copy. Learned Judge proceeded on the basis that there was no stamp on the deed and hence, the Power of Attorney executed in favour of Arulselvan was not valid. On perusal of the original Power of Attorney produced before us, we find that the Power of Attorney was duly stamped and the Assistant Superintendent of Stamps, Chennai also revalidated the same on 17.12.1999. Learned Judge probably was of the view that the copy produced before the Court was not the original. However, it is seen from the deed that the Power of Attorney was executed by the President of JOLEN Inc. The original Power of Attorney was faxed and then it was revalidated by the Assistant Superintendent of Stamps, Chennai and when it was produced before the Court, it was verified by the Assistant Registrar of this Court and replaced by a Xerox copy. We therefore hold that the original Power of Attorney was produced and verified.
10. Learned senior counsel for the respondents relied upon the decision of Delhi High Court in COLUMBIA PICTURES ASSOCIATION v. SITI CABLE NETWORK (2001 PTC 319) wherein it was held that if a firm of advocates is appointed as advocates by a suitor, none of the partners of the advocates’ firm can act as recognized agent in pursuance of a power of attorney concerning the same cause. The Delhi High Court, following the decision of Bombay High Court in Oil & Natural Gas Commissioner v. Offshore Enterprises Inc. held that the practice followed by the firm of advocates combining the two roles is opposed to law and is required to be discontinued forthwith. However, we are unable to agree with the submission of learned senior counsel that the Power of Attorney executed in favour of Arulselvan is not valid as he is an advocate. It is seen that the agent, by name Arulselvan was appointed as Power of Attorney and not in his capacity of an advocate, even assuming that he is an advocate. Further, we are of the view that if an advocate is appointed to act as Power of Attorney Agent, he can very well act as an advocate also and nothing prevents him from acting as Power of Attorney so long as there is no conflict of interest in the discharge of his professional duty and his duty as Power of Attorney Agent. Hence, we are unable to agree with the submission of learned senior counsel for the respondents that the plaint should be rejected on the score that there is no valid Power of Attorney in favour of Arulselvan and Arulselvan being an advocate should not act as a Power of Attorney.
11. Before going into various points raised, it must be mentioned that we have seen the cartons and containers of both the appellant and the respondents and we find that the colour scheme, get-up and lay-out of JOLEN used by the appellant and the respondents are one and the same and the product that has been sold is also identical. The case of the appellant is that the expression JOLEN is a coined word derived from the names of its founders, JOHN and EVELYN and the letters JO were taken from JOHN and the letters LEN were taken from EVELYN. It is stated that the trademark JOLEN forms predominant part of the corporate name and trading style JOLEN INC. There is force in the contention of learned senior counsel for the appellant that if the two articles are kept side-by-side in any shop, it will lead to confusion and even if the respondents’ goods alone are available, it will also lead to confusion to a person familiar with JOLEN of the appellant as there is slavish imitation of the appellant’s colour scheme, get up and layout by the respondents. In our view, it is for the respondents to establish as to how it is possible to distinguish their goods from that of the appellant. It is also well-established that cause of action for passing off action is independent of the trademark rights. It is to be noticed that injunction can be granted to restrain the use of a mark calculated to pass off the goods belonging to the defendant as that of the plaintiff, by reason of its resemblance to its unregistered mark. Further, it is also well established that a trader who is able to build up reputation and good will in his business is entitled to prevent passing off action whether or not he has got the registration in respect of the name or the mark used by him in relation to his business. Passing off action is an action to protect the reputation and goodwill of a trader and it is true that a rival trader can use the name, mark or the get up of the original trader provided it should not lead to deception. On the facts of the case, it is clear that the respondents have used the name, word and get up of the mark as well as the container and carton which are same as that of the appellant for the sale of the articles which are also identical to the appellant’s goods and even if the goods belonging to the appellant and the respondents are marketed in the same shop and if only the respondents’ goods are available, it will surely lead to deception. Another principle that must be borne in mind is that either in the case of infringement or passing off action, the Court is concerned not only with the rival claims between the plaintiff and the defendant, but it should also take note of the interest of the consumer and the interest of the consumer cannot be ignored altogether and the Court should try to see that no deception is carried on to the consumer. In CIBA LTD. v. M. RAMALINGAM Chagla, C.J., speaking for the Bench has held that the duty of the Court is to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trademark is likely to deceive or cause confusion and the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trademark and the public. The House of Lords in ENO v. DUNN (118 Trademarks Cases 109) held as under:-
” The question is one between Mr. Dunn and the public, not between Mr. Eno and Mr. Dunn. It is immaterial whether the proposed registration is or is not likely to injure Mr. Eno in his trade. Equally immaterial, as it seems to me, is the fact that for a considerable time Mr. Eno had on the register as his trade mark the words “Fruit Salt”. Mr. Eno may have gained some advantage to which he was not properly entitled; but that is hardly a reason for permitting Mr. Dunn to practice a deception upon the public.”
12. There is no doubt that the respondents’ trademark and the artistic work on the container are the same as that of the appellant. The case of the appellant is that it is using the trademark since 1955 as a partnership firm which was later registered as a company in the year 1967. Though the respondents do not admit the registration and reputation of the appellant, it is seen from the copies of documents filed that the advertisement in the foreign magazine, Glamour found at page-39 of Vol. II of the typed-set of papers is of December, 1967, the advertisement in Bazaar found at page-24 of the same typed-set of papers is of February, 1976, the advertisement in Vogue found at page-25 is of May, 1980, the advertisement in Vogue found at page-26 is of June, 1982, the advertisement in ELLE Fall-Winter found at page-27 is of the year 1984, the advertisement in Bazaar found at page-28 is of June, 1984, the advertisement in Bazaar found at page-32 is of the year 1976, the advertisement in Alcantra found at page-35 is dated 23.9.1983, the advertisement in Summer Beauty Fashion found at page-36 is of the year 1980, the advertisement in Glamour found at page-37 is of February, 1983, the advertisement in Toronto Life Spring found at page-38 is of the year 1984, the advertisement in Toronto Life Fashion Spring Edition found at page-40 is of the year 1980, the advertisement in Flare found at page-41 is of august, 1984 and the advertisement in Vogue found at page-42 is of the year 1968 that the appellant has been manufacturing and marketing the goods under the trademark JOLEN from 1967. There are other advertisements found at page Nos.43, 44, 47, 52, 53 and 54 of the same typed-set of papers and these are all issued by the appellant. The appellant has also filed copies of Invoices which are found at page Nos.9 to 23 of the same typed-set of papers. It must be therefore held that prima facie the appellant has established that it has been dealing with the trademark JOLEN since 1967 in the international market.
13. Learned senior counsel for the respondents on the question of jurisdiction referred to the plaint, particularly, paragraph Nos.17, 23 and 24 and submitted that in paragraph-23 it is stated that cause of action arose in April, 2000 when the appellant/plaintiff received complaints from consumers in India that they had purchased respondents’ crme bleach assuming it to be genuine JOLEN crme bleach manufactured by the appellant. He has also referred to page Nos.50 and 51 of Vol. II of the typed-set of papers, namely, the complaints dated 31.5.1999 and 1.6.1999 from one Vaishali Pradhan of Nashik and one Hema G. Lobo of New Mumbai respectively and submitted that the complaints are verbatim each other and the words in both the complaints are identical and same defects in the products are pointed out in both the letters and these letters of the year 1999 would not contribute the cause of action for the suit filed in April, 2000.
14. Learned senior counsel appearing for the respondents referred to the decision of Delhi High Court in THE FAIRDEAL CORPORATION (PVT.) LTD. v. VIJAY PHARMACEUTICALS (1985 PTC 80) wherein D.P. Wadhwa, J. (as His Lordship then was) held that the plaintiff who is guilty of making false declaration is not entitled to the grant of interim injunction. Learned senior counsel also referred to another decision of Delhi High Court in M/s. HINDUSTAN PENCILS LTD. v. APTUDET INDUSTRIES (1991 PTC 204) wherein J.K. Mehra, J. held that the conduct of the plaintiff is relevant and the false statement, if made by him, would disentitle the plaintiff from claiming the relief of injunction. There can be no quarrel over the proposition laid down by the Delhi High Court in the two decisions, cited supra.
15. Learned counsel for the appellant referred to paragraph-24 of the plaint wherein the appellant/plaintiff claimed that the goods of the respondents/defendants were sold in Chennai and the respondents advertised their JOLEN crme bleach in magazines having circulation in the city of Chennai. We are of the view, in so far as the complaints received from one Vaishali Pradhan of Nashik and one Hema G. Lobo of New Mumbai are concerned, they have to be established by evidence. Though the letters are dated 31.5.1999 and 1.6.1999, the cause of action for the suit, as stated by the plaintiff, is not confined only to the complaints received which are found at page Nos.50 and 52 of Volume-II of the typed-set of papers, but also the action of the respondents in selling the goods in Chennai and advertising their goods in the magazines having circulation in Chennai City. Further, in The Fairdeal Corporation case (1985 PTC 80) the Delhi High Court found that the balance of convenience was in favour of the defendant therein who was continuously selling its products and taking into account the conduct of the plaintiff, the injunction prayed for was refused. In M/s. Hindustan Pencils Ltd. case (1991 PTC 204) the Delhi High Court held that the conduct of the plaintiff would not be enough to disentitle him to claim injunction provided the plaintiff otherwise has a prima facie case to succeed. In each case, while granting injunction, the prima facie case and the balance of convenience should be taken into account and equally, the conduct of the plaintiff is also relevant. Learned counsel for the appellant relied upon the paragraph Nos.10 and 24 of the plaint and page Nos.80 and 81 of Vol. II of the typed-set of papers to show that the appellant’s crme was sold in the city of Chennai. He also referred to the advertisement found at page-87 of Vol. II of the typed-set of papers which is dated 31.1.2000 to show that advertisement was made regarding the goods belonging to the respondents in The Hindu having circulation in Chennai. He also relied on the copies of cash bills which are found at page Nos.124 to 126 of Vol. II of the typed-set of papers to show that the goods belonging to the respondents were sold in Chennai. The price difference in cash bills is emphasized to show that the respondents goods were sold at a price ranging from Rs.27.50 to Rs.33/-, but the appellant’s goods were sold at fairly a high price.
16. Learned Judge was of the view that the two bills were secured after the leave to sue was granted. Learned senior counsel for the appellant referred to the bills both dated 10.4.2000, found page Nos.80 and 81 of Vol. II of the typed-set of papers to show that the appellant’s goods were sold in Chennai. It is seen that the leave was granted on 24.4.2000. The contents of paragraph-10 of the plaint show that the appellant has listed the shops where the goods of the appellants are sold. The bills for the sale of the respondents’ goods are no doubt dated 7.8.1999 and 8.8.1999 and they have been produced only to show that the goods of the respondents are sold in Chennai. The submission of learned senior counsel for the respondents is that along with the plaint the appellant has filed only two bills which are found at page Nos.80 and 81 of Vol. II of the typed-set of papers, but they are not the bills relating to the sale of goods of the respondents and in the said bills there is difference in the price. He submitted that after the counter affidavit was filed, the appellant filed another typed-set of papers containing four bills seeking to leave to produce them as additional evidence. He referred to paragraph No.20 of the affidavit filed by the appellant in O.A.Nos.553 of 554 of 2000, found at page-26 of Vol. I of the typed-set of papers wherein it is stated that the appellant thereafter caused purchases to be made in the City of Chennai. He submitted that the above said two bills produced along with the plaint did not relate to the respondents’ goods. In so far as other four bills are concerned, he submitted that they are all of the year 1999. He therefore submitted that the learned Judge was correct in holding that the jurisdiction was invented for the purpose of obtaining interim injunction.
17. Though we do not appreciate the stand of the appellant taken in the plaint when they have stated that cause of action arose in April, 2000 when the appellant received complaints dated 31.5.1999 and 1.6.1999 from consumers in India, yet, as already observed by us, the question that has to be gone into is whether the appellant has shown prima facie case and the appellants would suffer irreparable loss and injury if the injunction is not granted. As far as two bills produced along with the plaint are concerned, the appellant referred to those bills in paragraph-24 of the plaint and only during the course of enquiry before the learned Judge, other cash bills with reference to the sale of respondents’ goods were produced as additional documents and the cash bills were issued in the month of August, 1999. However, there is nothing to show that the two bills are not genuine or false documents. It is true that when the appellant/plaintiff seeks injunction, it must come out with true facts and any false statement, if made, would have the effect of depriving it of the benefit of interim injunction. We have also gone through the copy of the plaint filed and we find that the original two bills were produced by the appellant/plaintiff in serial Nos.67 and 68 of the list of documents filed along with the plaint and they relate to the sale of the appellant’s goods. If the appellant has based its cause of action only on the complaints as well as the sale of respondents’ goods made in August, 1999, that would have relevance in considering the question of grant of interim injunction. We find that the appellant/plaintiff based its cause of action not only on the complaints and cash bills, but also upon the advertisements issued in the newspapers which are having circulation in the City of Chennai. The appellant has produced along with the plaint, a copy of advertisement of the respondents’ goods dated 31.1.2000 made in The Hindu. Our attention is also drawn to other advertisements made in magazines like Indian Express, Famina and Times of India which are found in page Nos.143, 153, 159, 161, 163, 165, 167, 169, 171, 173, 175, 177, 185, 187 and 189 of Vol. IV of the typed-set of papers. It is well-known that the magazines are circulated within the City of Chennai. The question that arises is whether the advertisements of the products of the respondents in the magazines having circulation in Chennai would confer jurisdiction on this Court.
18. A similar question was considered in RAMU HOSIERIES REP. BY M. MURUGESHAN v. RAMU HOSIERIES, REP. BY PANDELA RAMU (1999 PTC (19) 183) and a Division Bench of this Court held that advertisement is a step in the process of infringement to solicit customers in the name of the impugned trademark and the advertisement is calculated to induce people to believe that such a property is meant for marketing. This Court also held that advertisement by the respondent in the newspaper having circulation in Chennai would provide cause of action. The Bench referred to a decision of the Supreme Court in State of Madras v. C.P. Agencies wherein the Supreme Court quoted with approval the observation made in Read v. Brown (22 QBD 128) as to what is meant by cause of action and the decision of the Supreme Court in R. Vishwanathan v. Ruken Ul-Mulk Syed Abdul Wajid and also the decision of this Court in S.B.S. Jayam & Co. v. V. Krishnamoorthy (1977 MLJ 286) and held that the cause of action in such a case can be taken to arise in the place where the goods are marketed or where the mark is exploited and the registration assumes all significance and where the infringement took place partly in one jurisdiction by way of advertisement and the rest in another jurisdiction by marketing the product, then, the registered owner of the trademark can maintain the suit either at the place where the cause of action arose partly or wholly which includes the place of registration, advertisement or marketing.
19. We are inclined to follow the decision of Division Bench of this Court in Ramu Hosieries case (1999 PTC (19) 183) and we hold that there are no reasons to take a different view from the view taken by the Division Bench that advertisement is a step in the process of infringement to solicit customers in the name of the impugned trademark and we are of the view that the advertisement of the respondents’ goods in the magazines having circulation in India would constitute cause of action to maintain a suit for passing off action as well. Therefore, the view of the learned Judge that the jurisdiction was invented for the purpose of this case is not sustainable. We hold that the Court has the jurisdiction and the order of learned Single Judge revoking the leave granted is not sustainable as it is well-settled by the decisions of this Court in M/s. SCIENTIFIC COMPOUNDS & PROCESSES PRIVATE LIMITED v. M/s. NATIONAL SOAPNUT WORKS, BANGALORE (1998-1-L.W.640) and SMITHKLINE & FRENCH LABORATORIES LTD. v. INDOCO REMEDIES LTD. [2001 PTC 349 (MAD)(DB)] that in considering the question of jurisdiction the averments in the plaint alone have to be considered. Therefore, learned Judge was not right in revoking the leave to sue.
20. One other circumstance that was taken into consideration by the learned Judge was that there is delay and there is inaction or silence or laches on the part of the appellant for a period of nearly seven years. Learned Judge held that the appellant’s claim is vexatious. As far as the delay is concerned, the law is well-settled in MIDAS HYGIENE INDUSTRIES P. LTD. v. SUDHIR BHATIA (2004 (2) CTC 77) wherein the Supreme Court held that the mere delay in bringing an action is not sufficient to defeat the grant of injunction in the case of infringement of trademark or copyright and the grant of injunction is necessary if it prima facie appears that the adoption of the mark was itself dishonest.
21. In POWER CONTROL APPLIANCES v. SUMMEET MACHINES PVT. LTD. the Supreme Court considered the question of delay and laid down the law as under:-
” Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trademark, trade name, etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White (1860) 28 Beav 303: 54 ER 382) Sr. John Romilly said: ‘It is important to distinguish mere negligence and acquiescence’. Therefore, acquiescence is one fact of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) & Co. v. Boehm (1884) 26 Ch D 406). The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill (1847) 2 De GM & G 614: 22LJ KCH 404).”
22. In M/s. HINDUSTAN PENCILS PVT. LTD. v. M/s. INDIA STATIONERY PRODUCTS CO. B.N. Kirpal, J. (as His Lordship then was) considered the question of delay and held as under:-
” Even though there maybe some doubt as to whether laches or acquiescence can deny the relief of a permanent injunction, it has been consistently held that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff’s rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. Where there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because it is the interest of the general public, which is the third party in such cases, which has to be kept in mind. In the case of inordinate delay or laches, as distinguished from the case of an acquiescence, the main prejudice which may be caused to the defendant is that by reason of the plaintiff not acting at an earlier point of time the defendant has been able to establish his business by using the infringing mark. Inordinate delay or laches may be there because the plaintiff may not be aware of the infringement by the defendant or the plaintiff may consider such infringement by the defendant as not being serious enough to hurt the plaintiff’s business. Nevertheless, if the Court comes to the conclusion that prejudice is likely to be caused to the general public who may be misled in to buying the goods manufactured by the defendant thinking them to be the goods of the plaintiff then an injunction must be issued. The Court may, in appropriate cases, allow some time to the defendants to sell off their existing stock but an injunction should not be denied.”
23. The Delhi High Court in REVLON INC. v. SARITA CO. (1997 PTC (17) 394) and ALFRED DUNHILL LIMITED v. KARTAR SINGH MAKKAR (1999 PTC (19) 294) and the Bombay High Court in SCHERING CORPORATION & OTHERS v. KILITCH CO. (PHARMA) PVT. LTD. (1995 IPLR 1) considered the question of delay and the Bombay High Court held that once it is established that there is visual and phonetic similarity, and once it is established that the defendants’ adoption of the trademark is not honest or genuine, then the consideration of any plea as to delay must be on the basis of a consideration whether there has been such delay in the matter that has led the defendants to assume that the plaintiffs have given up their contention and/or whereby the defendants have altered their position so that it would be inequitable to grant interim relief to stop them from using the trademark until the suit is decided.
24. The submission of learned senior counsel for the respondents is that the respondents have been using the trademark JOLEN from 1987. He also referred to the affidavit filed by the respondents before the Registrar of Trade Marks, New Delhi in Opposition No.DEL-9820. He submitted that the appellant filed an application for registration of the trademark JOLEN and when the respondents’ application for registration was advertised inviting objections from public, none raised objection and registration of the trademark JOLEN was granted in favour of the first respondent in 1991. He also submitted that the appellant filed a suit in the year 1993 against Doctor & Co. in the Delhi High Court and that suit was taken along with the suit filed by the respondents against the same Doctor & Co. for hearing and the appellant was fully aware that the first respondent is the owner of the trademark JOLEN. He also submitted that in 1995 the appellant’s application for registration of trademark JOLEN was advertised and the first respondent filed Notice of Opposition in No.DEL-9820 and the licensee of the first respondent also filed Opposition No.DEL-9821 and in 1997 evidence was filed by the first respondent and his licensee and copies of the same were also furnished to the counsel for the appellant. He also submitted that the application of the first respondent was advertised for which the appellant filed Notice of Opposition on 22.9.1997 and on 11.3.1999 the application of the appellant for registration of trademark JOLEN was refused and the opposition of the first respondent was allowed by the Registrar of Trade Marks and in June, 1999 the appellant filed an appeal before the Delhi High Court against the order of the Registrar of Trade Marks and then the appellant approached this Court in April, 2000. He submitted that these facts clearly disclose that the appellant is guilty of laches or delay and on that account, the injunction sought for should be refused. He also submitted that the learned Judge has taken a correct view in this matter. He referred to paragraph-35 of the judgment of the learned Judge and submitted that there is complete inaction, silence and laches on the part of the appellant.
25. We are unable to accept the submission of the learned senior counsel for the respondents. It is not a case where the appellant was keeping quiet and facts disclosed above clearly show that the appellant was prosecuting the matter before the Registrar of Trade Marks and filed application for registration before the same authority. Hence, it is not a case of complete inaction on the part of the appellant. Though we are not able to accept the submission of learned counsel for the appellant that it is difficult for it to find out the date from which the respondents started manufacture of their articles and marketed their goods using the name JOLEN for crme bleach, learned senior counsel for the appellant referred to the sudden jump in the sales turnover as disclosed in the counter affidavit and tried to contend that only in 1999 the respondents started manufacturing their bleach crme. However, these are all matters of evidence and we are not expressing any opinion on these points.
26. Learned senior counsel for the appellant also referred to various advertisements of the respondents and submitted that the advertisements are of the year 1999 and hence, the respondents started manufacture of bleach crme only in the year 1999. As already observed by us, it is a mater of evidence. However, one fact that is relevant is that the colour scheme, get up and lay out of the container and the contents of the articles sold by the appellant and the respondents are similar. As observed by the Delhi High Court by B.N. Kirpal, J. in Hindustan Pencils Pvt. Ltd. case, the Court is really concerned in protecting the interest of the consumers only and when it found that there is deceit committed by the respondents, the delay as such would not be fatal and the infringement committed would be a relevant consideration in considering the question whether the appellant would be entitled to the benefit of interim injunction pending suit with a safeguard that may be offered to the respondents to sell off pending stock of their articles.
27. It is stated that no explanation was offered before the learned Single Judge regarding the discrepancy in the sales turnover between the figures as shown in the plaint and in the four affidavits sworn to by Mrs. Evelyn Kossak filed on different dates before the Registrar of Trade Marks which are found at page Nos.21, 35, 79 and 115 of Vol. IV of the typed-set of papers. Learned senior counsel for the respondents referred to the affidavit of Mrs. Evelyn Kossak, found at page 21 of Vol. IV of the typed-set of papers where in paragraph-7 she has furnished the international sales figures of the company’s crme bleach sold under the trademark JOLEN during the period from 1986-87 to 1992-93. He also referred to the affidavit of Mrs. Evelyn Kossak, found at page-35 of the same typed-set, particularly paragraph-7 wherein for the same period the international sales figures of the company’s crme bleach sold under the trademark JOLEN have been furnished. He referred to the affidavit of Mrs. Evelyn Kossak regarding the sales turnover for the years 1986 to 1997-98, found at page-82 of the same typed-set. He submitted that in the affidavits Mrs. Evelyn Kossak has clearly stated that she had the full and free access to the books and records of the company maintained in the ordinary course of business and while in the affidavit she has furnished the figures on the basis of books of account, the approximate sales turnover figures are furnished in the plaint. He submitted that the affidavits have been sworn to by Mrs. Evelyn Kossak, President of the company who is still having the full and free access to the books and records of the company. He therefore submitted that the sales turnover figures furnished in the plaint are inflated figures and since the appellant has not come to the Court with clean hands, it is not entitled to the relief of injunction.
28. It is seen that in the plaint the appellant has given approximate sales turnover figures for the years 1987-87 to 1998-99 and in our view, the interim relief, if any, due to the appellant cannot be denied because of the difference in the sales figures given in the plaint and in the affidavits filed before the Registrar of Trade Marks. No doubt, there are discrepancies between the appellant’s sales turnover figures as shown in the plaint and the sales turnover figures given in the various affidavits filed by the President of the company before the Registrar of Trade Marks. However, we are of the view, it is a matter that has to be established by the appellant company by adducing evidence before the Court and it may not be correct to come to the conclusion now that the sales turnover figures given in the plaint are incorrect and untrue and this court must accept the figures furnished in the affidavits filed by the President of the Company before the Registrar of Trade Marks.
29. Learned senior counsel also submitted that the affidavits of Mrs. Evelyn Kossak were filed before the Registrar of Trade Marks on various dates and the last of it fell on 23.2.1998. He further submitted that no steps have been taken by the appellant company before the Registrar of Trade Marks to correct the sales figures and no such affidavit has been filed before the Court stating that the sales figures found in the four affidavits are incorrect and the plaint indicates the correct sales figures. We are of the view that it is for the appellant to establish at the time of trial as to the correct sales turnover and the amount of expenditure incurred for sales promotion and advertisement and from the difference in the figures shown in the plaint as well as in the affidavits it will not be safe to come to the conclusion that the appellant has come to the Court with unclean hands. No doubt, if the appellant fails to establish before the Court that the sales turnover figures and sales promotion and advertisement figures given in the plaint are incorrect, the appellant will have to face the consequences for the same and without giving an opportunity to the appellant to establish that the sales turnover figures furnished in the plaint are correct, we hold that on the basis of comparison of the figures given in the affidavits filed before the Registrar of Trade Marks and in the plaint, it is not possible to come to the conclusion that one figure is correct and the other is wrong. Learned senior counsel for the respondents again emphasized that the appellant has not established the difference in the sales turnover figures in the plaint and the affidavits filed before the Registrar of Trade Marks. However, we are of the view that even if the difference in the sales turnover figures in the plaint and the affidavits filed before the Registrar of Trade Marks is not established, the appellant cannot be denied the interim relief, if it is otherwise entitled to.
30. One other argument of the learned senior counsel for the appellant is that the respondents were selling toothpaste and perfumes and not bleach cream. In this connection, learned senior counsel for the respondents referred to certain documents found in vol. III & IV of the typed-set of papers. However, we are not expressing any opinion on the said question as we have already held that the delay in the institution of the suit is not material. Another argument advanced by learned senior counsel for the appellant is that collaboration approval was obtained by the respondents on 28.7.1998 but the collaborating company was incorporated only on 16.12.1998. Learned senior counsel referred to the letter of Reserve Bank of India dated 28.7.1998 granting approval to the respondents to enter into the technical collaboration with Laboratoire Nouveau, U.S.A. for the manufacture of fragrances, colour cosmetics, hair dyes, toiletries and allied products. Learned senior counsel for the appellant also referred to the certificate of incorporation which is found at page 93 of Vol. III of the typed-set of papers wherein the Corporation, by name, Laboratoire Nouveau, Inc. was incorporated on 16.12.1998. Learned senior counsel for the respondents submitted that originally it was a firm and later it was incorporated as a limited liability company and hence, there is no discrepancy. However, we are of the view that it is not necessary to decide the question as it is a matter of evidence and it has to be gone into at the time of trial and on the basis of the letter, it cannot be stated that the company, by name, Laboratoire Nouveau did not exist at the time of grant of approval by the Reserve Bank of India.
31. The other argument of the learned senior counsel for the respondents was that the respondents had the right to use the trademark JOLEN. He also submitted that the first respondent entered into a licence agreement with Cosmo International and manufactured and marketed cosmetics under the trademark JOLEN. Learned senior counsel for the respondents also referred to the orders of the Registrar of Trade Marks and submitted that the first respondent Shobanlal Jain has been trading in the name, Hindustan Rimmer. As far as the orders of the Registrar of Trade Marks are concerned, we are not expressing any opinion on the correctness of the same as appeals have been preferred against those orders and the appeals are said to be pending.
32. Learned senior counsel for the appellant, on the other hand, referred to the counter affidavit wherein the sales turnover figures of Cosmo International have been furnished. He also referred to various advertisements of the respondents wherein it is stated that the goods were manufactured in technical collaboration with Laboratoire Nouveau, U.S.A. for Jolen International Limited and there is no reference in the advertisements to Shobanlal Jain, first respondent or Hindustan Rimmer, second respondent in any of the advertisements. A bare reading of the advertisements shows that they do not give any indication as to who manufactured the crme bleach. The various advertisements are found in Vol. III of the typed-set of papers. It is also stated that the respondents have not filed any licence agreement entered into between the respondents 1 and 2 and Cosmo International and they have also not produced any certificate, balance sheet or account books. In so far as Jolen International Ltd. is concerned, he submitted that the agreement was only in the year 1998 and the excise duty paid by Hindustan Rimmer was for a period from April, 1999 to March, 2000. On the other hand, the submission of learned senior counsel for the respondents was that the appellant is having possession of the documents since the year 1997. He also submitted that as far as third respondent, Jolen International Private Limited is concerned, it is only a marketing company and the first respondent Shobanlal Jain is its Managing Director. We are of the view, it is not necessary to go into the question as to when the respondents started manufacturing and marketing their products for the purpose of considering the question that arises in the appeal. However, from the documents filed before us it is not possible to find when the respondents started manufacturing and marketing the crme bleach in the carton and container bearing the name JOLEN in the exact manner in which the appellant’s trademark is printed in the carton and container.
33. Learned senior counsel for the appellant referring to page-55 of Vol. III of the typed-set of papers, submitted that in that advertisement of the respondents the respondents themselves have claimed that it was JOLEN, the internationally acclaimed beauty formula. The submission of learned senior counsel for the respondents is that the product is a formula of the collaborator which is mentioned in the advertisement.
34. Another argument advanced by learned senior counsel for the appellant is that in the advertisement found at page-55 of Vol. III of the typed-set of papers which is dated April, 2000 the respondents have stated that from April, 2000 the respondents are manufacturing ‘crme bleach’. The submission of learned senior counsel for the respondents is that it is a perfectly correct statement that there was no perfume bleach earlier and for the first time the respondents have manufactured the perfume bleach and the same cannot be taken advantage of by the appellant. However, we are of the view that the statement is to the effect that for the first time the perfume bleach has been manufactured by the respondents with the collaboration with Laboratoire Nouveau, U.S.A. which is a relevant consideration in considering the question of grant of interim injunction.
35. Before considering the question whether the appellant has prima facie established that it has trans border reputation, we find from the sample of products produced before us that the respondents have copied the trademark JOLEN in its entirety not only in the colour scheme, get up and lay out, but also in the style in which the word JOLEN is printed by the appellant both in the container as well as in the carton. We find that the respondents have copied the colour scheme, getup and lay out of the appellant completely and in its entirety in respect of the products marketed by the respondents in the container as well as in the carton. We also find that there is neither an addition of a letter, nor there is any subtraction of any letter from the word JOLEN, nor there is any modification in the style in printing the letters JOLEN by the respondents. In other words, the appellant’s trademark JOLEN has been copied slavishly by the respondents and the copy is complete in all respects. No doubt, in the container of the respondents an additional information is available to the effect that it is manufactured by Hindustan Rimmer which is followed by the expression, ‘manufactured in technical collaboration with Laboratoire Nouveau, U.S.A. and marketed by Jolen International Limited’. We are of the view that the addition of the words in the container and carton does not help the respondents as in the advertisements they have advertised that the goods were manufactured in collaboration with Laboratoire Nouveau, U.S.A. and marketed by Jolen International Limited and the expression used in the advertisements cannot be said to be without any purpose except to convey to a purchaser that he or she is purchasing a product made in collaboration with a company in U.S.A.
36. The appellant has also prima facie established that it has got prior user, though it has been denied by the respondents. The appellant has produced several advertisements, the earliest of which is of the year 1967 published in the magazine Glamour, found in volume II of the typed-set of papers. It was followed by other advertisements effected in the years 1968, 1976, 1977, 1980, 1982, 1983 and 1984 all found in volume II of the typed-set of papers. The appellant produced various invoices prior to 1997 and also produced copy of statement of advertising figures, found at page 8 of Vol. II of the typed-set of papers. No doubt, the respondents deny that the appellant is having prior user, but these documents prima facie establish that the appellant has been marketing the goods under the trademark JOLEN from the year 1967 and there are no grounds to disbelieve or discard those documents. In HAW PAR BROS. INTERNATIONAL LTD. V. TIGER BALM CO. (P) LTD. & ORS (1996 PTC (16) 311) it was held as under:
“At the interlocutory state, it is the practice to accept documents filed along with affidavit. The respondents have also filed number of such documents and if regular proof is necessary, the documents filed by both sides should be completely ignored. If that procedure is adopted, it is not possible in any interlocutory application to grant relief to parties.”
No doubt, the respondents got the registration of the trademark. This Court in HAW PAR BROS. INTERNATIONAL LTD. v. TIGER BALM CO. (P) LTD. & ORS (1996 PTC (16) 311), in paragraphs 78 and 79 held that it is no defence to passing off that the defendant’s mark is registered. This Court also noticed the judgments in Century Traders v. Roshan Lal Duggar and Co and Sushil Vasudev v. M/s. Kwality Frosen Foods Private Limited (1993 (1) Kar. L.J.609) which was confirmed on appeal in C.A.No.234 of 1994 by order of the Supreme Court dated 19.7.1994 and ultimately in paragraph-87 it held that the prior registration of trademark is not a ground in the case of passing off action. The Delhi High Court in N.R. DONGRE v. WHIRLPOOL CORPORATION has taken the same view and the Supreme Court in N.R. DONGRE v. WHIRLPOOL CORPORATION (1996 PTC (16) 583) has approved the view of the Delhi High Court holding that the registration of trademark has no consequence for passing off action.
37. The question that arises is whether the appellant has established the trans-border reputation. Learned senior counsel for the appellant referred to the following decisions: (i) N.R. DONGRE v. WHIRLPOOL CORPORATION , (ii) N.R. DONGRE v. WHIRLPOOL CORPORATION (1996 PTC (16) 583), (iii) HAW PAR BROTHERS v. TIGER BALM & CO (1996 PTC (16) 311), (iv) CATERPILLAR V. JORANGE (1998 PTC (18) 31), (v) CALVINKLEIN v. INTERNATIONAL APPARELS SYNDICATE (1996 PTC (16) 293), (vi) REVLON INC. v. SARITA (1997 PTC (17) 394), (vii) ALFRED DUNHILL v. KARTAR SINGH MAKKAR (1999 PTC (19) 294), (ix) JOLEN INC. v. DOCTOR & CO. (2002 (2) CTMR 6), (x) HONDA MOTORS LTD. v. CHARANJIT SINGH (2003 (23) PTC 1) and (xi) PIZZA HUT v. PIZZA HUT INDIA (2003 (23) PTC 208).
38. Learned senior counsel for the respondents seriously disputed that to claim trans-border reputation, the appellant must establish that its reputation has been spilled over in India. He also submitted that the pre-requisite for passing off action on the basis of trans-border reputation is that the reputation should be spilled over in India. The Delhi High Court in N.R. DONGRE v. WHIRLPOOL CORPORATION has held as under:-
” 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 reaches 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, 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 or other factors. In today’s world it cannot be said that a 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.”
39. The Supreme Court, on appeal, while upholding the decision of the Delhi High Court, in N.R. DONGRE v. WHIRLPOOL CORPORATION (1996 PTC (16) 583) held as under:
” The mark/name ‘WHIRLPOOL’ is associated for long, much prior to the defendants’ application in 1986 with the Whirlpool corporation plaintiff No.1. In view of the prior user of the mark by plaintiff No.1 and its trans-border reputation extending to India, the trade mark WHIRLPOOL gives an indication of the origin of the goods as emanating from or relating to the Whirlpool Corporation plaintiff No.1. The High Court has recorded its satisfaction that use of the WHIRLPOOL mark by the defendants indicates prima facie an intention to pass off defendants’ washing machines as those of plaintiffs’ or at least the likelihood of the buyers being confused or misled into that belief. The fact that the cost of defendants’ washing machine is 1/3rd of the cost of the plaintiffs’ washing machine as stated by Shri Sibal, itself supports the plaintiffs’ plea that the defendants’ washing machines are not of the same engineering standard and are inferior in quality to the washing machines of the plaintiffs’.”
40. In HAW PAR BROS. INTERNATIONAL LTD. v. TIGER BALM CO. (P) LTD. & ORS (1996 PTC (16) 311) this Court considered the concept of trans-border reputation and after referring to the decision of Bombay High Court in Kamal Trading Co. v. Gillette U.K. Limited (1988 (1)PLR 135) and the decision of the Delhi high Court in Whirlpool Corporation & another v. N.R. Dongre and others (1995 (32) DRJ 317), held that the appellants therein enjoyed the trans-border reputation. It is not necessary to multiply the authorities and we have gone through the various decisions relied upon by the learned senior counsel for the parties. However, one decision which is relevant is the decision of the Delhi High Court rendered in the appellant’s own case which was instituted against Doctor & Company and a learned Judge of the Delhi High Court reported in 2002 (2) CTMR 6 (Jolen Inc. v. Doctor & Company) considered the question of trans-border reputation of the appellant’s goods and held as under:-
” It is not necessary that the association of the plaintiff’s mark with his goods should be known in the countries other than its origin or to every person in the area where it is known best. mere advertisement in other countries is sufficient if the trade mark has established its reputation and goodwill in the country of its origin and countries where it is registered.
22. In modern world, advertisements in the newspapers travel beyond the country where party is engaged in business through overseas editions or otherwise. Even, if it is assumed that such advertisements or mark do not travel beyond the borders of the countries where the plaintiff has the business still it has a right to protect its reputation and goodwill. It is more so where the trade name has been pirated in totality and not by way of having deceptive or confusing similarity. We are living in a world where there is enormous mobility. Well travelled Indians and tourists cannot remain unaware of international commodities. Reputation always travels faster than men. Whenever, persons travelling abroad for business or pleasure or any other purpose viz., study or temporary postings come across an article of a trade name of international reputation they are bound to be confused as to the source and quality if they happen to see that commodity in their country where there is no physical market. Mere likelihood of confusion is sufficient.
23. In N.R. Dongre v. Whirlpool Corporation (1996 PTC (16) 583 = 1996 (2)Arb. LR 488 SC) Supreme Court has taken the view that even advertisement of trade mark without existence of goods in the market is also to be considered as use of the trade marks.”
41. Learned senior counsel for the respondents submitted that the cases relied upon by the learned senior counsel for the appellant are distinguishable and the decision of the Delhi High Court in the appellant’s own case (Jolen Inc. v. Doctor & Company 2002(2) CTMR 6) has been rendered without any evidence. He referred to the orders of the Registrar of Trade Marks and submitted that the appellant has not established the trans-border reputation. He referred to N.R. Dongre case, cited supra, and submitted that in that case the goods were sold in India and the mark was advertised in magazines having circulation in India and Whirlpool is one of the fortune 500 companies. As far as Tiger Balm case (1996 PTC (16) 311) is concerned, he submitted that the plaintiff had made actual sales in India and had advertised the goods in magazines having circulation in India. He also referred to the facts of that case and submitted that there was no long user by the defendant therein and hence, the decision is not applicable. However, we find on the facts of the case that the appellant has effected advertisements bearing the trademark JOLEN in international magazines having circulation in India. The appellant in the plaint referred to various magazines in which the goods of the appellant were advertised having circulation in India and averred that the goods of the appellant have been brought to India by Indians visiting abroad and distributed among the relatives. The respondents in the counter affidavit have not denied the averments made by the appellant in the plaint, but they merely stated that they were not aware of the advertisements. In the absence of any denial by the respondents, it must be taken that the appellant has advertised the trademark JOLEN in various international magazines having circulation in India. Learned senior counsel for the appellant also referred to various magazines found in paragraph-10 of the plaint. The respondents have also not stated that there were no sales of the appellant’s products in India. The appellant has also produced copy of invoices. Moreover, the policy of the Government of India is open economy and under the Government Policy, the entry of appellant’s goods to India is not prohibited. The Delhi High Court in N.R. Dongre case held that when a product is launched and hits the market in one country, 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, etc. though the product may not be available in those countries. As far as the present case is concerned, it is the case of the appellant that the goods are available in India. The appellant has produced two bills to show the sales in India. It is also its case that the goods are brought to India by the visitors from foreign countries. The Delhi High Court also held that the knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used and the manner in which or the source from which the knowledge has been acquired is immaterial. The Supreme Court in N.R. Dongre case (1996 PTC (16) 583) held that the advertisement of trademark without existence of goods in the market is also to be considered as use of the trademark and it is not necessary that the association of the plaintiff’s mark with his goods should be known all over the country or to every person in the area where it is known best.
42. This Court in Tiger Balm case (1996 PTC (16) 311) held that the goodwill or reputation of goods or marks does not depend upon its availability in a particular country and trans-border reputation can be established by the fact that sales take place in duty-free shops and by the fact of advertisements found in various magazines having circulation in India. It is no doubt true that the appellant must prima facie establish that it has reputation and goodwill in this country. We are of the view, the ratio laid down in the above case would equally apply to the facts of the case. The appellant has prima facie established that it has marketed the goods with the mark JOLEN from the year 1967 in other countries. The appellant has produced copies of advertisements to show that the goods have been advertised in various international magazines having circulation in India. Not only that, in view of the free market, it is stated that the goods of the appellant are freely available and it cannot be stated that two bills for sale produced by the appellant are false documents and if the respondents contend that they are false bills, that has to be established in evidence at the time of trial. It can be safely taken from the two bills produced that the appellant’s goods are available in India. The availability of goods in India coupled with the advertisements in various international magazines having circulation in India would prima facie establish that the expression JOLEN points to the appellant which is the source for manufacture of its products indicating that the origin of the mark is emanating from the appellant. We are of the view that for trans-border reputation there need not be an agency or dealer in India to deal with the appellant’s goods. The circulation of international magazines in India wherein the goods of the appellant are advertised, the availability of the goods in India by the visitors bringing the goods to India or by persons going abroad from India and the availability of information in internet, web sites, etc., would be sufficient to create trans-border reputation. The respondents used the mark JOLEN by copying the same completely and they are using the trademark with same colour scheme, get up and lay out of the appellant on the carton and container and that would prima facie show the intention of the respondents is to pass off their goods as that of the appellant and the buyers are likely to be misled as if the products of the respondents are that of the appellant. The similarity in the products is also a relevant consideration and it is possible to visualize that a person who has settled in U.S.A. using the appellant’s products on his or her visit to India would be easily misled by the respondents’ products as that of the appellant’s goods or it is possible to visualize the case of persons going abroad and bringing with them the appellant’s goods to India either for their own use or to offer as gifts to the relatives and friends in India. The respondents have not offered any explanation for the adoption of the expression, ‘JOLEN’ as it is not a common expression which is a coined word derived from the names of the appellant’s founders. We find that the adoption by the respondents of the mark is complete in all respects and the intention of the respondents in adopting the same lay out, colour scheme and get up is only to gain economic advantages, the reputation and goodwill of the appellant.
43. Learned Single Judge was of the view that there must be evidence to show that the appellant’s goods were marketed in India through official sources and simply because the appellant’s goods were brought to India through other non-official sources it would not give rise to cause of action. Learned Single Judge after referring to the decisions in N.R. Dongre case and Tiger Balm case, both cited supra, held that even assuming that the appellant’s company has trans-border reputation, since the appellant’s products are not sold in duty-free shops, the appellant would not be entitled to the relief of injunction. Learned Judge was of the view that simply because the people visiting foreign countries may bring with them the appellant’s products to India that would not give rise to cause of action. We are of the view, the view of the learned Single Judge is not sustainable as it is against the decision of this Court in Tiger Balm case wherein this Court held that the plaintiff has not marketed the products in India and that would not prevent the plaintiff from claiming relief for passing off action on the basis that it has trans-border reputation. In CATERPILLAR INC. v. JORANGE (1998 PTC (18) DB 31) this Court held that even assuming that the products of the plaintiff are not available in India, from the fact that number of persons who visit the countries like United Kingdom and United States of America bring the products of the plaintiff into India, it cannot be stated that there is no spilling over of the plaintiff’s reputation in India. The ratio would apply to the facts of the case. Even assuming that the appellant’s goods are not available in duty free shops, the appellant has produced a sample of two bills to show that the products of the appellant are available in India.
44. In CALVINKLEIN INC. v. INTERNATIONAL APPAREL SYNDICATE (1996 PTC (16) 293) Ruma Pal, J. (as Her Lordship then was) held that the insistence of trade within the country by the applicant overlooks the nature of the complaint in passing off and the basis of the action is deception or the persuasion of the public who purchase the goods of one in the belief that it is another’s and it should not matter whether the other carries on business in the country. In our opinion, the ratio of the Calcutta High Court would apply as it was held that the insistence of trade of the appellant’s goods through the official source is not required. Moreover, in the advertisements effected by the respondents, they have claimed that their products are internationally acclaimed beauty formula which implies that the trademark JOLEN is an internationally acclaimed mark and the products are internationally acclaimed goods. It means that the respondents have impliedly accepted, though some explanation is offered, that the trademark JOLEN has trans-border reputation. In REVLON INC. v. SARITA CO. (1997 PTC (17) 394) the Delhi High Court held that though the articles manufactured by the plaintiff are not available for sale in India, the plaintiff would be entitled to protect its reputation and goodwill and the reputation and goodwill does not depend upon the availability of articles in a particular country. The Delhi High Court, following its earlier Division Bench decision in N.R. Dongre case , in the appellant’s own case against Doctor & Co., reported in 2002 (2) CTMR 6, has reiterated the same principle.
45. We therefore hold that the appellant has established its prima facie case that it is has reputation and goodwill and its reputation spilled over in the country either on the basis of availability of its goods in India or the availability of the information regarding its products in India and thereby the appellant has prima facie established that there is trans-border reputation. Learned senior counsel for the respondents submitted that we are sitting in appeal over the judgment of a learned Single Judge and he referred to the decision of the Supreme Court in WANDER LTD. AND ANOTHER v. ANTOX INDIA (P) LTD. 1991 PTC 1) wherein the Supreme Court held that this Court should not interfere with the discretion exercised by the Court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. Learned Single Judge, in the instant case, has not applied the principle of law relating to trans-border reputation and he has overlooked the settled principle of law laid down in Tiger Balm case and other cases and he was of the view that unless the goods are actually sold through official sources, the appellant does not enjoy trans-border reputation. Learned Judge was also of the view that simply because the persons visiting foreign countries may bring with them the goods of the appellant, the appellant cannot claim any copyright or cause of action. We hold that the learned Single Judge has refused to exercise his discretion overlooking the well-established principles of law on trans-border reputation and this Court is inclined to interfere with the order of the learned Single Judge.
46. We hold that the appellant has established a prima facie case. The next question that arises is whether it would cause irreparable loss and injury to the appellant if the interim injunction is not granted. We are of the view, in going into the question whether injunction should be granted or not in the case of passing off action, whether the respondents would suffer because of the grant of injunction is of no consequence when the interest of consumer has to be taken note of. It is no doubt true that the appellant did not initiate the action soon after it came to know that the respondents got registration of the trademark JOLEN in their favour. We also find that there are certain inaccurate statements made in the plaint and though we are not relying upon those statements, learned senior counsel for the respondents strongly relied upon those statements and submitted that the appellant is not entitled to the grant of injunction. Considering the fact that there is a complete and slavish copy of the appellant’s trademark by the respondents in their container and carton, we are of the view that the appellant should be granted interim injunction, but however, taking note of the inaccurate statements made in the plaint, late production of the four bills, two identical complaints by two customers from two different parts of the country, we are of the view, the interim injunction should be granted subject to the condition that the appellant should purchase the unsold carton and container of the respondents bearing the trademark JOLEN as on date of expiry of suspension period of this order as ordered by this Court, at the cost price of the carton and container. For this purpose, the respondents shall furnish evidence as to the number of container and carton in their possession on the expiry date of the period of suspension of this order before this Court and an inventory shall also be taken by two independent persons, one Chartered Accountant to be nominated by the respondents and an advocate or Chartered Accountant to be appointed by this Court at the end of ten weeks from this date so that the unsold stock of carton and container of the respondents bearing the mark JOLEN are inventoried and purchased by the appellant at the cost price of the carton and container of the respondents. It is made clear that the respondents would be entitled to damages, if they ultimately succeed in the suit and the appellants should bear it.
47. Learned Single Judge has also allowed the application in A.No.2558 of 2000 which was filed to revoke the leave granted to the plaintiff/appellant on 24.4.2000 in A.No.1753 of 2000 in C.S.No.397 of 2000. Learned Judge seems to have proceeded on the basis that there is no cause of action for the appellant/plaintiff to file the suit. We have already noticed that so far as cause of action is concerned, the averments made in the plaint have to be looked into and this Court in RAMU HOSIERIES REP. BY M. MURUGESHAN v. RAMU HOSIEERIES, REP. BY PANDELA RAMU (1999 PTC (19) 183) held that advertisements made by the respondents in the magazines having circulation in India would provide cause of action. This Court in M/s. SCIENTIFIC COMPOUNDS & PROCESSES PRIVATE LIMITED v. M/s. NATIONAL SOAPNUT WORKS, BANGALORE (1998-1-L.W.640) held that plaint averments have to be taken into account to decide whether the Court has jurisdiction or not. Another Division Bench of this Court in SMITHKLINE & FRENCH LABORATORIES LTD. v. INDOCO REMEDIES LTD. [2001 PTC 349 (Mad) (DB)] has held that where the products manufactured by the defendant have been sold in Chennai in retail shops, that would give rise to cause of action. Learned Judge need not have gone into the question whether the documents produced by the appellant for the sale of goods by the respondents are false or not in considering the question whether the leave earlier granted should be revoked. As we have already held that the advertisements of the products of the respondents in the newspapers and magazines having circulation in India would be sufficient to give rise to cause of action. Learned Judge also seems to have proceeded on the basis that the Power of Attorney in favour of Arulselvan has not been validly executed and we have already held that the view entertained by the learned Judge is not correct. Hence, learned Single Judge was not correct in revoking the leave earlier granted and allowing the application in A.No.2558 of 2000.
48. In the result,
(i) O.S.A.No.259 of 2000 stands allowed and the order of the learned Judge made in A.No.2558 of 2000 revoking the leave is set aside.
(ii) O.S.A.No.260 of 2000 stands allowed and the order of the learned Judge dismissing O.A.No.553 of 2000 which is filed for injunction against infringement of copyright is set aside.
(iii) O.S.A.No.261 of 2000 stands allowed and the order of the learned Judge dismissing O.A.No.554 of 2000 which is filed for injunction against passing off action is set aside.
(iv) There will be an interim injunction against infringement of copyright and passing off action pending disposal of the suit subject to the condition mentioned earlier.
(v) The suit shall be decided expeditiously.
(vi) Interim injunction granted is suspended for a period of ten weeks from this date.
(vii) There will be no order as to costs.