{"id":107703,"date":"1999-03-01T00:00:00","date_gmt":"1999-02-28T18:30:00","guid":{"rendered":"https:\/\/www.legalindia.com\/judgments\/alfred-dunhill-limited-vs-kartar-singh-makkar-ors-on-1-march-1999"},"modified":"2015-05-20T15:03:09","modified_gmt":"2015-05-20T09:33:09","slug":"alfred-dunhill-limited-vs-kartar-singh-makkar-ors-on-1-march-1999","status":"publish","type":"post","link":"https:\/\/www.legalindia.com\/judgments\/alfred-dunhill-limited-vs-kartar-singh-makkar-ors-on-1-march-1999","title":{"rendered":"Alfred Dunhill Limited vs Kartar Singh Makkar & Ors. on 1 March, 1999"},"content":{"rendered":"
Delhi High Court<\/div>\n
Alfred Dunhill Limited vs Kartar Singh Makkar & Ors. on 1 March, 1999<\/div>\n
Equivalent citations: 1999 IIAD Delhi 789<\/div>\n
Author: M Siddiqui<\/div>\n
Bench: M Siddiqui<\/div>\n<\/p>\n
<\/pre>\n
ORDER<\/p>\n
M.S.A. Siddiqui, J.<\/p>\n
1. The plaintiff has filed this suit seeking injunction against the defendant to prevent passing off and rendition of accounts. Along with the plaint, the plaintiff has also filed an application under Order 39 Rules 1 and 2 C.P.C. for interim injunction.\n<\/p>\n
2. The plaintiff is a company incorporated under the laws of England and has its principal office at 30, Duke Street, St. Jame’s London, Swix6DL, United Kingdom. The plaintiff is a highly reputed company engaged in the business, inter alia of manufacturing and marketing a wide variety of goods including ready-made garments and other textile articles under the trademark ‘DUNHILL. The trade mark ‘DUNHILL’ has been used on a very extensive scale for very many years. The products of plaintiff are known all over the world and the trademark ‘DUNHILL’ belonging to plaintiff company has acquired global reputation. Plaintiff’s various products are available for sale at the duty free shops and stores of the Indian Armed Services. The plaintiff is the exclusive owner of the following registrations of the trade mark ‘DUNHILL’ in India as detailed in para No.16 of the plaint:-.\n<\/p>\n
       \"Trademark     Class     Date      Goods\n      \n     DUNHILL        9         16.5.83   Optical apparatus and\n                                        instruments including\n                                        spectacles\n                                        (anti-dazzle), spectacle\n                                        cases and magnifying\n                                        glasses, electrical\n                                        apparatus and\n                                        instruments, all being\n                                        goods included in class 9.\n     DUNHILL        18        16.6.86   Articles included in\n     in long tail                       class 18 made wholly or\n     form                               principally of leather\n                                        and of imitation\n                                        leather.\n     DUNHILL        9         1.6.66    Scientific, nautical,\n     Longtail                           surveying and electrical\n     form                               apparatus and\n                                        instruments (including\n                                        wireless), photographic,\n                                        cinematographic, optical\n                                        weighing, measuring,\n                                        signalling, checking\n                                        (supervision)\n                                        life-saving and teaching\n                                        apparatus and\n                                        instruments, coin or\n                                        counter feed apparatus,\n                                        talking machines, cash\n                                        registers, calculating\n                                        machines, fire\n                                        extinguishing apparatus.\n     DUNHILL        14        1.4.85    Precious metals and\n                                        their alloys and in\n                                        goods in precious metals\n                                        or coated form therewith\n                                        (except cutlery, forks\n                                        and spoons)jewellery,\n                                        precious stones,\n                                        horological and other\n                                        chronometric\n                                        instruments.\n     DUNHILL        16        16.1.87   Paper and paper articles\n                                        cardboard and cardboard\n                                        articles; printed\n                                        matter newspapers and\n                                        periodicals, books;\n                                        bookbinding material,\n                                        photographs, stationary,\n                                        adhesive materials\n                                        (stationery) artists'\n                                        materials; paint\n                                        brushes; typewriters\n                                        and office requisites\n                                        (other than furniture),\n                                        instructional and\n                                        teaching material (other\n                                        than apparatus) playing\n                                        cards; printers type\n                                        and cliches\n                                        (stereotype); all being\n                                        goods included in class\n                                   \n     do             26        Pending   Lace and embroidery,\n                                        ribbons and press\n                                        buttons, hooks and\n                                        eyes, pins and needles;\n                                        artificial flowers.\n     DUNHILL        28        1.6.85    Games and playthings\n                                        in longtail gymnastic and \n                                        sporting form articles \n                                        (except clothing); \n                                        ornaments and decorations \n                                        for Christmas trees.\n     do             33                  Pending Wines, spirits \n                                        and Liqueurs.\n     do             33        Pending   -do-\n     DUNHILL        1         1.8.86    Chemical products used\n                                        in industry, science,\n                                        photography, agriculture,\n                                        horticulture, forestry,\n                                        and manures (natural &\n                                        artificial); fire\n                                        extinguishing\n                                        compositions, tempering\n                                        substances and Chemical\n                                        preparations for\n                                        soldering; Chemical\n                                        substances for\n                                        preserving foodstuffs;\n                                        tanning substances;\n                                        adhesive substances used\n     DUNHILL        2         16.4.86   Paints, varnishes,\n                                        lacquers, preservatives\n                                        against rust and against\n                                        deterioration of wood,\n                                        coloring matters,\n                                        dyestuffs, mordants\n                                        resins; metals in foil\n                                        and powder form for\n                                        painters and decorators.\n     DUNHILL        4         1.6.86    Industrial oils and\n                                        greases (other than\n                                        edible oils and fats and\n                                        essential oils);\n                                        lubricants, dustlaying\n                                        and absorbing\n                                        compositions; fuels\n                                        (including motor spirit)\n                                        and illuminants;\n                                        candles, tapers,\n                                        nightlights and wicks.\n     DUNHILL        5         16.8.86   Pharmaceutical,\n                                        veterinary and sanitary\n                                        substances; infrants\n                                        and invalids foods,\n                                        plasters material for\n                                        bandaging, materials for\n                                        stopping teeth, dental\n                                        wax, disinfectants;\n                                        preparations for killing\n                                        weeds and distroying\n                                        vermin.\n     DUNHILL        6         16.3.87   Unwrought and partly\n                                        wrought common metals\n                                        & their alloys anchors,\n                                        anvils, bells rolled and\n                                        cast building materials;\n                                        rails and other metallic\n                                        materials for chains\n                                        (for vehicles); cables\n                                        and wires\n                                        (non-electric);\n                                        locksmiths work,\n                                        metallic pipes and\n                                        tubes; safes and\n                                        cashboxes; steel bells;\n                                        horse-shoes; nails and\n                                        screws; other goods in\n                                        non-precious metal not\n                                        included in other\n                                        classes; ores.\n     DUNHILL        8         16.6.88   Hand tools and\n                                        instruments, cutlery;\n                                        forks and spoons; side\n                                        arms.\n     DUNHILL        10        16.8.86   Surgical, medical,\n                                        dental & veterinary\n                                        instruments and\n                                        apparatus (including\n                                        artificial limbs, eye\n                                        and teeth).\n     DUNHILL        12        Pending   Parts included, in class\n                                        12 of bicycles,\n                                        motorcycles and motor\n     DUNHILL        3         Pending   Bleaching preparations\n                                        and other substances for\n                                        laundry use; cleaning,\n                                        polishing scouring and\n                                        abrasive preparations;\n                                        soaps; perfumery;\n                                        essential oils,\n                                        cosmetics, shaving\n                                        creams, hair lotions and\n                                        dentifrices.\n     DUNHILL        16        Pending   Paper and paper\n                                        articles, cardboard and\n                                        cardboard articles;\n                                        printed matter,\n                                        newspapers and\n                                        periodicals, books,\n                                        bookbinding material,\n                                        photographs, stationery;\n                                        adhesive materials\n                                        (stationery) artists\n                                        materials; paint\n                                        brushes; typewriters\n                                        and office requisites\n                                        (other than furniture)\n                                        instrumental and\n                                        teaching material (other\n                                        than apparatus) playing\n                                        cards; printer's type\n                                        and cliches(streotype).\n \n\n<\/pre>\n
3. According to the plaintiff, defendants are engaged in the business of  manufacturing and marketing textile articles. Sometime, in 1990, plaintiff  received a communication from the Trade Marks Registry, Mumbai that defendant No.2 had filed an opposition to the plaintiff’s application under  No.395483 B in Class 24 for registration of the trade mark DUNHILL claiming  proprietorship and user thereof since 31.5.1986. However, the said opposition proceedings were dismissed vide order dated 10.2.1995 passed by the  Assistant Registrar of Trade Marks on the ground that defendant had failed  to establish prior user of the trade mark DUNHILL. Thereafter, in 1992,  defendant No.2 filed yet another opposition to the registration of the  plaintiff’s application No.390002 B in Class 25 for the trade mark DUNHILL.  On 28.3.1994, plaintiff filed an opposition before the Registrar Trade  Marks, Mumbai to defendant No.2’s application No.450058 dated 24.2.1986 for  registration of trade mark DUNHILL, which was published in the Trade Mark  Journal dated 1.12.1993. Subsequent to the filing of the opposition proceedings, plaintiff learnt that defendants had discontinued the use of the  mark DUNHILL. However, sometime prior to the institution of the present  suit, it came to plaintiff’s notice that defendants have again started  manufacturing and marketing their textile articles under the trade mark  DUNHILL and they are passing off their products as those of plaintiff. The  plaintiff, therefore, sought and prayed, inter alia, for permanent injunction to prevent passing off and rendition of accounts.\n<\/p>\n
 4. The defendants resisted the suit contending that plaintiff has not  used the trade mark DUNHILL in India and so plaintiff has no right in  respect of the said trade mark in this country. The plaintiff’s textile  products are not available in India and plaintiff’s alleged reputation and  goodwill of the trade mark DUNHILL stood extinguished due to the restriction on import of foreign goods in India. The defendants have been using  the mark DUNHILL since 31.5.1986, and thus there is an inordinate delay of  11 years in bringing action which is fatal to the present suit. According  to defendants, the user of the mark Dunhill by them does not amount to  passing off.\n<\/p>\n
 5. It was made clear by the learned counsel for plaintiff that the grievance in the present suit relates only to action in passing off. The first  question to be determined is whether plaintiff has made out a prima facie  case for grant of ad interim injunction. It has to be borne in mind that  prima facie case is not to be confused with prima facie title, which has to  be established on evidence at the trial. To establish a prima facie case,  the party seeking ad interim injunction should show that there is a credible dispute with respect to a right or title which it seeks to protect and  it has a real prospect of succeeding in its claim at the trial. In the  instant case, there is no serious dispute that plaintiff company is the  proprietor of the trade name and trade mark DUNHILL and the said mark is  attributable to the surname of Alfred Dunhill. It is also beyond the pale  of controversy that defendants have been using the mark DUNHILL in respect  of their textile articles since 31.5.1986. It is pleaded in the plaint that  the purpose and intent of defendant company in adopting the word ‘DUNHILL’  as part of its corporate name is to trade upon and encash on the name,  fame, reputation, image and goodwill acquired by the DUNHILL group of  companies. It is also pleaded that defendant company is passing off its  goods as those of plaintiff’s goods with intent to affect the goodwill and  reputation of plaintiff.\n<\/p>\n
 6. It is well settled that an action for passing off is a common law  remedy being an action in substance of deceit under the law of Tort. In  Warnink Vs. Townend & Sons (HULL) Ltd. 1979 A.C. 731, Lord Diplock identified the following five characteristics which must be represented in order  to create a valid cause of action for passing off:\n<\/p>\n
  i) a misrepresentation, <\/p>\n
  ii) made by a trader in the course of trade, <\/p>\n
  iii) to prospective customers of his or ultimate customers of   goods or services supplied by him, <\/p>\n
  iv) which is calculated to injure the business or goodwill of   another trader (in the sense that there is a reasonably foreseeable consequence) and<\/p>\n
  v) which causes actual damage to a business or goodwill of the   trader by whom the action is brought or (in quia timet action)   will probably do so.\n<\/p>\n
 7. In Reckitt & Cdman Products Ltd. Vs. Borden Inc & Ors. (1990 J R.P.C.  341), it was held that proof of fraudulent intention is not a necessary  element in a cause of action for passing off. The relevance of fraud to  this tort is simply that “if the intention to deceive is found, it will be  readily inferred that deception will result.” In Century Traders Vs. Roshanlal Duggar & Co. , a Division Bench of this Court has  held;\n<\/p>\n
   “In a passing off cases, however, the true basis of action is   that the passing off by the defendant of his goods as the goods   of the plaintiff injures the right of property in the plaintiff,   that right of property being his right to the goodwill of his   business….. this right is to be protected and the balance of   convenience is in favour of the person who has established a   prima facie right to property.”\n<\/p>\n
 8. In N.R. Dongre Vs. Whirlpool Corporation , it was  held that the concept and principle on which passing off action is grounded  is that no man has any right to represent his goods as the goods of another. A trader needs protection of his right of prior user of a trade  mark\/trade name as the benefit of the name, fame, reputation and image and  goodwill earned by him cannot be taken advantage by another trader by  passing off his goods as those of the prior user of the trademark or trade  name.\n<\/p>\n
 9. In the instant case, there is no serious dispute with regard to the  fact that plaintiff company had for many years carried on business in the  United Kingdom and, through various subsidiary and associated companies  through out the world in the sale of pipes tobacco products, smokers’  requisite and a wide range of luxury goods. It is also undisputed that all  of the goods sold by plaintiff company are sold under the trade name and  trade mark “DUNHILL”. In this view of the matter, it can safely be inferred  that the trade mark\/trade name DUNHILL meant and means plaintiff and its  products to the purchasing public. The averments made in the plaint and the  application filed under Order 39 Rule 1 and 2 C.P.C. clearly show that as a  result of extensive advertising and promotional efforts, plaintiff’s  products including textile articles, have acquired global reputation and  goodwill and the trade mark and trade name DUNHILL is being associated with  the goods of plaintiff. Plaintiff’s advertising has appeared in news and  magazines having both national and international circulation. It is also  alleged that the trade name and trademark DUNHILL has become distinctive of  plaintiff’s goods as a result of substantially exclusive and continuous use  in commence since 1893. Plaintiff’s constituted attorney Mr. Melanie Blakeman has filed his affidavit in support of the said application. I have no  reason to disbelief the said affidavit. In this view of the matter, it can  safely be held that plaintiff successfully promoted a conscious connection  in public mind between ‘DUNHILL’, mark and its products. The word ‘DUNHILL’  when used as a trade mark or trade name is recognized by one and all in the  relevant trade as denoting plaintiff’s goods. Thus, plaintiff has prima  facie established valuable rights in the trade mark and trade name ‘DUNHILL’ as a result of exclusive and extensive use thereof over many years.\n<\/p>\n
 10. It is, undisputed that the defendant No.1 has been using the mark  ‘DUNHILL’ as a part of its corporate name since 31.5.1986. The plaintiff  has filed a copy of the order dated 10.2.1995, passed by the Assistant  Registrar Trade Marks, Mumbai, which shows that on 21.9.1982, plaintiff  company filed an application (No.395483) in Class 24 to register the trade  mark ‘DUNHILL’ in respect of Tissues (piece-goods), bed and table covers  and other textile articles. On 27.9.1990, defendant No.1 company filed a  notice of opposition mainly on the ground that it has adopted the trade  mark ‘DUNHILL’ in respect of textile articles since 31.5.1986 and by virtue  of honest adoption and continuous use of the trade mark in respect of the  textile articles, it has acquired proprietary rights of the said trade mark  within the meaning of Section 18(1) of the Trade and Merchandise Marks Act.  The defendant company had also filed an application (No.518177) for registration of the said trade mark in class 24. Rejecting the application  No.518177 and the objections raised by defendants, the Assistant Registrar  Trade Marks held that plaintiff company is the registered proprietor of the  mark ‘DUNHILL’ in a number of classes in India since the year 1923. He  further held that plaintiff company is the prior user and adopter of the  mark ‘DUNHILL’ in India in respect of Tissues (piece-goods) bed and table  covers, and textile articles included in class 24. He, therefore, allowed  plaintiff’s application for registration of the trade mark ‘DUNHILL’ and  rejected defendant’s application No.518177. Admittedly, defendants have not  preferred any appeal against the said order of the Assistant Registrar,  Trade Marks.\n<\/p>\n
 11. It is significant to mention that the aforesaid order clearly shows  that plaintiff company is the registered proprietor of the mark ‘DUNHILL’  in a number of classes in India since 1923. This circumstance, to a great  extent, probably the case of plaintiff that defendants were aware of  plaintiff’s use of trade mark and trade name ‘DUNHILL’ much before incorporation of defendant company and defendants adopted the ‘DUNHILL’ mark and  name with a consciousness of plaintiff’s mark and of the aura surrounding  it and further, defendants were well aware of the benefits which would  accrue to them from its use. As noticed earlier, plaintiff company is in  the field of trade and commerce for more than 100 years and it has acquired  global reputation, image and goodwill. Plaintiff’s products are generally  very high in price and cater to those who are affluent or sophisticated.  Plaintiff’s products in general convey the impression of high quality.  Thus, the image conveyed by plaintiff’s goods is one of sophistication and  high quality. By using the name of DUNHILL in respect of their goods, the  image sought to be conveyed by defendants in the marketing of their goods  is precisely the same. It follows that an average customer would find an  association or relationship between the textile articles purveyed by plaintiff company on the one hand and the textile articles with the trade name  DUNHILL as marketed by defendants. The reason being that goods are related  if they are used in conjunction with one another or are associated together  in some way in the minds of the consuming public.\n<\/p>\n
 12. In the suit of instant nature, the real test is whether defendants  have any right to represent their business as the business of plaintiff. It  ultimately leads to the question as to why defendants were using the trade  name DUNHILL to their products. The defendants have not offered any explanation whatsoever as to why the mark ‘DUNHILL’ was being used by them. The  name ‘DUNHILL’ is neither parental name of defendants nor in any way connected with them. As noticed earlier, the mark ‘DUNHILL’ is attributable to  the surname of Alfred ‘DUNHILL’. All of the goods marketed by plaintiff  company are sold under the trade mark and trade name ‘DUNHILL’. The trade  mark and trade name DUNHILL has become distinctive of the plaintiff’s goods  as a result of substantially exclusive and continuous use in commerce since  1893. Thus, in my opinion, the user of the trade name ‘DUNHILL’ by defendants is indicative of their intent. It follows that defendants desire to  market their goods under the name or mark ‘DUNHILL’ with a view to trade  upon and encash on the name, fame, reputation, image and goodwill acquired  by the plaintiff company.\n<\/p>\n
 13. Learned counsel for defendants contended that the mark ‘DUNHILL’ not  having been associated in the public mind of this country with textile  articles, these goods being of a totally different character from those of  the plaintiff’s goods, defendants’ user of the said mark or name in respect  of textile articles cannot constitute any passing off of their goods as  those of plaintiff. In my opinion, the said submission of the learned  counsel does not hold much water. It is well settled that a passing off  action would lie even if the plaintiff is not manufacturing or producing in  this country any goods similar to that of the defendants. (N.R. Dongre Vs.  Whirlpool Corporation (supra); Apple Computer Inc. Vs. Apple Leasing and  Industries 1992(1) Arbitration L.R. 93). A passing off action would lie  where a misrepresentation is likely to be caused or a wrong impression is  created as if the product was of some one else. In Ellora Industries Vs.  Banarsi Dass , it was held that “confusing customers as  to source, is an invasion of another’s property right.” As noticed earlier,  the word ‘DUNHILL’ when used as a trade mark or trade name is recognized by  one and all in the relevant trade as denoting goods of the plaintiff company. It has to be borne in mind that a consumer buys an article because of  its source and the features by which the consumer distinguishes that  source. The plaintiff has prima facie established a distinctive reputation,  image and goodwill in the trade mark and trade name ‘DUNHILL’ and it has a  valuable right in that distinctive reputation and goodwill. Admittedly,  defendant No.1 has adopted the mark ‘DUNHILL’ as part of its corporate  name. On a balance of probabilities, I am of the opinion that the consuming  public will confuse the source of defendants’ goods with the mark ‘DUNHILL’  with the source of the textile articles and other items marketed by plaintiff. In order words, defendants’ use of plaintiff’s mark ‘DUNHILL’ is  likely to cause confusion as to the source or origin of its product. The  likelihood of confusion is further enhanced by the relationship between  plaintiff and defendants’ goods. The standard of consumer to be regarded is  that of an ordinary shopper, going about his shopping in an ordinary way.  There is bound to be confusion in shopper’s mind in relation to the trade  mark and trade name ‘DUNHILL’ on the textile articles marketed by defendants. An ordinary average shopper, shopping in the places in which the  textile articles are available for purchase, and under the usual conditions  under which such a purchase is likely to be made, is likely to be deceived.\n<\/p>\n
 14. On the basis of the foregoing facts, I am of the opinion that the  plaintiff’s trade mark and trade name DUNHILL is entitled to protection and  the defendants’ use of ‘DUNHILL’ on their goods is likely to cause confusion or to deceive consuming public in the belief that such goods of defendants are made by, sponsored by or connected in some way in trade with  plaintiff and to cause confusion or mistake or to deceive consuming public  as to the source or origin of defendants’ goods.\n<\/p>\n
 15. Learned counsel for defendants contended that plaintiff company was  fully aware that defendants have been using the mark ‘DUNHILL’ since 1986  and it has approached this court after a lapse of 11 years. This delay,  according to the learned counsel, is fatal to the plaintiff’s application  for temporary injunction. In M\/s. Hindustan Pencils (Pvt) Ltd. Vs. M\/s.  India Stationary Products Co. , it was held that in the  case of passing off action or infringement of trade mark, delay by itself  cannot come in the way of granting injunction. That apart, it is also  significant to mention that the order dated 10.2.1995 passed by the Assistant Registrar of Trade Marks Mumbai clearly shows that on 21.9.1982, plaintiff company filed an application No.395483 in Class 24 to register the  trade mark DUNHILL in respect of textile articles. In 1990, defendant No.1  company filed application to the said application and the Assistant Registrar passed the order on 10.2.1995. This suit has been instituted in 1997.  It appears that the plaintiff company refrained from instituting common law  action presumably with the belief that the matter would be resolved in the  aforesaid proceedings. Thus, plaintiff co. had acted reasonably and had not  slept on its rights. The defendant company acted on its own peril by continuing to use the mark ‘DUNHILL’. The delay of 11 years was excusable  because plaintiff was engaged in the legal proceedings on the same subject  against defendants.\n<\/p>\n
 16. In a last ditch attempt and indeed what appears to me an argument of  desperation, learned counsel for defendants has attempted to contend that  plaintiff company had abandoned the mark ‘DUNHILL’. It is significant to  mention that the written statement is conspicuous by the absence of the  plea of abandonment of the mark ‘DUNHILL’ by plaintiff. Learned counsel for  the defendants has invited my attention to para No.16 of the written statement in support of the plea of abandonment. Para No.16 of the written  statement is as under:-\n<\/p>\n
   “16. Regarding para 16 the particulars of 13 registration and 6   application for registration of trade marks DUNHILL are matters   of the record of the Registry. According to the enquiry made by   the defendants, all the plaintiff’s DUNHILL trade marks are not   use in India and all the plaintiff’s registered trade marks were   liable to be removed from the register on the ground of non use.”\n<\/p>\n
 16. How the intention to abandon on the mark is to be proved has been laid  down in ‘Law of Unfair Competition and Trade Marks’ by Harry D. Nims,  Vol.2, 4th Edition. Reference may, in this connection be made to Article  408 at page 1264, which reads as under:\n<\/p>\n
   “Abandonment in industrial property is an act by which the public   domain originally enters or re-enters into the possession of the   thing (commercial name, mark or sign), by the will of the legitimate owner. The essential condition to abandonment is that the   one having a right should consent to the dispossession. Outside   of this there can be no dedication of the right, because there   cannot be abandonment in the juridical sense of the word. Abandonment results in a forfeiture and must be strictly proved, and   the burden of its establishment is upon the party affirming it.   Abandonment is purely a question of intent.”\n<\/p>\n
 17. Bearing in mind the aforesaid observations, I am constrained to observe that the averments made by defendants in para No.16 of the written  statement do not constitute the plea of abandonment. It was nowhere pleaded  in the written statement that plaintiff company had abandoned its exclusive  rights to its corporate title and the trade name ‘DUNHILL’. On the contrary, defendants have not denied the averments made in para No.16 of the  plaint to the effect that plaintiff holds trade mark registrations in India  in respect of wide variety of goods detailed in the said paragraph of the  plaint. The defendants simply pleaded that these registrations were liable  to be removed from the register on the ground of dis use. The defendants  have not pleaded the length of the alleged period of disuse. There is  nothing on record to show or suggest that plaintiff company has abandoned  the mark ‘DUNHILL’.\n<\/p>\n
 18. It is an admitted position that plaintiff’s products are being sold at  the duty free shops in India. Transborder reputation of the trade mark and  trade name DUNHILL has been, in my view, established in this country by  means of the fact that plaintiff products are available on duty free shops  in India, by the fact that advertisement of plaintiff’s goods under the  trademark and trade name ‘DUNHILL’ are to be found in various magazines  like the Newsweek, Time and the Asia Magazine, which are freely available  in India. In this view of the matter, it can safely be inferred that  plaintiff’s trade mark and trade name DUNHILL has a live reputation in this  country. This circumstance alone is sufficient to counter the contention of  the learned counsel for the defendants that the plaintiff had abandoned the  mark ‘DUNHILL’.\n<\/p>\n
 19. Assuming for the sake of arguments that textile articles manufactured  by plaintiff are not available for sale in India, yet plaintiff company is  entitled to protect its global reputation, image, name, fame and goodwill  as the goodwill or image or reputation of goods and marks does not depend  upon its availability in a particular country. In this connection, I may  usefully excerpt the following observations of a Division Bench of this  Court in N.R. Dongre Vs. Whirlpool Corporation supra:\n<\/p>\n
   “The knowledge and awareness of a trade mark in respect of the   goods of a trader is not necessarily restricted only to the   people of the country where such goods are freely available but   the knowledge and awareness of the same which is even the shores   of those countries where the goods have not been marketed. When a   product is launched and hits the market in one country,k the   cognizance of the same is also taken by the people in other   countries almost at the same time by getting acquainted with it   through advertisements in newspapers, magazines, television,   video films, cinema etc. even though there may not be availability of the product in those countries because of import restrictions of other factors. In today’s world it cannot be said that   product and the trade mark under which it is sold abroad, does   not have a reputation or goodwill in countries where it is not   available. The knowledge and awareness of it and its critical   evaluation and appraisal travels beyond the confines of the   geographical area in which it is sold. This has been made possible by development of communication systems which transmit and   disseminate the information as soon as it is sent or beamed from   one place to another. Satellite Television is a major contributor   of the information explosion. Dissemination of knowledge of a   trade mark in respect of a product through advertisement in media   amounts to use of the trade mark whether or not the advertisement   is coupled with the actual existence of the product in the market.”\n<\/p>\n
 20. On the foregoing discussion, I find and hold that plaintiff company  has made out a prima facie case for grant of an ad interim injunction  against defendants. Balance of convenience is clearly in favour of grant of  an ad interim injunction inasmuch as in the suit of instant nature, not  only the interest of a proprietor of the mark but also the interest of the  consuming public has to be protected from likely deception or confusion in  the goods which he intends to buy and the goods which are likely to be  offered to him. Unless defendants are restrained by grant of temporary  injunction during pendency of suit, irreparable loss and injury will be  caused to plaintiff by defendants continuing to pass off their goods as  those of plaintiff.\n<\/p>\n
 21. For the foregoing reasons, the application is allowed and defendants,  their directors, officers, agents, servants, employees and all those acting  otherwise in privity or in concert with defendants are restrained from  using plaintiff’s trade mark and trade name DUNHILL in connection with the  sale of their goods and\/or articles or from using any words or letters  which in any way imitate or stimulate the trade mark and trade name DUNHILL  so as likely to cause confusion or mistake or to deceive.\n<\/p>\n
 22. Before I part with this order, I would like to make it clear that the  said order shall remain in operation till the disposal of the suit and  nothing stated herein shall affect the rights of the parties that are being  agitated in the suit.<\/p>\n","protected":false},"excerpt":{"rendered":"
Delhi High Court Alfred Dunhill Limited vs Kartar Singh Makkar & Ors. on 1 March, 1999 Equivalent citations: 1999 IIAD Delhi 789 Author: M Siddiqui Bench: M Siddiqui ORDER M.S.A. Siddiqui, J. 1. The plaintiff has filed this suit seeking injunction against the defendant to prevent passing off and rendition of accounts. Along with the […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_lmt_disableupdate":"","_lmt_disable":"","_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[14,8],"tags":[],"class_list":["post-107703","post","type-post","status-publish","format-standard","hentry","category-delhi-high-court","category-high-court"],"yoast_head":"\nAlfred Dunhill Limited vs Kartar Singh Makkar & Ors. on 1 March, 1999 - Free Judgements of Supreme Court & High Court | Legal India<\/title>\n<meta name=\"robots\" content=\"index, follow, max-snippet:-1, max-image-preview:large, max-video-preview:-1\" \/>\n<link rel=\"canonical\" href=\"https:\/\/www.legalindia.com\/judgments\/alfred-dunhill-limited-vs-kartar-singh-makkar-ors-on-1-march-1999\" \/>\n<meta property=\"og:locale\" content=\"en_US\" \/>\n<meta property=\"og:type\" content=\"article\" \/>\n<meta property=\"og:title\" content=\"Alfred Dunhill Limited vs Kartar Singh Makkar & Ors. on 1 March, 1999 - 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