9911796707
TMI Blog2004 (4) TMI 570X X X X Extracts X X X X X X X X Extracts X X X X ..... tion 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 als ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ton/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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... st 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 a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... van 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 A ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... erred 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 jurisdi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... quiescence 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 un ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 Mark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ement 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. W ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... terlocutory 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... elopment 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 mach ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dians 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 count ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ing 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, th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eld 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 discretio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nts 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X
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