Icrave Llc vs Icrave Designs Pvt Ltd on 5 July, 2012

[Cites 8, Cited by 3]

Delhi High Court

Icrave Llc vs Icrave Designs Pvt Ltd on 5 July, 2012

Bench: Kailash Gambhir

* IN THE HIGH COURT OF DELHI AT NEW DELHI

IA No.19/2012 in CS(OS) 1/2012

Judgment delivered on: 5.7.2012

ICRAVE,LLC ..... Plaintiff
Through Mr. Neeraj Grover, Adv.

versus

ICRAVE DESIGNS PVT LTD ..... Defendant
Through Mr. Samrat Nigam, Adv.

CORAM:
HON'BLE MR. JUSTICE KAILASH GAMBHIR

1. This order shall dispose of the application filed by the plaintiff under

order 39 Rules 1& 2 read with Section 151 of the Code of Civil Procedure.

Before I deal with the said application it will be necessary to give narration

of brief facts of the case as set out by the plaintiff in the plaint and the

defence raised by the defendant in the written statement. The plaintiff has

filed the present suit for permanent injunction restraining the defendants,

its directors/ proprietor/ partners etc from using the trade-mark / trade-

name ICRAVE or any other mark/name as may be confusingly or deceptively

similar to the said trade-mark/trade- name of the plaintiff in respect of

goods of their manufacture and sale and services provided by them
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amounting to passing off their goods and services and business of the

plaintiff and from taking any benefit of the reputation or goodwill of the

plaintiff in respect of the said trade-mark or name ICRAVE in any manner

whatsoever. The plaintiff has also prayed for an order of delivery up and has

also claimed damages to the tune of Rs.20,05,000/- from the defendants for

passing off the goods and services of the plaintiff. The plaintiff is a Limited

Liability Company and is said to be a world renowned Design Studio having

its headquarters in New York, USA and is engaged in providing consultancy

and turn key project services in the area of interior and architectural

designing and is amongst the market leaders in the said field world wide.

The plaintiff has claimed that in the year 2002 the plaintiff coined and

adopted the inherently distinctive mark ICRAVE as its trademark and also

as a prominent part of its trade name and since then the plaintiff has

established a high profile client base in the hospitality and retail sectors and

the reputation of the plaintiff is well known for delivering many of the

Manhattan‟s top nightclubs and restaurants including six restaurants within

the new terminal at USA‟s John F.Kennedy International Airport. The

plaintiff has further claimed that its reputation grew over the years around

the globe from the Mc Cormick Center in Glasgow, Scotland to the recently

opened Holland Casino in Rotterdam, Netherlands. The details of various

such projects have been given by the plaintiff in para 3 of the plaint. The

plaintiff has also claimed that it has been recognized from time to time for

its quality services in the area of interior and architectural design and in
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pursuance of this recognition in the said field the plaintiff has been

recipient of innumerable international awards and some of them have been

detailed by the plaintiff in para 4 of the plaint. The plaintiff has also claimed

that the name of the plaintiff and its projects have been in news world-wide

through various newspapers and magazines having global circulation and

prominent among those have been Razor, Mondo, Club Systems, Zink etc.

and that many of such publications have a regular circulation in India. The

plaintiff has also claimed that the said trade-mark/trade-name of the

plaintiff is used alongwith stylized version ICRAVE. The plaintiff has also

claimed that ICRAVE is a coined term and has no dictionary meaning and

due to long and extensive use of the said trade mark consuming public

across the world today associates the said mark with the plaintiff alone and

none else. The plaintiff has also claimed that it has considerable presence in

India since the last many years and substantial segment of the public which

uses and require such services associate the trade name ICRAVE

exclusively with the name of the plaintiff. The plaintiff has also claimed that

it has been receiving business queries from various Indian entities since the

last 3-4 years and the plaintiff has been forwarding its proposals to many

Indian companies. The plaintiff has placed on record few such proposals as

were forwarded by it to the renowned Indian entities such as Fame

Multiplex at Bangalore, Adlabs Multiplex in Mumbai and Jubilee Hills and

Restaurant and Lounge in Hyderabad way back in the year 2008-09. The

plaintiff has further claimed that in addition to the above proposals the
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plaintiff was also engaged in advanced discussions for various projects in

various parts of India,the details of which are in para 10 of the plaint. The

plaintiff has thus claimed that it has presence all over India and has a

substantial trans-border and spill over reputation in India especially after

the popularity gained by the plaintiff after completing various projects at

USA‟s John F.Kennedy Airport which as per the plaintiff is visited by

thousands of Indians when such Indians have opportunity to appreciate the

plaintiff‟s work and bring such reputation to India in both tangible and

intangible form. The plaintiff has further claimed that it has presence on the

World Wide Web being owner of the domain name www.icrave.com after

the website was created by the plaintiff on 23.8.2010. The plaintiff has

further claimed that it has earned USD 39,37,878 in the year 2010 through

world wide sale of its products and services. The plaintiff has also claimed

that in order to acquire statutory rights of its said trade mark the plaintiff

had filed application for registration of the said trade-mark in India as well

in respect of goods and services falling in classes 19,20,42 & 43.

2. Further The case of the plaintiff is that in the month of November

2011 representatives of plaintiff discovered the use of its trademark/trade

name by the defendant when the plaintiff was carrying diligence search on

the internet and was alarmed to learn that the defendant is using identical

trade mark/trade name in respect of its services and have also registered a

domain name identical to that of the plaintiff being www.icravedesigns.com.

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The plaintiff has further claimed that the defendant is also engaged in the

architectural and interior designing services which are identical to the field

of the plaintiff. The plaintiff has claimed that the defendant company was

incorporated only in the year 2010 much after the plaintiffs adoption and

use of its trade-mark ICRAVE. The plaintiff has submitted that use, sale and

advertisement of products and services by the defendant under the trade

mark/trade name ICRAVE amounts to passing off of the plaintiffs services

and use of such similar trade mark by the defendant is nothing but an

attempt to wrongfully trade upon the plaintiff‟s goodwill and is done with

the sole intent to mislead the public and to cause confusion and deception

in their minds to make them falsely believe that the goods and services of

the defendant originates from the plaintiff or at least have some affiliation.

Based on the above facts the plaintiff has claimed grant of ad-interim

injunction in its favour.

3. In the written statement filed by the defendant, the defence raised is

that the plaintiff has very localized business and has no trans-border

reputation whatsoever. The defendant also states that the plaintiff has

miserably failed to place on record any document or letter to show that it

has any business in India or it has spent any amount on advertisement in

India or that it has acquired any goodwill or reputation in India or the

defendant at any occasion has misrepresented its name to the clients of the

plaintiff in India. The defendant further states that the defendant company

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was incorporated on 11.2.2010 under the name and style of ICRAVE

Interiors Pvt. Ltd. and the name of defendant company was changed from

ICRAVE Interiors Pvt. Ltd. to ICRAVE designs Private Limited. It is also the

case of the defendant that earlier the defendant had proposed to set up the

name of company as CONCEPTS but since the said name was not available

in the records of ROC therefore they were compelled to select the present

name. It is also the case of the defendant that the defendant had engaged

the services of a firm named M/s Rave Designs for the selection of a new

name of their company with logo and design and out of the few names

suggested by the said company, ICRAVE was selected by one of their

Directors as the composite meaning of the said word is innovative design or

zeal to do something. It is also the case of the defendant that the consumer

public in India associate the name of ICRAVE with the defendant alone and

at present the defendant company has 17 running projects as per the details

given in para 7 of the written statement. It is also the case of the defendant

that they have been spending huge amounts on account of advertising and

they have their own web portal. It is also the case of the defendant that

various clients and customers approach the defendant company because of

their own reputation and goodwill and no clients or customers of the field

recognizes the plaintiff in the said field so far the business in India is

concerned. The defendant has further stated that the plaintiff has filed their

application to seek registration of trade mark only in August 2011 without

explaining the fact as to why they had moved said application at such a late
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stage although they had claimed that they are in the business since 2002.

The defendant has seriously refuted the use of trade-mark ICRAVE by them

means passing off the plaintiffs services or the defendant company in any

manner is encashing upon the alleged goodwill of the plaintiff. The

defendant has further stated that they did not know or come across the

aforesaid trademark ICRAVE at any point of time and therefore adoption of

the said trade mark by the defendant is absolutely bonafide and that too

after the said name was suggested by a third company engaged in this field.

4. Expansive arguments were addressed by counsel representing both

the parties. Mr.Neeraj Grover, counsel representing the plaintiff contended

that the plaintiff has substantial trans-border and spill over reputation in

India and this reputation of the plaintiff had increased manifold after it

completed many projects at USA especially the John F.Kennedy

International Airport project. Counsel further argued that the use of

identical trade-mark/trade-name by the defendant is nothing but an attempt

to wrongfully trade upon the plaintiff‟s goodwill and reputation of the

plaintiff. Counsel further argued that the malafides of the defendant are

apparent as it has also adopted identical domain name as that of the

plaintiff. Counsel further argued that the defendant cannot claim that just

as a coincidence they have adopted the same trade name. Counsel further

argued that before adopting the said name, the defendants either have not

done due diligence as on one click of the mouse on google search one can

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easily find the said trade-mark/trade-name of the plaintiff and its prior

existence. Counsel further argued that through internet research the

plaintiff could find that M/s Rave Designs, whose services were alleged to

have been engaged by the defendant for suggesting the name of their

company, trade name, logo etc were found to be a reseller of wooden

flooring instead of a professional brand consultation agency as has been

claimed by the defendants. Counsel further argued that the plaintiff has

sufficient material on record to prove prior adoption and use of the said

trade-mark/trade name ICRAVE since the year 2002 and also the fact that

the plaintiff has been receiving business queries from India much prior to

defendants adoption of the said name. Counsel further argued that physical

presence of the plaintiff in the territory of India is no-longer a pre-requisite

for claiming relief of passing off in terms of the law laid down by the

Supreme Court in the case of Milment Oftho Industries & Ors. vs. Allergan

Inc 2004 (28) PTC 585 SC. Counsel for the plaintiff further placed reliance

on the judgment of this court in the case of Austin Nichols & Co.& Anr. vs

Arvind Behl & Anr. 2006(32) PTC 133 (Del) and a Division Bench judgment

of this court in the case of Century Traders Vs.Roshan Lal Duggar & Co.

AIR1978Delhi250. Counsel further referred to the judgment of the Hon‟ble

Division Bench of the Madras High Court in the case of Caesar Park Hotels

and Resorts Inc Vs. Westinn Hospitality Services Ltd. 1999PTC(19)(DB)123

to support his argument that physical presence in the territory of India is

not a pre-requisite for claiming the relief of passing off. Counsel further
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argued that proof of actual damage is unnecessary in a passing off action

and it would suffice if there is likelihood of the offending trade mark

invading the proprietary rights of the plaintiff. Counsel further argued that

it is a well settled principle of law that passing off action is not restricted to

the same set of goods and services and remedy is available to all goods and

services. In support of this argument counsel for the plaintiff placed

reliance on the following judgments:

1. Dailmer Benz Vs. Hybo Hindustan 1994 PTC 287

2. Honda Motors Vs. Charanjeet Singh 2003(26) PTC 1

3. Larsen & Toubro Ltd. Vs. Lachmi Narain Traders 2008(36) PTC 223 (del) (DB)

4. Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills 2009(41) PTC 184 (Cal.)(FB)

5. Counsel further argued that the defendant is also engaged in the

same field and therefore any consumer requiring services in the same field

would certainly believe the association of the defendant with that of the

plaintiff. Counsel thus argued that the nature of business and the field has

to be kept in mind as in the field of architecture and designing there is not

a long list of consumers and therefore there is every likelihood of deception

and confusion being caused to the person or company requiring to engage

the services in the said field. Counsel further argued that millions of people

visit the John F.Kennedy international airport and therefore it cannot be

said that reputation and goodwill of the plaintiff company has not travelled

to India. Counsel further submitted that through various advertisements in
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magazines and newspapers having world wide circulation, the reputation of

the plaintiff has travelled far and wide and the Indian consumer public

cannot remain ignorant of the same.

6. Opposing the said arguments of the counsel for the plaintiff,

Mr.Samrat Nigam, counsel for the defendant, with no less vigour argued

the case of the defendant. Counsel submitted that the plaintiff has not

claimed any statutory violation of its trade-mark/trade name as the plaintiff

has not yet been granted registration of the said trade mark/trade name in

India. Counsel further argued that the case of the plaintiff is based on

passing off but the plaintiff has failed to fulfill the necessary ingredients for

claiming a relief on the basis of alleged passing off action as neither the

plaintiff has any goodwill so far as India is concerned nor the use of the said

trade mark has caused any damages to the plaintiff as there was not any

kind of misrepresentation by the defendant in the adoption of the said

trade-mark. Counsel further argued that even as per the own case of the

plaintiff it has no base in India and none of the projects on which the

opinion of the plaintiff was sought by the alleged consumers in India have

fructified into any concrete contract. Counsel further submitted that the

plaintiff may have reputation or specialization in a limited field of designing

lounges, casinos etc and therefore it cannot claim that it has any trans-

border reputation in every field of architecture and designing, and in any

case not in the field where the defendant is engaged. Counsel further

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argued that the consumer today is very wise and they are well aware of the

fact that whose services they are undertaking and for what purpose.

Counsel further argued that the plaintiff has a very localized business and

has no trans-border reputation whatsoever and in any case the plaintiff has

no goodwill or reputation so far India is concerned. Counsel also submitted

that the plaintiff has failed to place on record any document to show that it

has any business in India or it has any earnings from any of projects

handled by it in India. Counsel further argued that clients and customers of

the defendant company engaged their services on the basis of reputation of

defendant company itself and not because of existence of similar trade mark

or brand name elsewhere in the world. Counsel thus submitted that over a

period of time, the defendant has created a niche in the said field of

architecture and design and there will be a threat to the reputation and

goodwill of the plaintiff company only if the plaintiff company undertakes

any project in the same field. Counsel further argued that the copies of the

magazines and newspapers in which the plaintiff has claimed to have

advertised has not been annexed by the plaintiff with the plaint and

therefore no weightage can be given to any such assertion made by the

plaintiff . Counsel further argued that the defendant has bonfidely adopted

the said trade mark without knowing about the existence of the said trade

mark of the plaintiff company and that too at the advise of a professional

brand consultancy firm. Counsel thus submitted that the plaintiff has

neither tangible or intangible presence in the said field in India and
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therefore cannot claim any restrain order against the defendant as the

defendant are getting business because of their own excellence and quality

work in the field of architecture and design and not due to the goodwill of

the plaintiff .

7. I have heard learned counsels for the parties and have given by

thoughtful consideration to the arguments advanced by them. I have also

carefully gone through the pleadings of the parties and documents placed

by them on record. Before I proceed to decide the rival contentions of the

parties, some of the facts prima-facie not in dispute between the parties are

as under:-

i. That the plaintiff is the registered owner of trade-mark/trade-name

ICRAVE with its registration in USA which dates back to the year

2002. Necessary documents have been placed on record by the

plaintiff to this effect.

ii. Plaintiff is also the owner of the domain name www.icrave.com

from the year 2010 and documentary evidence to this effect has

also been placed on record by the plaintiff

iii. Plaintiff is engaged in providing consultancy and turn key project

services in the area of interior and architectural designing and

amongst various projects undertaken by the plaintiff one of the

landmark project is completing various projects at USA‟s John

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F.Kennedy International Airport and its projects have been in news

worldwide through various newspapers and magazines having

global circulation. Documentary material to this effect has also

been placed on record by the plaintiff.

iv. That the plaintiff was engaged in advanced discussions for various

projects in various parts of India as per the details disclosed by the

plaintiff in para 10 of the plaint. The plaintiff till date has not

undertaken any project in India and the projects for which the

plaintiff was consulted never fructified into any final contracts.

v. The defendant has also adopted the said trade mark ICRAVE as a

part of its corporate name after its incorporation in the year 2010.

The defendant is also engaged in the consultancy services in the

field of architecture and interior designing. The defendant had

engaged the services of M/s Rave Designs for the selection of the

said trade name ICRAVE after various suggestions were given by

the said company.

vi. The defendant company has 17 running projects as on date as per

the list given by the defendant in the written statement.

vii. Both the plaintiff and the defendant are engaged in the common

field i.e. architectural and interior designing, infrastructure

development and designing etc.

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8. In the backdrop of the aforesaid facts which are by and large not in

dispute between the parties, this court will proceed to test the case of the

plaintiff for the grant of ad-interim injunction in the light of the established

principles for the grant of injunction. These principles which are well known

in the legal world inter-alia are that whether plaintiff has made out a

prima-facie case,(ii) whether the balance of convenience is in favour of the

plaintiff (iii) whether the plaintiff would suffer an irreparable injury if his

prayed for whether the protection from the species of injuries of

irreparable loss is necessary before the legal right of the plaintiff can be

established and that whether the mischief of inconvenience which is likely

to arise from withholding the injunction would be greater than what is likely

to arise from granting it. It is also a settled principle of law that at the stage

of deciding application for temporary injunction, the court is not required to

go into the merits of the case in detail and what the court has to examine is

that a prima-facie case has been established by the plaintiff for trial of the

case.

9. World-over, the first lesson that is taught to every child entering the

school is that one should not cheat by copying from the answer sheet of the

other student. This principle still holds good in every school as philosophy

behind this principle is that if one student has prepared for his exam by his

hard work and devotion then his work should not be copied by the other

student without putting the requisite hard work and devotion by him as

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well. The students of yesteryear when they enter in the commercial world

tend to forget this basic principle and tenents of morality and ethics. What

is called when one copies the answer sheet of other student in examination

as cheating and when any person engaged in commercial world without

putting any hardwork and devotion either uses the trade-name or the brand

name of the other company or steals any artistic or other performing art of

other person or copies designs, logo etc of other person or company it is

called infringement . The said basic principle has been expressed by various

courts in different ways through catena of legal decisions.

10. Admittedly, the case at hand is not a suit for infringement but

an action in the tort of passing off . It is a settled legal position that in an

action for passing off, the plaintiff has to establish that his business or

goods have acquired the reputation he is claiming by showing that his

trade name has become distinctive of his goods and services and the

consuming public associates such goods and services with the trade name

of the plaintiff .The plaintiff, however, is not required to establish fraudulent

intention on the part of the defendant but what is required to be

established is that there is likelihood of deception or confusion in the

mind of public at large if the defendant is allowed to use the trade name of

the plaintiff. The plaintiff should be able to establish that the said confusion

is likely to cause damage or injury to the reputation, goodwill and name of

the plaintiff. Here, it would be relevant to refer to the judgment of the

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Apex Court in the case of Laxmikant V. Patel Vs. Chetanbhat Shah &

Anr. 2002(24)PTC1(SC), wherein the Apex Court explained passing off

as under:

"10. A person may sell his goods or deliver his services such as in case of a
profession under a trading name or style. With the lapse of time such
business or services associated with a person acquire a reputation or
goodwill which becomes a property which is protected by courts. A
competitor initiating sale of goods or services in the same name or by
imitating that name results in injury to the business of one who has the
property in that name. The law does not permit any one to carry on his
business in such a way as would persuade the customers or clients in
believing that he goods or services belonging to someone else are his or are
associated therewith. It does not matter whether the latter person does so
fraudulently or otherwise. The reasons are two. Firstly, honesty and fair
play are, and ought to be, the basic policies in the world of business.
Secondly, when a person adopts or intends to adopt a name in connection
with his business or services which already belongs to someone else it
results in confusion and has propensity of diverting the customers and
clients of someone else to himself and thereby resulting in injury."

Thus to prima facie establish passing off action, the plaintiff has to pass the

three tests. Firstly, the plaintiff has to establish that he has considerable

goodwill and reputation in India, secondly; that the trade name of the

plaintiff is distinctive to its goods and services and thirdly; that there is

similarity in the mark of the plaintiff and the defendant which is likely to

cause confusion in the mind of the public.

11. It was vehemently argued by Mr. Samrat Nigam, learned

counsel for the defendant that the plaintiff does not in any manner have any

presence in India , hence the question of any goodwill or reputation does

not arise. The counsel for the defendant also argued that the plaintiff has

in a vague manner claimed that there were business enquiries from India

and none of them have admittedly fructified into any project and thus
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there arises no case of any trans border reputation. The tenets of the law

of trans- border reputation has undergone considerable change in the past

decade with the advent of technology and modes of communication. One of

the first cases to deal with the doctrine of trans border reputation was

Kamal Trading Co. Vs. Gillette U.K. Ltd. (1988) 1 I.L.P.R, wherein the

Hon‟ble Division Bench of the Bombay High Court held that goodwill

cannot be restricted to one particular country in the present scenario of

wide spread advertisement. The relevant paras of the said judgment is

reproduced as under:

"...It is necessary to note that the goodwill is not limited to a particular
country because in the present days, the trade is spread all over the world
and the goods are transported from one country to another very rapidly
and on extensive scale. The goodwill acquired by the manufacturer is not
necessarily limited to the country where the goods are freely available
because the goods though not available are widely advertised in
newspapers periodical, magazines and in other medias. The result is that
though the goods are not available in the country, the goods and the mark
under which they are sold acquires wide reputation. Take for example, the
televisions, and Video Cassette recorders manufactured by National, Sony
or other well Japanese concerns. These televisions and V.C.R's are not
imported in India and sold in open market because of trade restrictions,
but is it possible even to suggest that the word "National" or "Sony" has
not acquired reputation in this country? In our judgment, the good will or
reputation of goods or marks does not depend on its availability in a
particular country.

In yet another case of this High Court in the case of Apple Computer Inc.

Vs. Apple Leasing and Industries (1993)1I.L.P.R63, it was held that it

was not necessary for a plaintiff in a passing off action to carry on business

in India to prove prima facie case and balance of convenience to obtain an

order of interim injunction and it was enough that the plaintiff has

reputation in India. Hence, it is manifest from the above that the goodwill of
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a company and reputation is not limited to the country where the goods and

services of the plaintiff are manufactured but also to another country

where it has reputation and goodwill and the public know about the goods

and services of the plaintiff. It is therefore not imperative for the plaintiff to

prove that it manufactures any goods or services in India in an action for

passing off. Here it would be pertinent to refer to the judgment of this

court in the case of WWF International Vs. Mahavir Spinning Mills

Ltd.1994PTC250, wherein the question of trans border reputation was

considered at length and held as under:

"Mere fact that the plaintiff has never manufactured any products in this
country does not prevent it from acquiring the goodwill here in its trade
mark. It is no doubt true that an action for passing of relates to the
business and it must be established that the plaintiff has a reputation or
goodwill of his business in this country. The foundation for the action for
passing off is the protection of goodwill and so, one must prove the
existence of goodwill in this country before obtaining a relief of passing
off. The principle of law of passing off has been also made applicable to
non-trading business or non-profit making bodies as well."

The law was finally settled by the Apex Court in the case of N.R. Dongre

Vs. Whirlpool Corporation 1996(16)PTC583 wherein, the court

considered the question of trans border reputation and laid down that the

mark had considerable reputation in India even though it was not sold in

India as washing machine being a product used by considerable section

public thinking the consumer were well aware of the existence and the

goodwill and reputation of the same in India. Hence, the law is well settled

that to prove goodwill or reputation in a country, it is not incumbent upon

the plaintiff to show that there was actual work or sale of its goods or
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services in that country or that the product or services need to be

manufactured in that country..

12. The plaintiff in the present case, admittedly, is in the market

since 2002 whereas the defendant started its business in 2010. The

argument of the counsel for the defendant was that what is important to

see is who is first in the market in India and the that the public identifies

the tradename ICRAVE with the services of the defendant in India. The

controversy at hand was laid to rest by the Apex Court in the case of

Milment oftho Industries & Ors. Allergan Inc. 2004(28)PTC585(SC),

wherein it was held that what is important is who is first in the world

market. The relevant para of the said judgment is reproduced as under:

"8. We are in full agreement with what has been laid down by this Court.
Whilst considering the possibility of likelihood of deception or confusion, in
present times and particularly in the field of medicines, the Courts must
also keep in mind the fact that nowadays the field of medicine is of an
international character. The Court has to keep in mind the possibility that
with the passage of time, some conflict may occur between the use of the
mark by the Applicant in India and the user by the overseas company. The
Court must ensure that public interest is in no way imperiled. Doctors
particularly eminent doctors, medical practitioners and persons or
Companies connected with medical field keep abreast of latest
developments in medicine and preparations worldwide. Medical literature
is freely available in this country. Doctors, medical practitioners and
persons connected with the medical field regularly attend medical
conferences, symposiums, lectures etc. It must also be remembered that
nowadays goods are widely advertised in newspapers, periodicals,
magazines and other media which is available in the country. This results
in a product acquiring a worldwide reputation. Thus, if a mark in respect
of a drug is associated with the Respondents worldwide it would lead to an

anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be who is first in the market."

IA 19/2012 Page 19 of 28 A similar question came up before this court in the case of Austin Nichols & Co. & Anr. Vs. Arvind Behl & Anr. 2006(32)PTC133(Delhi), in which the plaintiffs were the manufacturer of whisky Blenders Pride which was available for sale in a large number of countries since 1973 and the defendant was manufacturing Blenders Pride in India since 1995. The court held that with huge advances made in information and communication technology over the years, the argument of the defendant that a regular sale of a product in one or more foreign counties would be unknown to a person living in India was without any merit. The court while relying on the judgment of the Apex Court in the case of N.R. Dongre (Supra) and Milment Oftho Industries (Supra) held that merely being first past the post in India is not enough and what is required to be seen is who was first past the post world wide. In the facts of the case at hand the plaintiff has been able to prove that they were established in 2002 with its headquarters in New York i.e., they were established prior to the defendants in the world market and thus prior in time.

13. The other contention of the counsel for the defendant was that the plaintiff has not been able to show that any damage or injury has been caused to its goodwill or reputation by virtue of the fact that the name ICRAVE has been adopted by the defendants. The law on the said subject has been well settled by the Division Bench of this Court as far back as in 1978 in Century Traders Vs. Roshan Lal Duggar & Co. AIR1978Delhi IA 19/2012 Page 20 of 28 250, wherein it was held that the proof of actual damage or fraud is unnecessary in a passing off action where the relief asked for is injunction alone or injunction coupled with rendition of accounts and damages. What is important to see is if there is a likelihood of the offending trade mark invading the proprietary right of the plaintiff, the case for injunction is made out. The said view was fortified by the Apex Court in the case of Laxmikant V.Patel (Supra), wherein it held that the plaintiff in an action for passing off does not have to prove actual damage or injury.

14. The second limb of the argument of the counsel for the defendant was that the defendants have adopted the name "ICRAVE" after engaging a professional brand consultancy firm with the name of M/s. Rave Designs which had suggested them a variety of options but the defendants chose the name " ICRAVE" as it is unique and meaningful as "I" reflected innovation and "CRAVE" means desire and zeal to do something.; the composite meaning of the aforesaid word being „innovative desire or zeal to do something‟, which was immediately selected by the defendants. Admittedly, the word ICRAVE has no dictionary meaning and is an invented and coined word. The explanation put forth by the defendant for adoption of the said word for its business venture is far from convincing and is plainly obscure. Aspersions on the bona fide adoption of the said mark by the defendant is cast by the contention of the plaintiff that M/s. Rave Designs is a seller of wooden furniture and not any brand consultancy firm and surprisingly no document to the contrary has been placed on record by the IA 19/2012 Page 21 of 28 defendant. What benevolently weighs in favour of the plaintiff also is that on punching the words ICRAVE on the internet google search, the first name that comes is the domain name of the plaintiff i.e. www.icrave.com and any brand consultancy firm in its due diligence must have conducted an internet search before suggesting the said brand name and the plaintiff cannot be heard to say that it was completely unaware of the presence of the plaintiff when it set up its domain name as www.icravedesigns.com.

15. The other facet of the argument of the defendant was that the plaintiff and the defendant‟s area of operations is different as the plaintiff caters to five star hotels and lounges whereas the defendant is engaged in interior designing of offices and houses etc. and thus there can be no likelihood of confusion between the said two entities in the mind of the public. Unfortunately, the said argument of the defendant does not hold any water as the services of both the plaintiff as well as the defendant is in the realm of interior designing and architecture and it would be nothing but a desolate endeavour to bifurcate and fork out sub divisions in the same for the purposes of an action of passing off. Furthermore, it is a settled legal principle that passing off is not restricted to same set of goods and services and the remedy is available to all sets of goods and services. Here, it would not be out of place to mention land mark cases of this court in this regard. In the case of Dailmer Benz Vs. Hybo Hindustan 1994PTC287, wherein, the plaintiff was the manufacturer of world class luxury cars Mercedes Benz and the defendant used the name Benz for IA 19/2012 Page 22 of 28 manufacturing and selling underwears and the court taking note of the goodwill and reputation of the plaintiff restrained the defendant from using the said mark. Another case is of Honda Motors Co. Ltd. Vs. Charanjit Singh & Ors.2003(26)PTC1(Del) wherein the plaintiff was the manufacturer of cars and automobiles and the defendant used the said mark on pressure cookers and the court granted interim injunction against the defendant and held that the plaintiff‟s and defendant‟s sets of goods or services need not be identical and the plaintiff does not have to be in direct competition with defendant to suffer injury from the use of its trade name by the defendants. The Hon‟ble Division Bench of this court in the case of Larsen & Toubro Ltd. Vs. Lachmi Narain Trades & Ors. 2008(36)PTC223(Del.)(DB) held that dissimilarity in products in which the parties trade does not make any material difference in so far as the grant or refusal of injunction against the defendant in an action for passing off is concerned. Here it would be relevant to quote the observations of the Hon‟ble Full Bench of the Calcutta High Court in the case of Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills 2009(41)PTC184(Cal.)(FB) as under:

"Where the defendant's activities, although not in an area of business in which the claimant is engaged, are in an area of business which might be assumed to be a natural extension of the claimant's business, likelihood of deception will readily be inferred. However, even where the fields of activity in which the claimant and the defendant are engaged are remote from each other, it is possible for deception to occur if the name or mark used is highly distinctive, or if the claimant's mark or name is well known and is closely copied with regard to style, lettering etc."

IA 19/2012 Page 23 of 28

From the above it would be manifest that it is not the obligation of the plaintiff to prove that the plaintiff and the defendant are operating in the same sphere to claim an injunction in an action for passing off. In the case at hand, both the plaintiff and the defendant are operating in the same field by and large and the distinction carved out by the counsel for the defendant is inconsequential and immaterial as even if they operate in different fields it would not be a yardstick in an action of passing off.

16. Now coming to the meat of the matter, whether there is deceptive similarity or the likelihood of confusion in action for passing off in the present case. Here it would be relevant to refer to the judgment of the Apex Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001PTC300(SC) where the Court held that in a passing off action for deciding the question of deceptive similarity the following facts had to be taken into consideration:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

b) The degree of resemblance between the marks, phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as trade marks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care IA 19/2012 Page 24 of 28 they are likely to exercise in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods, and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

Determining the instant case on the anvil of above criteria, the two marks are identical in words, phonetically as well. The parties operate in the same field and the target consumers of the both the parties are same and thus there remains not a scintilla of doubt that the marks are identical and prima facie the tort of passing off is established.

17. The Hon‟ble Supreme Court in the case of M/s. S.M. Dyechem Ltd. Vs. M/s. Cadbury India Ltd. 2000(4)SCALE713 had noted that in patent and trade mark litigation it is necessary for the plaintiff to not merely make out a better case than the defendant, but rather, a strong preponderate case in its favour. The plaintiff in the case at hand placed on record the magazines and brochures in which it has advertised and has been considerably commented upon, some of which like Frame, Conde Next and wallpaper having its circulation in India, demonstrates the global presence of the plaintiff in the field of architecture and design. The argument of the plaintiff it‟s also worth its salt when he submitted that the outstanding project of the plaintiff is the terminal at the John F.Kennedy Airport of USA which is visited by many Indians and with them they carry the reputation of the plaintiff to India. It cannot be consigned to oblivion that in the present day age of advancement in communications and IA 19/2012 Page 25 of 28 technology, the world has become flat. Anybody who is interested in engaging the services of a particular industry can with a click of a mouse know the small and big fish that exist in the market. The circulation of tangible forms of magazines has been considerably overshadowed with people reading the morning newspaper on internet to ordering the smallest of products online. In such a scenario of transcending boundaries, the establishing goodwill and reputation in another country is based on awareness quotient of the consumer public which in the case of India cannot be underestimated. Thus, in my considered view, in the present case, the plaintiff has been able to establish that it has considerable reputation and trans border reputation in India. The parties are undeniably in the same business and the attempt of the counsel for the defendant to differentiate the two or the target market has lamentably failed. It is enough for the grant of temporary injunction in favour of the plaintiff that the two marks when viewed and when the question of similarity is posed on a mental recollection, if there exists a likelihood of deception or confusion between the two, the plaintiff would be successful in establishing its case.

18. This court is irked by the submission of the counsel for the defendant that the name of the plaintiff and the defendant being identical is just a mere coincidence, as being in the same business how can the defendant be ignorant about the presence of the plaintiff, who has a world wide reputation. In my considered view, the defendant is feigning IA 19/2012 Page 26 of 28 ignorance about the presence of the plaintiff in the world market and this lack of knowledge on the part of the defendant is hard to believe by this court. The counsel for the defendant with all his verve emphasized that the plaintiff has not registered its trade mark in India and it is only in the year 2011 that they have filed for its registration. What cannot be lost sight of, is the fact in the present circumstances that the defendant though claiming to have a high profile list of clientele with 17 projects running currently has still not applied for the registration of its trade mark.

19. The counsel for the defendant lent much support from the judgment of this court in the case of Sakalain Meghjee Vs. B.M. House (India) Ltd., 2002 (24) PTC 207 (Delhi) to impress upon this court that it was necessary for the plaintiff to establish prima facie reputation and goodwill in India by virtue of its actual work or sale. However, with due respect, in this case, the learned Single Judge did not take into account the judgment of the Supreme Court in the case of N.R. Dongre (Supra), wherein it has been categorically held that there is no need for actual work or sale but only goodwill and reputation in another country which would suffice in an action for passing off. The plaintiff in the present case has placed on record sufficient material to show its reputation in the field of architecture and design world wide and also the interest of the Indian entities in hiring its services for various projects in the metropolitan cities of Mumbai, Hyderabad and Bangalore. Also, in the face of the subsequent judgment of the Apex Court in the case of Milment Oftho (Supra) after the judgment of IA 19/2012 Page 27 of 28 Sakalain (Supra), I need not dwell upon the distinguishing features of the said judgment to the facts of the case at hand as the said judgment of Milment has laid all the controversy at rest as to what is required to be proved by the plaintiff in an action for passing off.

20. Now testing the case of the plaintiff on the tripartite test for grant of ad interim injunction, i.e., prima facie case, balance of convenience and irreparable loss and injury, this court is of the considerable view that the plaintiff has been able to satisfy this court on the said three parameters and hence he is entitled to the grant of ad interim injunction. Accordingly, the defendant, its directors/proprietor/partners, employees, agents, distributors, franchisees, representatives and assigns are restrained from using the impugned trade mark/trade name ICRAVE or any other mark/name as may be confusingly or deceptively similar to the plaintiff‟s trade mark/trade name ICRAVE in respect of goods, of their manufacture and sale and services provided by it amounting to passing off their goods with the goods services and businesses of the plaintiff or in any manner whatsoever, using or incorporating the plaintiff‟s trade mark/trade name or any other trade mark/trade name and from taking benefit of the reputation and goodwill of the plaintiff in any manner whatsoever.

KAILASH GAMBHIR, J July 05, 2012 G/mg IA 19/2012 Page 28 of 28

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