Rangoon Chemical Works Private Limited vs Haw Par Brothers International Limited on 26 May, 2010

[Cites 8, Cited by 2]

Karnataka High Court

Rangoon Chemical Works Private Limited vs Haw Par Brothers International Limited on 26 May, 2010

Bench: A.S.Bopanna

I

IN THE HIGH COURT OF KARNATAKA AT BANGALORE
DATED THIS THE 26'?" DAY OF MAY 2010
BEFORE

THE HONBLE MR. JUSTICE AS. BO?ANIs.TA"

_ REGULAR FIRST APPEAL NO. 25 1 /2068   1:    S "

BETWEEN:   -

RANGOON CI-IEIVIICAL
WORKS PRIVATE LIMITED V.  

A COMPANY INCORPORATED 'O?Nf')_I:11"{ "

THE PROVISIONS OF THE COMPANIES

ACT, 1956, HAVING ITS,REGISfI'EREO"_
OFFICE AT "TIGER HOLT_SE", IIIORA" »   
BHAGAL, OPP.JA'I\/IL/-\ I3OARI*>II\:Gf:--.'iI ' f_ 
RANDER, SURA'1'~395 005 "   jy   
REP. I-IEREIN 13Y_'ONE I'_IS Di15{I3C'IT_OI{ ' .
SRIMUI<ESI--IGAIa%II§II\II.AL 2:  

  '   APPELLANT

(BY SRI NAGANAND Sr. COUNSEL POR

SRI SUND'ARASwA_I\/IY R/:\MADAS & SRI ANAND
SRI PRADEEP S SAwI{AI2;' SR} V SUDHISH PAI
SR1, $iRIRJ-XNGA; "SR1 S KAM1-XLACHARI

 "  ..SRI__Ii,-3" S, 'JE;i\1§{A71'ANA"RAYANA, ADVS.)

I '  I-IAW'  BI'{O'.£'i--IERS
" INTER-"(NATIONAL LIMITED
A .Ct3I\/IPANY EXISTING UNDER

V ~  THE LAWS OP SINGAPORE

x _ "HAVING ITS REGISTERED OFFICE
"AT 401, COMMONVVEALTH DRIVE
NO. 03-03, HAVV PAR TECHNO
CENTRE, SIi\3GA.PORi.~Z' 149598
REP. .f--IERIEIN BY ITS DIRECT OR

A



l\.3

2 TIGER MEDICALS LIMITED
A COMPANY EXISTING UNDER
THE LAWS OF SINGAPORE
HAVING ITS REGISTERED OFFICE
AT 401, COMMONWEALTH DRIVE
NO. 03-03, HAW PAR TECHNO
CENTRE, SINGAPORE 149598
REP. HEREIN BY ITS DIRECTOR 

3 ELDER HEALTHCARE LTD, .  ~
A COMPANY INCORPORATED UNDER
THE COMPANIES ACT 1'95G..1-IAVING . ._
ITS OFFICE AT 2143. D1---1.A.NEAJ MAHAL» 
3RD FLOOR APOLLO i3UND_1-j:12:__ -- ' 
MUMBAl--400 039    = ' 
REP. HEREIN BY I"i.'Sf'DIE%1_EG_TOR,'A  _

4 ROYALMED.I_CALS .  '
CHEMISTS--AN.D D§RUG(;§;IS,f1''S~..C''~.._ :
NO. 99 PAT1§L»'J1\LEEi', S'l'R_EE'I' " 
MAGADI  ._    
 I     RESPONDENTS

{BY SRI1: G RAG1»1AvfAN;'*s§?;C_OUNsEL FOR
SR1 F1MURALfSIfIARA.N"-& 
SR1 TLAEMPAANNAE 11>,' Anvs.)

..§ir1§1I$ A131-"xEAI,V_ISFILED U/S 96 OF THE CPC 1908

 V' "AGAIANCST?"TH'I:1«JUDGEMENT AND DEGREE DATED 30.11.07
 PAss_ED.,1N  NO. 5426/95 ON 'm1='; FILE OF 'I'HE VIII
-- ,VC1"1"r'AVC.C_1.v1I, JUDGE, BANGALORE, (CCH--15),

DECREE1NG.__*rE'E sun' FOR PERPETUAL INJUNCTION 8:
IJAMAGES.  '

TIIIS3 APPEAL HAVING BEEN RESERVED FOR

ORIEISRS " ON 21.04.2010, COMING ON FOR
'1iRONOUNCE_M'ENT TPIISAEAY, THE COURT PRONOUNCED

.'_;;_.TEE":+'OLLOw1NG:

fl



JUDGMENT

The defendants in O.S. No. 5426/1995 are before this Court in this appeal against the judg'n1e«iit"_'a.h'du decree dated 30.11.2007. By the said suit of the plaintiff is decreed.

injuncrtion against the ciel'encla11ts"an'd_ i:)e1'so:1s'~claih1i11gR under them from using in i-e1.;§t':.g1q to iziiilyyyy any other medical produCtj,~"'the trade Flying Tiger Balm or Flying Chinese characters, i.c--j~. device hf 'Le'alp'ing_VVlffl'iger with wings which is decept'i.é.rely'isimiiar in any manner whatsoever to the plaintiffs' traEl{§1'n.ai:lt'liger Balm, Tiger in English andfjliiiiese eh.a1'acte1's so as to pass off or enable .V"__0JEl1"€.l_"VS off the deienciants goods as that of the ﬁiayiﬁatiffs;4V7'_j: .. ' ' it The case of the plainti£l's is that the first plai1'1tiff is a company Constitutecl uncler the Laws of "*.Sihgapore cawyirag on business as ineu1i.1faei:i1res and 32 4 dealers of medicinal products known internationally as 'TIGER BALM'. The second plaintiff is also constituted similarly and is stated to be the subsidiary of the"fii'St plaintiff since the first plai.'nt_ii'f owns ll'i*;s"

shareholding. The first piaintiff is said 9 through the second plaintiff who ab plaintiff in respect of rxiedicirial products scald trade marks TIGER, TIGER a;1a,iihe device or Leaping Tiger. The said to be a company incorporated ,li"},I1:"rCl1'E'._E111(li..iS laipjiaointed as the lice11ceellby'th?e ills}; " plaintiff to" ITia11ufactu1'c and market the above' said .l§nierl'ilci__iial.l "products. The second defendantVi_sii to maiiufacturer and dealer of medicinal products including balm and oil and the first .,,,def'enda,i'1t is engaged' in selling the second defendants' ' ,.19i4o_d,uie;ﬁl's»-.,j1i Baiigalore. The said manufacture and sale is usi.ng:l:--.ji:lle trademark Flying TIGER BALM, Flying lg_.'l'IGER. lll"lfI{l}ER BALM, fi'lGEl{ and the laluels, cartoris V' l,ﬁ.aiid--.,_.botlh are said to be deceptiveiy similar to '{.l"1C la trademark, iabels, cartons and bottle of the first plaintiff as used by the second and third plaintiffs' in respect of goods manufactured by them.

3. The plaintiffs contend that one Aw Chinese in Rangoon, Burma in the year a medicinal ointment. About the sons by name Aw Boon Haw and Aw 'BoonParvffdecitiefd to manufacture and market uridye1"the'3tradi11g name Eng Aun 'i'ong---..._i:n_ In this regard,:""th'ea. bfi'io«thers'"_"'"adopted a trademark consistixngdd Leaping Tiger and the wordv'Tiger"°i'orrnsV ".pa1'*1: of the name of the elder brother "since in t1~1e'na'me Aw boon Haw means '1'iger in iCf1.i_nesE:f'=1a'11gt1Vage. The word 'Par' in the younger .brother'_:'-V3 name means leopard in Chinese. Therefore, if'°~..v:"theyptradenaark '1'EGER and the device of a leaping Tiger it . was -used in respect of Balm and oil n1anuI'actured by

-~t-hie said brothers in 1900 and the said 'trademark and § 5% 6 labels have acquired tremendous reputation and goodwill not only in Rangoon but also in other countries including India since it was being exported to India;4._4l_lI.n 1932, a the company known as Haw Par » Ltd, was incorporated which tookAA»~oVe1* the "bufVsi1ies4_s.Vof,_V the said two brothers and also the trademark. The business was~.._therefo1'e_carri.ed"on in "

Singapore and exported the..i'Balln3 t'o_Vario'us countries including India until 'the o-ce'u'pati'en...'"of Burma and Singapore by, the Ii World war. After xvai%,"*it"'was once"'again being imported in India and it has 'bleeo'inei'*~a eonimon household item. it is contended _Vthai;-- tlviotigli the import restriction was in "" the said goods continued to be t-aVaiIaib1e~..in India since persons travelling abroad would bring it.~onf.»* their return. As such, at all times, the V"'p1aintifE.s"' goods had tremendous reputation in India. I' , "=IV'h'e said trademark is stated to be registered in several I * -countries and pending iiisome coLu3t,1*ies. at

4. T he first plaintiff is said to have taken over the business of Haw Par Brothers [Pvt] Ltd, in 1'€SvpClcIi'..Of the said balm in the year 1969 which inciudedall.' including the trademark and have tire"

subsequent proprietors of vai-iotis ma.rks...9 I Hence;~.._the..l first plaintiff claims to have becomell the oiitlils // said trademark and the chara_cte'1*s§/ letters which means TIGER.' "~."f1~i_¢: has given the licence to the *secorid""p--iai1itii'i7.,_ to; rii'anui'aeture and rnarkeitllllth'e..V':i:saidff Olil'""land other medicinal product's. l «The referred to the various labels, pholtograplisA"a1id. also the advertisements and °'artieles?--."iin'newspagoers and magazines to indicate the is--popularity."lf~.Refe1'er1ee is also made to eharita'o1e instituti~on.sfs for social objects and public utilities, ""l"'--.V"g.ardens«--"and attractions knowii as TIGER garden, BALM garden, TIGER viilas etc in Hoiig K()I'i§5, "Singapore, Burma and other piaces.

L rt

5. The plaintiffs made applications for registration of its six marks in India. The predecessors of plaintiff had also made applications Words TIGER BALM, TIGER in __E.nglish'"a'i'idl'_':Chiiifiesesdé " 2 characters and the device of Leaping two of the applications Nos.» and = L' 316936, two oppositions -t.he_s§secoi1d defendant claiming prior'. trademarks in India. The the Deputy Registrar 0;? Tclhd the first plaintiff has "t"r'1'e';Hon'ble High Court at caicutia.indAppgiiiismithsigitx1989 and 195/1989 which are pending." 'i'l1wo.L1gh'v.tliesecond defendant claims to be . .'"registered_ propriedtorsdvof the devise oi' leaping Tiger with 7pVrotmin.en_t " and Chinese characters under N0. 24;ai97s_p_i~~a.i1i'ziil 263800, the first plan-mﬂ' has filed it "'---V."app1ica'tion for rectification of the entries in the trade _' iiiariis Registry. Ahmedabad for ifernoval of the same "since it has been obtained by fraud and since the same i 9 are causing confusion as they are deceptively similar. The said proceedings were also pending a:1d_..__t'r1e Registrar by order dated 10.07.1995 is stated removed the said trademark. That apart, tliie V' defendant has made applicatioii" for g_ Flying T IGER and device leaping 'lligei'.vvith Nos. 375905, 421935 and 47~o:s--ai "have been opposed by the i14poi';..gthe being advertised. TheproceeVd_ii1gsl..'ai;e disposal of the Appeal befo;e§yéytim;> Calcutta. The details:'tof'ltl1eel:iiothle:;*"'pfoceedifigsand opposition is also referred.--. Sil1C&f are using t1'ader11arl{ Flying, B.A.'Ll\A/lv, Flyiiig TIGER in English and l"Chinese'chalfacterslllaiid the device of Leaping Tiger with ,g.,ymgSi'bé'inglidyeizitical and/ or deceptively similar to the first«4._pla'int.ilis mark, it is contended that it amounts to Vlghlihegtortvelf passing offf, actionable at the insE:a11ce o1"ti'1e l p_lai1"1tiff.

31».

6. The plaintiffs allege that the Directors of the second defendant despite being aware of the reputation of the plaintiffs' trademark, on their migration'-fron:,'p Rangoon in Burma, applied for registration ' making false claim of propi-ieto1~s'§u;ipA 21.3.1970 the defendants' p1'edecless:orsll knowledge of the plai11tii'fs""'~..ybwo.rld.WidAe:'v_: eﬁtistence fraudulently and disho"n.estlyl"aphplied.for and obtained registration of three labels top seal round label, label each containingtheiiwolrds' Fllying BALM, Flying "IGER in English: «and :C'h:i11_ese"~::h.aracters and the device of Leaping ' 'iger ",sigi1ifi'cant wings. The trademark No. Was"l--obtained"'by practicing fraud and has now beenl'I'he plaintiffs contend that the colour scheme,V_»~la_Vy'out, getup, scheme of arrangement and ll"4"--._ﬁ}3aneling..adopted and used by the defendants in respect . lo.fl'*»th'eir labels and carton are identical and or ~deceptively similar to the one used by the pi;-i.intii'fs. The l

5. 11 defendants have recently adopted the hexagonal shaped carton and bigger cartons with deceptively similar marks, which show the intention of the defendantsto trade upon the plaintiffs reputation and _ defendants instead of refraining from pas;'sin"g:Tofff "

goods have instead filed a suit "A-,f0r;"imfringen1lent passing offf against the firstgland Mfroml using the trademark trial Court passed an exp.la'rtle" ofinjunction. The plaintiffs filed appeal 'of Gujarat set aside the"1995 in Appeal No. 385/ l9Sv§)'-5.: «. ..-therefore contend that the tradeinarksi'lofV_lth-3[plaintiffs consisting of the device of "1eap'a{g lTigeir..g thékmjrds TIGER BALM and TIGER in l'Engl.i.sh Chi_j.1ese characters meaning Tiger and the labels, y:r1*appers, cartons and the hexagonal shaped K"4"--._lVl3Qttle/container have acquired reputation all over the i..lWo1'ld.f'f including India. The defendants have fraudulently adopted the identical and/or deceptively L similar trademark to pass off their goods and as such the plaintiffs seek for permanent injunction to the defendants. The plaintiffs have also damages.

7. The second defendant has filed".:th§,r_.written statement. It is contendedi.----thjat the Of the defendant commencedliri and has rapidly expanded. as on 31.3. 1998 as .2033 173.03 ps. The productslllaie to"seyeral countries and the sales for publicity of its products as on, stated to be Rs. 1,10,275/-- per ""ianV1'11in"l.;'i'i The defendant has continuously used its trade V'lTi'ger Balm, the device of leaping Tiger with wirigs, V__"'C'Il{i'_*V£Af'O1'(iS Flying Tiger in English and Chinese characters along with its distinctive labels and lpaciiagiiig. The defendant has been selling openly for '"neai'ly 35 years. in HES regard, it is contended that Ahmed Adam Moola, one of the senior Directors of the second defendant company is a nephew of one Hoossen Moola. The said Ibrahim Hoossen _ to Rangoon in 1922 and set upmliis .4 V included the business in ;"'e';'1en1icals :"ia1niC?;_' pharmaceuticals. In 1939, him in the said business. of 11 World War Ibrahim rett1i"11ed to India and Went bacgli war. Ahmed Adam Moola M/s. Goolab and l\/loola for pharmaceutical compalni.es«l.in products stocked for sale included l3Valrn;_ Adam Moola therefore 'knew' of "the existence of Tiger Balm since then. V.Moreov.e1=_,.Ibraiiirn Hoossen Moola was aware of the balm i;:'1oW}51Aas Tiger Balm available in Rangoon since 1922," "during which period the plaintiff nor its l "predecessors had any market presence. The defendant "accordingly engaged in the manufacture of medicinal it balms and established its place of business at Surat, Gujarat State and has been carrying on its btlsiness since 1965 and they have been selling its under the distinctive tradernarlcof "

with distinctive labels. The device':.winge'd 'l' words Tiger Balm l1ave»._v:v:13,e-pen No. 244978 from 'it was registered in other "Nadu, Andhra Pradesh, Keralaliand registration bears TM Nof 23.07.1970. The applicaiptiolri of India is pending. The prold.1ic«tsl by the defendants enjoys exceilpent markgeteb.oth'~.in"'l'ndia and overseas. Extensive . l."'adv'ertisement liasvlbleen made and also the quality of 1 achieved considerable goodwill and poptuatlariwltt ' ~ The defendants have referred to the suit filed it the defendant, against the first and third plaintiff t $6 ﬁled merely to overcome the serious hurdles. 'The defendants have also secured copyright for its "Flying Tiger" under copyright Act 1957. T _ commenced and has eontinu0_u.s1y_ used""-thel'=m'arlr._ "

"Flying Tiger Balm" for nearly 35 a large volume of business'lf§r~...its goods, the'{plain-tiil's r L' for the first time havefiled in T he defendants have also to the orders of the:.HC5:if_ble 'sfvllllndia in S.L.P. No. 1397 ehanged the get up of its «sortie and though the same the objections of the plaintiff wduld' net st;_1*\fi'{ke in View of such changes. in ta thei""a'bOve, the defendants have also "i:h'e_:l_iplaint parawise and have denied the cdrlt_enti0r_1s'..* nut forth therein. The defendants have '"therefor.e' sought for dismissal of the suit.

9. In the light of the rival contentions urged by the parties, the trial court framed five issues initially l and three additional issues thereafter on 03.09.2002 and as such in all eight issues were framed. The..issues read as hereunder.

1) Do plaintiffs prove that :the1'_'dei'en'Li.ar1tsr' using identical anrl/-of decep'tively~"sirnilar trademarks?

2} Do they further"'pi7o.ve--,that:Vthejvlalbels, wrappers and cartons used" by d'efelndfants contain the ideritioal an_d/ sirnilar design, colour'sche1f)é', «layout and getup? 8}' Dofthey they have suffered zxdamages to_.Vthe'ae'ts of defendants? Are entitled to the reliefs as claimed'? 0' " » 5] -

ADDITIONAL ISSUES if 'T .1} Do the plaintiffs prove that they are prior users A of the trademark "Tiger Balm" consisting of the device of a leaping tiger and the word 'Tiger' in respect of its Balm in india?

t (2 l8 2} Do the plaintiffs prove that they had built up reputation and trade name in India for mark 'Tiger Balm' consisting of the devic.elof''af-- *' leaping Tiger when the defendant ._ its production and sales ofiﬂying tilgel'-;baltn_inV"il" India?

3} Who is the oxvner/p.1'oup::ile'tor of' 'theAid:is13t1ted trademarks? .

10. In _order_to cast on the parties by examined PW--l to PWj3" ﬁat Ex.P--l to 13-268 (a) and also l to 3. The defendants examined and marked documents at t'0_D- he trial Court after analysing the on the point, has answered all the relevant ~issues in the affirmative in favour of the land has accordingly decreed the suit. The 'defendants therefore claiming" to be aggrieved by the ~~jddgment and decree dated 30.11.2007 are before this Court in this appeal.

st 19

11. Sri S.S. Naganand. learned Senior counsel appearing for the appellants--defendants as narrated in the pleadings has stressed about the commeneei11eritf'of business by the defendants from * Trademark registration application if it {Ex.D~»25) was referred to. The for'- and not for infringement. 'of: t_he--.Tplaintiff '' has admitted that salezin India' e.?as'Vi'1i.._197;ZL though sale in other countries at and ffipsdsitated. Hence defendants C1§3l'1"l'l7.,Vpi:_{'-Ta time. in 1965 the plaintdiffsiiﬁrereihotfdinterestded' and as such by merely relying not be sufficient. The averrnents piaint itself would indicate "'acquies5eence. On "these two aspects. the averrnents in are pointed out. Though plaintiffs were, a\jfar.e.:'~"What happened in 1965, no steps were Jt3l«;en. The learned senior counsel referred to the i.__'e\_}itie*nce tendered on behalf of both the parties. it 'Commenting on the evidence of PW-1 it is pointed out :2 ts 20 that the said witness was born on 04.06.1948 while the issue relates to the user during the year l965_4va:r1-djlias such evidence of a person who had no_---l£no'wIe--dlge_._V" . cannot be relied on. The document :1t'"Exl..'P--'i'2V9.. is referred and is contended that first piamuar in 1969 in Singapore wh1l_e"'~~..secorid__ plairiti:f;f""*'e1airns " 9' cornmencenient in llinlt ...i3etween predecessor is not are produced between-_ PW--2 stated about materials regarding sales' als_o"'does not have personal knowledge.'-- also has no knowledge sincehe cor'1t1:r1u.e.d state that the bottle is hexagonal

- sarnelwasl changed in 1998 pursuant to the It is therefore contended that the case. of"th-elplaintiffs is not advanced by the three 3 Vpphlwitnesses. In a passing offf action, evidence should _' lhaveilbeen there regarding reputation and sales made in "the country and also the goodwill earned due to t advertisement and reputation. The application filed earlier alone will not indicate earlier market, trademark the territory is speciﬁc.

12. It was further conten:ded1'_"'tl'~xlV<'1tl--011*'V5thé3'j hand DW--1 who was examin.e"d... on behalf is the person who manufactured-_ti1e 82 years and as such in which it was started _a tzvas taken on making has stated about the sales" stated about the documents in 'D' series is referred frorn" the-. of passage of Ahmed Adam i.fro1'n_ Baima~"to India on 18.10.1960 and the the business was commenced and the of as indicated in EXhs.D1O to D91. The documents relating to public notice and advertisement it 'lain-respect of Flying Tiger are referred to point out that

-«there were open, clear and categorical advertisement. l.

J 22 The applications made by the defendant for registration and also that of the plaintiff and abandonment ofgthe same is stated. The judgments cited before and referred therein were commented upon"i.'to 9' that the case of MILMENT OFi'HO'ilNDUSi3IiI.§S'-5978:'; 9 ALLERGAN iNC.{AIR 2004 so 33s5)'iii§ught;jiptto been relied on against the"'de"fendants; "iir:.'.='1'heMdelay, laches and acquiescence Wbgeenlvvappreciated properly by the trial Co_urt..__ is regarding the position as in 1995. in this re;gard',-- ::f:'§con'te':r1ded"that all the observations made the not with reference to 1965 since.the1'e"'is_"no':--do'cuinents relating to reputation at

-' v ,.,.tti&it--'poiiat."l* .. '1'helVr"nagazine at EX.P.1O9 could not have V7-bVeenVi're:1i.ed 9 since the author of the book is not eXamine'd..V'.i3~"l'hey are international magazines and more fsogrp the witness admits that there was no advertisement. It is contended that the trial Court has "failed to notice that the defendants are the first users. 3» The fact of application under Section 12(3) does not mean admission of concurrent use. The trial Court'-has not assessed the documents in its correct V. except referring to the same.

argument was also exhaustive, the satire is a' r.ei'terati'Qn"1 of the arguments addressed__and not-iced 1.a'bo\V}'e:. emphasis was on the aspectllloifﬁwho 'Atfhere first. In that regard and also~--..oi1_ the reputation and goodwill, decisions were-vicited. be referred while considering d it 1E3. l learned senior Counsel appearingléllibijl the r"csp"ondent~plaintiff contended with l V. °-regard?--.'to the pragmatic way of looking at commercial Para--9 of the plaint was referred to coi'1ten_d't.hiatl the plaintiff has explained the reason for 'Nhiclrthe mark 'TIGER' was adopted by the plaintiff. VEx.pi}2(63), Ex.P.8(5} and Ex.P.l77 are referred to "indicate the mark of the plaintiff and that of the 3» 24 defendant to point out the deceptive similarity of the mark adopted by the defendant. Except for the wings, in every respect the mark is similar. T he leapi_n~g_:

in 64 circles with same design including character has been copied. The:re~is.no .'expl'ai:ia.ti'onA~as-._V to why a similar mark was adopitedﬁand hand, there is admission 'i.n"'~~._para¥3_ 'of 'the-."'vvr'itten "

statement. When themhuis s11'e'li=r;_'i'isl1.gnestl «adoption, the plea of delay and acquilesceneej' of it should fail. The they are the users :'fi*oi'n-- whereas Ex.P.236 indicates .of--~the plaintiffs mark in 1940 itself, "otherwise, the parties have been contesting 'l V. ""a.gain{st¥"each othevrmbefore the Trade Mark Registry and I tl1eV'sn"itsr- Surat and as such even on that count, the'-«.plai_ntiffF'has not laid back to watch the invasion of Ttheir right so as to attribute delay. When there is adiiiission by the defendants in the written statement "With regard to the manner of adoption and the plaintiff 3;

"riser: 3 = 25 being a leading pharmaceutical company. that itself is sufficient to indicate that they have used a simila.rV:n:ark to trade on the reputation. The evidence _ any event is not claimed as one of..personal" 1§f1OW1€dg€v. "

He has referred to the documeiitaify~'evifdenc:e. additional issues are irnpo1'ta11t and would det;-i»de-'the = L' entire case. The doe,ugn1ents------at'p':EX.hs.1S.'233_to..E238 are also referred to indicate'i'that._ﬁ»§e were already in the marlgetliand Tiger Balm Garden, also referred. Vide Ex.P.1:V33'[V havefiled application under Sectiori'--1!'2['.Z3)V stated regarding concurrent use; and slush} theyieannot contend regarding prior if evidence of D.W.1 and his cross»-

exainin.at1on is referred to indicate that the contents of V para»3VV'"of Written statement is admitted by the said kvitness as being within knowledge. On pointing to the discrepancies, it is also contended that Mukesh Gamanlal Mandalaywala has not been examined"

it is stated that he had all the flies .

registration. D.W.2 is the Chartered,_Accounta:nt.,V"WhoseV': ll"

evidence is not helpful and ;":.the_':*~sales (EX.D.l73] does not indicate'~._regarding2ffiger * if Balm. The cross--e2;arninat_i.o--ri,.of "isv..re.ferred to indicate that he has the defendants not fair and honest adcspti;onp,"d~tri'ci b«eeeri: be given. If the explanatiori it was started is acceptedpllthe have been in Burmese and not Ch4i'I'ie_se~.., ":-In'*that circumstance, the prior use of if if ""the'f'rnarl~: anywherelliln the world is sufficient. The only wh.ether prior use should be within the Cotintry__*'aior1e or whether outside India when Vvpp""tra,nshorder reputation is sufficient. In this regard, the ci_et:isions of the Hon'ble Supreme Court in, Whiripool, "¥';amdev and mlergi are relied to indicate that 2?

marketing need not be in India also. Hence, it is contended, in the instant case, there can be no dispute that the plaintiffs were prior users and_.--wh'er_i _ defendant has failed to show _hor_1_est question of delay does not arise.

that regard referred to all tl*ie_V:veI.ridenCeV_an_dl' -has = i' come to its conclusion w-hi_.eh. "does "11ot_»{:all for interference.

15. by the learned senior Counsel and those of which are relevantffor"tliel'~}aix:joose would be referred and discussed the a.ppi*o1§"r'iate stage. on the rival contentions, the following points arise- fer consideration:--

f(i).. Whether the plaintiffs have established that if b they are entitled to claim right over the product and mark 'Tiger Balm'?

(ii) Whether the Court below was justified in accepting the evidence available on record to J;

9! 28 come to the conclusion that the plaintiffs have established transborder reputation? [iii] 15 the mark 'Flying Tiger Balm' adopted by the second defendant deceptively similar to mark 'Tiger Balm' and if similar, whether adoption of the mark can be considered honesth ' adoption?

[iv] Even if the defendants estabigislaithlatl is 'l the first to adopt th'e.4_marl{"inindiaa iifzit found that such ado§::~i;,io'n cannot as honest adoption.-------cV«a"n. the continuance be permitted'? V A l l [V] Has the Court appropriate relief the facts' 'inuthis case or does it call"fo1*?ii3.tgrfe.t_e_ric.e? if V (Vi) VO.lT_(?V1:li'1"?' « ll" - ___ in iahovevsbackgrourid, What is noticed is llthatsuityy in question is one for relief against passing it off.'_ the.'vyj:;lair:ftiff-respondent claims right in respect of the<.m_a,_rk BALM' and such other allied products and the grievance is that the appellant--defendant by use mark 'Flying Tiger Balm' is passing off the fjroducts which is similar to that of the plaintiff by use i f 29 of deceptively similar mark. In such case of passing off, the question of trading on the reputation of the as claimed by them would arise. The issue" _ whether the plaintiffs have eshtablishedf'"'transboi*derVu " if reputation would also arise since the'~defendantsV:h.ave_:

contended that they had their = L' the said trademark in the yearat a time vfhen the plaintiff had no business in the plaintiff on the other "predecessors had established mark of leaping Tiger i and h;1'dh"not.:.tfr_aded'offici-a1ly"in"1ndia from 1958 due to trade product was known in India and was also _av'ailable a duty paid product.

"'illie:'_i.issues as framed by the trial Court in view of ' such rival contentions has already been J'eXi:practed above and noticed. Since both the learned _' "senior counsel appearing for the respective parties have if "commented upon the orai evidence tendered by either of is 30 the parties, it would be appropriate to notice the evidence as tendered before the trial Court. Sri Kuan is examined as P.W.1 on behalf of _ The said Witness is a Singapore,..,N_atioria1'"arrdd"isv"thei "

Executive Director of Haw Par Singapore ie, the first p1aiiitiff..V_ He is Vais»o_'aS§eciated _ v with the second plaintiff. thatydue to his position, he has accesstto and records of the, The said "ﬁtness to the manner in which in the year 1890 and also sequence of events and about the r"ep_utayti'on"v.oi"'"the product. He has furnished . it °~Aih§__/gietai1s"i'aboutVthetrademark registration of the first year 1928 in different countries to point out the same existed even prior to the year of 19652 the year of adoption claimed by the 'de'fc1idants. ~ The publications and books are referred to "-pioint out the popularity of the plaintiffs' products. He at ,5 3E has also referred to the knowledge of the defendants about the plaintiffs' products as it existed in_'.Burm_a when the defendants left that place and als_o§'_:fo'f' _ stated that there is no competitor, in India;-.:'_':.l'ii thati "

background, the manner in which has been adopted with dec.ep~i.:ive similarity "has...b:een = L' stated. Since the evidence fut-enclered"in._theEform of an affidavit, the been marked subsequently, tliiell the witness has stated' is 04-06-1948 and aboutithe' ftjh'e';year 1991. There is fdilrected at establishing that the said wi'tness..l'ias'v. personal knowledge and more . l.°'~par'ticu»--lar1y,.p to pdierit out that the said Witness was a time when the defendant had started bt1s.i_ness' india and that the said witness does not Jhavpe fflmowledge about the sale claimed to have been in India by the plaintiffs during that period and as "siich to contend that the said witness is not a if' 32 competent witness. The learned senior counsel for the appellant also contended so before this Court. the admission in the crosswexamination that _ aware of the advertisements madeppAduring"1'9-58 W and that the advertisement andV'direct.. only in 1994 was referredV_"tQ.. Having *perused_:l3the evidence, it is no doubt true very: of the evidence would indicatcﬁhthjatv -witness has no personal knovviedg_e prior to his joining anvmevent, such claim has said witness being a responsible conipany has produced and markeid "d_ocun'-ientslvvhich were in the custody of the .°=corn1<3'an'y. The dlocurnents produced from his custody th.e,:t~rade mark registration dating back to 1t">;=1_ and also in different countries and in such it circumstance based on the documentary evidence when

-has spoken about the predecessors' interest and it "thereafter when he has spoken about the entire details 4,, in 33 relating to the dispute in question, the evidence cannot be discarded as if it has no evideritiary value whatsoever. The voluminous documentary.'.._ev.idence produced through the said witness in any be ignored and would have to belhlanalysved into the nature of contentions regarding the.ftrarisbord*eirl reputation and the right to protect. theltraderhalrk even if there was no marketingﬁn p§articju.lVa"r.Mterritorjr keeping in View the legal pQ.siti_0n Qther attendant circumstance, i"'ie_r1cve",. the do_cuIner1t's' would be noticed at the: A ' ' _.19. ll'TheV.,..'-secorid witness Sri Shrikrishna °'Pa"ridur'angaA Datelllwas examined as P.W.2. He is said Secretary of Elder Pharmaceuticals Ltd" the distributor of the third plaintiif. He has stated about having knowledge of the commercial l "nle'go'tiation between the first and third plaintiff. He has "also stated about the nature and popularity of the i 34 product 'TIGER BALM'. The said witness has also stated about the manner in which the defendants »-hfaye made use of the Flying Tiger mark for _ product in India, while the mark.o_Peacock;fT;1h'i1V"hash"

been used in other major territories~asqotherwise 'i.t_:

would have attracted passirig off/ inf:cingemevnA1{_since; the r L' plaintiff had registration in---si,i'oh"'--»of tho'se_tef'ritories. The subsequent manufae.turin.g;frorn_ *1 onwards has also been stated and from l994~--95 onwards In the nature of the conterit'iaon'eth;at :r'el:evant_""period is 1965 when the defendants business in India, the cross~,exarnin_ation also to the effect that the said wivtinesisedoes notvhaxffe knowledge of the relevant period that the witness has stated that the third defendant commenced production of "iger Balm in Endia. only in l994. One other witness examined on of the plaintiff is one Sri V. Lokesh, who was if V' '""exa1'nined as P.W.3. The said witness who hails from i Tamil Nadu and working in Mysore has stated with regard to the product Tiger Balm whichVVi'»._vva_s manufactured in Singapore being available in..naitiv.e.___ _ Trichi. He has stated ab0ut_the__ popuIa;:;ity'V''of '* product even though it was not iinanufactured:'«arid_' marketed in India. In that 'context, he h.a_st'.ab0ut the situation when «.»i3i1yin.g Flying Tiger Balm. The is directed at testing the by the said witness airid"'::.{§I.V_av iffhe' contention of the defendants' not popular in India and that. the queladtiotii..de.cepti0n did not arise. ..'OnHAth'e'V other hand, on behalf of the Ahmed Adam Moola i.e, the Founder DAii"4ectcr'of:'~'the second defendant has examined himself He has stated about his birth in Gujarat migrated to Burrna in 1938 seeking better ""'prospects and having returned to India in View of the E1 i Iﬁ 36 World War in 1946. He has spoken about the starting of M/s Goolab and Moola Company and that trained by his uncle in preparation of che1n_ioals,1'*--ari-t'1.._"_ other medicinal products. In "

properties in Burma were nationalise_'d;~ 'the.s'ai_d virlitnessj and his family returned toL"'lrndial."' he = L' cornmenoed businessggin .lYus1..if_.?Ibrahim Moola, Sulaiman Yusuf Bham during 196.5, llstyle Rangoon Chernioals=7 balms such as 'Lion Tiger Balm'. He has statedllabout which the business was carried onllllanid 'alsolabout the registration of the mark Balinbon 20.10.1967 for the State of the States of Tamil Nadu, Andhra Pradesh,' Kerala and Karnataka on 23.07.1970. The saoleslltiﬁnover has been stated by him. The registration it other brands and the copyright registration of 'Flying "-Tiger' is also referred and also the advertisement to i.

9' 37 popularise the same is also stated. He has stated that the plaintiffs in fact attempted to infringeljthe defendants mark in the Indian market and as A Suit No.3/94 is filed in Surat. the pplaintiffv-h:aV:in.g «filed ». application for registration in the same till 1983-84 is stateV:d~..,..V The defend.:aIit_'vis'stated to have filed opposition " same was allowed by order dated the appeal filed is pending. «$136 rectification application bsutmlon appeal by the defendant'; High Court of Gujarat on further states that the second defend~ar:t has" commenced and continuously the tradernar'k'V'Flying Tiger Balm' and its products the same has been openly used. in su~ppo_1't the statement made by way of affidavit, the A. said witness has also produced and marked the same in evidence. He was subjected to extensive cross-- 'lexarniztiation. Apart from other aspects of the matter t 1';

38 relating to the manner in which the business was started in India, the cross--eXamination was direct_ed__at the manner in which the trademark 'F1ying§:;I"

adopted. He has attempted Dexplain'"thaitV"'t}oo1ab"" it Mooia and Co., comprising of ivbrahirn Hussain :Mo"oia and Goolab Khan conceivedvnéthe name butﬂ' has stated that hedoes has-to they conceived the sameik' explanation is contrary to, in the written staternentiiVit;.i1as' from the witness about the of the contents of the written. to registration of the trademarii; stated that it was done at the ' 'iVristan"ce Sridvtﬁainan Lal Nana Bhai Mandalaywala partnership and subsequently his son M'i1kesh.t}'arnan1ai Mandaiaywala become the Director ..and 'with regard to the trademark he has stated that ""._t1'1e':iiies are with him and that he was available at "Bangalore at the time of recording his evidence. The $2."

40 furnished by Sri Gamanlal Nana Bhai Mandalaywala. It has been extracted from him that except for the information received he has not made any ..,further verification. The witness has also . cannot say to which product the "

pertains to. The evidence of the only with regard to the salep-articu'lars the r L' aspect of the trademark. The..nlext"witne's's -exarrlined on behalf of the defendlaritsi '-Harikrishnadas Namalal Chitaliya__as to have started as a lanfdg:there'after become the working partnerof the firm of M/ s B. Jayantilal and Co.. who Vsa;idA"'.to'":be the leading distributors of 'St."'-pharrnaceuitical products. He has stated that during Adam Moola, the partner of M / s RarxgoorrChveﬁ1ical Works contacted them to distribute selhvarious products such as 'Flying Tiger Balm' 'Lion Balm'. He states that at that point he had "l-1e3,rd of 'Tiger Balm' in the market. In the cross- t (I. examination, the authenticity and veracity of the evidence tendered by the said witness is questioned since he was unable to refer to any docurrientérto establish the existence of the firm or the having been associated with the sarne.7._The.:'business'1 relationship stated with Shreeji fDis'ltributorﬁs:'has been questioned and even infthat regard no' documents have been produced. ' .

22. thet.:_4oral'f.'evidenoe tendered by the pa'rties'"indi~cate th'at'"the effort on behalf of the plaintiff is that their predecessors were the first irrthe wcriaaarka to adopt the mark 'TIGER ?-.'hav.ir1g tiger with Chinese and English back to 1900 and also the registration from onwards and they have thereafter carried on 'the same. Though there was no manufacturing and 'roiﬁciai sale in India in 1965 due to trade restrictions "irriposed in 1958, the popularity of the product due to 4 42 its availability through other channels even during that period is contended. It is further their case that even if the defendants had adopted the trade mark F1yi'11g"«tiger at a point as claimed, the very manner in ~ been adopted and Way of presentation to 'Al use of Chinese characters and "number of_Acififvcleslfetcl;.t shows dishonest intention --t§~..passl' of l' since they had knowlvedge ithehlvpoptilar product known as Tiger Balm. The defenldaiits iiiiioxyeafer contending that in 1965:, presence at all in India a'nd"as.: defendants which had reputation in Burlngal'Wasjthereafter manufactured and marketed iln*india".'-- claim right to the trademark as was registered and they further contend that I'r€lf*Eif1'1VGJ[h€I'VVlS3v.:ih€I'€ is no similarity and they were the firstto useithe mark in India and that they have carried the'.---«business from 1965. They have therefore aflcontelénded acquiescence on the part of the plaintiffs

-eiien if they establish any right. in this background, the t ,-

44 as already noticed above and in a matter of this nature, where the adoption of the mark is century old in any event evidence by way of personal knowledge. cannot be expected and such other satisfactoifyt'eyi_den<:.e _ can be noticed and considered.

24. In this regard the;

establish that their predecessors _ "had the business and had adopted th_e'd,:eV'i..ce of tiger as their trade mark whichz:11as--_tt:j_Cthe4ai'ter"b»een adopted by them have pro-d_uced"" list of the registration in different parts of the world. It'is__ no such trade mark had not , beenyegistered anearlier point in time in India. The ~i.is't» _1fefer'=s '«to'>regist1*ations in more than 40 countries which iiicfludve the countries such as Singapore, Malaysia'. iiongkong etc., from where it is claimed to A f"hay'e.ibeen carried to India. In that regard, a reference Exhibit P-11 to P--108 would indicate details of such registrations which is as far back as in the year 1922. 3;

av;

titk 45 The documents at Ex.P2 series relates to labels, cartons, seals which indicates the mark used by the predecessors of plaintiff in various countries andhthis has reference to the leaping tiger and chinese"c'l1ar~acter"« _ in round labels as seen in Ex.pPp--'2[1] which EX.P--2[69] is of Tiger Oil. of jlthelbopttle is hexagonal in respect of and they for packing has 64 circles of 'the,_'pcin:les, the mark of leaping tiger documents are produced to _show the of the use of container a long period by the plaintiffs" the plaintiffs and that too in almost all " Ir1aj.o:r Adelstfinations in the world. The ' CA1vo"q1A;:{IIients..p to indicate the sale made in India 1975 by way of invoices have been rnarked' series at EX.P--3(12] and (15) While the other 'documents in that series relate to sales in other parts even earlier. Of course in the nature of defence of if ' "the defendant with reference to 1965 though sale in J;

ft 46 India in 1975 may not clinch the issue the world wide presence will be a relevant aspect. The _ promotional leaﬂets and also the magazines-'tot'in-dicatefl » the establishment of Haw Par_V.i.ll_a and" if Garden are marked as Ex.P4:;'1«& he Exhs.Pll to P102 relate toi:h'e~..certiIlcate_uoifzregistration T T' of the trade mark andthe rane:W_fal"'froml time time in different parts of theft' -noticed would relate to the at Ex.PlO3 to 108 are ilvmade by the plaintiff thlellflvomptroller of Customs.

EX.Pld9 'Tiger Balm King' Which reconstructls _:th»e,'.'--life. of Mr. Aw Boon Haw and has 'TV"=.g1etaileCl'>re'ference"mtoV Tiger Balm and the manner in "»t_ravffe1Ve:d to different countries with reference to India as 'being carried by Indian Civil Servants. The Vi""oAriigina1r-Wrappers, the carton and the package materials ai*e-- marked at EX.P11O to P112. The travellefs guide "brochures etc., are marked as Ex.P1 15 to 1 l6(b). The l 47 advertisements of the plaintiffs products have been marked at Ex.Pl20 to Pl24(a]. The copies 0_f___ the Articles of Association of Haw Par brothers certificate of incorporation etc are marked V' to 132A. Further the other materials to _:inAdif;a.te'-Ttheg establishment of Tiger Balm garden--__and V_illa;Tare'~.VV once again marked at V the popularity of the the advertisement in this regard have been to 179.

The certificateéofﬁincoifpdration plaintiff and the office"lc'opi5e_s tit}:the*inVoice's"'regarding the sale made in lndiahavew as EXhs.P180 to 190 and the sale _inVoice's_ir1'.the".ne'ighb0uring counties have been .9 9. 9'''1TiaI'ited.''iat'"Ex.P19 199. The annual returns of i-law the different periods from 1970 to 1994 are' mama at Exhs.P2OO to P224. The annual :3"reports"~---of the second plaintiff have been marked at P225 to 232. The certificate of registration and "'invoice--cum--challan book for the periods 1999 onwards it are at Ex.P235 to 260. Theg stock challan and the gate passes are marked". at Ex.261to 263. The subsequent advertisement is also marked at Ex264 series.fr'The certiﬁcate of the chartered Accountant sales turnover is at Ex:.P265. The cop};...of~.tliAe' traldek. mark assignment agreement Thas.._hfeen "

EXP268. The manufacturing.agreeinent z and the novation agreeme:1:1"t.,v:'dated"'El.8:1Q94 were marked as Ex.C1 and" to the above documents wc're- - Vri1ai'k.'eC1: plaintiffs t0 establiislhllltlieif 1;;opiilarit3r:"of product with the trade mark of the the chinese character all OV€1'_--..tl'1€4luV§.rg§I'lCl,..'* plaintiffs have also marked . '~docu<'rrre"nts to indicate that the defendants have adopted trade mark of the flying tiger for the««.very product and had passed of their product 'dSl_F'5lg. "the popularity and goodwill of the plaintiffs prodncts. In this regard the plaintiffs marked "documents at Ex.P8 series, P9 series and P10 to J;

A 49 indicate the seals, labels, wrappers and also the cartons used by the defendants to market their Similarly the documents at Ex,Pl 13 were marked. The copy of... the if registration of the trade mark of by the defendant are prodticed "jl18.*i' In this regard the dispute plaintiff and the copy of the order by the District certified copy of the and defendants advertisemeritﬁv The issue which was defendant sold a similar product uund_:erw'the"- 'Flying Peacock' and the ~ ._ Cofnprioiiilisepenterledinto by the importer in Europe with lltlivawf'i*?ar..h.V(;or'ploration Ltd., is marked at EX.Pl38. The adv.erti__sern§ent of the second defendant in the trade mark journal are at Ex.Pl39 to 141. The application by the defendants for registration of trade mark M tan 20.10.1967 is at Ex.257.

i g:

SO

25. As against the said documents relied on by the plaintiff the defendants in order to establish Ahmed Adam Moola had migrated from _ Surat and had established business asiar as "

the year 1965 at a point of tlIne1.:wh_FC11. not have any business in India have plrodﬁu-c.edthe 2 1' documents at Ex.D1Q_ to DV2.£lfi**elating..to:.theVp,,lpassport details and the registration partnership of Rangoon glheniical liiéence and the certiﬁcates are marked at E3x.D"/"if. and D121. The lorry receipts; Jlthe invoices and also the purchase relied: on by the defendants and

- v,.._,m;i1'1~ted"Da.t"E§(hs.Dl38lVseries to D85 and the excise and are at Ex.D37 series , D42 to 47.

The««..fina'ncialfdata are marked at Ex.D88 to D119. The Jadixertisement and the publicity made are at Ex.D1.2O to 1 '143.*' The documents relating to the trade mark and 1 "copy rights are at Exhs.D--1 to D--6, D~9, D~25 to D28,

4. ft 51 D--l'74~ and D-l75. The defendants have also marked the copy of the plaint in the said civil suit at Ex.D8 and the copy of the order, the trade mark dispute at and the partnership documents at Ex.D 171 to;"'l'80V',~ in

26. Though both the parties W voluminous documents as Exhibits ::'i1'1.:su'pport' oflitsheirr respective cases, while analysing the conté:_:nt.ionsV only -. ' such of those documents are relevant? for the purpose needs reference' more j§artic1il.arly in view of the fact has_"i'n'vlfact referred to all the docunientsexliausitiveivf »..l7.7Ll1'tl'1€l' it is to be clarified at this gage iltself Vth'atA°thle':detailed reference made to the °'oral*-- and documentary evidence will form the basis for A"~tl;1Q"53lf13.:ly~'SlVS conclusion even if any one of it is not spec.ifiCva'll3fV referred once again. l ":27. in view of the findings rendered by the Court in 'below' and the contentions raised herein, based on the «t ,4 52 materials and evidence noticed, the issue revolves around the question with regard to the fact as to whether the plaintiffs had any business in India during the year 1965 when the defendant started Surat. Even if official sale or manufaCtu'ringjV'riVsVf' notf V' established, whether their reputation and good will. In thatfoontext, vvlietthery got there first alone would matter or as' to 'Whether there was transborder reput4_ati.on.'_V ar1df"in~._that view. is there passing off is an issue oonisideration'; Further in such andin thfeffaets of the instant case if the defendant ._aw_:ar.e' ..---of the reputation and the existence ofaV_:similar".produet with the similar mark, in

- .is51463':atoimuinstanevefifHvvhether the adoption of the mark that of the plaintiff can be considered as "hone-'st.VfAadoption would be the prime issue to be Joonsidered. In this View aiso, only such of those _' documents which are relevant for the said purpose need "be referred to once again.

t J:

53

28. Keeping the above aspects in view, firstly relating to the manner in which the plaintiffs elaimright is to be noticed since the defendants contend that if Haw Par Brothers Ltd., had established the it under the said mark, the plaintiffs.cari4no_tl it right. In this regard the establishrnientll of Haw Par Brothers Private seehnuto 'be"_:estahIished if by the document datedie_p5.9';f'l'9El2:' xiehjch ilsiatv-Ex.r>12e and P127. The establishrneritlof plaintiff vi2., Haw Par Broth'e'rs:Inte.rnatiwon'al:.Iltiiw. indicated by the Articles " A;;..so§§if5;t:o ir;~»j§1ated"1s.o7. 1969 at Ex.P128. One of»»es~tablishrnent of the company is to acquiiev Haw Par': Brothers (Private) Ltd., and Alnanafactnre of pharmaceutical products. afn,:.i~agreement dated 16.8.1969 has been ente.red.__v'int.oAwhich is at Ex.Pl29 and the Transferee elpphlunder the said agreement is the first defendant. The documents indicate the details of the transfer "Which has been made. The first plaintiff who is t It 54 Transferee is held entitled to the premises and assets described in the schedule. The second schedule has reference to the Goodwill and all Trade Marks in Singapore and elsewhere including * applications and all advertisements._etc.ifllhe" if at Ex.Pl3O is the document incorporation and the ofthe 'tithe '' company. The learned..seniorr"'c*oilnsel.' appearinfg: for the defendant/ appellants that the said documents l1vave"_'r1otI_ been 'sa'ti.sfactorily proved. A perusaltotf Vtdoictitrneritist'indicate that they are all certifiedvctopies office of the Registrar of Cor11panies;"Sirigapore 'sand is produced and marked . iit"throiight"thVe,EXecutiye Director of the company. In this stated that in so far as the right of the firs't«..plairit,i§f having acquired the same from Haw Par 3 jilrothersth Ltd., in the manner indicted above, it is est'ablished by the documerits relating to the transfer of T 'the rights. IE4 ,-

55

29. The documents which have been produced at EXP}, P-11 to P--1 12 and also the details with to the nature of business carried on by Haw from the year 1922 onwards which are referred. w.ou1:d"' lend credence to the claim of the1p1aintiffs* hereiiri-=_°1in addition to the same, the-L' documents relating have been produced and .ilcra\4r.et'vb'eVeri.produced from proper cust:c.;(;1--_3A,f':V.«g:.r1d regard to the nori--avai1iabili;i[3pir'~.y_ tlyocnments since the issue relates to"the prior to present period--.\2yould--accepted. One more aspect which also hast-o Abelhoticed is that there was certain

- Agompromise entuered into by the importer of the Haw Par Corporation Limited with regard' toufthe mark Flying Peacock as at EX.Pi38 and .. the appellant who was also a party to that proceedings remained exparte. Though the same may not be "directly relevant for the purpose, the manner in which i.

1' 56 there has been transition from Haw Par Brothers Limited to the present plaintiffs cannot be lost sight of more particularly, when such compromise was into with Haw Par Corporation Limitedu':vvh'ichc:"' acquired the said name from»~ .Haw_ttpérotthei-.gtttt International Limited in View the year 1997 and at thatttstage the appell'an't'-though at' V party to the proceedings has' not.'tt;bjected"to~"the same by questioning the respondent herein. plaintiffs No. 2 and plaintiff has also joined the plaintiffstNot. 2L.»there is sufﬁcient material to indicate that_:ttl1e.v'--firsttpiaintiff had acquired right from Par Brotherstttlaimited, it cannot be said that the made out any right to maintain the suit. ,,__"'Th.:etCourt below in fact has appreciated this aspectof the matter in its correct perspective.

30. In View of the above conclusion, the next ....e;uestion would be with reiard to the manner in which t"

the mark of the plaintiff acquired from its predecessors had come into existence and the claim of the _4plaintiffs with regard to the popularity of the india and in that context, whetl_1e.r_the §deieitdvan'ts"were"'"

riding on such popularity needs icori'sid'eraifiionVV »lE)'efo1r_e coming to a conclusion Wit_h"~..regardVto _th.e 'territory of operation of the defendantsi.~~-and. the in such territory and would' u in such situation. this in which the predecess'ors;»_"---off' adopted the name been explained with reference to two brothers viz., Aw Boon Haw .va'ndtlA\7qV Boont'*Par: it is explained that the word _ «. TIGER' and the Word 'PAR' in brother's name means the 'ANIMAL it In that context, in combination of the ..sa_rne;~-they have adopted the device leaping tiger as far l as in the year earlier to 1900. The manufacture " "of the balm and oil at that point was being made in t (W Rangoon and subsequently in the year 1932, the company known as Haw Par Brothers Private. was set up in Singapore. With regard' registration of the trademark as 'V .

registration of the said trademark ~diffe.re'nt' cotiiitfies is indicated in the 1ist'iln:1"arkedi"' as V thef' documents at 1 already noticed. The countries" therein include Australia. Greece.

Korea, " ':"v.:g'Saudi Arabia, United Kingdom several other countries.

To estahlish documents in EX.P2 series is prodiicedkandernattvkedi. The said documents in fact Aestablishthat thlemlyiger Balm product was registered in Courzitries. The labels, cartons and the seal of the is also marked in the said Ex.P2 series .. indicates the device leaping tiger with a Chinese ""..cizaracter and the said product was known in all the "said countries Where the mark was registered and the 3,».

59 product was being sold. The label for the packing of the bottle apart from indicating the leaping tiger invwairlotind label also contained 64 circles and each of y the mark of a leaping tiger and the ..

The bottle is of hexagonal shape and: they':

red colour as well as white."---.fi'hesei. aspects indicaiée the distinctness of the also the presentation of the the predecessor of the plaintiff the plaintiffs in different insofar as India is sought for by the predecessor for the first time vide applicatior1s:Vi'\lo}- 36.66';2;V2 and 316936 dated 20.07.1976 . * A 'had remairield pending and was advertised only in same is said to be a subject matter in appeal.' However, the case of the plaintiff is that since .. the product was popular all over and was freely l available in Singapore, though there was no official sale in India prior to that period in the year l9'74, it was very i «-1.

60 much popular since the tourists and relatives travelling abroad carried the product to India in View of its demand.

31. in the background of the above the adoption of the mark 'Tiger Balm' and of the product in different parts" lithe' registration and manufacture in such. of thrgise 'countries'p and also the knowledge andV"i'd:e1nandVlfordth-e Iaroduct in India even during of vitheipredecelssors of the plaintiff"an.d:iia1sdfVs'ulo'sequen_tlyis spoken to by lVIr.Han Ah who as PW.l. With regard to the oral l4evi_denc'e A'i:.en'de1'ed by the said witness, as l nloxticedlvvlllthe learned senior counsel for the léiflfiliﬁtllant vehemently contended that the said eiridennce would be of no consequence in as much as thevsaid Witness has no personal knowledge and as it the details furnished by him cannot establish the '' «case of the plaintiffs. It is no doubt true that the said J}.

;-as 6] Witness has not claimed any personal knowledge of the manner in which the right for use of the mark is traced. However, what cannot be ignored is that the said witness at the point of tendering evidence wasvglioiding responsible post of Executive Director ﬁi_'.$t plaintiff/company. In that view. Pw.1_--haafreferreAdto». the documents available with c-ornipany-..and' context, when he has produced volurniunoiis h..§lio.cVurI31ent::=.:i» which relates to the period_s_l:V"as_ clainied«l_regai?*ding the manner in which the""b=us.iriesis :fNa::{fc.o1nmenced by Haw Par :'B'ro't'hei's by the subsequent corporate «bod-ies,a..--testirnony cannot be brushed aside andékthie Vexfidence. tendered in the background of 'l V. theididomirhentsllbroduced is noticed by the Court below the Court below was also justified.

In'-4.this'1*eg'ard, the documents at Exh.P233 to 239 and ..Eux;.Cu1"»-dand C2 relate to the incorporation of the ' '''._corripany and the use of the mark Tiger as that of The " "Eng Aun Tong, Haw Par 'Corporation Ltd., Haw Par l.

"o :2: 62 Brothers Ltd and thereafter of How Par Brothers International Ltd. The device of leaping tigerewith Chinese and English characters with 64:

containing the said mark was registered as."ear1y'e-lasa.'in the year 19 12. In this regard, thed'oct1n1entsl:~atll£:i::;Pl-l to P108 as noticed relate to the re_gl"1St.ratioi}_tlofthe 'mark and renewal in different }oart_s'=.o_"f mvlrorldil Among the said Of the certificates produced even if the same are the 'oi:h'erV"v'o'li.1r:¥1inous documents whichlindiciafte reg7is'tration§ of the trade mark in the differentlparts would indicate that though themark {Was not regilstered in India at an earlier point 'ir1.l._tiri<iie, "the usemlof the speciﬁc trade mark in a with 64 circles and the bottle being in hexagonal? shape was the mark adopted by the predecessors of the plaintiff much prior to the claim of defendant and as such the predecessors and " "thereafter the plaintiff are the prior users of the said it I' 63 mark. Though the learned Senior counsel for appellants contended that the registration in other countries would not be sufficient when registration and sale in Indiaajas not established, What is to be noticed is question is not for infringementibfut on§:"fo1*---§)as'sing off."

In that context, a perusal of the and P9 series i.e., Ex.Pw8(l)_:to_P--8'['8l_ anVdl.::P§'9{'i--»}...to (soil would indicate that the defe-nitiant»..have"'usiedsia similar mark of a leaping rrvvattaiched to the tiger by varying size also the stripes and haife"rAcialled:f:'§/it ﬂyiri"g""tiger as a mark for the product of Works Pvt. Ltd. Above the said fl"yir1g..tigei*. there is also a chinese character. ' '~ mark itself dxﬁfolulld indicate that the same is similar the plaintiff and therefore deceptive in nature.' Further the product is also put in a hexagonal .. shaped bottle as indicated from the document at EX.P9 series. The said series of documents also indicate that

-"the defendant has made a round label and the l ,4:

documents at Ex.P8{4) and 138(8) indicate that the wrapper made for covering the bottle which is similar to that of the plaintiffs also contains 64 circles and each of the circles has the mark of the flying tiger as mark of leaping tiger indicated in the plaintiff. The defendants haV_e»~»»a1._so r'er;1'_l»an,du White coloured balm and the eritirel and the packing is similar tothatof.the_p'1aintiffs."j 'I'he"l similarity in the markzis m.or'e--.t_han_enouglrto"deceive a purchaser of imperfectr.e'coile'c?£io_n}'~. romtthe materials not1cg;d"abtgyei":7{s;in:£:e;f- it lt§1'e"att1y indicates that the predecessors had adopted such mark and also .since"'t.her.e..'-- is"'.al"clear explanation indicating the

-' prélasaoi?-is for whilchmthe plaintiffs have adopted the said lrr1a.rkv,fVthﬂe p'l.aintiffs in any event are the prior users of the said iriark in the world market with reputation in ;Since the mark adopted by the defendant is l'._lsi11*1ilar to the mark of the plaintiff and since the said V' '"'mark_ has been adopted by the defendant in the 3».

4 65 circumstances explained by them, i.e., despite having knowledge of the existence of Tiger Balm the sai.dV_:a4s:p.ect requires consideration since only a honest without knowledge of a similar__m.ark w'ould.l'_'saveV"such""

adoption.

32. While adverting 'aspect; from the plaintiffs contending vvas well known all over the question that would the defendant was 'ndarkﬁespite having knowledge that adopted and a similar product "availa'ole*.no'tvvithstanding even if it was a fact 5t'he"i~ g1ere;;da;nt were of the belief that it is not "ina._VI:'i.idia. To explain the said circumstances, the has examined lVlr.Ahmed Adam Moola is Who'. isithe founder Director of the second defendant as f"g_V'I)'.1.nff'-l. The said witness has stated with regard to ~-[starting of the business in Burma and the manner in if 66 which the business was thereafter commenced in Surat after returning to India. The details of the pro.diu5:ction from the year 1968 is also referred to and D~91 is marked to indicate sales..in__India"and;"

is the sale certificate. The registrationofthe mark is also referred to. no."

and Ex.D~25 is relied 'rcgxarding. registration from 20.10.1967. Since the aged 82 years and had in which the business 3ﬁdi"tl:e'reason for which the mari{5'l'W'as on behalf of the even though certain aVe.rments" 'the written statement is referred to as Aa'Ci'rnis's'ior1§.A the sarne would have to be considered as 'V of the mark as at that time, the plaintiff had no 'presence in India. It is therefore contended that ..the statement of the said witness will have to be iirconisidered in the background of the position that "existed in 1965. The said Witness has no doubt been i 67 cross--examined in detail and on behalf of the piaintiff it is pointed out that the statements in the jkeross examination of the said Witness will indicat.e~~..ti_:att-itdis contrary to what has been stated in the written statement.

33. In that lights_a~._ peri;1sai .

statement and the oral eVidie;nce._of~_.the 'defendants as a whole wouid indicated"t'hat"'the:}said':t_Witness has stated that he doe.s..::r1ot V' uzzicie and partner thought"Vio'feAtige'r axdtrade mark. He has also Statedhthat 'he: that they were using ﬂyingtiger" a trade mark in Burma prior to coming to India. The marﬁifacture of the other products as Tuhu Balm and Flying Peacock Balm second defendant is also referred to. In it that coritext, the cross examination of the said witness ' reveal that on the Vital aspect with regard to the it '' "adoption of the mark, the witness has indicated t ,.u 68 ignorance even though personal knowledge due to his age factor was contended. The statement made. in~.para~ 3 of the written statement is admitted made to his knowledge. In this_Jhackgronhd:" . of business of the firm M/ S Gool.ab;'_'_arid iM.o'o1:a has been stated in itten Thee' categorical assertionzpis was the stockists for pharmacen_t'ica1 'manufactured by most of the in the world. it? products stocked for was one of the prodiicts'- ..--~witness DW.1 knew of the eXiAst.ence4"4of.p'I'iger since then. It is also stated that .VI'brahi'rn 'HoosseVnm1\/iooia was aware of the balm known p as available in Rangoon since 1922 a period or tir_ne~,u:during which neither the piaintiff nor its it at predecessors had any market presence. The said statement wouid clearly indicate that the mark adopted by the second defendant is not a creation of the L In 69 defendants but the existence of the Tiger Balm was already known to them and the only attempt was to make certain changes even after which it will appear similar and such mark has been adopted.,..__"4~:ii1a§€;h'i«s background, the document at Ex.P133 bec_oirresiVr'ele*i?an.t_ V' with regard to the applicationfnlilaide for registration of the said rnark since the qiaestion *' whether the adoption of the ni.arl< was honest is also an issue which becomes4_."r.ele'--ran.tir1_~a"'passi_ng off action when two marks are s.i..r.nil'ar'and adopti,en of such mark is clainieydri l'1(j:i1"i-fist. l7i.rstly the learned senior counsel. for defendant contended that the very_ averment in ..the'-written statement which is referred

-' r to adrnlissiion plaintiff would indicate that the disclosed the manner in which the mark _has_"heen adopted and therefore the same is horieste adoption and the defendants were not "rilaiidestinely using any mark which is claimed to be "similar to the mark of the plaintiff to encash on the at ,-

70 reputation and goodwill but such mark has been adopted since in the year 1965, the plaintiffs had absolutely no business in India. In this regard to be stated that honesty does not lie in why a deceitful act was committed Hwh.enf_i"one 2' is confronted about such act.

explanation should be such .thatfIt_ s'h_ould.v--indicate'; the act itself is not deceitfullllbult was an one. To be openly deceitful cannot -be ioonside're_d as a Virtue and therefore cannot began._ ihonest Further the docurnents lldelilendaiitls'themselves at D122 and 123 indicate thatqthe-.representation is as if it is Tiger Balm.anddthe'»advAertiseme1'1ts at Ex.I)124 to M2 are 2 froﬁi onwards by which time the predecessor had filed an application. Though the earlier_"a.'-hfertisements do not refer to the period the ..a,dverti'sements at D.l38 to D142 which are of the 2 lfperiod when the dispute had already started, mentions l (I 71 'since 1965' which is absent in the earlier advertisements.

34. With regard to the ~aboVe,.'_4'.ap4art'4 the plaintiffs establishing the tranlsbonrdelr defendants themselves iileld, the frad'e" sjrnarli' application No.2449v7=8_.i.e.,g..EXll§'li§§:l. regard to their product being application has been rna«de_gg'_as and concurrent user which the defendants were awarelof product and mark.

Further pithe the said application is a parnphiet '7Wh:er=eih1'1 it states 'No competitor in India for .- Eiairri3__andlvinllthe said pamphlet the picture of a hexagonal shaped bottle is indicated in ne;n1elA«:'~"of Rangoon Chemical Works. The said adxfertisement by the defendant stating that there is no i 'coriipetitor in India for Tiger Balm if considered in the "'"nackground of the statement made in the Written st In 72 statement wherein it is stated that M/ s Goolab and Moola company were the stockists for Tiger Balrnwould indicate that the defendants were aware of the of the Tiger Balm as a product with the tiger and were attempting"'to"=trade_..liip;;ﬁ-fsnnchl reputation. It also indicates Fljfing'Tigerjitselfp was being represented as that there is no Co1'npeti.'tor India forl'A'Figer Balm. Hence the adoption in be considered as honest a.do}"3_t.ion since"it lisjaoti a...situatior1 where the defendants. of a similar mark while adoptling on coming to know of such mark psulosetqtieritly they have claimed such right of .hV'onest'and conctirrent user.

from the fact that the said statement ..woulciv-isindicate that the defendants themselves had llllkiiowledge of the prior existence of Tiger Balm, the "documents at Exhs.l31O9 and 132 referred to the said 34 73 product Tiger Balm in the said books relating to International Marketing Strategy and the different products. in this regard certain other books and magazines at Ex.Pl42, 143, 159, 160 and 174iTf¢_i77 were also relied on. The said books and magaZin_es referp to the history of the product and also th'e»gitsgeifu which gives a lot of insight regaridlltolthe éiri'ste'1:ice of the product much easrlier t-o__thel 'period the ' defendant claims right. Th_ellle:ai*ned senlior counsel for the appellant no' the said books canniotlmbesr..i'selied:'}Vlonlsiiice the authors have not been examined an'dp.'the_"1nagazines were not published in India. and lasvsurch, the same can be considered only as . V. eviydenclelllllllbn this aspect in addition to the fact it:"wo"ul].d-attract the provisions of Section 56 and 57 of"t.he,.__E',V'i,dence Act as noticed by the Court below, in my ..vr'ew While taking judicial notice what cannot be lost '''._sight of is, in the said books and magazines the same is it V' "not conﬁned only to thgproduct Tiger Balm. Though 74 the book relates to Tiger Balm, the same was published at an undisputed period and the magazines referred to several other popular products and each of themthave been analysed among which the product '__' also one among them and as such the"'re:ferenc'eV discussion would enure to the b4en:eﬁt--3of*th'e Vp1airj'tiffs1.o_to establish that it is a pre'~texi.sting~Jjrodutct" had reputation even at places____y§?hei'e th.e'*sa_mVei§ was not manufactured or marlreted people would have access to'suehjmVaga§zinesVi;--pitV-iszno doubt true that the of make much headway for the _Vb'ujt._'tf1e:"'documentary evidence tendered onpbehalaf" the dplatinntiff and the Very fact that the . rdefenidantshaveﬂﬂadyopted the mark knowing well about thepttep-{i:sten.ce--:*of a product with a similar mark cannot succeed on the contention that they are the first in A. Ir1_dia'.*' When the defendants were aware of the existence "'._Vo';f°the plaintiffs' predecessor, they could not have "assumed that they would not enter the Indian market 3;

75 when in fact the sale was made in 1974 and application was filed in 1976 and that too in the background...'_th_at there was trade restrictions for sometime. l_n5fact" . other hand owe who is the .__distrihut:o.r."" R defendants' product in his evidenceﬂhas had heard of Tiger the,__ thewl defendants had approached -..1..96f3--67 for distribution of their all the aspects,:.to:;the stated that the plaintiffs thewsaid product had transfoorder pp. 'u'One*othe':r aspect which also cannot be lost " isjlthe adinitted position that the defendants had other products such as Burrnex, Tuhu Bairn .;andA:Ff1ying peacock Balm and the products Tuhu it Ealm and Flying peacock Balm are being marketed in '7--otli'er places except in India where they have adopted it "l<'lyi1*1g T iger Balm. This would indicate that the ﬂying l is 76 tiger mark has been adopted only due to the fact that though they were aware of the product were also that there was no registration in India places in View of the registrationcf' the V'_i"7ivge1fl°' Balm, the product of the defendanttiwas by other names and as th'e.__ have-V attempted to take V ;~-advan.t-aglegvolfethe name, goodwill and reputation' In that view, when the establish the honest the evidence of D.W. the details of the same statement contained in the written statement indicating knowledge of existence of . . _ g'alﬁi¢"the reference made by D.W.l in his evidence V(':rA)17l:':li"):"'..'.vlV.tr.'V'[V'A:;'-V:'.:l.\/lUl{CSh Gamanlal Mandalaywala also be"eon1__e's .relevant with regard to the manner of adoption .ofgthe":"nark. The said witness has stated that after the of Mr. Garnanlal Nana Bhai Mandalaywala, his " "son Mukesh Ctamanlal Mandalaywala was handling the at In 77 trademark registration of the second defendant company. The said Sri Mukesh is also the Director of the second defendant. The witness (DW--l) hasyygstiated that all the files and papers relating to the. _ 'Flying Tiger Balm' is in theV"custody"'of:j~'..fh'e '-said "= Sri Mukesh. it is also admitted 'by the tl*iV§'§i"i;..Atli.t::A said Sri Mukesh was with .1 V-lﬁtangalioregwhyen he had come to give evidence 'case aI"'Id__thV€?'§ said Sri Mukesh was also present-whenhisfeyidence was being recorded by theVCornijeissioneift,..'VDespitevV" such admission of D.V§f the said Sri Mukesh has not been state with regard to the registration" of the 'Flying Tiger' and also the

- ..o.,manner"i 'Ai11'*wﬂhich Vthevsaid mark came to be adopted. If honest adoption of the said mark was to be established, the defendants ought to have placed sueh evidence, which would establish the same.

37. In the above situation, where the defendants contend that they had started manufacture of the st nu 78 product in th_e year 1965 in India when the plaintiffs did not have presence in India, the question would be when th_e plaintiffs have established t1'3.1'iSbOI'd€i' rep,utation and even if they did not have physical _ neither manufacture 01' official "sale du_--ring-.::flv9'6=Ei;'can "

the plaintiffs still succeed in theiij iinfdeij to consider this aspect, it'flis'n_ecessary to theﬂ' decisions on which both thepil-ea.p.rne(i.._senior-- counsel have placed reliance. While tiiat iaspectgthpe contention of the defendants delay and acquifésclencif be_"c'ofnsidei"ed. Firstly, the decision in Vthe"~.cia.se«..;of.:']};/IILMIENT owno IND. ----Vs- ALLERGANENC .(AIR:2'o'o4 so 3355) was referred to and ' wagliiaiso relied Court below. The said decision learned senior counsel for the plaintiffs was comm-ented upon by the learned senior counsel for the defendants contending that in fact, the said decision "'._sh'ould have been noticed to the extent where it has "been held that an Indian Company should not be i, 79 throttled, if the mark has been genuinely adopted and developed the product. A perusal of the said decision rendered by the Hon'ble Supreme Court would that in fact, the issue which was consj.dered"--.fi's--.tl 'iii-f.1_ﬂ respect of medicinal products itself; .No ilssuieu K V' was being considered at Though with regard to corit_ent.ion thee' respondents therein were not first to'u'sAe~the mark in India, the observation is-V'ltl1at.':lorr..tl1_ose aspects it would require"'ex}1mi9z1atiori o.n""eiIiVd'er:'ce. Further on referrinlglllltoe the Horfble Supreme Court be remembered that the goods. are ii'videlyv'adi;rertised in newspapers, periodicals, and 'other media which is available in the .Vv'l"li:isV--:resuits in a product acquiring world Wide rep'uta..tionl"' Hence, it is stated that in respect of a drug asssocilated with the respondents world wide, it would Vlelad to an anomalous situation if an identical mark in l V' "respect of a similar drug is allowed to be sold in India. i 80 The note of caution however expressed is that the multinational corporations who have no intention of coming to India or introducing their products in_India should not be allowed to throttle an Indian by not permitting it to sell a product in India I' company has genuinely adopted""the 'devleloipeldp the mark and is first in themarliettl.lqji'.éStati'nrg'~so; said case, the Hon'ble Supieine Court that the marks are tlie~.._samelllan--d4 are in respect of pharmaceutical products.' h;as'_'been held that the t11e"re'spond'ents have not been using the marlgl inIIridia':_:\vo'uld"«he irrelevant if they were first in the worldrnarket. In view of the said opinion .l"'eXp'ress'ed"b_vj the VI-I"ol1l'l1'ble Supreme Court, in the instant caseAla}-so,siriCe~"it is a pharmaceutical product and since the. noticed above would indicate that the plaintiffs and their predecessors had adopted the mark l"'nearl_y a century ago and the documents noticed also "indicate that it had registration in several parts of the i T 82 Hon'ble Supreme Court relied on by the learned senior counsel for the defendants with regard to the survival of the Indian company would not enure to the beneﬁt of the defendants in the instant case. In this lie. not a case where the plaintiffs did not hayell'1-ntentiolil market their product in India.

regard to the policy of propvidingllspcope tollthe products such as Amrutanjlan:l'etc., being trade restrictions frornl_4_.ip958i explained and an application in fact ha.d...:beeni7ile'd'qirr3i,pVtl'ie year 1976. Though" su'chif' walsuadvertised subsequently, the intention «Indian market is there and ultimately tl'*ie_lofficial'-marketing has commenced. T he . iyhiclivlllthe plaintiffs had been entering the if different countries during different periods..__"'woluld indicate that in such process, the Vlplplaintiffsll have also chosen to subsequently enter the fziariiet in India. Hence, keeping all these aspects in "View, the said decision would assist the case of the i, do 83 plaintiffs and the trial Court had appropriately relied on the same.

38. The learned senior counsel for the appellant-- defendant relied on the decision of the E-ion'ble Supreme Court in the case of KHODAY INDIA SCOTCH WHISKY ASSOCIATION AND --i[Ati{f 2008 so 2737) to contend that be entitled to any relief vieVv'v__'of theft' acquiescence. The question 1th_ereVin arose' regard to thvellfililngiiiof rectification and in that countextrit the respondents therein who;-had of the appellant's mark on a .,,,,,Q,QV;'O§_i,;lW972L.,yﬂfiledwthe application only on 21--O4--1986. the reason assigned for the delay was also. con'si,dered by the Horrble Supreme Court and it found "v~tiiat the reason was not satisfactory more "particularly, in a circumstance where the explanation ""Was with regard to a pending Court proceeding. The t 85 the case of RAMDEV FOOD PRODUCTS PVT. LTD.-vs- ARVIND BHAI RAM BHA1 PATEL-[2006[33} PTC 281 SC] would explain the principle of acquiescence conduct of sitting by and allowing the invasio_r.i:"o'f _ The said decisions no doubt are Vrendere(i"in::apcas'eV of "= V infringement but in any event, in'-the_finstant 'case; is no material to indicate that-~.Vtherev~was lache's«--v.Qi3-lithe 2 L' part of the plaintiffs in__the manner e2;plain'ed._AA

40. That apart, "ml --vs--

WHIRLPOOL %('1u>!9*$'6VV. (16) 583 sci, the Horfbie VS'u_preme"~V_pCvou'rt' considering the issue relating toathev reputation in a situation of regi.s.trati*or1 ""£'}'lvfl'iZ'°,"i"(t':l1t parts of the world and the subseq-uer1t.._le'ntry to India. The situation where the earlier filed in the year 1977 in India had 'elapsed thereafter had formed j oint venture with the A ":if'plai:n~tiff No.2 therein and the subsequent application on l5.07.l.988 was noticed. In that situation also the Hon'ble Supreme Court has taken the View that the «E 86 advertisement of trademark without existence of goods in the market is also to be considered as use of the trademark. In that circumstance, the prior use claimed by the respondents before the Hon'ble was considered as Valid. Further, in the said the Hon'ble Supreme Court waszzhlof:lt11gV._vi-ew:_.:

appellants therein had notgeeput fo'rth=--any gVplau°siblel':

convincing explanation as they. adopt the mark 'WHIRLPOQ1; Hep_lee§.o_aje«.Hon'b1e Supreme Court was of _ the _.v.ie_W, absence of explariatiom: be honest and the plea of delay and be of no avail and for acqaiescenlce._:there siriouid be something to indicate that 'there tacit or leﬁipress assent. In similar set of circumstvancesV,.1~*in the instant Case. as already noticed, tran.sborder reputation of the plaintiffs is establis--iied by the evidence which has been noticed. 'Vt/'iL1'1"l regard to the adoption of the mark 'ﬂying tiger' by "the defendants, there is no plausible and convincing £3 87 explanation but on the other hand, as noticed from the admission in the written statement, the same-.._4w.as adopted since they were aware of a product ~ balm' and the same was not at__tha_t point ink' India. Therefore, in any plead delay, laches or acquiescence"in the 'pre.se'nt "jfacts* V

41. The decisidnillin *t.hei.y'cas'ejnf'CDNAGRA INC --~ vs-- MCCAIN mops { is9?2;'[1os) ALR 4651 rendered Australia was extensive--1y the learned senior counsel for the appel],4aIl1t§defendantsl to contend that the plaintiff shoiild iriecessarily carryon the business or have a place 'oi"»business the country concerned to maintain an action offf. In this regard, it is seen that in the sajdacase, two questions arose for consideration Viz., is it necessary that a plaintiff carryori business or have a place of business in Australia to maintain action for passing offf'? it ft 88

ii) What is the significance of fraudulent intention of a defendant?

42. The Federal Court While considering. issues has considered in detail with regardjto * involved in the said case. The,qu.estio_ns vthe.1*eii1._'were it considered in the background of the: .'provision..ccntaine'd. in Section 53(c) of Trade i5ra.etices af1A<i1''v_to''~-.ii'o1d'thatl'' ' the appellant had no ;signiﬁca11-ti_:1*eputation'in Australia. Even in the said case, the lobservations'_nr1ade in paras 129, 134, '1'ancl_ 153 indicate that the reputatio'n-s.a:.1duzétwarenessll'o'f"'the existence of such product'in.Australia°is_lt--Qit:-e established. Therefore, it was njlore in 'la Csircumstance of the nature of evidence .---.,.r_,tenidere'd to establish the fact and the conclusion was has not been established. Contrary to *-the in the instant case, that aspect of the "znatter-htas been considered in detail by the Court below =and...a1so by this Court with regard to the reputation of .,._tfne plaiiatiffs. That apart on the second aspect, in the instant case it is held that the defendant has not i 89 established honest adoption of the mark. Further, While considering these aspects of the matter, as aga'i.nstnthat view, the observations made by the Court in the case of MILMENI>_Oi?"FH()~*--..1:I_i~ii3';: "

WHIRLPOOL CORPORATION was n:otiOVedti'?§y' and as such when this has the of; these' decisions rendered by the Ciiourt of India, the need for reference decision in any further detai} thereby the same would not gb"e'1"o«f it '

-_counsel for the appellant-

defendant has aisokreferiyed to the decision in the case of M/sii. 'VvSATHYi?XM:VV___ii§IFOWAY LIMITED --vs-- SIFINET LTD. --[AIR 2004 so 3540). The said casehwas relation to the domain name and since it is accetssihiie 'from any point, the question as to who got A first would be relevant since the only act of stgarting first would be the issue and would assume importance. The same is not a situation as confronted i 90 with in this case. The decision in the case of INTER LOTTO (U.K.) LTD. ----vs-- CAMELOT GROUP PLC. 42004 (1) WLR 955) and IRVINE AND ANOTHER ----vsfl».Tll'l';:\A.al.I{ SPORT LIMITED ---{2002 (1) WLR zsssicaasits referred on the same point withMHregard"* first and with regard to the goodwill be assessed at the relevant .i_.e';A:\A'.' thewit' defendants went to the mark.et;f.._'1'he said -twoﬁlecisions are of no assistance inthe inasmuch as the issue relating the transb¥or.d'er'reputation, the manner of adolptionhivivof in that context, the business' ,-plaintiff and the defendants have _been"'r:or1.sideredl"with reference to the evidence it tendieredu by thevlllfgjarties and the observations of the A Honlble Court in the cases referred above.

"Having considered the above position, who got i tilere first is of course a test to determine not only as to this imitating whom and also who should be allowed "Vito continue even if the marks are similar. But, in it ever 91 passing off action, who went first to the smaller territory is not the only question when some one else hasvg:ot_a_to the larger territory much earlier though not _ to such smaller territory, which may have "a '* such situation, it would dependl'-on of the product in issue"l_a'n.d the possiiabiiliity... availability is also one of andl--:there cannot be straight jacket that in the instant caasethe it can be easily carried, it smaller territory where'll"ofI'ieiavTl§a isihnotﬂz shown and in such circurristance in the world market would be relevant _and_th'atV""too in the background of the i - materials 'produce'd."' Hence in the instant case when the 1 }51aintiff"s.T. " predecessors are the ﬁrst in several countries,' the same cannot be ignored. The decision in the case of COCOCOLA '' 'A-COMPANY (1986[l) WLR 595) need not be referred to in 'detail since the said issue was with regard to the shape l.

fﬂ of the bottle and as to 9/\%rhether the same can be registered as a mark. In the instant case, though the shape of the bottle as hexagonal is pointed to indicate the getup and the manner of trademark is that of the Tiger' and as issue ., therein is not of relevance. dec.isi;oriii1_'the*r:ase.;of RRAJAGOPAL REDDY AND oriisizis CHANDRASHEKHARAN --(1995{2)rscc'~sV3o) vifas relied on by the learned senior' coti:r1vse'i.'pifor~ the appellant to counter the contention' of :the"learne_da.se'nior counsel for the pieiiiitiife; 'i1i}§§*;"'ti1fie.'j.:i:iai?1§"'i3i"':the plaintiffs is to be considered as-a'\i\fe1ll'i:riow:1 mark as defined in Section 2(zg).of thle"'i'rVad.erna1f1{s'}i\ct (1999). Relying on the said . dec-isiori i't,is contended that in the instant case the the Trademarks Act 1958 would apply and in"that__*Cire1irnstanee, the assignment of the trademark and the goodwill should be as provided under Section ' the said Act, since there is no question of goodwill '""if there is no business. £011 this aspect, as already 93 noticed above, the reputation and the goodwill of the plaintiff has been considered in the background of the facts involved in the present case and also the evidence available with regard to the transborder reputatioirarld also the manner in which the defendjantslpi established their business by ad'o'ptingp_the as such, the right of the plaintiffs not beenﬂoonsiclpeireld~_ based merely on the defin'1t;on of lltnown if trademark in the newjact.

ffjearned senior Counsel for the plaintiff/respondents"has,1-eferred to a decision of the Honfble Division..E3ericli':of the High Court of Madras in f if t the or..HAvvl BROTHERS INTERNATIONAL LTD riGsap'ep~slALM co., (P) LTD & omens (1996 pro (l6). appellant therein is none other than the plaintiff'. herein but the respondent is a different l"'eo1:'1pany. The Hon'ble Court has accepted the if contention of the appellelg-t to injunct the respondent in 4* 94 the manner done. No doubt, the law is well settled that in the case of passing off, the order in favou4r..VVof_:fthe plaintiff against another defendant cannot§V.:f..l;5é ~ applicable automatically since _the,__'facts"'a'nd.'defence ll"

may vary. Further the said decision_'ii~s re'nde_r'edu interlocutory stage. HoweV'er"~.what" is to 1'bV'€:"1_'_:I(")'u'L;iCL§jC1 is'-V that the plaintiffs 'herein-----xV:.had---.__adirancedfi similar contentions including v're'p~utation. The respondents ttieifein V' on": registration secured the View expressed at the on the prima facie opinion, expressed in earlier decided cases has relied. to hold that the adoption of the

2.;mu"s.t.A' be honest and it should not be even unfair and that passing off action cannot___"be,ndefeated because the mark of the defendant i.S__regi'st¢ered. The necessity or otherwise of actual "'h"u'siness in India was also considered and the further l observation made by noticing the other decisions is that i 95 foreign traders may well have a reputation which can support passing off action and it does not matter-.__that the plaintiffs are not actually carrying on Hon'bie Division Bench has also taken decision of the Division Bench Court in the case of is GILLILTTE mi. LTD [1988 135} =,x}hs:'si1itit is held A that though the goods_."a.re ,ava_i.}_ab1e in countiy. the goods and__the ""vzhic1).'-V"they are sold acquires the Whiripooi Corporatio'n.,ease::},xfhichV.:'had that" that stage been decided by thexiﬂelhiiﬂigha noticed. As such, though, at the,interI'ocVutoiy the law has been noticed and i s "Sigxiiiiar-.'contentionsuoi the piaintiff has been accepted. ~. after considering all the aspects of the

--V mattsetriri the manner indicted above, the points [i) to (iv) raised Vﬂabove are answered against the appei1ant/ defseindants. Despite the same, the correctness of the is 96 relief granted by the Court below raised in point [V] requires consideration. With regard to the n'1arl<.V,V_l from the transborder reputation, since the to be deceptively similar and since hone'st'Hadofpt'ion it"

not been established by the injunction granted to resltraliny the" in": thew' manner directed byvthe Couralz-elow is it justifiled. The issue however is as below was justified in 1,00,000/- as damages alnjd.-faithful account of all the using the impugned ..--pay to the plaintiffs such arnount as"rn'ay...be"found due on such account being . V. takens,/,"tThlough bothlthe prayers are made for monetary cl.airns..l'i'nv"the._prayer column and it is also indicated in para 2._8'df:'*'the plaint that additional court fee would be the averments in para--25 of the plaint would i indicate that it had been sought as alternative relief and "as such at the outset both the reliefs could not have

42. 98 defendants themselves had indicated their turnover and even EXD-173 was reiied on in an attempt to indicate that they have established huge business over of time. However, the plaintiffs .

disputed the same to contend that does'r1ot.reia'te ll"

Flying Tiger Balm aione since also. Though for the fand'-L' goodwill to protect their trademark». acquired from their predecessors the plaintiffs.'iivloeiilentitled to take advantage of 2 goodwili enjoyed by their Vleventthough' the plaintiff has entered the mvaritet inxsame cannot hold good for damages eéonsiderinig the nature of evidence tendered. Fu1'the.r'Atliepbusin"ess carried on at an earlier point is in tilled stated above. On entry of the first plaintiff 'to}'Indian market, the dispute has been raised ..pursuant to the order passed by the Hon'ble ll 'Supreme Court of India In S.L.P. No. 13978/97, the ~-'rr1a1'k and shape of bottle was altered to some extent, sh 99 even that would have to merge with the ﬁnai order and they would be injuncted but for damages, all_ have to be kept in view. Hence consideration all aspects, the decr_ee for"'d'an1a'ges..Vanvd"

accounting for the purpose have been granted in thediﬁastant caserind 'th'e.;'riatLire of V evidence tendered tha.rt"'as_pect.. without detailed discussion The point No.

(v) is accordi'agi§r favour of the in favour of the the judgment of the Courtbelow ca1'Es':_ijfor"rnodisfication to that extent oniy.

.. in the following:

it A ORDER judgment and decree in so far as grant V of perpetual injunction against the use of the impugned trade mark by the defendants and persons claiming under or for them; to deliver the goods, articles etc bearing the $2..

1 O0 impugned mark and the award of costs incurred in the suit is upheld and confirmed.

The judgment and decree to the e;.x;te1j_1t,_0f directing the defendants to pay Rs.1,00,000/- as damages true and faithful aceeuijt earned by using the maArl:Vandl't0 thew ' plaintiffs such may be found clue is set aside; 'A ~. 1:17 RFA Ne.25i/2008 is V"0.._4aC(;0fdi.ngly*.iifallowed in part and the xjudg'me__r_;tv and decree dated 30.11.2007 epeeeedd by the V111 Addl. City Civil Judge, "l-"--"ej;Beega1ore city in O.S.N0.5426/1995 shall V stand modiﬁed in the above terms.

i w.

10}

iv) The costs incurred in this appeal shall be borne by the respective parties.

A-. /hrp/bms

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