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9. Learned counsel for the plaintiffs has sought to rely upon the judgment of the Supreme Court in the case of Milment Oftho Industries & Ors. Vs. Allegran Inc 2004 (28) PTC 585 (SC) in support of the proposition that even if there is no sale of the goods in India, as long as the plaintiff is the prior user in the world market, and transborder reputation is established, the plaintiff is entitled to injunction even if there is no sale of the goods in India. Paras 9 and 10 of the said judgment read as under:-

10. Learned counsel for the plaintiffs placed great stress on para 10 which observes that plaintiff in that case had not entered the Indian market and in spite of which injunction was granted.

11. In my opinion, reliance placed on behalf of the plaintiff on the case of Milment Oftho Industries (supra) is misconceived for two reasons. Firstly, in the present case admittedly the plaint makes no reference of the plaintiffs‟ entitlement on account of transborder reputation. Once there is no pleading, there does not arise any issue of the plaintiffs leading any evidence on this aspect. Secondly, the Supreme Court in the case of Milment Oftho Industries(supra) has been quite categorical in observing that multinational corporations having no intention of coming into India or introducing their products in India should not be allowed to throttle an Indian company by not permitting it to sell a product in India. In the present case, the defendant is admittedly using its goods with the trademark BTX-A since at least from filing of the present suit which was filed in the year 2003 and the plaintiffs admit this in clear terms of paras 27, 28 & 34 of the plaint. The defendant is using the mark as a licencee of the company M/s. Lanzhou Institute of Biological Products, a Korean company, based in China. The very fact that the plaintiffs in the plaint themselves state that the defendant is selling its injections under the trademark BTX-A shows that the defendant is already in business (and in this suit it is also so said in the written statement filed in the year 2003). In my opinion, therefore a period of no less than over 10 years is more than enough for the plaintiffs to have entered into the Indian market for selling of its products under its registered trademark BTX-A but the plaintiffs have failed to do so, and since the suit is argued limited to the issue of infringement only of this trademark, the observations of two Division Benches of this Court in the cases of Fedders Lloyd Corporation Ltd.(supra) and Virumal Praveen Kumar (supra) therefore squarely apply in the facts of the present case alongwith caveat observations of the Supreme Court in the judgment in the case of Milment Oftho Industries(supra), and thus there being no sales, the plaintiffs can claim no rights simply by having registration.

12. Learned counsel for the plaintiffs relied upon the judgment in the case of Hardie Trading Ltd. & Anr. Vs. Addisons Paint and Chemicals Ltd. 2003 (27) PTC 241 (SC) in support of the proposition that if there is international use and transborder reputation, a cancellation petition cannot succeed with respect to registered trademarks. In my opinion, once again reliance placed upon by the counsel for the plaintiffs is totally misconceived for two reasons. Firstly, in the judgment in the case of Hardie Trading Ltd (supra) a case of inability to sell on account of „special circumstances‟, i.e commercial inability and local conditions, was set up whereby the registered trademark owner in that case could not manufacture the drug locally or sell the drug locally. In the present case, there are no averments made in the plaint with respect to any „special circumstances‟ which prevented the plaintiff from selling goods in India under the trademark BTX-A. Secondly, the observations of two Division Bench judgments of this Court when read in the light of judgment of the Supreme Court in the case of Milment Oftho Industries(supra) makes it clear that even in spite of registration, once there is non-user of the trademark for long period of time, the entitlement to claim reliefs on the ground of registration goes. Therefore, the judgment cited in the case of Hardie Trading Ltd (supra) will have no application to the facts of the present case.

15. After hearing the arguments in this suit, and when I completed dictating the present judgment, at this stage, counsel for the plaintiffs suddenly pleads that in addition to claiming the right of infringement with respect to registered trademark, plaintiffs wish to press the claim with respect to passing off of the trademark BTX-A. In my opinion, it is highly unfair that after arguments were completely heard and the judgment was almost completely dictated/pronounced, suddenly the counsel for the plaintiffs can seek to argue differently. Be that as it may, once I have held that the plaintiffs admittedly have not filed or relied upon any sale in India of their goods under the trademark BTX-A, and sales being sine qua non to establish a case of passing off, the plaintiffs cannot even succeed on this claim of passing off. So far as the claim of passing off on account of plaintiffs‟ selling the goods abroad is concerned, I have already stated above that the suit plaint does not set up a case of any transborder reputation existing in India, and therefore, the issue of passing off on account of sales abroad also does not arise in the facts of the present case.