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1. The subject suit has been filed by the plaintiffs seeking the reliefs of injunction, rendition of accounts, etc. with respect to two trade marks namely PARAMAX and PANAMAX which are stated to be used by the plaintiffs for paracetamol tablets. The defendants are stated to be using the mark „Effer-PARAMAX‟ for dissolvable paracetamol tablets.

2. The suit so far as the reliefs qua the trade mark PANAMAX is concerned is based on the registration of the trade mark in India. The registration certificate has been filed and proved on record as Ex.PW1/2. So far as the relief qua the trade mark PARAMAX is concerned, the suit is based on the ground of passing off inasmuch as there is no registration of the said trade mark in India.

3. Defendants initially appeared and filed a joint written statement. They thereafter stopped appearing and were proceeded exparte. The defendants were restrained by the exparte order dated 28.5.2003 from manufacturing and selling paracetamol tablets under the trademarks of the plaintiffs and which order has been confirmed. The defendants it appears have thus stopped manufacturing and selling and may be therefore not interested in contesting the suit.

4. The following issues were framed in this case on 02.02.2006:

10. In the above case, counsel for the plaintiffs states that no documents whatsoever have been filed and proved with respect to sale of the paracetamol tablets by the plaintiff no.1 in India under the trade mark PANAMAX. Therefore, once there are no sales of the goods under the trade mark PANAMAX, it cannot be said that the plaintiffs have proved their distinctiveness qua the trade mark PANAMAX. The object of the trade mark law is that a person should not be allowed to squat on a trade mark, without actually using the same. Since there is no proof whatsoever filed by the plaintiffs of actual user of the trade mark PANAMAX in India, i.e since it is not shown that sales have been made under the trade mark PANAMAX in India, the plaintiffs are not entitled to reliefs as prayed. Once there are no sales, the plaintiffs are not entitled to any relief although the trade mark is registered, in view of the observations of the Division Bench in the cases of Fedders Lloyd Corporation Ltd. (supra) and Virumal Praveen Kumar (supra).

12. I therefore hold that the plaintiffs have miserably failed to prove their case either with respect to infringement or passing off with respect to the trade mark PANAMAX.

13. So far as the trade mark PARAMAX is concerned, admittedly, the suit is only a suit for passing off and not for infringement, inasmuch as, so far as India is concerned, neither of the plaintiffs has any registration of the said trade mark PARAMAX in India. The plaintiffs only have set up a case of transborder reputation on the basis of sale of the paracetamol tablets under the trade mark PARAMAX in countries abroad such as U.K., New Zealand, Bangladesh. Once again, a mere self-serving averment is not discharge of onus of proof. A self-serving statement in an affidavit by way of evidence cannot be the discharge of proof with respect to a vital issue of transborder reputation. Transborder reputation or spill over reputation has two elements, one of actual sales abroad prior to the use of the trade mark by the defendants and secondly of the fact that there is a spill over reputation of such marks in India. Both these aspects have to be established to the satisfaction of the Court. This surely could have been very easily established by the plaintiffs by filing the documents of the sales abroad, and to show how knowledge of the sales of the paracetamol tablets under the trade mark PARAMAX also exists in India. The plaintiffs having failed to file any documents whatsoever, the plaintiffs have failed to discharge their onus of proof.