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12. Learned Senior Counsel also further stated that the trade marks are widely published in reputed newspaper as well as in television and, as such, there is every possibility for all the persons to know about their products as well as the trade mark/trade name. Their trade mark was also extensively advertised in several International magazines which have large circulation in India also. They have also popularised the same through sporting activities. While this being so, the defendants are using the trade mark/ trade name of the applicant relating to ice creams and there is every possibility for an unwary purchaser to be misled as if the products of the applicant are sold by these respondents. They are also trying to mislead the court by saying that they are selling ice creams without any brand name; but, at the same time, they have named their shop as Galaxy and Milky Way. It is a calculated attempt on the part of the defendants to mislead the public and to cause loss to the applicant. Under the principle of transborder reputation, the plaintiffs are entitled to the relief of injunction even though they are not manufacturing ice creams in India.

19. Learned senior counsel for the plaintiff also relied on N. R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583. This case is mainly based upon the theory of transborder reputation. Halsbury's Laws of England (Vol. 48 para 156) was also considered and it reads as follows :

"Whether actual trade need have commenced. A passing off action can be sustained prior to the actual commencement of trading by the plaintiff. A plaintiff may acquire a substantial reputation prior to making sales of a product or service because of advance advertising and press publicity and, in such a case, may sue others who seek to trade on the reputation which he has acquired. A company may in some circumstances acquire a reputation and goodwill that is able to be protected even before its formal incorporation and within hours of the announcement of its intended formation. Where a plaintiff has incurred considerable expense making preparations for the launch of a product which will rapidly acquire a reputation once launched, a defendant who commences advertising before the plaintiff with the intention of defeating the plaintiffs acquisition of an exclusive right to the mark concerned may be restrained by an order of injunction."

20. It is therefore clear from the aforesaid decisions that the reputation of a trader, trading or carrying on the business in another country, can travel to a country where he had carried on business. The transborder reputation can be on the basis of the extensive advertisements and publicity. Such a trade could obtain injunction in a court where he was not trading to protect his reputation. The Indian Courts also recognise the existence of transborder reputation. If there is likelihood of the offending trademark invading the proprietary right, a case for injunction is made out.

21. Learned Senior Counsel for the plaintiff also relied on a Bench decision of this Court in Cater-Pillar Inc. v. Jorance, 1998 PTC (18) 31 and this decision was also given based upon the theory of transborder reputation. In view of the decisions cited supra and also the discussion, it is manifestly clear that the plaintiff company has obtained the goodwill and reputation throughout the country relating to the trade mark/ trade name and the defendants are now using the said trade mark/service mark and had prima facie infringed the said mark as well as passing off of the goods as that of the applicant. Although the plaintiff company is not dealing in ice creams in this place, yet, on the ground of the principle of transborder reputation. I am of the view that the plaintiff company has got prima facie case and the balance of convenience is also only in their favour. The defendants are obviously attempting to gain illegally by using the name for the shop and, as such, they should be restrained. In fact, the defendants have categorically stated that they are selling the ice creams without any brand name and this being so, what was the necessity for using the applicant's trade mark to the name of their shop and it would only expose the mala fide act of the defendants. Hence, these points are answered accordingly.