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10. The learned counsel for respondent No. 6 put heavy reliance upon the Charminar case [Vishnudas trading as Vishnudas Kishan Das v. Vazir Sulatan Tobacco Company Ltd., Hyderabad 1996 PTC (16) 512] wherein the respondent company which was manufacturing cigarettes only was holding registration of trade mark 'Charminar' in class 34 of the schedule in respect of 'manufactured tobacco'. The Registrar in view of this registration had refused registration of 'Charminar' to the petitioner for 'Zarda and Quiwam'. Consequent upon the rectification application moved by the petitioner, the registration was restricted to cigarettes only, leading to the conclusion that cigarettes vis-a-vis zarda and quiwam though all being tobacco products are distinct identifiable goods. Learned counsel also drew our attention to Life Guard Milk Products Proprietary Ld.'s Appl., (1957) RPC 79 TMR wherein an application to register a mark consisting of the word 'Life guard' with some device in respect of milk and milk products for food was allowed and a opposition by owners of the mark 'Life guard' registered for tea was rejected. Milk and tea both being the food products were considered to be distinctive goods. Learned Assistant Controller put reliance on many other similar cases decided by the English Courts and concluded that there is no cause for deception. He found no resemblance between tea on the one hand and milk and milk products on the other hand in matter of their production and manufacture trade channels. So he concluded that the tea on the one hand and milk and milk products on the other hand are goods of different description. Learned counsel for Respondent No. 6 also referred to Caesar Park Hotels and Resorts Inc. v. Westinn Hospitality Services Ltd., 1999 PTC (19) (DB) 123 wherein the learned Judges of the High Court of Madras considered transborder reputation as an important factor in matter of protection of marks. However, in the said case with a view to assess the transborder reputation of the impugned mark, the learned Judges took into account numerous prior actions undertaken by the petitioner in India which included appointment of general sales agents, travel agents, advertisements in prominent newspapers in India like the Times of India, New Delhi and other periodicals having wide circulation in India.

The above observations were made by the Supreme Court in a matter where same trade mark 'OCUFLOX' relating to a medical preparation for eye care was the subject matter of passing off action initiated by a foreign company which claimed that it had a world-wide reputation in relation to its product having the mark 'OCUFLOX' against an Indian company which had marketed its medical preparation for eye care with that brand.

12. Learned senior counsel for appellant has drawn our attention to number of cases decided by various courts in India in support of his case. Some relate to situations where the Courts have protected the foreign marks based upon the transborder reputation enjoyed by those marks in India, namely, Whirlpool case [N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714], Tiger Balm case [Haw Par Bros International Ltd. v. Tiger Balm Co. (P) Ltd. 1996 PTC (16) 311] and Caterpillar case [Caterpillar Inc. v. Jorange 1998 PTC (18) 31]. The views held by the Courts in this regard consistently had been that some visible activity in furtherance of acquiring reputation in India should have been undertaken by the proprietor of the mark. In Whirlpool case, it was found that the mark had been widely and frequently advertised and had featured in international magazines having circulation in India. In the Caesar Park Hotels and Resorts Inc. v. Westinn Hospitality Services Ltd. case 1999 PTC (19) (DB) 123 the High Court of Madras, while assessing the transborder reputation of the mark in India, has meticulously taken into consideration a lot of activity short of actually establishing a hotel in that name in India had been done by the petitioner which included appointing general sales agents, travel agents, publicity in the Indian magazines and newspapers. In the Tiger Balm case, High Court of Madras had taken note of that even during occupation of Burma by Japanese in second world war and in view of economic restrictions for a certain period thereafter, the product could not be imported into India, but still through travellers and in the clandestine market in India the product was very much in demand and available. In the Caterpillar case since the same American company was in the business of heavy duty vehicles and garments also, one of their products i.e. heavy duty vehicles were being imported into India, thereby the reputation and familarity of the same trade mark in relation to garments too was available in India and thus use thereof by the rival was considered to be violation of the trade mark. In number of cases where a mark has enjoyed high reputation and had been associated with the names of certain specific goods, courts have held the use thereof in relation to other goods by the rival traders as a breach of right of the original owner - like Bajaj which is a registered mark for electrical goods and user thereof in relation to utensils was held to be a case of passing-off [Bajaj Electricals Ltd. v. Metals and Allied Products, AIR 1988 Bom 167]. Philips for timepiece and wall clocks was held to be passing off since the mark is extensively used for radios [Banga Watch Co. v. N.V. Philips, AIR 1983 P&H 418], Seven O' Clock with respect to tooth brush was held to be leading to confusion since the mark is already well known in relation to blades [Kamal Trading Co. v. Gillette UK Ltd., 1988 PTC 1]. It was held that use of Benz for garments shall lead to confusion since the mark is extensively used in relation to automobiles [Daimler Benz v. Hybo Hindustan, AIR 1994 Del 239]. The use of the mark 'Batafoam' with respect to mattresses was held to be a case of passing since the name 'BATA' is extensively used with respect to footwears [Bata India Ltd. v. Pyare Lal and Co., AIR 1985 AU 242]. Appellant is at odds in putting reliance upon these precedents since the proprietors or their authorised users have established use of those marks in India by manufacture, sale or at least by publicity. Appellant does not have even a fledlging evidence to cite about the publicity of its product in the Indian market, what to say of the high reputation of the products mentioned above by the appellant.