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3. The applicant's trade mark 'ST.IVES' is duly registered in India under the Act under No. 568913B in class 3 as of 06.03.1992 in respect of cosmetics, namely, hair care and skin care products. The applicant's trade mark 'ST.IVES' has been registered in United States of America. In addition, the applicant's mark is registered in more than 100 counties of the world. The applicant's trade mark 'ST.IVES' in an artistic manner is registered under the Copyright Act.

4. The applicants have been using the trade mark since 1978 without any interruption and have thus gained reputation and goodwill among the public. By such long use, the applicant's trade mark has acquired distinctiveness. The applicant's trade mark is a well known trade mark within the meaning of Section 2(1)(zg) of the Act. The applicants have been promoting their sales through various medias by spending huge amounts towards the same. The net sales and advertisements are (IN THOUSANDS, EXCEPT PER SHARE DATA)     Advertising and marketing (in millions)   $152.5   $149.6   $162.7   $179.0   $189.1   Net Sales (In Billions)   $1.74   $1.88   $2.14   $2.38   $2.65 From the above, it is seen that there has been a steady increase in the net sales. By goodwill and reputation the applicant's mark has not only gained popularity in India but also outside India and has thus acquired transborder reputation through travelling trade and industry.

16. As regards the issue of deception and confusion is concerned, the burden lies on the applicant to prove that there will be confusion if the mark is allowed to continue. The applicant herein had not produced any cogent evidence before us for the same. The applicant has in fact filed before us voluminous documents which are only annual reports, advertisements and invoices. On perusal of the documents it is seen that there has been no sale in India. Even going by the well settled principles of the Apex Court that if the sale is established abroad and no exact sale in India, except the advertisement will be sufficient through various magazines circulated in India, the applicant's documents i.e., the magazines produced do not bear any name or date and hence cannot be given weightage to. It is not clear as to the name of the magazine and where those magazines are widely circulated The Division Bench of the Madras High Court has in 1999 PTC (19) DB 123 Caesar Park Hotels & Resorts Inc. v. Westinn Hospitality Services Ltd. considered whether transborder reputation is an important factor in the matter of protection of marks. The learned Judges have decided the issue of transborder reputation based on actions like advertisements in prominent newspaper, appointment of travel agents etc. The courts have held that there should be some visible activity in acquiring reputation in India. Here, in the instant case we do not find such action on the part of the applicant to say that their reputation is being affected by the first respondent's mark remaining on the Register.