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Assailing that portion of the order against them both the parties are before us.

2. The facts leading to the "passing off " action is as follows:

The plaintiff is a part of Imperial Group of Companies, having the Head Office in Kerala and has been in the business of manufacturing and selling Indian made Foreign Spirit (hereinafter referred as IMFS). They were selling the products mainly in the States of Kerala, Karnataka, Himachel Pradesh and Union Territory of Pondicherry. They have adopted a product Imperial 'Gold Napoleon Brandy' in the year 2006 and has been marketing the same in the above said States. They have also applied for a licence to manufacture their brands of IMFS in the State of Tamil Nadu and more particularly, manufacturing and selling their trade mark 'Gold Napoleon Brandy'. However, the first defendant managed to obtain a licence in the State of Tamil Nadu for their brand Brihan's "Gold Napoleon Brandy", which is deceptively similar to that of the plaintiff. The adoption and use of the trade mark Brihan's "Gold Napoleon Brandy" by the defendants in respect of a product to be sold in the State of Tamil Nadu is clearly with the dishonest intention of encasing upon the reputation and goodwill of the plaintiff's trademark Imperial 'Gold Napoleon Brandy'. This amounts to "passing off" of the defendant's product which is deceptively similar to that of the plaintiff's product. Therefore, a suit for permanent injunction was filed with an application for an interim injunction.

3. The application was resisted by the defendants on various grounds. It is contended that the second plaintiff is one of the India's premier manufacturer of IMFS and their trade mark "Brihan's Napoleon Brandy" is exceptionally famous throughout the country. The first defendant is the licensee for the usage of "Brihan's Gold Napoleon Brandy", a derivative product of "Brihan's Napoleon Brandy" for the State of Tamil Nadu. According to the defendants, the word "Napoleon" and its variant/derivatives including prefixes and suffixes such as "Gold" is used by hundreds of Companies in the International and National market. According to them, the word "Gold" is used to signify a certain higher quality of a brand and the plaintiff cannot claim any exclusive right in the generic word "Gold" or "Napoleon". It is also contended that as far as Tamil Nadu is concerned, the 1st defendant has already obtained licence to manufacture "Brihan's Gold Napoleon Brandy" and the sales turn over is in crores. It is further contended that the defendants mark "Brihan's Gold Napoleon Brandy" is different from the applicant's mark "Imperial Gold Napoleon Brandy". The shape, colour scheme, style of writing are completely different and the shape of the bottles are also different. According to the defendants the customers of spirits and alcoholics, beverages are knowledgeable and would not be confused or misled merely on the basis of presence of common descriptive/generic words such as "Gold" and "Napoleon".

6. The points that arise for consideration in these appeals are:

a) Whether the appellant is the prior user of the brand Imperial "Gold Napoleon Brandy"?
b) Whether the respondents mark Brihan's "Gold Napoleon Brandy" is deceptively similar to that of plaintiff's brand?
c) Whether the ratiocination adopted by the learned single Judge for refusing to grant injunction so far as Tamil Nadu is concerned is correct?

Prior user:

7. The 2nd respondent had purchased the rights of manufacturing Brihan's Napoleon Brandy from Brihan Maharashtra Sugar Syndicate Limited. They have been marketing "Brihan's Napoleon Brandy" for many years throughout the country. The 1st respondent is the licensee under the 2nd respondent for the manufacture of Brihan's Napoleon Brandy for the state of Tamil Nadu, however, have obtained licence from the Government of Tamil Nadu for manufacturing Brihan's Gold Napoleon Brandy from the year 2009.

25. It cannot be disputed that no one can claim as his own the words " Napoleon" and "Gold" separately. But the word "Gold Napoleon" has been adopted by the appellant. Therefore, "Gold Napoleon Brandy" would indicate that it is an Indian Made Foreign Brandy of the appellants. He is clearly and indisputably the prior user of the name, whereas the 2nd respondent was all along marketing his product "Brihan's Napoleon Brandy". The word "Napoleon Brandy' indicating the descriptive name and the word "Brihan's" indicating the 2nd respondent's company name. Therefore, the 1st respondent cannot adopt the word "Gold" for his "Napoleon Brandy". As far as the similarity between the words are concerned, if the tests as laid down in Cadila case (cited supra) are applied, the adopted words, the resemblance between the marks and the nature of goods are similar. As rightly pointed out by the learned Single Judge, the person who visits an ordinary Liquor Shop may not be able to distinguish the product of the appellants from the product of the respondents and the common man might be under the impression that one and the same Company is selling the brandy in different bottles of various sizes with different colourful labels. The points raised by the learned Advocate General are unacceptable. The difference in the shape of bottles or colour is not relevant in this case, since no one advertise these class of products, so the product gains popularity only by word of mouth. The common man would merely ask for "GOLD NAPOLEON BRANDY". In such an event, the latter entrant viz., the respondent will clearly be riding on the reputation of the appellant. We are told that the volume of sale of respondents in Tamil Nadu is huge, therefore, irrepairable hardship will be caused to them. This sale includes all the products of the respondents, so we are not persuaded by this fact. Even otherwise, the appellant is the prior user. The learned single Judge having found this issue in favour of the appellant ought to have granted the relief as prayed for.