International Association of Lions Clubs vs Association of Lions India and Others

A.M. Mianwilkar, J.

P.C.:

The Plaintiffs have filed the present suit for injunction and damages against the Defendants on the ground that the Defendants have infringed the registered trade mark of the Plaintiffs filed with the Registrar of Trade Marks in Mumbai; against acts of passing off, acts likely to pass off and/or acts enabling passing off by using the words LION as part of the name of Defendants and for infringement of copy right by adopting the name, designation, emblem and other insignia of the Plaintiffs'' Association which are deceptively similar to that of the Plaintiffs and for infringement of copy right committed by the Defendants in substantially copying the literary work of the Plaintiffs in their Constitution and By-Laws; against acts of deceiving the public by having articles published in websites depicting the Defendants'' activities and for defamatory reports published in the Newspapers, Circulars, Websites, etc. portraying the Plaintiffs'' organisation with disrepute.

Briefly stated, the Plaintiffs have asserted that it is an Association organized and incorporated as a non-profit Organisation in the State of Illinois, having their International Office at 300 W, 22nd Street, Oak Brook, Illinois 60523, U.S.A. and their Area Office at 144, Free Press House, Nariman Point, Mumbai 400 021. The Plaintiffs'' claim that they are known as "THE INTERNATIONAL ASSOCIATION OF LIONS CLUBS" and as "LIONS CLUBS INTERNATIONAL" and are also known as "LIONS CLUBS" or "LIONS CLUB". In paragraphs 2 to 12 of the plaint, the Plaintiffs have given the description of the concerned Defendants.

The Plaintiffs assert that the 2nd, 3rd, 7th, 9th, 11th, 13th, 15th, 17th and 21st Defendants are affiliated to the 1st Defendants viz. LIONS INDIA at Jabalpur, Madhya Pradesh. The Plaintiffs further assert that the Defendant Nos. 1, 2, 3, 7, 9, 11, 13, 15, 18 and 21 are bodies organised and/or incorporated or registered or existing under the Societies Registration Act or laws relating to Public Trusts.

The Plaintiffs have also asserted that the Defendant Nos. 4, 5, 8, 10, 12, 14, 16, 17, 19 and 20 who now claim to be associated with the concerned Defendant organisation in the past were members or office bearers of the Plaintiffs'' member Clubs. In respect of some of the Defendants it is stated that they are still members of the Plaintiffs'' member clubs. The Plaintiffs then assert that the present Suit has been filed to claim relief against wrongful adoption and dishonest use by the Defendants of their Association/Club name which includes the trade mark LION/LIONS; and acts of infringement of registered trade marks of the Plaintiffs such as "LION", "LIONS CLUBS", "LIONESS", "LEO" and emblems; and acts of passing off and/or acts enabling passing off; and infringement of copyright, as committed by the Defendants, inter alia, by adopting the name, designation, emblem and other insignia of the Plaintiffs Association and even the literary work described in the plaint which are deceptively similar to and a fraudulent imitation of those of the Plaintiffs. The Plaintiffs assert that the Defendant Nos. 2, 3, 7, 9, 11, 13, 15, 18 and 21 are using the word "LION" by reason of their affiliation with Defendant No. 1 and have a common interest and hence common questions of facts and law arise in the present suit, for which, the Plaintiffs have filed one suit joining all Defendants together.

After giving this background, the Plaintiffs have asserted in paragraph-14 of the plaint that in 1917 a gentleman Mr. Melvin Jones, a Chicago Insurance Agent, in a meeting of several prominent businessmen convinced them to form themselves into an Organisation that would be dedicated to improvement of the community as a whole. It is stated that thereafter, various clubs known as "LIONS CLUBS" came into existence for doing social work at a Convention in Dallas, Texas, U.S.A. Delegates representing several "LIONS CLUBS" agreed to be known as "THE INTERNATIONAL ASSOCIATION OF LIONS CLUBS". It is stated that the Plaintiffs Association was formed in 1917 and has its own Constitution and Bye Laws. The Plaintiffs assert that the Plaintiffs Association was established for the purpose of organising, chartering and supervising service clubs to be known as "LIONS CLUBS" and to co-ordinate the activities and to standardize the administration of "LIONS CLUBS". It is stated that the members of "LIONS CLUBS" are duly organised and chartered under the provisions of the Constitution and the Bye-laws. It is stated that "LIONS CLUBS" are organised and chartered in any Municipalities, or their equivalent Government Sub-Divisions. It is further stated that in any Municipality or its equivalent Governmental Sub-Division, having more than one Club, each Club has to add a distinguishing designation to such name.

It is further stated that the membership to Plaintiffs Clubs is by invitation only and when inducted as a member, each Club is handed over a kit by the Plaintiffs, which kit includes the Constitution and Bye-laws of the Plaintiffs, Certificate of Members hip by the Plaintiffs, the Welcome Magazine which includes Lions Clubs Objects and Lions Code of Ethics. The Plaintiffs have even highlighted 3rd, 6th and 8th paragraphs of the said Code of Ethics. The Plaintiffs then/assert that the Constitution provides that an application for a "LIONS CLUB" Charter can be made to the Plaintiffs by any group, Club or Assembly which has been duly organised and has elected officers with a charter fee. That upon approval of application by the said International Board of Directors of the Plaintiffs, a Charter signed by the President and the Secretary of the Plaintiffs'' Association would be issued to such Club. It is further stated that a "LIONS CLUB" shall be considered Chartered, when its Charter becomes official issue. The acceptance of Charter by a "LIONS CLUB" is considered to be a ratification of and agreement on its part to be bound by the Constitution and Bye-laws of the Plaintiffs'' Association and submission by the said "LIONS CLUB" to have its relationship with the Plaintiffs Association interpreted and governed by the Constitution and Bye-laws according to the law in effect, from time to time, in the State of Incorporation of the International Association of Lions Clubs. According to the Plaintiffs, the Constitution and Bye-laws of the Plaintiffs'' Association constitutes a contract between the members of the Chartered Clubs and the Plaintiffs. Besides, it is stated that any Chartered Club is entitled to resign from the Association and the said resignation is to be effective upon acceptance thereof by the International Board of Directors.

Further the International Board of Directors is entitled to withhold acceptance, however, until all indebtedness have been paid, all club funds and property have been properly disposed of and the club charter has been returned and all rights to the use of the name "LIONS", the emblem and other insignia of the Association has been surrendered. It is stated that the Plaintiffs'' Constitution provides that no person shall simultaneously hold membership, other than Honorary or Associate, in more than one "LIONS CLUB"; and no person shall simultaneously hold membership, other than Honorary, in a "LIONS CLUB" and any other service club of like character. According to the Plaintiffs, as at present, there are more than 45,300 "LIONS CLUBS" all over the world, including the "LIONS CLUBS" in India. The Plaintiffs Organisation has over 1,55,000 members in over 4,900 Chartered Clubs situated in 59 Districts in India.

In paragraph-15 the Plaintiffs have asserted that the Plaintiffs Area Office in Mumbai provides administrative support to Lions Clubs leaders and members in India, Sri Lanka, Nepal, Bangladesh, Thailand, Malaysia ,Brunie, Singapore, Hong Kong and Macau. It is stated that dues consisting of annual subscriptions, entrance fees, LEO CLUB/LIONESS CLUB charges etc. from the LIONS CLUBS in India are all paid to the Mumbai Office. Every month the Mumbai office sends out statements of account to each LIONS CLUBS in India. It is further stated that the Mumbai office supervises the printing of the "THE LION" magazine which is mailed to each member in the countries mentioned above except for Hong Kong and Macau who have their own edition in Chinese. In addition, the Mumbai office also supervises the printing and mailing of "THE LION" magazine to Indonesia and Philippines. It is further stated that the Mumbai office provides support and assistance to District Governors and Vice-District Governors and; LIONS CLUBS". The Mumbai Office also prints and causes to be manufactured material for use by each individual President, Secretary and Treasurer of each "LIONS CLUBS" for all the countries mentioned above. The Mumbai Office supervises the functioning of the various licensees in India and ensures that they pay royalties every quarter. It is stated that the Association has a Foundation titled the "LIONS CLUBS INTERNATIONAL FOUNDATION" from which grants to various projects in India are given for construction of homes, hospitals and schools in areas affected by Kutch earthquake. Construction of hospitals, Schools, vocational training centres are all financed by the Foundation.

The biggest and important activity is reversing curable blindness. Grant is given for eye camps, training programs for members, doctors, paramedics, hospitals managers, construction of small hospitals managers, construction of small hospitals and additions to existing hospitals for sight related problems. It is further stated that the Foundation also provides medical equipment. All these grants are monitored through the Mumbai Office. The accounts of all the grants are sent to the Financial Consultant in the Mumbai Office who checks the audited accounts before processing and sending them to the headquarters. The Plaintiffs grant non-exclusive right and license to manufacture, produce, products/goods bearing the marks and the names "LIONS", "LIONESS", "LEO, "LIONS CLUBS", "LIONS INTERNATIONAL" and "LIONS CLUBS INTERNATIONAL" on general club supplies merchandise as it appears in the 2003 edition of the Lions Clubs International Supply Catalogue with exception whenever necessary.

In paragraph-16, it is stated that the Plaintiffs have filed the present suit to claim reliefs against pie Defendants which are mainly:

(a) against acts of infringement committed by the Defendants of registered trade marks of the Plaintiffs filed with the Registrar of Trade Marks in Mumbai.

(b) against acts of passing off, acts likely to pass off and/or acts enabling passing off by using the word lion as part of the name of Defendants Nos. 1, 2, 3, 5, 7, 9, 13, 15, 18 and 21;

(c) against infringement of copyright, committed by the Defendants by adopting the name, designation, emblem and other insignia of the Association which are deceptively similar to that of the Plaintiffs.

(d) against infringement of copyright, committed by the Defendants in substantially copying the literary work the Plaintiffs have in their Constitution and By-Laws entitled "Purposes".

(e) against acts of deceiving the public by having articles published in websites depicting the Defendants'' activities.

(f) against defamatory reports published in the Newspapers, circulars, Websites, etc. portraying the Plaintiffs'' organization with disrepute.

The Plaintiffs have asserted in paragraph-17 that the Plaintiffs and the Club members carry on various activities all over the world including in most of the metropolitan cities and most backward areas and villages in India. Plaintiffs are engaged in various social work activities such as (a) conducting Eye Camps in preventing and elimination of curable blindness; (b) performing cataract operations free of charge for the poor and the needy; (c) building hospitals and running the same for the poor and the needy; (d) building schools, colleges and playgrounds for the under-privileged; (e) establishing Vocational Training Centres; (f) establishing and running Cancer Hospitals and detection Centers, blood banks, Polio Surgery and Correction activities, Map immunization of Hepatitis B and address leprosy and all the allied dreaded misnomers attached to the disease; (g) feeding the poor and the under nourished regularly on a very large scale and adopting entire villages. In times of natural disasters, the Plaintiffs have rebuilt entire townships, in Koyna, Latur, Morbi and Kakinada in East Godavari District in Andhara Pradesh. The Plaintiffs have also built nearly 100 houses for the earthquake affected people of Gujarat e.g. in Bhuj, Kuch and Ahmedabad and also built a hospital in Bhuj and 20 schools.

In paragraph 18 the Plaintiffs have stated that the Plaintiffs also sell and/or distribute various articles bearing the "LIONS'' emblem, LEO emblem and all of which are registered trade marks in various classification of goods. The Plaintiffs'' Association has adopted various trademarks and obtained registrations of various trade marks, collective membership marks, service marks in relation to their various services, programs, articles and merchandise all over the World including India. The marks and names "LIONS", "LEO", "LIONESS", LIONS CLUB", "LIONS INTERNATIONAL", "LIONS CLUB INTERNATIONAL" are used in general Club International Supply Catalogue.

In paragraph 19, the Plaintiffs have asserted that because of the excellent track record of the Plaintiffs in rendering social service, the Plaintiffs receive vast amounts of donation from members of the public, Body Corporates, etc. As a result thereof Plaintiffs continue to endeavour and perform their social obligation to the Society and the nation with no profit intention. It is further stated that for the purpose of enabling the Plaintiffs and Chartered Clubs to render effective work in c achieving their objectives grants of money are released since 1968 onwards till today. As and when such grants are released the necessary entries are made in the records maintained by the Plaintiffs.

In paragraph 20 the Plaintiffs have asserted that as a result of such varied social work/activities carried out by the Plaintiffs through their Chartered Clubs in India the members of the general public throughout India identify the word LIONS or LIONS CLUB or LIONS INTERNATIONAL CLUB and/or the device/emblem of LIONS and LEOS and LIONESS and other trade marks with the goods of and services rendered by the Plaintiffs exclusively and with none else. The International Association of Lions Clubs assist the various Lions Clubs to provide its services to the community. The very word LION, LIONS, LEO, LIONESS the emblem with the device of LIONS and even the word LIONISM have become a part and pairpel of selfless service towards the community in general and especially in India. The said trade name and trade mark of the Plaintiffs have become very popular with the urban public and with the people at large. It is further stated in paragraph-21 that the essential and dominant features of each of the said trade mark are the words LION and/or LIONS and/or LIONESS and/or LEO and/or LIONS CLUB and/or LIONS INTERNATIONAL and/or LIONS CLUBS INTERNATIONAL and/or the device of a Lion and/or the letter "L" and/or their emblem to reflect the image of the Lions Clubs in the community, in India and the world over. These trade marks are registered in the Trade Marks Registry at Bombay.

It is further asserted in paragraph-22 that such registration of the trade marks and service marks entitle and enable the Plaintiffs'' organisation to the exclusive use of such marks and identification of goods bearing the said marks and services carried on under the said marks as and that of the Plaintiffs and no one else. Plaintiffs'' Association maintains strict control and ensures that no manufacturer uses the emblem or related Lion insignia or the word mark LIONS which is the prominent and dominant part of the emblem or insignia except under express permission granted by the Plaintiffs. This promotes goodwill towards "Lionism", both by its members and the general public. In order to enable the Plaintiffs to exclusively use the trade marks and render services under the said marks, the Plaintiffs have obtained registration certificates and renewed these marks from time to time. These certificates are issued by the Registrar of Trade Marts. All the said registered trade marks are valid and subsisting. The Plaintiffs have obtained registration of various trade marks, collective membership marks, service marks in relation to their various services, programs, articles and merchandise all over the World including India. It is further stated in paragraph-24 that with the advance of technology and tremendous growth in the field of computers when it became possible for enterprises, individuals, corporations and associations like the Plaintiffs to have their own websites, the Plaintiffs also registered their website on the Internet/Net work solutions in the year 1996. The Plaintiffs URL is www.lions.org. The Plaintiffs website can be accessed/logged on by any member of the public having the facility of the internet connection on a computer.

In paragraph 25, the Plaintiffs have asserted that from the website of the Plaintiffs, members of the general public can gain access to the following:

(a) Seeking information about the various activities of the Plaintiffs;

(b) To those groups, clubs, association interested in becoming a charter club of the Plaintiffs even application forms with the necessary data is available;

(c) Information in general as to the various activities carried on, proposed to be carried on, projects etc.

(d) Conveniences in communicating with the different charter LIONS Clubs in India and abroad by displaying information about the proposed activities, meetings, help if needed, etc. to be conveyed to all the charter clubs.

It is further stated in paragraph-26 that since the year October, 1996 the Plaintiffs have the active Website namely www.lions.org. Almost everyday their website is being accessed by the Plaintiffs staff to provide information and use. The Plaintiffs also almost on a daily basis used to carry out search on the Yahoo. Search engine as well other Search Engines such as Google, using the word/search string "LIONS" to find out whether the trade and service marks of the Plaintiffs have been infringed by any third party. It is further stated in parargraph-27 that the Plaintiffs have an active Website on the Internet namely "www.lionnet.com" which aims promote/help the use of the Internet by members of "LIONS CLUBS INTERNATIONAL" as well as a guide to creating Lions webpages. The above said guide provides a directory of those LIONS CLUBS, districts, multi-districts and programs all over the world including Asia. The sad webpage has a disclaimer- "You are reminded that all Lions logos are registered trade marks of LIONS CLUBS INTERNATIONAL and may only be used by LIONS CLUBS for nonprofit purposes". It is further stated that the LIONS CLUBS in India affiliated to the Plaintiffs are also described as "INDIA LIONS CLUBS".

In paragraph-28, the Plaintiffs have stated that the emblem of the Plaintiffs which is also the registered trade mark of the Plaintiffs has been continuously used by the Plaintiffs'' Association since decades to date. The said emblem was designed by one Maurie Blink of Santa Barbara, California. Each part of the emblem has certain significance. The emblem is recognized throughout the world and is. associated exclusively with the Plaintiffs. The motto of the Plaintiffs Organisation is "WE SERVE" and the slogan is "LIBERTY, INTELLIGENCE, OUR NATIONS SAFETY" for which the acronym is "LIONS". The word "LIONS" or the emblem or the device of a lion is associated exclusively with the Plaintiffs. The Plaintiffs state that to reward members performing outstanding service in LIONS CLUBS, the Clubs present them with shields, awards, momentos, lapels, pins and other regalia bearing the said emblem, as appreciation of their splendid work, so as to motivate them to do more for the less fortunate members of the community. The Plaintiffs'' trade marks including the said emblem have been used on various items made available by them. The said trade marks, name and emblem have come to be associated exclusively with the Plaintiffs by general public in India and abroad.

In paragraph-29, it is stated that in the recent past some members and office bearers of Plaintiffs LIONS CLUBS in India became disgruntled for reasons best known to them, and left the INTERNATIONAL ASSOCIATION OF LIONS CLUBS of Plaintiffs and purported to form Clubs such as NATIONAL ASSOCIATION OF INDIAN LIONS, INDIAN LIONS, LIONS of INDIA and/or BHARATIYA LIONS and/or combination of words before or after the word LION and/or LIONS and/or LIONESS and/or LEO and/or LIONS CLUB. One such Club was registered in Ajmer under the Rajasthan Co-operative Societies Act under the Society name The National Society of Indian Lions, Ajmer having Society Region No. 99/Ajmer/1999-2000 dated 18.2.2000. The Plaintiffs assert that there were other persons describing themselves as B. Lion (Bharatiya Lion) before their names claiming as member of "Bharatiya Lions" under the Association name of NAIL. The same was clear on a perusal of the visiting card of the 5th Defendant bearing the logo displayed on the webpage of The National Association of Indian Lions another organization affiliated to and/or associated with the Defendants. It is stated that on the webpage of NAIL the logo with the words "Bharatiya Lions" similar to the 5th Defendants'' is displayed. Besides, the logo the following words appear:- "The National Association of Indian Lions is exercising primarily to unite the Indian lions Movement and the NAIL invites all Individual and Organisation to come with us in nation''s interest. The Nail is in the action for walking with other Indian lions Societies that are scattered in all over India under the One banner as well as opening the new one. Indian Lions Movement is in progress and following Indian lions Societies have come into being, viz; Rajastan-3, Jabalpur (M.P.)-3, Indore (M.P.)-2, Puna (M.S.)-1, Mumbai (M.S.)-1. That the index is growing. The Plaintiffs assert that there is a nexus between the 5th Defendant and the Defendants No. 1 in Suit No. 1423 of 2000. In as much as, their members were once members of the Plaintiffs'' Association.

The Plaintiffs assert that as the aforesaid members were guilty for acts of infringement of trademarks, acts of passing off, infringement of Copyright and wrongful adoption and use of domain name namely "www.indianlions.org" the Plaintiffs filed a suit bearing Suit No. 1423 of 2000 in the Hon''ble Bombay High Court against those Defendants, their Prime President Chief Secretary and Treasurer. In that suit a Notice of Motion No. 1175 of 2000 was taken out by the Plaintiffs Notice decision is reported in 2006 (33) Bom. 79.

16 The Plaintiffs state that in the said suit No. 1423 of 2000, on a Notice of Motion challenging the territorial jurisdiction of the Bombay High Court to entertain the suit, this Court vide Order dated 25.01.2006 (which is reported in 2006 (33) PTC Bom 93), held that the Bombay High Court has jurisdiction to entertain and try the suit for infringement of trademarks and copyright and passing off as well. this Court therefore, granted leave to the Plaintiffs for joinder of causes of action and the Petition for Leave under Clause XIV of the Letters Patent was made absolute.

According to the Plaintiffs, the visiting card of the 5th Defendant T.J. Gala (sic T.G. Gala) who described himself as "B. Lion" which means Bharatiya Lion and who resided at 8D Miniland Tank Road, Bhandup, Mumbai which has the same address as of the 4th Defendant, Bachubhai Gala, and whose visiting card with the words "Bharatiya Lions" with the device of the lion was produced in cross-examination to the Defendants'' witness during the trial as the preliminary issue of jurisdiction u/s 9A of CPC in the abovesaid suit. Significantly, the said 5th Defendant, T.J. Gala, was the Past Region 21 Chairman, Past Cabinet Dy. Secretary of Dist. 323-A-2 of the Plaintiffs Club. The Plaintiffs assert that in 1998 certain persons in Baroda started using the word LIONS as their Club name and, therefore, Plaintiffs entered into correspondence with them. One of the parties was the 5th Defendant. However, no action was taken as their activities had decreased. It is stated that the Plaintiffs also came across a letter dated 11.05.1998 written by the then Lion Gurucharan Soi President (1197-98) of LIONS CLUB of BHANDUP Zone : III Region : IV district 323-A2 who informed the late Lion Vizpy Minoo Engineer, the then International Secretary for India & South Asia of the Plaintiffs that a meeting had been held on 28.04.1998 at 8.00 p.m. at Lion T.J. Gala''s residence, Bhandup, Mumbai that following resolution was passed unanimously:-

"Resolved that our Club, Lions Club of Bhandu of Zone III Region II District 323-A-2 of Lions International shall surrender back the Charter to Lions International on or before 30th June, 1998, and it is further resolved that All Members of the Club will Join and receive Charter from the Indian Lions, Head Quarter''s at Baroda, Gujarat, on the same day i.e. before 30th June, 1998 at the installation Meeting."

The Plaintiffs the assert that the secretary to the said Lions Club of Bhandup District 323-A-2, which surrendered the Charter, was lady Lion Urmila Gala having her residence at 8-D, Miniland, Tank Road, Bhandup (W), Mumbai 400 078.

According to the Plaintiffs, it is also an admitted fact that Bachubhai Gala the 4th Defendant was associated with Plaintiffs Lions Clubs for years. In the Issue of Gujarathi Daily, Janmabhommi, dated 8.05.2006 an Article "MUMBAI CHIGAAL" written by one Mr. Kanaiyalal Joshi was published on page 5 (English c translation whereof is annexed as Exhibit "P" to the Plaint) under the heading "Now LIONS INDIA Wave", it was stated as follows:-

"Mr. Bachubhai himself was associated with Lions Clubs for years. But the moment he was disillusioned with Lions Club, he did not waste single moment and converted his Club into LIONS INDIA."

In paragraph-30 of the plaint it is asserted that all the Defendants mentioned in the present Plaint were fully aware of the activities of Plaintiffs and of the name of the Plaintiffs also known as LIONS CLUBS as they were members and in some cases were also office bearers of Plaintiffs'' LIONS CLUBS when they left the Plaintiffs'' Clubs and started or formed clubs under deceptive trade names such as LIONS INDIA or National Association of Indian Lions or Lions of India or Bharatiya Lions or LIONS INDIA KOLKATA BALLYGUNGE or LIONS INDIA KOLKATA EAST or LIONS INDIA KOLKATA INDRANI or LIONS INDIA KOLKATAWEST.

In paragraph-31, it is stated that in the Article referred to hereinabove, reference was made to the fact that the said Bachubhai Gala the 4th Defendant had "converted his Club into "LIONS INDIA"; that a Lion is an honest intellectual, dedicated to the service of nation. The said article further mentions that a Lioness too serves the Nation with equal, selfless fervor. That Leo comprises of intellectual young people. The Plaintiffs state that thus the said 3rd Defendant and all the other Defendants are not only liable under the common law action of passing off but have also copied and used the trade marks LION, LIONESS and LEO and the emblem which are registered trade marks of the Plaintiffs and are thus liable for infringement of those registered trade marks and those service marks of the Plaintiffs as well.

In paragraph-32A, the Plaintiffs assert that a suit bearing No. 865 of 2001 filed in this Court by the Plaintiffs, a Notice of Motion No. 622 of 2001 was taken out, wherein this Court vide Order dated 10.4.2001, restrained the Organization describing themselves as INDIAN LIONS CLUB and granted interim injunctions against them restraining the Defendant therein from using the word LION in the name of the Organization of the Defendants. The Plaintiffs have relied on the observations in the said decision. The Plaintiffs have also referred to the fact that the said decision was carried in appeal being Appeal No. 413 of 2001 before the Division Bench but prayer for ad-interim made by the Defendants therein was refused on 4th May, 2001. Against the said Order of the Division Bench dated 04.05.2001, the said Defendants, Indian Lions Club, filed a SLP in the Supreme Court of India being SLP(L) No. 11870 of 2001. On 30.07.2001, the said Petition was also dismissed by the Apex Court.

According to the Plaintiffs, the Defendants have given an implausible and dishonest explanation as to how they hit upon the word "LIONS" as a trade name for their Club and for use of the word "LIONS" as a trade mark or service mark. According to the Defendants the words LIONS as coined by the INDIAN LIONS CLUB stands for Indian Life Improvement Organisation & National Services. The emblem with the words Service With National Spirit and encircling it below is the word INDAN LIONS.

In paragraph-33 of the Plaint, it is stated that the modus operandi of some of the disgruntled past members of the Plaintiffs'' Chartered Club(s) who were also Office Bearers of Plaintiffs'' LION CLUB, was, when injuncted to form an Organisation/Association similar to the Plaintiffs which includes the word "LIONS" by adding a prefix or suffix in English and/or Hindi and also use an emblem which is deceptively similar to the Plaintiffs to denote that they are purely Indian by origin with a deliberate and mala fide intention to confuse the public at large and in furtherance of their mala fide intention strive every nerve to defame the reputation earned by the Plaintiffs whose interest is in service to the nation and the world at large and who have been doing so for decades. It is alleged that these Defendants also use a deceptively similar emblem of the LION in different positions to be as closely associated with the Plaintiffs. The Plaintiffs further allege that the disgruntled members and Defendants have also used domain names such as "www.indianlions.org" which include the words LIONS and e-mail addresses viz. [email protected]. All these acts on the part of the Defendants are thoroughly dishonest and in bad faith and are done to take a piggy back ride on the tremendous reputation and goodwill acquired by the Plaintiffs, not only in India but in numerous countries of the world in respect of their services rendered under their well known trade name and trade marks "LIONS" or "LIONS CLUBS" and/or LIONS. It is stated that the said mala fide acts and conduct of the disgruntled members and Defendants is solely to harass the Plaintiffs which attitude is not in the interest of the public and/or the Nation and/or the Plaintiffs.

The Plaintiffs assert that the Defendants comprising of disgruntled people including the Defendants cannot serve the Nation as falsely claimed by Defendants, because from the very onset they have been practicing deceit by infringing the trade marks and trade name of the Plaintiffs Association as well as slandering the reputation earned by the Plaintiffs which is totally uncalled for and unethical. It is alleged that the said Defendants comprising of disgruntled members of the Plaintiffs Chartered Clubs start a deceptively similar Organisation under a deceptively similar name as of the Plaintiffs and when injuncted by Orders of the Hon''ble Courts disperse form, convert themselves into and form another deceptively similar organization solely with mala fide and dishonest motives. To substantiate this plea the Plaintiffs have placed reliance on the circular distributed by the said Indian Lion T.J. Gala (Bachubhi) Covinier of Indian Lions.

According to the Plaintiffs, these disgruntled ex-members of the Plaintiffs Chartered Club (s) form, reorganize, convert, reform either by themselves, their invites, nominees or with other person(s) as an Association/Group/Body/Club/ Society/ Institution/- Corporation/Company by using the words "LION", "LIONS CLUBS", "LIONESS", "LEO" in combination with different words in the fields of social service and charity and/or get such Association/Organisation registered as a Society, Club, Charitable Organization, Non-Profit Organization with the statutory bodies constituted under statutory enactments of different States in India. The Plaintiffs claim that these disgruntled ex-members are not entitled to form, reorganize, convert, re form either by themselves, their invitees, nominees or with other person(s) as an Association/Group/Body/ Club/Society/Institution/- Corporation/Company by using the words "LION", "LIONS CLUBS", "LIONESS", "LEO" in combination with different words in the fields of social service and charity and/or getting such Association/Organisation registered as a Society, Club, Charitable, ''Non-Profit Organisation with the statutory bodies constituted under statutory enactments of different States in India, and are liable to be restrained by an order of perpetual injunction of this High Court.

In the same paragraph-34 of the Plaint the Plaintiffs have furnished a comparative chart depicting the Constitution and Bye-Laws of the 1st Defendants and the remaining Defendants who are affiliated with the 1st Defendants. From the said chart, it is clear that the alleged Purposes and Objectives of the Defendants are couched in words which are similar and/or identical to the words used by the Plaintiffs so as to infringe the Copyright the Plaintiffs have in their literary work.

In paragraph-35A the Plaintiffs have referred to the representative suit filed by Defendant Nos. 10 and 17 both of whom were formerly members of the Plaintiffs CLUBS. The said Suit was filed in the Court at Alipore, before the 1st Civil Judge (Junior Division) being Suit No. 43 of 2006 against the Plaintiffs viz., The International Association of Lions Clubs, District Club 322B1, the District Governor of Lions District 322B1 and Lions Foundation District 322B1 Trust. According to the Plaintiffs, this false, frivolous and vexatious suit was filed for various reliefs involving a property known as B-126, Metropolitan Co-operative Housing Society situate at South Canal Road, P.S. Tiljala, Kolkata 700 046 which was sold to the Plaintiffs herein (viz Defendants in the said suit) by the 8th Defendant, Mr. Satish Lakhotia. The said Mr. Satish Lakhotia, the 8th Defendant, who was the then District Governor of the Plaintiffs from 01.07.2001 to 30.06.2002 and an ex-officio Chairman of the Trust of Defendant No. 1/Plaintiffs sold the said property to the Plaintiffs in his personal capacity. As the said property was being put up for sale the said 8th Defendant in order to suppress the mischief that would be brought to light instigated the 10th Defendant, Mr. Kalicharan More and Mr. Suresh Kumar Dwarkani, the 17th Defendant, to institute the Alipore Representative suit. In the said suit 8th Defendant filed an Application for being impleaded as an interested party. It is admitted by the 10th Defendant Mr. Kalicharan More and Mr. Suresh Kumar Dwarkani, the 17th Defendant, in the 1st para of that Suit Plaint which reads as follows:-

"At all material times, the Defendant No. 1 was and still continues to be a district formation of the International Association of Lions Club having its office at the United States of America and also in India and presently having its district office at the address mentioned in the cause title hereinabove. The Defendant No. 1 is governed by the constitution and bye-laws of the International Association of Lions Clubs and also the constitution and bye-laws of the International Association of Lions Clubs, Multiple District 322."

In paragraph-36 the Plaintiffs assert that it is admitted by the Defendants that the Plaintiffs have their head office in Mumbai and their affiliated Clubs all over India which are governed by the Constitution and Bye-laws of the International Association of Lions Clubs and also the Constitution and Bye-laws of the various Multiple Districts.

In paragraph-37 the Plaintiffs assert that the said 8th Defendant by using the name of his daughter-in-law, Manashi Lakhotia had filed a suit being Suit No. 321 of 2003 in the City Civil Court at Calcutta on the 6.3.2003 in an attempt to prevent holding of the Annual District Conference and elections of the Plaintiffs (viz. Defendants in that suit). The said suit was however, dismissed. Furthermore, the said 8th Defendant, Satish Lakhotia, claiming in his capacity of continuing to be a Trustee of the Plaintiffs Trust viz. Lions Foundation District 322B1 having its office at 27/8A, Waterloo Street, P.S. Hare Street, Kolkata-700 069 (Defendant No. 3 in the Alipore Suit), filed a Criminal Case in the Court of Executive Magistrate 2nd Court, Alipore in M.P. Case No. 3959 of 2006 u/s 144(1) of the Code of Criminal Procedure. The fraudulent and mala fide behaviour of the said 8th Defendant is brought out in a letter dated 15.12.2006 which was written on a letter head of a Club known as LIONS FOUNDATION TRUST which does not belon to the Plaintiffs having its office at B-126, Metropolitan Housing Cooperative Society, Canal South Road, Kolkata-700 046-to the Office-in-charge of the Tiljala Police Station, Calcutta and signed by the said 8th Defendant as a Trustee. The Executive Magistrate, however, dropped the said case vide order dated 16.02.2007

In paragraph-38, the Plaintiffs have stated that as a Counterblast, the said 8th Defendant distributed Circular Letters wherein he described himself as the Extention Chairman: Eastern India of LIONS INDIA. At the top right hand corner was mentioned the Head Office of LIONS INDIA (the 1st Defendants) which was situated at 19, Nayabazar, Jabalpur - 482 002 and having its e-mail as [email protected]. The Plaintiffs have reproduced the first para of the said letter. It mentions as follows:-

"I take pleasure to introduce to you "LIONS INDIA"- a registered organization in India - an effort to actively participate in the divine creation of a Glorious India keeping with the cherished times - An organization for *PRESTIGE *GOOD FELLOWSHIP and *SERVICE. This organization is wholly on Indian setup formed with a view to spend Indian money for serving the people of India without the domination of a Foreign Association. It is By the Indians, of the Indians and FOR THE INDIANS. LIONS stand of Loyal Intellectuals on Nations Service. The movement of LIONS INDIA units started functioning in large numbers at Maharashtra, M.P. Gujrat, and U.P., and on 11th of Feb., 2007 ELEVEN New Units were Inaugurated & Installed at Kolkata at New Kenilworth Hotel with 277 New Charter Members, who were also Inducted on same day. I was appointed as Extention Chairman for Eastern India by the National President of Lions India... "(Lion Sushil Jain)."I am sure service loving members like you will definitely join this movement. I suggest you to start your own New UNIT with 25 Members and start working for our own National Development as well as good fellowship. You may contact the undersigned on any working day for NEW CHARTERAPPLICATION FORM & other related documents..."

"In case if you feel you are unable to start your New CHARTER UNIT immediately. I request you to join Lions India, Kolkata Ballygunge OR any other LIONS INDIA units functioning in our area of which details are enclosed herewith alongwith Membership Form."

In paragraph-39, the Plaintiffs allege that in the said Circular Letter of the 8th Defendant which is annexed as Exhibit "W" to the Plaint, is the logo of the LION which is deceptively similar to the emblem of the Plaintiffs when juxtaposed with the said logo. That the Head Office of the Lions India is mentioned having its office at 19, Nayabazar, Jabalpur-482002, which is the 6th Defendant abovenamed. The said Club has been registered under No. JJ/1912 under the Societies Registration Act, Jabalpur.

In paragraph-40A of the Plaint the Plaintiffs have made reference to some of the articles published at the instance of the Defendants in various newspapers which were also circulated in Mumbai, which were made available to the Plaintiffs in Mumbai. Reference is made to the issues of the Hindi newspaper Dainik Vishwamitra dated 12th & 13th February, 2007 published in Kolkata also circulated in Mumbai. Reference is then made to issue of the Hindi newspaper" Jansatta" dated 14th February, 2007 entitled "Inauguration of Unit of Lions India" wherein it is mentioned that "the agitation of Lions India had begun in 1992". Plaintiffs have then referred to the issue of the Hindi newspaper "Lokpriya Hindi Dainik" "Chhapate chhapte" dated 14th February, 2007 entitled "Inauguration of 10 branches of Lions Aidia" the National President of the Club Lion Sushil Jain, Past National President Rajesh Maheshwari, Makhan Agrawal, Satish Lakhotia, Nandlal Khetan and many prominent personalities were present. The Plaintiffs have then referred to some of the excerpts of the 4 page leaflet translation from Hindi to English which was distributed which has the pictorial depiction of Lion with the words "Lion India" above it and the words in Sanskrit below it.

The title of the article is "WHY LIONS INDIA?" "We are The Change!" The said leaflet contains following message:

"Today the time has come to think whether patriotism has not made us slave to foreign elements. If not, then why do we need to take help from International Institutions? and foreigners are taking advantage of this. "The article goes on to state that "The consequences is that for our recognition we give money to such institutions and later on our names remain only name sake. and those foreign institutions become renowned." "Service is always service. Whether the institution is India or foreign, the outcome of service makes no difference. Yes but the transactions of money make much different. "Then what kind of justification is there for paying the cores for just using a foreign name or a symbol. Spending money for one''s own self is an act. Spending money for the country means ''Culture''. But to spend money abroad, then to stretch out hand for our country is a ''wrongful act''."

The seeds of these thoughts, has given birth to "Lions India", an institution created 15.08.1992in Jabalpur.

What kind of understanding is there in being continuously cheated, and in giving recognition to the cheat? Your awakening can become the morning for the poor of this country. Your awakening, will snap the sleep of the cheat.

The word Lion in the article has been depicted as-

*Symbol of National Strength independent

*Symbol of Self Esteem

*National Animal of Independent India

*Symbol of Independent India''s National Emblem

*Symbol of Emperor Ashoka''s Acknowledgement and Practice of Peace; Friendship and Compassion

Out of the several one of the Basic Tenets "From the Membership Fees to Set Aside "A Certain Amount Towards A Permanent Account and Balance 50 per Cent To Be Compulsorily Spent On Service Activities."

LIONS: Loyal Intellectuals on Nations Service

LIONS: Loyal Intellectuals on Nations Equal Selfless Service

LIONS: Loyal intellectuals Youth Organisation."

The Plaintiffs have then referred to the issues of the Hindi newspaper "Dainik Aaj Ka Anand" Pune dated 16th August, 2006 wherein a National Singing Competition was held at B.R. Agarwal School; Hindi newspaper Pudhari Pune dated 30.03.2006; Sakal Pune dated 31.03.2006 and Prabhat dated 04.04.2006 "Oath taking by the new office bearers of Linos India, Pune, Ganeshkhind held at Mahavir Jain Vidyalay; and Hindi newspaper Loksatta, Pune dated 22nd March, 2007 wherein it was mentioned that Sulbha Shah had been elected as President of Lions and Lioness India Ganeshkind branch where Lions India National President Dr. J.S. Khanna and Actor Shrikant Moghe were present and Deputy Police Commissioner Sunil Phulari released a Souvenir on Drug Abuse.

According to the Plaintiffs, the above Articles appearing in the aforesaid Newspapers at the instance of the Defendants, the Defendants are defaming and sullying the impeccable reputation of the Plaintiffs, by insinuating that there is flight of substantial amounts of India money being transmitted from India to the Head Quarters in USA, when in reality it is a nominal amount. By their aforesaid Newspaper Articles, the good name and reputation of the Plaintiffs have been subjected to contempt, hatred, ridicule and/or is likely to subject the Plaintiffs to contempt, hatred, ridicule, without any lawful justification or excuse. The Plaintiffs assert that the Defendants are not entitled to indulge in such acts of character assassination of the Plaintiffs.

It is stated in paragraph-41 of the plaint that all the Defendants being associated with the Lions Glubs of the Plaintiffs were thus fully aware of the fact that the Plaintiffs are a large International Organization of various clubs known as the International Association of Lions Clubs or as LIONS CLUBS in over 200 countries of the world and in India. That the Defendants were and are fully aware of the excellent reputation the Plaintiffs and their chartered clubs enjoy all over the world in respect of their activities and services and goods supplied or caused to be supplied by the Plaintiffs, and also of the Plaintiffs'' trade name, trading style, trade marks and artistic work of the "LIONS" emblem.

In paragraph-42, the Plaintiffs assert that the adoption by the Defendants of the word "LIONS" or "LEO" "LIYOS" or "LIONESS" by itself of as part of their association name and/or part of their e-mail address and/or part of their domain name or part of their trade mark or service marks and adopting an emblem consisting of the word "LION" and a device of a lion is not only fraudulent but is thoroughly dishonest and is intended mala fide to cause members of the public to believe that the Defendants are associated with the Plaintiffs and/or are a part of the Lions Group.

In para-43 of the plaint it is stated that the Defendants also published articles in websites depicting the Defendants'' activities which are alongside the Plaintiffs articles. According to the Plaintiffs, the adoption by the 1st Defendants of the word "Lions" as part of their e-mail address which is [email protected] is also fraudulent and dishonest. The Plaintiffs assert that a person not knowing the Plaintiffs authorised website in India might merely type in the yahoo search string or the google search string for the words "LIONS INDIA? or "BHARATIYA LIONS" and would be confused and misled by the different sites of the Defendants (as already displayed in Exhibit "FF" to the plaint) appearing alongside on the same page of the Plaintiffs and would be misled into believing that he had correctly reached the Plaintiffs website. According to the Plaintiffs the services and goods of the Plaintiffs under the association name and/or trademark and/or domain name "Lions" have been widely published and written about globally. Plaintiffs assert that in an internet service a particular internet site could be reached by anyone anywhere in the world who proposes to visit the said internet site. The Plaintiffs assert that with the advancement and progress in technology, services rendered in the internet, have also come to be recognized and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by others as that of the provider. Furthermore, when both the sites are considered, it is crystal clear that the two names being almost identical or similar in nature, and appearing on the same page there is every possibility of an internet user being confused and deceived in believing that both the sites belong to one common source and connection, although the two belong to two different organizations.

In para-45 of the plaint the Plaintiffs have spelt out the offending acts of the Defendants:-

(i) use of the word "LIONS" or "LEO" or "LIYOS" or "LIONESS" or of any deceptively similar trade marks or service marks of the Plaintiffs (as listed in Exhibit "G" and Exhibit "H" to the Plaint) by the Defendants either in English or Hindi in relation to their goods or articles or in their e-mail address or in any of the websites or in any part thereof; AND/OR

(ii) use of the word "LIONS" or "LEO" or "LIYOS" or "LIONESS" as dominant and essential part of the name of the Defendants Association either in English or Hindi and/or the use of the device of a Lion used as a logo or symbol of the Defendants Association (as shown in Exhibit "EE" and Exhibit "FF" to the Plaint); AND/OR

(iii) use of the impugned emblem with a device of a lion or lions in any position;

(iv) use of the literary work the Plaintiffs have in their Constitution & By-Laws and in their Club Names.

According to the Plaintiffs the abovesaid acts of the Defendants amount to infringement of registered trade marks and/or service marks of the Plaintiffs in India (as enlisted in Exhibits "G" and "H" to the Plaint), and abroad and/or amounts to infringement of copyright the Plaintiffs have in the emblem and other artistic works depicted in Exhibit "K" to the Plaint and also infringement of Copyright the Plaintiffs have in their literary work in their Constitution and By Laws being Exhibit "B" and Exhibit "B-1" respectively to the plaint and/or amounts to passing off and/or are likely to pass off and/or enable others to pass off the Defendants Association and their Associate clubs, their services and activities and business as and for that of the Plaintiffs and/or Defendants'' services or activities as and for the Association and services or activities of the Plaintiffs and/or their chartered clubs k or as in some way connected with the Plaintiffs. The Plaintiffs assert that the members of the public are likely to believe that Defendants are an off shoot or an agency or chartered clubs of the Plaintiffs or are in some way connected with the Plaintiffs when in fact such is not the case and when in reality the Defendants comprise of and are mostly the former disgruntled members of Plaintiffs Clubs. The Plaintiffs say that any such impression given by the presence of the word "LIONS" or "LEO" or "LIYOS" or "LIONESS" in the name of the Defendants or their associate clubs has already prejudiced the Plaintiffs'' reputation and good will and is likely to further prejudice the Plaintiffs'' reputation and goodwill. The Plaintiffs further assert that the international reputation and goodwill and the reputation and goodwill acquired in India by the Plaintiffs through their hard and excellent work of over 43 years is at stake and will suffer as a result of the activities of the Defendants complained of herein. According to the Plaintiffs'' their enviable world wide reputation is in danger and therefore, it is necessary that this Court pass orders as prayed herein.

In para-46 of the Plaint the Plaintiffs allege that the distinct identity of the Plaintiffs'' Organization is likely to be lost through use of a confusingly similar Organization name by the Defendants. Moreover, the Plaintiffs are likely to have difficulties in raising funds and attracting members and support for its benevolent activities due to presence of Defendants organization with a deceptively similar name and also on account of the negative propaganda they are publicizing about the Plaintiffs and their services.

The Plaintiffs assert that apart from the interest of the Plaintiffs, the interest of the public are paramount. The Plaintiffs allege that the public might be led to believe that the Association of the Defendants and their Associate clubs and/or the activities and services carried out by them and/or the impugned webpages of the Defendants which are inserted alongside the Plaintiffs are that of the Plaintiffs and/or in some way connected with the Plaintiffs.

In para-55 of the Plaint the Plaintiffs allege that the causes of action against the Defendants has arisen in the last week of February, 2007 when the 7th Defendants to the 17th Defendants in utter bad faith and under instigation of the remaining Defendants purported to create five Clubs having the words "LIONS INDIA" as the main and dominant part of their Club name and use of the word "LION" or "LIONS" as a service mark or trade mark or as a part thereof and thereby infringe Plaintiffs registered trade marks and service marks and/or pass off or likely to pass off and/or enable others to pass off their newly created Clubs bearing the word "LIONS as the prominent and dominant part of their Club name as and for the activities and services rendered since several decades by the Plaintiffs Clubs in India. It is stated that the same facts hold good for the fraudulent imitation of the device of LION in the emblem of the Defendants which is an infringement of and a deceptively similar to the Plaintiffs well known device mark and emblems depicting Lions. Furthermore the depiction by the Defendants in paragraph 41 and Exhibits 1 "EE" and "FF" of the Plaint of the LIONS emblem is in direct violation of the Names and Emblems Improper Use Act, 1954.

The Plaintiffs claim that they are entitled under the Copyright Law in respect of their original artistic work consisting of the emblem/device of two Lions as depicted in Exhibit "K" to the Plaint. It is further alleged that all the Defendants without exception, have made substantial reproduction of the original artistic work of the Plaintiffs and made piracy of that emblem in their emblem under the infringing trade mark "INDIAN LIONS" or "BHARATIYA LIONS" and thereby committed flagrant infringement of the copyright the Plaintiffs have in their c original artistic work of LIONS emblem.

On the basis of the above the Plaintiffs have prayed for following reliefs in the present suit:

"(a) that the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and perpetual injunction of this Hon''ble Court from, directly or indirectly, using in any manner in relation to goods and/or services or as a name or part of trade name or Club name, or organization name, covered by the Plaintiffs'' registered trade marks, such as, "LIONS" "LIONS INTERNATIONAL", "LIONS CLUB INTERNATIONAL", "LEO", "LEO CLUBS", device of "LIONS" and all other trade marks and/or service marks particularised in Exhibit "G" and Exhibits "E-1 to F-68" to the Plaint and/or from using the impugned label being Exhibit "EE" and Exhibit "FF" to the Plaint or any other deceptively similar label or emblem and/or device of "LION" or word "LION" or "LIONS" so as to infringe the Plaintiffs'' registered trade marks particularised in Exhibits "F-1 to F-68" and Exhibit "G" to the Plaint.

(b) that the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and perpetual injunction of this Hon''ble Court from using in any manner the word "LION" or "LIONS" or "LEO" or "LEOS" or "LIYOS", "LIONESS" or "BHARATIYA LIONS" or "INDIAN LIONS" or "LIONS INDIA" or "NATIONAL LIONS" or "SEVA LIONS" or "LIONSANSKRUTI" or any other trade mark or service mark or Association name which is identical with or deceptively similar to or a deceptive variation of the Plaintiffs trade marks and names, Association name, trade name or trade mark or service mark such as LION, LIONS, LEO, LIONESS and the like and/or from using the impugned emblem or device as depicted in Exhibit "EE" and Exhibit "FF" to the Plaint or any device of a "LION" or "LIONESS" or any other device or emblem which is identical with or deceptively similar to the Plaintiffs emblem or device as set out in para 28 and Exhibit "K" to the Plaint, so as to pass off or likely to pass off and/or enable others to pass off the Associations or Clubs or Organizations of Defendants and/or their Associate Clubs or activities, their services and business of the Defendants as and for that of the Plaintiffs or Plaintiffs Chartered Clubs or as in some ways connected with the Plaintiffs.

(c) that the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and perpetual injunction of this Hon''ble Court from using, directly or indirectly the word "LION" and/or "LIONS", "LEO" and/or "LEOS", "LIYO" and/or "LIYOS" and/or LIONESS and/or the combination of the words "BHARATIYA LIONS" and/or "INDIAN LIONS" and/or "LIONS INDIA" and/or "NATIONAL LIONS" and/or "SEVA LIONS"

and/or "LIONSANSKRUTI" or any other "trade mark of the Plaintiffs as their e-mail address or part of their e-mail address and/or their domain name and/or part of their domain name or in any way be inserted in any of the websites so as to pass off or likely to pass off and/or enable others to pass off the Association of the Defendants and/or their Associate Clubs and/or the activities, services and business of the Defendants and/or their Associate Clubs as and for that of the Plaintiffs or Plaintiffs'' Chartered Clubs or in some way connected with the Plaintiffs; and be ordered forthwith to take all necessary steps to have the registration of the e-mail address being [email protected] of their head office at Jabalpur or and other e-mail address and/or any of the sites of the Defendants having the deceptively similar name to the Plaintiffs cancelled forthwith by the concerned Authorities;

(d) that the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and perpetual injunction of this Hon''ble Court from reproducing the original artistic work of the Plaintiffs as depicted in Exhibit "K" to the Plaint in any material form and/or communicating the work to the public and/or issuing copies of the work to the public and/or from substantially reproducing the artistic works as has been done by the Defendants as depicted in Exhibit "EE" and Exhibit "FF" to the Plaint or in any other form depicting the logo of the LION or the like species so as to infringe the copyright the Plaintiffs have in the said original artistic work as depicted in Exhibit "K" to the Plaint.

(e) that the Defendants by themselves, their office bearers, servants, agents and Associate Clubs be restrained by an Order and perpetual injunction of this Hon''ble Court from reproducing the literary work the Plaintiffs have in their Purposes and Objectives of their Constitution and By-Laws a as depicted in Exhibit "B" and "B-1" to the Plaint or in any material form and/or communicating the work to the public and/or issuing copies of the work to the public and/or from substantially reproducing the literary work of the Plaintiffs as well as the Club names of the Plaintiffs as has been done by the Defendants as depicted in Exhibit "S" and Exhibit "U" to the Plaint so as to infringe the copyright the Plaintiffs have in the said literary work as depicted in Exhibit "B" and "B-1" to the Plaint.

(f) that Court Receiver, High Court, Bombay be appointed with all powers under Order 40 Rule 1 of the Code of Civil Procedure, 1908 to seize all infringing articles, goods such as letterheads, President kit, Membership kit, Car stickers, other stickers, Pin, Constitution & Bye Laws, Lions India Information books, Diaries of the Defendant Clubs and Associations, President, Secretary & Treasurer Pins, visiting cards, membership cards, banner, podium banner, cassette of Lions India Song, Charter Certificate, Registration form bearing the impugned name and the impugned emblem or the device complained of in the Plaint.

(g) that the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and Perpetual injunction from using a confusingly similar Organisation name and misrepresenting to the public that they are "LIONS" or "INDIAN LIONS" or "BHARTIYA LIONS" and by such misrepresentations raising funds for their own benefits and also attracting members by such misrepresentations and further more hindering the Plaintiffs benevolent activities on account of the negative propaganda publicized by the Defendants about the Plaintiffs Clubs and their services.

(h) that the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and perpetual injunction from defaming and sullying the impeccable reputation earned by the Plaintiffs by making speeches and publishing articles insinuating that there is flight of substantial amount of Indian money being transmitted from India to the Head Quarters in USA by the Plaintiffs, when in reality it is a nominal amount, and furthermore from publishing defamatory Articles in Newspapers and Circulars and other material without just cause or excuse, thereby subjecting the Plaintiffs to hatred, ridicule and contempt and/or likely to subject the Plaintiffs to hatred, ridicule and contempt, without any lawful justification or excuse and further prejudicing the Plaintiffs in the way of their social service activities and furthermore indulging in such acts of character assassination of the Plaintiffs,

(i) that the Defendants, jointly and/or severally, be ordered and decreed to pay to the Plaintiffs, a sum of Rs. 1,28,00,000/- (Rupees One Crore Twenty Eight Lacs Only) or such other sum as this Hon''ble Court may deem fit and proper, as and by of damages;

(j) that the Defendants be ordered and decreed to deliver up to the Plaintiffs for destruction all articles, goods like letterheads, President kit, Membership kit, Car stickers, other stickers, Pin, Constitution & Bye Laws, Lions India Information books, President, Secretary & Treasurer Pins visiting cards, membership cards, banner, podium banner, cassette of Lions India Song, Charter Certificate, Registration Form, Diaries of Defendant Clubs and Associations bearing the impugned name and the impugned emblem or the device complained of in the Plaint.

(k) For ad-interim reliefs and interim reliefs in terms of prayers (a), (b), (c), (d), (e), (f), (g) and (h) of the Plaint;

(l) for the costs of the suit; and (m) for such further and other reliefs as the nature and/or circumstances of the case may require."

Consistent with the abovesaid reliefs claimed in the Suit, the Plaintiffs have prayed for Interim Relief during the pendency of the Suit by taking out present Notice of Motion. Before the present Notice of Motion was considered for grant of ad-interim relief, the Plaintiffs had applied for leave under Clause 14 of the Letters Patent. The said Petition for leave under Clause 14 of the Letters Patent was made absolute in terms of prayer Clause (a) after considering the objections taken by the Counsel appearing for the Defendant Nos. 1, 2, 4 and 5. I was informed that the said Order has become final. After grant of leave under Clause 14, the Plaintiffs moved the Court for grant of ad-interim relief in the present Notice of Motion. That request was incidentally considered by me on June 13, 2007. In the said order it is noted that except Defendant Nos. 1, 2, 4 and 5, no other Defendants have contested the grant of ad-interim relief, though they were duly served. Accordingly, ad-interim relief as against the remaining Defendants(Except Defendant Nos. 1, 2, 4 and 5) was granted in terms of prayer Clause (a) to (h) of the Motion. Insofar as the Defendant Nos. 1, 2, 4 and 5 are concerned for the reasons recorded in the speaking order dated June 13, 2007, ad-interim relief was granted in terms of prayer Clause (h) of the Motion. Insofar as prayer for grant of ad-interim relief in terms of other prayer clauses of the Motion, the same was denied to the Plaintiffs as against the Defendant Nos. 1, 2, 4 and 5 on condition that the said Defendants were ordered to forthwith give wide publicity of the fact that they were neither constituents or affiliate of the Plaintiffs. Even the Plaintiffs were permitted to give wide publicity on that basis without making any other comment against the said Defendants No. 1, 2, 4 and 5. Later on however, remaining Defendants (except Defendant Nos. 1, 2, 4 and 5) took out Notice of Motion No. 2505 of 2005 asserting that they were under the impression that the affidavit in reply filed by the Defendant No. 1 would suffice and their cause will also be represented before this Court. They have asserted that they are the affiliates of Defendant No. 1. The said Defendants therefore," pray that their non appearance at the time of grant of ad-interim relief be condoned and to set aside the Order dated 13th June, 2007 passed against them. They had further prayed to pass the same order against them as was passed in relation to the Defendant Nos. 1, 2, 4 and 5. The said Motion however, was disposed of on 16th February, 2008.

To complete the narration of events, it would be appropriate to advert to one more order passed by me in the present Notice of Motion dated February, 16, 2008. By the said Order, the pleadings filed by both the parties on or after 31st July, 2007 though accepted by the Registry were ordered to be returned for the reasons recorded therein. Hearing of the present Motion was proceeded thereafter on the basis of the pleadings and documents which were filed by the parties on or before 31st July, 2007. I shall briefly refer to the pleadings which are on record in the present Motion.

The Plaintiffs have filed affidavit in support of the present Motion dated 17th April, 2007. The affidavit reiterates the assertions made in the plaint to substantiate the grant of interim relief as prayed in the Notice of Motion pending in the suit. The Defendant Nos. 4 and 5 Bachuchai Gala @ T.J. Gala had filed affidavit to oppose grant of ad-interim relief dated 3rd May, 2007. It is stated in the said affidavit that the correct name of the affiant is T.J. Gala and his pet name is Bachuchai. It is stated that the names Bachuchai Gala and T.J. Gala of Defendant No. 4 and Defendant No. 5 respectively are one and the same person (i.e. the affiant). It is further stated that the said affidavit was being filed for self and on behalf of the Defendant Nos. 1 and 2. However, not even remote suggestion is made that the affiant has been duly authorised by the said Defendant Nos. 1 and 2 who are juristic persons, to file affidavit on their behalf. No authority given by the Defendant Nos. 1 and 2 in favour of Mr. T.J. Gala or Bachubhai has been placed on record. Besides, the affidavit as has been has been filed is not in conformity with the requirements of the High Court Original Side Rules and the Code of Civil Procedure. It does not contain verification clause nor the affidavit indicates as to which facts deposed by the affiant have been stated on the basis of his personal knowledge. Besides this affidavit, there is one more affidavit on record filed by Nevile Mehta dated 29th May, 2007 purported to be rejoinder to affidavit in reply dated 13 May, 2007 filed by the Defendant Nos. 1, 2, 4 and 5, not only reiterating the case made out by the Plaintiffs in the plaint and the earlier affidavit in support of the Motion but also countering the case made out by the Defendant Nos. 4 and 5 in his affidavit in reply.

On the basis of the above said pleadings, the Counsel appearing for the respective parties made their submission. The points which would arise for my determination for deciding the present Motion are broadly:

(i) Whether the Plaintiffs have made out prima facie case?

(ii) Whether the balance of convenience is in favour of the Plaintiffs or the Defendants?

(iii) Whether the Plaintiffs will suffer irreparable loss, if the interim relief claimed by them was to be denied?

Before dealing with the case made out by the Plaintiffs, it would be appropriate to advert to the stand taken by the Defendant Nos. 4 and 5 in the reply affidavit purportedly filed for himself and for Defendant Nos. 1 and 2 only. Indeed, this reply affidavit dated 3rd May, 2007 has been filed only to oppose ad-interim relief. However, as aforesaid, the further affidavits filed by the respective parties have been returned for the reasons recorded in the Order dated 16th February, 2008. In view of the said order, only the case made out by the Defendant Nos. 4 and 5 in the reply affidavit dated 3rd May, 2007 will have to be considered. Even though the said affidavit is not in accord with the requirements of the provisions of the High Court Original Side Rules and the Code of Civil Procedure, we shall presently refer to the contents thereof. The first grievance made in the reply affidavit is that the Plaintiffs have combined three causes of action namely, cause of action of alleged infringement of trade mark, cause of action of alleged infringement of copy right and cause of action of passing off. It is then stated that this Court has no jurisdiction to try and entertain the present suit unless ad until leave under Clause 14 of the Letters Patent was to be granted by this Court. Insofar as this objection is concerned, the same is already addressed in the order dated 8th June, 2007 while allowing Petition No. 253 of 2007 in terms of prayer Clause (a) thereof.

It is then stated that there is gross delay and latches on the part of the Plaintiffs in making the present Application for ad-interim reliefs. Even that aspect has been considered in the Order dated 13th June, 2007. However, now the issue that needs to be addressed is: whether the Plaintiffs are entitled for interim reliefs during the pendency of the suit. In my Order dated 13th June, 2007, I have already noted that the contention regarding delay and latches may not be so significant at the time of deciding the main Motion for grant of interim relief during the pendency of the suit. Inasmuch as, while considering the prayer for grant of ad-interim relief, the Court may take into account facts which may militate against the theory of imminent threat. But the same fact will have to be viewed differently while considering prayer for grant of interim relief during the pendency of the Suit. In that, at the stage of ad interim relief the consideration is to grant immediate order; but while examining the prayer for grant of Interim relief during the pendency of the suit, all aspects will have to be taken into account.

Be that as it may, according to the Defendant Nos. 4 and 5, the Plaintiffs have not taken any action against the Defendants for a period of more than 14 years i.e. since 1993 and now after a period of 14 years, the Plaintiffs are not entitled for any relief. I may once again reiterate at the cost of repetition that even though the reply affidavit has been filed for the limited purpose of opposing grant of ad-interim relief, but as no further affidavit of the said Defendants is on record, I am taking the same affidavit into account for examining the rival submissions to consider grant of interim relief during the pendency of the suit.

The Defendant Nos. 4 and 5 in the said reply affidavit have then stated that in the month of August, 1993, the Defendant No. 1 society had received a notice from the Plaintiffs advocates inter alia alleging infringement of Plaintiffs'' trade mark and for passing off and calling upon the Defendant No. 1 to cease and desist from using name "LIONS" or "LIONS INDIA JABALPUR MIDTOWN" and for other matters as mentioned therein. It is then stated that on receipt of the said notice one Dr. Jagjitsingh Khanna, the then founder president of the Defendant No. T Society filed Civil Suit in the Court of District Judge, Jabalpur, Madhya Pradesh being Civil Suit No. 383/A of 1994 for declaration that the threats of action for infringement, passing off or consequently for damages as contained in the said notice dated 23rd August, 1993 are unjustified and groundless and for injunction against the Plaintiffs'' to desist them from continuing its threats in any manner either personally or through their servants and agents. It is further stated that the said Suit was filed in the representative capacity under Order 1 Rule 8 of the Code of Civil Procedure. Leave in that behalf was also granted by the Civil Court. It is further stated that the said Suit was tried wherein the Plaintiffs examined witnesses and after recording of evidence, the trial Court decreed the Suit on 21st April, 2001 against the Plaintiffs herein thereby allowing both the prayers in the said Suit and particularly against the present Plaintiffs, their servants, agents from permanently restraining them from obstructing or interfering with the activities of the LIONS INDIA and LIONS INDIA JABALPUR MIDTOWN. It is then stated that the Plaintiffs in the present suit has not disclosed the aforesaid material fact and have suppressed the said fact from this Court. It is stated that the Plaintiffs have not come to this Court with clean hands; for which reason, the Plaintiffs are not entitled for any relief It is stated that the Plaintiffs have allowed the decree dated 21st April, 2001 to become final and conclusive. For that reason, the finding in that suit would operate as res judicata against the Plaintiffs. It is stated that the Plaintiffs cannot agitate the said issues once again in the present Suit; for which reason, the Plaintiffs are not entitled for any relief. It is then stated that the Defendants have been using their name and logo and/or emblem since then (1993) and have been carrying out their selfless activities of humanity and help to poor and needy persons without any interference and obstruction from the Plaintiffs, It is stated that the Plaintiffs have admittedly allowed the Defendants to use the name and logo of LIONS INDIA, for the period of 14 years and therefore, the Plaintiffs have deemed to have consented and/or acquiescence to the acts and activities of the Defendants'' in the name of LIONS INDIA and with their logo.

It is further stated that the Defendant No. 1 is a registered society registered under Madhya Pradesh Societies Registration Act. It is then denied that the Defendants have committed infringement of the trade mark of the Plaintiffs and committed any acts of passing off or any infringement of copyright as alleged in the manner or at all. It is then stated that the Defendant No. 1 asserts that the Defendant No. 1 is carrying out activities in the name of LIONS INDIA from Jabalpur Midtown since prior to August 1993 and since then is using its Logo arid/or emblem with the words "LIONS INDIA" and certain Hindi words incorporated therein. According to the said Defendants, logo and/or emblem of the Defendant No. 1 Society is not at all similar to the logo and/or emblem of the Plaintiffs so as to deceive and/or confuse anyone. It is stated that the emblem or logo of the Plaintiffs and that of the Defendants'' are different in mark, colour and outlook. Besides, there are two half faces of lions in Plaintiffs'' logo, whereas in the Defendants'' logo there is only one full-face lion. It is stated that the position of the two half faces lions is on either sides of logo; whereas in the case of Defendants'' logo, the lions face is full and front facing. According to the said Defendants, these are glaring dissimilarities in the Defendants'' logo/emblem as compared to that of Plaintiffs logo/emblem, thereby making the overall mark of the Defendants distinctive and independent in its identity. It is stated that such dissimilarities will not confuse or deceive any member of the public in any manner whatsoever. It is then stated that the Defendant No. 1 Society does not sell, trade, deal with any goods or articles with the said trade mark. Whereas the Defendant No. 1 is only rendering selfless services to the society at large and human mankind for upliftment of the poor and needy people. The Defendants have denied that there is any copy right existing in any of the work as claimed by the Plaintiffs. On that basis, it is asserted that there is no question of infringement of trade mark or copy right or passing off at all.

As aforesaid, the Plaintiffs have filed rejoinder affidavit and countered the case made out by the Defendant Nos. 4 and 5 in his affidavit which was purportedly filed for himself and Defendant Nos. 1 and 2 only. No reply has been filed by Defendant Nos. 3 and 6 to 28 to counter the assertions made in the plaint and/or affidavit in support of the Notice of Motion. The said Defendants however, are now represented by the same advocate who is espousing the cause of the Defendant Nos. 1, 2, 4 and 5. Insofar as the said Defendant Nos. 3 and 6 to 28 are concerned, Interim relief as prayed for in the Motion will have to granted as the case made out by the Plaintiffs has remained uncontroverted by them. Assuming that the cause of the said Defendants is espoused also by Defendant Nos. 1, 2, 4 and 5 who have already filed reply affidavit, in that case, they would suffer the same consequence as would be ordered against the Defendant Nos. 1, 2, 4 and 5.

Be that as it may, to consider the question whether the Plaintiffs have made out prima facie case, I have no hesitation in taking the view that the issue is already answered in favour of the Plaintiffs by this Court on more than one occasion in the past-albeit in the proceedings instituted against other organisations indulging in the same or similar activities as in the case of the Defendants herein. In that, the Plaintiffs had approached this Court as back as in 2001 by way of Suit No. 865 of 2001 filed against the INDIAN LIONS CLUB and Ors.. In the said suit, Notice of Motion No. 622 of 2001 was taken out. this Court granted ad-interim relief to the Plaintiffs in terms of prayer Clauses (a) and (b) of the Motion. The said decision is reported in I 2002 PLR 337. The relevant extract of the decision would broadly answer the stand of the Plaintiffs even in the present Suit which reads thus:

"So far as the question of grant of ad-interim order is concerned, the Plaintiffs claim to be an international organisation which is functioning since 1956. The Plaintiffs claim that there are about 44,450 Lions Clubs all over the world and it has 1,55,000 members in 4,300 Chartered Clubs in India. The Plaintiffs claim that the organisation viz. Lions Club has acquired the distinctive identity in the minds of public in India who associates exclusively with the Plaintiffs and the affiliated organisations set up under the charter granted by the Plaintiffs. The Plaintiffs claim that the Defendants have adopted the name ''Indian Lions Club'' fully aware of the fact that the Plaintiffs are large international organisation. According to the Plaintiffs, the Defendants are trying to pass off their organisation as part of the Plaintiffs'' organisation. It appears from the affidavit filed on behalf of the Defendants that the members of the Defendants were members of Plaintiff Club previously, they were dissatisfied with the work of the Plaintiff Club in Mumbai and they therefore left their membership and they have formed their own club. It goes without saying that there is definite similarity in the name of the Plaintiffs and the name of the Defendants. If the Defendants'' organisation has come into existence because of the dissatisfaction with the king of the Plaintiffs and if it was not the intention of the Defendants to pass their organisation as an associate of the Plaintiffs, then there was no justification for the Defendants to use ''Lion'' in the name of their club. If their Club came into existence because of the dissatisfaction with the Plaintiffs, then they would have tried to distance themselves from the Plaintiffs and they would have adopted a name which cannot even remotely be connected to the Plaintiffs, There was at all no justification for using word ''Lion'' in the name of their Club when everybody knows that the Lions Club is an international organisation in existence for last several decades. In my opinion, therefore, the use of the word ''Lion'' in the name of the organisation of the Defendants shows their intention to pass of their organisation as that of the Plaintiffs. In this view of the matter therefore, in my opinion, the Plaintiffs are entitled to ad-interim order in terms of prayer Clauses (a) and (b). It is accordingly granted." (emphasis supplied)

The Plaintiffs have had to file another Suit in this Court being Suit No. 1423 of 2000 against National Association of Indian Lions and Ors. Even in that Suit a Notice of Motion was taken out by the Plaintiffs being Notice of Motion No. 1175 of 2000. In that Suit, as issue of jurisdiction of this Court was raised-which was framed as preliminary issue u/s 9A of CPC as applicable to State of Maharashtra and answered in favour of the Plaintiffs. That decision is reported in International Association of Lions Clubs Vs. National Association of Indian Lions and Others, . Significantly, while considering the issue of jurisdiction of this Court, reference was made to the evidence of one Mr. T.G. Gala who was using Lions emblem with the word Indian Lions and was residing at Mumbai. The said T.G. Gala is none other than the present Defendant Nos. 4 and 5. Suffice it to observe issue of jurisdiction of this Court has been answered in favour of the Plaintiffs. After answering the said issue, the Court proceeded to examine the reliefs claimed by the Plaintiffs in the said Notice of Motion No. 1175 of 2000. It would be noticed from the judgment reported in International Association of Lions Clubs Vs. National Association of Indian Lions and Others, , that the contentions which are required to be addressed in the present Motion were raised and have already been answered in favour of the Plaintiffs, in paragarph-8 of the said decision. The Court has observed thus:

"8. I have considered the rival contentions between the parties. Insofar as the question of establishment of the reputation of the Plaintiffs is concerned, the same is established beyond any doubt. The Plaintiffs are the internationally well known organisation and are conducting activities on a very large scale. The Plaintiffs have got large number of clubs in India and large number of people are their members and the club is closely associated with the Plaintiffs and Plaintiffs activities in India including the City of Bombay earned on a very large extent. The Plaintiffs have thus acquired a huge reputation in the word Lion. Lioness and Leos in association with their names namely Lions Club of International. The Plaintiffs have equally acquired a huge reputation in the emblem with picture of Lions on both sides. The Lion emblem is also well known in India. By virtue of the fact that the Plaintiffs are carrying out its activities in social sector and even in charity sector the Plaintiffs name and the emblem is associated with the Plaintiffs and its activities. Thus, in my opinion, the question that whether the Plaintiffs have acquired a reputation or not in the word Lion. Lioness and Leo must be answered in favour of the Plaintiffs. The Plaintiffs also advertised the said word Lion, Lioness and Leos in relation to their activities in various newspapers and in pamphlets and posters. It is thus without any doubt clear that the reputation of the Plaintiffs in the word Lion, Lioness and Leo and Leos has been very huge reputation and, therefore, the Plaintiffs are entitled to protect the same." (emphasis supplied)

Incidentally ,in the abovesaid decision, this Court has also considered the argument that the Plaintiffs are not entitled for protection of a service mark because it is not in relation to any trade or sale of goods and it is in relation to only charity and services. While referring to the exposition in the case of The British Diabetic Association V.s. The Diabetic Society and Ors. (1996 FSR 1) as well as in the case of WWF International v. Mahavir Spinning Mills Ltd., (1994 (14) PTC 250 (Del) and the case of The International Association of Lions Club v. Indian Lions Club and Ors. (2002 IPLR 337), the Court went on to reject the said argument of the Defendants therein. The Court positively found that the Plaintiffs were entitled to relief of injunction for passing off even if the Plaintiffs were not trading in the goods in the market and are merely rendering service. In paragraph-10 of this decision, the Court has adverted to the dictum of the Apex Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001 PTC 300(SC)) which has broadly restated the legal principle that in an action for passing off-on the basis of unregistered trade mark generally, for deciding the question of deceptive similarity, the following facts ought to be considered:

(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.

(c) The nature of the goods in respect of which they are used Ks trade marks.

(d) The similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

The Court then went on to hold that it is clear that the mark which is being used by the Plaintiffs having acquired huge reputation, the Defendants are trading upon the reputation of the Plaintiffs as an international club and, therefore, the Plaintiffs are entitled for injunction. In paragraph-11 of the judgment, the Court went on to consider the argument in the context of Provisions of Copyright Act and noted that the Plaintiffs would be entitled for Interim relief on account of protection available to the Plaintiffs under the said Act. I have no hesitation in adopting the same approach even in the present suit.

After the aforesaid rounds of litigation, the Plaintiffs are now driven to file this suit against the present Defendants who are exploiting the Plaintiffs'' trade mark in name as also infringing the copyright of the Plaintiffs and indulging in action of passing off by using the name LIONS INDIA so as to cause confusion amongst t the unwary public. It is noticed that the marks and emblems are used in such manner as to render use thereof likely to be taken as being used by the association who has affiliation with the Plaintiffs. In the present suit also, the Plaintiffs have asserted that the Plaintiffs'' Association was formed in 1917 and have established 45,300 service clubs to be known as "LIONS CLUBS" to coordinate activities and to standardize the administration all over the world including LION CLUBS in India and that the Plaintiffs have 1,55,000 members in over 4,900 Chartered Clubs situated in 59 Districts in India. The Plaintiffs have their Constitution and Bye-laws which spell out the objects and mottos of the Plaintiffs'' association. None of these facts are in dispute. Besides, the fact that the Defendant Nos. 4, 5, 8, 10, 12, 14, 146, 17, 20 and 24 were members and/or office bearers of the Plaintiffs'' member clubs and some of them continue to be so even now is not disputed at all.

The Defendants have also not denied the fact that as the said Defendants and some other persons who were disgruntled, left the Plaintiffs'' organisation and fraudulently and dishonestly started parallel organisation so as to highjack the huge reputation and activities of the Plaintiffs'' Association. Rather it is common ground that the said Defendants parted from the Plaintiffs'' Association because they were disillusioned and thereafter started parallel organisation for the same purpose and motto. Indeed, if the said Defendants wanted to disassociate themselves from the Plaintiffs and start another association, it was open to do so. However, they cannot be allowed to adopt the same or similar name of the newly formed Association, which is confusingly similar to the name associated with the Plaintiffs. The Defendants have not refuted the allegations contained in paragraph-34 onwards of the plaint which have highlighted these aspects.

The Plaintiffs have produced the registration certificate in respect of service marks and various registered trade marks in India issued in the name of the Plaintiffs, which include Classes-8, 14, 16, 18, 20, 21, 24, 25. The Plaintiffs have also asserted that they are the proprietors of the trade marks which are service marks falling in Class 42, 36 and 41. The list of all those marks is appended at Exh. G to the Plaint. These facts have gone unchallenged. Going by the said facts, it is obvious that the service marks/trade marks of the Plaintiffs are: Lions emblem (Label), Lions Club, Lions Clubs, emblem (Lion International), emblem (Lion Club), Lions International, Lions Club International, Lions Club etc. The Defendants have dishonestly adopted the same or similar marks. Indubitably, dishonest adoption of the confusingly similar mark by the Defendants after forming parallel organisation leaves no manner of doubt that the attempt was to highjack the huge reputation and activities of the Plaintiffs'' Association and thereby to cause injury to the Plaintiffs'' Association. It is not only a case of infringement of the registered trade marks referred to by the Plaintiffs but also covered by the mischief of passing off, so as to confuse the unwary public that the Defendants were affiliates of the Plaintiffs'' Association and were carrying on activities on their behalf. The Plaintiffs in paragraph-34 of the plaint have pointed out the similarities in the Constitution of the Plaintiffs and Defendant No. 1 in the following terms:

Plaintiffs

Defendant No. 1

INTERNATIONAL CONSTITUTION

Lions India

ARTICLE 1

Constitution and Bye-Laws

Name, Slogan and Motto

Name, Slogan and Motto

Section 1. NAME. The name of this association shall be: The International Association of Lions Clubs.

(a) The name of this organization shall be: The Association of Lions India.

Section 2. SLOGAN. Its Slogan shall be: Liberty, Intelligence, Our Nation''s Safety.

(b) Its slogan shall be: Loyal Intellectuals On Nation''s Service and its abbreviations shall be LIONS".

Section 3. MOTTO. Its Motto shall be: We serve.

c) Its Motto shall be: "Vayam Rashtriya Jagrayam Prohita" i.e. we could keep the Nation awakened and alive through our service activities. and Service to humanity.

Article II Purposes

Purposes and Objectives

The purposes of this association shall be:

The purpose of this organization shall be:

(a) To organize, charter and supervise, service clubs to be known as Lions clubs

(a) To organize, charter and supervise service Groups to be known as ''Lions India''. "

(b) To coordinate the activities and standardize Lions clubs.

(b) To coordinate the activities and standardize the administration of the administration of its ''Lions India'' Groups.

(e) To take an active interest in the civic, cultural social and moral welfare of the community .(ARTICLE II Purposes)

The Objectives of this organization shall be:

(a) To promote the National spirit and patriotism.

(b) To activate the citizens to serve the community, to take active interest in civic, cultural, social and moral welfare of common citizens through various ''Lions India groups .

(g) To provide a forum for the open discussion of all matters of public interest; provided, however, that partisan politics and sectarian religion shall not be debated by club members. (ARTICLE II Purposes)

(c) To arrange open discussions on all matters of public interest. However, there shall be no discussions on any particular political party or any religion.

(f) To unite the clubs in bonds of friendship, good fellowship and mutual understanding

(d) To unite the citizens the through various groups in the bonds of friendship, good fellowship and mutual understanding.

The Plaintiffs have also in the same paragraph asserted that the Defendants have used similar Club Names as follows:

PLANTIFFS

DEFENDANTS

LIONS CLUB CALCUTTA BALLYGUNGE

LIONS INDIA KOLKATA BALLYGUNGE

LIONS CLUB CALCUTTA EAST

LIONS INDIA KOLKATA EAST

LIONS CLUB CALCUTTA INDRANI

LIONSINDIA KOLKATA INDRANI

LIONS CLUB CALCUTTA WEST

LIONS INDIA KOLKATA WEST

LIONS CLUB of GANESHKHIND

NATIONAL LIONS CLUB of GANESHKHIND

LIONS CLUB of PUNE MUKUND NAGAR

NATIONAL LIONS CLUB of PUNE MUKUND NAGAR.

In other words, the Plaintiffs have not only made out prima facie case in the context of infringement of Registered Trade Mark, but also of passing off and infringement of copyright. Besides that, the Plaintiffs have also established the case that the Defendants were indulging in negative publicity against the Plaintiffs by issuing circulars including in various newspapers. The Plaintiffs have produced the relevant circulars, newspaper cuttings, which clearly indicate that the attempt is to tarnish the huge reputation of the Plaintiffs. From the plain language of the stated circulars and news items, it is amply clear that the publication thereof is mala fide. Amongst other, insinuation is made that there is flight of substantial amounts of Indian money being transmitted from India to the Head Quarters in USA, when in reality it is a nominal amount. The fact that such publication has been made is not denied at all. Significantly, no justification is offered by the Defendants either in the news items or circulars or for that matter by way of affidavit before this Court to substantiate the allegations contained in the stated news items and circulars produced by the Plaintiffs. Furthermore, by publishing defamatory articles in newspapers and circulars and other materials without just cause or excuse, the Defendants have subjected the Plaintiffs to hatred, ridicule and contempt and/or likely to subject the Plaintiffs to hatred, ridicule and contempt. It has and is bound to prejudice the Plaintiffs and come in their way of social service activities. Indeed, the tenor of the publications is indulging in acts of character assassination of the Plaintiffs.

Taking overall view of the matter, I have no hesitation in accepting the Plaintiffs'' case that the Defendants have indulged in infringement of Registered trade mark and trade name of the Plaintiffs but also in using the name, emblem or service mark of the Plaintiffs, which is identical with or deceptively similar to or a deceptive variation of the Plaintiffs trade marks and names, association name, trade name or trade mark or service mark such as LION, LIONS, LEO LIONESS and the like and/or of using the impugned emblem or device as depicted in Exh. "EE" and Exh. "FF" to the plaint.

The Plaintiffs have also made out case of passing off against the Defendants, as also one of infringement of copyright, of reproduction of the original artistic work of Plaintiffs as has been done by the Defendants (as can be seen from Exh. "EE" and "FF" to the plaint). Counsel for the Plaintiffs has justly placed reliance on the decision of the House of Lords in the case of Reckitt & Colman Products Ltd. v. Borden Inc. and Ors., (1990) RPC 341. It has noted the well established position that the law of passing off could be summarised in one short, general proposition: may pass off his goods as those of another. It is further held that it could specifically be expressed in terms of the three elements, each a question of fact, which a Plaintiff had to prove in order to succeed. Firstly, that there was a goodwill or reputation attached to the goods or services which he supplied in the mind of the purchasing public by association with their identifying get-up. Secondly, that there was a misrepresentation to the public likely to lead the public to believe the goods or services offered by him were the goods or services of the Plaintiff. And thirdly that he was suffering or was likely to suffer damage by reason of erroneous belief engendered by the Defendant''s misrepresentation .The Court went on to that it was irrelevant whether or not the public was aware of the Plaintiff''s as the manufacturer or supplier of the goods in question, as long as they were identified with a particular source. Applying these principles to the fact situation of the present case, there can be no difficulty in answering the issue under consideration against the Defendants and in favour of the Plaintiffs. The Plaintiffs have more than established that there was goodwill and reputation attached to the services which they were rendering in the minds of the public and those services were associated and identified with the Plaintiffs. Besides, by fraudulently adopting similar name the Defendants were bound to misrepresent the public were likely to believe that the services offered by the Defendants were the services of the s. The Plaintiffs have produced documentary evidence such as a letter indicating that position. Moreover, the fact that due to such misrepresentation, the Plaintiffs were to suffer damage by reason of erroneous belief engendered by the Defendants through its representation was inevitable.

The Plaintiffs have also relied on the contents of Kerly''s Law of Trade Marks and Trade Names, Fourteenth Edition, wherein in paragraph-15-061, it is noted that it is clear that a professional association of sufficient standing may sue to prevent others imitating either its name or the initials by which qualified persons indicate their membership of it. It is further noted that such course is open even to charitable institutions and perhaps even religious organisations. To get over this Position the Counsel for the Defendant would at the outset contend that the Defendants were not using the stated mark nor the Defendants were associated and/or affiliated with the organisation using such mark so as to cause any infringement or action of passing off. However, no such case is made out in the reply affidavit filed by the Defendants. This statement is made across the bar by the Counsel for the Defendants. If this statement is accepted as it is, then no other enquiry would be necessary. However, as the Plaintiffs have produced plentiful material to indicate the complicity of the Defendants, it has become necessary to address the matter on its own merits and not on the basis of the abovesaid statement of the Defendants.

It was then contended that the real issue to be considered is whether the mark aid emblems at Exh. EE and FF can be said to be affecting the mark of the Plaintiffs in any manner. The argument of the Defendants is that the logo adopted by the Defendant No. 1 Society is not at all similar to the logo and emblem of the Plaintiffs so as to deceive and or confuse any one. It is argued that the emblem or logo are different in mark, colour and outlook. Besides, there are two half faces of lions in Plaintiffs'' logo, whereas in the Defendants'' logo there is only one full face lion. Moreover, the position of the two half faces lions is on the either sides of logo, whereas in the case of the Defendants'' logo, the lions face is full and front facing. The argument proceeds on the dissimilarities in the logo/emblem adopted by the Defendants as compared to that of the Plaintiffs'' logo/emblem. The argument will have to be stated to be rejected. It is not only the dissimilarities pointed out by the Plaintiffs in the logo/emblem that can be the basis to absolve the Defendants, but the other material aspects will have to be considered so as to take overall view of the matter. I have no doubt that the unwary public would get confused by the generality of appearance and projections made by the invaders and not by the insignificant dissimilarities of the mark, colour and its outlook-such as the difference between two half faces of lions or one full face lion and its positioning. It is enough even if the confusion is caused on one occasion to the unwary public who may later on realise the subtle difference in the form. In other words, the Court will have to take over all view of the matter and reckon the similarities which may result in causing confusion amongst the unwary public. Applying that test, the argument of the Defendants founded on the dissimilarities in the logo/emblem at Exh. EE and FF to the plaint will be of no avail. The Plaintiffs have established the fact that they have obtained registration of trade mark, name and device. As aforesaid, the fact that there are some insignificant dissimilarities thereto will be of no avail.

The Defendants have then attempted to give justification of adoption of the mark, name and emblem relying on its constitution and Bye-laws and Article, particularly at page 512 and 513. None of that can be plausible justification so as to absolve the Defendants particularly having regard to the fact that some of the Defendants were members and office bearers of the Plaintiffs'' member clubs in the past and formed part of the disgruntled group who separated from the Plaintiffs'' association and formed their own parallel organisation, fraudulently and deceptively adopted similar name so as to confuse the common public. Even the argument of the Defendants that the activities of the Defendants are entirely different than that of the activities of the Plaintiffs does not commend to me. From the comparative table produced by the Plaintiffs, I have no hesitation in taking the view that the purpose, objective and activity of the Defendant No. 1 and other Defendants who are affiliates of the Defendant No. 1 is similar to that of the objective and motto of the Plaintiffs'' association. That is bound to cause confusion in the minds of unwary public for atleast once.

That takes me to the principal argument of the Defendants that the Plaintiffs are not entitled to any discretionary relief from this Court having regard to the fact that the Plaintiffs have not disclosed the factum of institution of the Civil Suit No. 383/A/94 in the District Court of Jabalpur, Madhya Pradesh against the Plaintiffs by one Dr. Jagjitsing Khanna, which was filed in representative capacity under Order 1 Rule 8. Relying on this fact, three arguments have been canvassed. Firstly, that the Plaintiffs inspite of the knowledge of the said suit allowed the Defendants to continue its activity for such a long time and it is only after the Defendants have grown, the Plaintiffs have resorted to the present action which obviously suffers from gross delay and latches. It is also argued that the Plaintiffs have allowed the Defendants to use the name and logo of LIONS INDIA for considerably long time, therefore, have deemed to have consented and/or acquiescence to the acts and activities of the Defendants in that name. The second argument is that the decree passed in the said Suit having been allowed to become final, the finding in the said Suit will bind the Plaintiffs. In other words, the cause in the present suit is barred by resjudicata. The third argument is that the Plaintiffs have approached this Court with unclean hands for which reason not entitled for any relief.

The question is whether the Plaintiffs were obliged to disclose the fact of issuance of notice to Defendant No. 1 in August, 1993 and of institution of the stated suit in representative capacity by Dr. Jagjitsingh Khanna. In the first place, it is not in dispute that said suit filed by Dr. Jagjitsingh Khanna was essentially u/s 120 of the Trade and Merchandise Marks Act, 1958 (which is analogous to Section 142 of the Trade Marks Act, 1999). It is well established that the suit filed under the said provision is essentially for direction against the person who threatens with an action or proceedings for infringement of trade mark, which is Registered or allegedly by him to be registered. The person aggrieved by such threat is free to file suit against the other person (one who has given legal notice) for administering groundless threat of legal proceeding.

The efficacy of such proceeding is no more res integra. It would be useful to refer to the decisions in the case of Dolphin Laboratories Pvt. Ltd. Vs. Kaptab Pharmaceuticals, ; Madura Coats Limited and Others Vs. Chetan Dev, ; Rajni Industries v. Bhartiya Dhoop Karyalaya and Ors., 2001 PTC 480 (Del) (para-9); Lakshmi PVC Products Pvt. Ltd. v. Lakshmi Polymers; and Madras High Court decision dated 25th July, 1990 (para-15). The consistent view is that the scope of such suit is very limited. The relevant issue to be decided in that suit is whether the threats given by the Defendants were justifiable or not; if unjustifiable should continuance thereof be injuncted. It is well established position other finding recorded in such a suit would be irrelevant in the context of the limited scope of the said suit, even if addressed by the Court while answering the real issue in the suit. That finding would be unnecessary and not bind the Defendant in any suit was filed in earlier point of time, non-disclosure thereof would be of no serious consequence; as it is not a relevant and material fact. Indeed, it would have been appropriate for the Plaintiffs to disclose that fact. For the present, suffice it to observe that non-disclosure of such fact cannot materially affect the outcome of the present proceedings nor militate against the Plaintiffs. It necessarily follows that due to non-disclosure of such fact, the Plaintiffs cannot be non-suited on the argument of having approached this Court with unclean hands so as to deny them any relief in the present action. On the other hand, in law, the Plaintiffs are legitimately entitled to take recourse to this substantive remedy irrespective of whether suit u/s 120 (now Section 142 of the Act of 1999) have had been filed or decided against the Plaintiffs. For the same reason, even the other argument of the Defendants that the present suit is barred by principles of res judicata as the Plaintiffs have allowed the decree and/or finding passed in the former Suit filed before Jabalpur Court to attain finality, will have to be stated to be rejected. As aforesaid, even if the Jabalpur Court has recorded adverse finding against the Plaintiffs in relation to the facts or matters which are relevant in the present proceedings, such finding will be of no avail being unnecessary and not binding on the Plaintiffs. That finding neither can be said to operate as res judicata or constructive res judicata against the Plaintiffs, as is sought to be contended.

The Counsel for the Defendants has relied on the dictum of the Division Bench of our High Court in unreported judgment in the case of Maganlal Kuberdas Kapadia v. Themis Chemicals Ltd. & M/S. Orgachem Enterprises and Ors., in particular paragraphs-12, 13 and 14 thereof which reads thus:

"12. A Court of Law exercising discretionary power in such matters, rightly insists on a party approaching the Court with clear clean hands. The message has its enduring value: and has preserved itself all through the ages. Litigants who want only disregard this basic principle do so at their peril. This case rightly attracts those voluntary principles ; and it is a clear illustration where the application of the principle is fully justified.

About a century and a halfback, the first of he decided cases on that aspect had appeared in Law Reports: C. Dalglish v. Jarvis, 1850 (2) MAC & G. 231. (20 L.J. Ch.475). It is declared in unmistakable terms the obligation on a party seeking an interim equitable relief to bring under notice of Court all facts material to the determination of his right to injunction. That he was not aware of the importance of the facts, it was declared, was no excuse. Langdale''s observation that "...every fact must be stated, or, even if there is evidence enough to sustain the injunction, it will be dissolved" has now become part of the juristic principle. To this, is a concurring and complimentary observation of Rolfe B.,: "If he conceals anything that he knows to be material, it is fraud, but besides that if the conceals anything that may influence...." A plea to limit the application of the principle to certain specified instances of injunctive relief was rightly repelled.

Rex V. Konngton Income Tax Commission 1017 (1) KB Div 486, can be characterised as a legal classic on this aspect. The principles alluded to above, have been applied with an elaborate and illustrative exposition of sin exhaustive variety of arguments. It is unnecessary to prolong an exercise on chronicling the cases, English and India, were the principles haves been enthusiastically adopted by Courts of Law. Illustrative decisions are: Asiatic Engineering Co. Vs. Achhru Ram and Others, Prof. A.K. Sanyal Vs. Dr. Chitta Ranjan Basistha and Others, (which in turn refers to earlier decisions of that Court such as of Bose J.(as he then was) in Ratan Chandra Nayak Vs. Adhar Biswas, . The Supreme Court has applied the principle in the context of revocation of special leave obtained by suppression of material facts vide Udai Chand Vs. Shankar Lal and Others, . The decisions do duty to indicate the hardened foundation rock whereupon many ancillary edifices of administration of justice have been build upon."

The observations in this decision will have no application to the fact situation of the present case for the reasons already recorded in the earlier part of this Order.

That takes me to the argument of the Defendants that the Plaintiffs are not entitled to any interim relief on account of gross delay and latches. From the material on record, it is obvious that the Plaintiffs had issued Notice to the Defendant No. 1 in August, 1993. It is also noticed that one Dr. Jagjitsingh Khanna had filed Suit in representative capacity in the District Court at Jabalpur, which was eventually decreed. The question is whether on account of inaction by the Plaintiffs to institute the suit for the relief now claimed before this Court in the present suit can be said to attract the principles of gross delay and latches.

Indeed, it may appear that the Plaintiffs did not move against the Defendant No. 1 after issuance of notice in August, 1993. That does not mean that continuation of the activity by the Defendants in particular Defendant No. 1 has been condoned by the Plaintiffs. The fact that the Plaintiffs have been asserting their right of infringement of registered trade mark and/or action of passing off and infringement of Copyright is obvious from the two suits filed by the Plaintiffs against the other organisations during the relevant period. It may be that after the Plaintiffs realised that the activities of the Defendants in particular Defendant No. 1 were reaching threatening proportion the Plaintiffs have approached this Court. In the first place, the fact that the Plaintiffs have recently come across the activities of the Defendants herein as stated in the plaint has remained uncontroverted as of now.

The Counsel for the Defendants would however, place reliance on the decision in the case of Cordes and Ors. v. R. Addis & Son, reported in Reports of Patent, design and Trade Mark Cases (Vol. XL) on page 133. Reliance was placed on the exposition from pages 142 to 143 of this reported decision. The Chancery Division in the fact situation of that case was of the view that there has been a user by the Defendants for a length of time and the circumstances in that case disentitled the Plaintiffs for any interim relief. In that case, the user was noticed to be about 15 or 16 years. In the context of the said distance of time, the Chancery Division observed thus:

"I think that on the facts the Plaintiffs have failed to establish that there is such a get-up of the Defendants'' goods or of the packets in which they are contained, as to lead to the results of which they are apprehensive. But Assuming that I had come to the conclusion that, having regard to the adoption by the Defendants of the slogan, upon which great reliance was rightly placed by the Plaintiffs, the Defendants had invaded the area of territory already occupied by the Plaintiffs, the question would have arisen, a question more of law than of fact, whether the Plaintiffs would, according to the practice of this Court, be entitled to the injunction they claim in paragraph 2 of their prayer. The evidence is that, while the Plaintiffs have been carrying on a moderate or even a small 1 business in this country, advertised in magazines circulating in this country, and therefore to that extent advertised in this country, the Defendants have side by side been manufacturing and selling in enormous quantities tooth brushes enclosed in cartons bearing this slogan, at least since 1913, and according to some of the evidence for 15 or 16 years. For the purpose of determining this issue I must assume that the Plaintiffs are traders who have started in this more or less small way in this country, and have been continuously carrying on this business. But I must assume also that they have not, during that period, been adopting a sort of Rip Van Winkle policy of going to sleep and not watching what their rivals and competitors in the same line of business were doing. I accept the evidence of any gentleman who comes into the box and gives his evidence in a way which satisfies me that he is speaking the truth when he says that he individually did not know of the existence of a particular element of a particular factor in the goods marketed by his opponents. But the question is a wider question than that: Ought not he to have known:

is he entitled to shut his eyes to everything that is going on around him, and then when his rivals have perhaps built up a very important trade by the user of indicia which he might have prevented their using had he moved in time, come to the Court and say: Now stop them from doing it further, because "a moment of time has arrived when I have awakened to the fact that this is " calculated to infringe my rights"? Certainly not. He is bound, like everybody else who wishes to stop that which he says is an invasion of his rights, to adopt a position of aggression at once, and to insist, as soon as the matter is brought to his attention, or as soon as, in the opinion of the Court, it ought to have come to his attention, to take steps to prevent its continuance; it would be an insufferable injustice were the Court to allow a man to lie by while his competitors are building up an important industry and then to come forward, so soon as the importance of the industry and then to come forward, so soon as the importance of the industry has been brought home to his mind, and endeavour to take from them that of which they had legitimately made use; every day which they used it satisfying them more and more that there was no one who either could or would complain of their so doing. The position might be altogether altered had the user of the factor or the element in question been of a secretive or surreptitious nature; but, when a man is openly using, as part of his business, names or phrases, or other elements, which persons in the same trade would be entitled, if they took steps, to stop him from using, he gets in time a right to use them which prevents those who could have stopped him at one time from asserting at a later stage their right to an injunction. In this case I am quite satisfied on the evidence that this has been the case; that there has been a user of these factors or elements, of which the Plaintiffs mainly complain, for a length of time and in circumstances which at this date disentitle them, even if I had found the facts differently, to the relief which they claim."

What is significant to notice is that the Court has observed that the position might be altogether altered had the user of the factor or the element in question been of a secretive or surreptitious nature; but, when a man is openly using, as part of his business, names or phrases, or other elements, which persons in the same trade would be entitled, if they took steps to stop him from using, he gets in time a right to use them which presents those who could have stopped him at one time from asserting at a later stage their right to an injunction.

In the present case, the question whether the Plaintiffs shut their eyes to the activities of the Defendant No. 1 is a matter which will have to be established at the trial. For the present, I am inclined to lean in favour of the Plaintiffs that they had taken steps to prevent the invaders from exploiting their (Plaintiffs) huge reputation and hijacking the activities by forming organisations in different names and combinations. Notably, there is hardly any doubt as would emerge from the various circumstances on record, that the Defendants adopted the name and mark as well as emblem of the Plaintiffs fraudulently and dishonestly. The disgruntled group of persons who parted from the Plaintiffs'' organisation formed their own parallel organisation adopting the similar name as that of the Plaintiffs.

The test to be applied in respect of such cases has been spelt out in the case of Power Control Appliances and Others Vs. Sumeet Machines Pvt. Ltd., . In this judgment the Apex Court has adverted to the observations of the Division Bench in the case of K.E. Mohammed Aboobacker v. Nanikram Maherchand, 1957 (11) Mad LJ 573, which refers to the approach of the learned Single Judge who declined to grant injunction, for in his opinion the doctrine of acquiescence and honest and concurrent user will be attracted. In the present case as found earlier, user is not honest at all. It is fraudulent user so as to highjack the huge reputation and activities of the Plaintiffs. If it is not an honest user, the question of acquiescence or delay or latches will be of no consequence. It may be apposite to advert to the extract reproduced from Halsbuiys laws of England Fourth Edition, Vol. 24 at paragraph 943, in paragraph-29 of this reported judgment. In Halsbury Laws of England, it is noted that an injunction may be refused on the ground of the Plaintiffs acquiescence in the Defendant''s infringement of his right. At the same time, it is noted that principles on which the Court will refuse interlocutory or final relief on this ground are the same, but a stronger case is required to support a refusal to grant final relief at the hearing. In other words, inaction of the Plaintiffs at best can be ground to refuse interim relief but a stronger case would be required to support the refusal to grant final relief on that count. Invoking doctrine of acquiescence is in the nature of holding that a right which once existed is absolutely and forever lost. In other words, the right in the Plaintiffs is permanently extinguished. However, it cannot be overlooked that the argument of acquiescence is an argument in equity. That argument cannot be heard at the instance of a party who himself has acted dishonestly right from the inception.

In the reported decision of the Apex Court in paragraph-33, the extract from the case of K.E. Mohammed Aboobacker (Supra) has been reproduced wherein it is observed that interim injunction will not be granted if the Plaintiffs had delayed interfering until the Defendant had built up a large trade in which he has notoriously used the mark. In the present case the Defendants have not placed any material on record to infer that they have in fact built a large trade in the same mark. Reference is also made to observations in the case of Wander Ltd. and Another Vs. Antox India P. Ltd., , wherein it is observed that the Court in restraining a Defendant from exercising what he considers his legal right but what the Plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the Defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations some what different from those that apply to a case where the Defendant is yet to commence his enterprise, is attracted.

However, in the case of Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others, , the Apex Court has authoritatively observed that grant of injunction "becomes necessary" if it prima facie appears that the adoption of trade mark itself is dishonest. Even in the case of Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel and Others, on which strong reliance was placed by the Counsel for the Defendants, it is observed that in case of infringement of trade mark, injunction would ordinarily follow where it is established that the Defendant had infringed the trade mark and had not able to discharge its burden as regard the defence taken by it. In the present case I have already found that the justification offered by the Defendants for using the same name and mark is unacceptable. Be that as it may, in Ramdev''s case both the decisions of the Apex Court in the case of Power Control Appliances and Midas Hygiene (supra) have been referred to in the paragraph-58 and 59. In paragraph-60 reference is also made to observations made in Treatise on the Law and Practice of Injunction by Kerr, Sixth Edition, page 360-361, wherein, it is observed that mere delay after knowledge of the infringement to take proceedings, not sufficient to call the Statute of Limitations into operation, or where the infringement continues, is not, it seems, a bar to the right of an injunction at the trial. Lapse of time unaccompanied by anything else is, it seems, no more a bar to a suit for an injunction in aid of the legal right than it is to an action deceit. It is further noted that delay may cause the Court to refuse an interlocutory injunction, especially if the Defendant has built up a trade in which he has notoriously used the mark.

In the present case as observed earlier, the Defendants cannot take cover under argument of delay and latches of the Plaintiffs having fraudulently adoptee similar mark and names of the Plaintiffs after parting from the Plaintiffs association and then starting parallel association. Moreso because no material is forthcoming as to what extent the Defendants have succeeded in building up its activities by notoriously using the name and mark to the knowledge of the Plaintiffs.

It may be useful to also refer to the decision of the Delhi High Court in the case of Hindustan Pencils (P) Ltd. Vs. India Stationery Products Co. and Another, . In paragraphs 31 and 32 the Court has observed thus:

"31. Even though there may be some doubt as to whether latches or acquiescence can deny the relief of a permanent injunction, judicial opinion has been consistent in holding that if the Defendant acts fraudulently with the knowledge that he is violating the Plaintiffs right then in that case, even if there is an inordinate delay on the part of the Plaintiff in taking action against the Defendant, the relief of injunction is not denied. The defence of latches or inordinate delay is a defence of equity. In equity both the parties must come to Court with clean hands. An equitable defence can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else''s right cannot claim the continued misuse of the usurped right. It was observed by Romer, J. in the matter of an application brought by J.R. Parkington and Company Ltd. (1946) 63 RPC 171 at page 181 that "in my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently". It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by subsequent history. In other words, the equitable relief will be afforded only to that party who is not guilty of a fraud and whose conduct shows that there had been, on his part, an honest concurrent user of the mark in question. If a party, for no apparent or a valid reason, adopts, with or without modifications, a mark belonging to another, whether registered or not, it will be difficult for that party to avoid an order of injunction because the Court may rightly assume that such adoption of the mark by the party was not an honest one. The Court would be justified in concluding that the Defendant, in such an action, wanted to cash in on the Plaintiffs name and reputation and that was the sole, primary or the real motive of the Defendant adopting such a mark. Even if, in such a case, there may be an inordinate delay on the part of the Plaintiff in bring a suit for injunction, the application of the Plaintiff for an interim injunction cannot be dismissed on the ground that the Defendant has been using the mark for a number of years. Dealing with this aspect Harry D. Nims in his "The Law of Unfair Competition and Trade Marks", Fourth Edition, Volume Two at page 1282 noted as follows:

..."Where infringement is deliberate and wilful and the Defendant acts fraudulently with knowledge that he is violating Plaintiffs rights, essential elements of estoppel are lacking and in such a case the protection of Plaintiffs rights by injunctive relief never is properly denied. "The doctrine of estoppel can only be invoked to promote fair dealings".

It would appear to me that where there is an honest concurrent user by the Defendant then inordinate delay or latches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because it is the interest of the general public, which is the third party in such cases, which has to be kept in mind. In the case of inordinate delay or latches, as distinguished from the case of an acquiescence, the main prejudice which may be caused to the Defendant is that by reason of the Plaintiff not acting at an earlier point of time the Defendant has been able to establish his business by using the infringing mark. Inordinate delay or laches may be there because the Plaintiff may not be aware of the infringement by the Defendant or the Plaintiff may consider such infringement by the Defendant as not being serious enough to hurt the Plaintiffs business. Nevertheless, if the Court comes to the conclusion that prejudice is likely to be caused to the general public who may be misled into buying the goods manufactured by the Defendant thinking them to be the goods of the Plaintiff then an injunction must be issued. The Court may, in appropriate cases, allow some time to the Defendants to sell off their existing stock but an injunction should not be denied." (emphasis supplied).

It will be useful to also refer to the decision of Chancery Division in the case of Willmott v. Barber, 14 Ch. Div. 96. Principle of acquiescence has been restated in the following words:

"It has been said that the acquiescence which will deprive a man of his legal rights must amount to fraud, and in my view that is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights. What, then, are the elements or requisites necessary to constitute fraud of that description? IN the first place the Plaintiff must have made a mistake as to his legal rights. Secondly, the Plaintiff must have expended some money or must have done some act (not necessarily upon the Defendant''s land) on the faith of his mistaken belief. Thirdly, the Defendant, the possessor of the legal right, must know of the existence of his own right which is inconsistent with the right claimed by the Plaintiff. If he does not know of it he is in the same position a as the Plaintiff, and the doctrine of acquiescence is founded upon conduct with a knowledge of your legal rights. Fourthly, the Defendant, the possessor of the legal right, must know of the Plaintiffs mistaken belief of his rights. If he does not, there is nothing which calls upon him to assert his own rights. Lastly, the Defendant, the possessor of the legal right, must have encouraged the Plaintiff in his expenditure of money or in the other acts which he has done, either directly or by abstaining from asserting his legal right. Where all these elements exist, the re is fraud of such a nature as will entitle the Court to restrain the possessor of the legal right from exercising it, but, in my judgment, nothing short of this will, do."

Suffice it to observe that as the adoption of trade mark and name by the Defendants is not honest and bona fide as has been found earlier, the argument of delay and latches pressed into service by the Defendants does not take the matter any further. Taking overall view of the matter therefore, I have no hesitation in answering the issue on prima facie case in favour of the Plaintiffs. In fact, the Plaintiffs have made out strong and formidable prima facie case.

That takes me to the issue of balance of convenience. In my opinion, the Plaintiffs ought to succeed even on this issue in relation to the ground pressed into service either one of infringement of trade mark or passing off action or for that matter infringement of copyright of the Plaintiffs. In any case, the Plaintiffs ought to succeed in relation to the grievance of the Plaintiffs that the Defendants are unscrupulously issuing publication so as to sully the huge reputation of the Plaintiffs. The Plaintiffs having made out case of infringement of trade mark, injunction would ordinarily follow as the Defendants have not been able to discharge their burden. In fact, the defence of the Defendants is more of peripheral issues than of substance. The substance of the matter is that the Defendants have fraudulently and dishonestly adopted the trade mark, name and emblem of the Plaintiffs. Suffice it to observe that even the issue of balance of convenience deserves to be answered in favour of the Plaintiffs.

Insofar as the issue of irreparable loss or injury is concerned, it is held by the Apex Court in the case of Ramdev Food Products (supra) that when a prima facie case is made out and balance of convenience is in favour of the Plaintiffs, it is not necessary to show more than loss of good will arid reputation to fulfil the condition of irreparable injury. It is further observed that in fact if the first two pre-requisites are fulfilled, in trade mark actions irreparable loss can be presumed to have taken place. It is further held that the expression "irreparable injury" in that sense would have established injury which the Plaintiff is likely to suffer. Accordingly, even this issue will have to be answered in favour of the Plaintiffs.

For the reasons mentioned in the earlier part of this judgment, the Plaintiffs, in my opinion, are entitled for interim relief of injunction in terms of prayer Clauses (a) to (e) and (g) and (h). The Plaintiffs have asked for other relief of appointing Court Receiver to seize the infringing articles referred to in the prayer Clause (f). However, in view of the order of injunction passed, it may not be necessary to appoint Court Receiver. At the same time it is made clear that I am not dwelling upon the question whether it is just and proper to appoint Court Receiver in the fact situation of the present case. Instead, that question is left open to be considered on its own merits in the event the Plaintiffs take recourse to application praying for that relief by pointing out the necessity of doing so in case of any further development. Suffice it to observe that for the time being, order of injunction would subserve the interest of justice.

Accordingly, this Motion is made absolute in terms of prayer Clause (a) to (e), (g) and (h) with costs. The above said prayer clauses read thus:

"(a) that pending the hearing and final disposal of the suit the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and interim injunction of this Hon''ble Court from, directly of indirectly, using in any manner in relation to goods and/or services or as a name or part of trade name or Club name, or organization name, covered by the Plaintiffs'' registered trade marks, such as, "LIONS" "LIONS INTERNATIONAL", "LIONS CLUB INTERNATIONAL", "LEO", "LEO CLUBS", device of "LIONS" and all other trade marks and/or service marks particularised in Exhibit "G" and Exhibits "F-1 to F-68" to the Plaint and/or from using the impugned label being Exhibit "EE" and Exhibit "FF" to the Plaint or any other deceptively similar label or emblem and/or device of "LION" or word "LION" or "LIONS" so as to infringe the Plaintiffs'' registered trade marks particularised in Exhibits "F-1 to F-68" and Exhibit "G" to the Plaint.

(b) that pending the hearing and final disposal of the suit the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and interim injunction of this Hon''ble Court from using in any manner the word "LION" or "LIONS" or "LEO" or "LEOS" or "LIYOS", "LIONESS" or "BHARATIYA LIONS" or "INDIAN LIONS" or "LIONS INDIA" or "NATIONAL LIONS" or "SEVA LIONS" or "LIONSANSKRUTI" or any other trade mark or service mark or Association name which is identical with or deceptively similar to or a deceptive variation of the Plaintiffs trade marks and names, Association name, trade name or trade mark or service mark such as LION, LIONS, LEO, LIONESS and the like and/or from using the impugned emblem or device as depicted in Exhibit "EE" and Exhibit "FF" to the Plaint or any. device of a "LION" or "LIONESS" or any other device or emblem which is identical with or deceptively similar to the Plaintiffs emblem or device as set out in para 28 and Exhibit "K" to the Plaint, so as to pass off or likely to pass off and/or enable others to pass off the Associations or Clubs or Organizations of Defendants and/or their Associate Clubs or activities, their services and business of the Defendants as and for that of the Plaintiffs or Plaintiffs Chartered Clubs or as in some ways connected with the Plaintiffs.

(c) that pending the hearing and final disposal of the suit the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs

(i) be restrained by an Order and interim injunction of this Hon''ble Court from using, directly or indirectly the word "LION" and/or "LIONS", "LEO" and/or "LEOS", "LIYO" and/or "LIYOS" and/or LIONESS and/or the combination of the words "BHARATIYA LIONS" and/or "INDIAN LIONS" and/or "LIONS INDIA" and/or "NATIONAL LIONS" and/or "SEVA LIONS" and/or "LIONSANSKRUTI" or any other trade mark of the Plaintiffs as their e-mail address or part of their e-mail address and/or their domain name and/or part of their domain name or in any way be inserted in any of the websites so as to pass off or likely to pass off and/or enable others to pass off the Association of the Defendants and/or their Associate Clubs and/or the activities, services and business of the Defendants and/or their Associate Clubs as and for that of the Plaintiffs or Plaintiffs'' Chartered Clubs or in some way connected with the Plaintiffs;

and

(ii) be ordered forthwith to take all necessary steps to have the registration of the e-mail address being [email protected] of their head office at Jabalpur or and other e-mail address and/or any of the sites of the Defendants having the deceptively similar name to the Plaintiffs cancelled forthwith by the concerned Authorities;

(d) that pending the hearing and final disposal of the suit the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and interim injunction of this Hon''ble Court from reproducing the original artistic work of the Plaintiffs as depicted in Exhibit "K" to the Plaint in any material form and/or communicating the work to the public and/or issuing copies of the work to the public and/or from substantially reproducing the artistic works as has been done by the Defendants as depicted in Exhibit "EE" and Exhibit "FF" to the Plaint, or in any other form depicting the logo of the LION or the like species so as to infringe the copyright the Plaintiffs have in the said original artistic work as depicted in Exhibit "K" to the Plaint.

(e) that the Defendants by themselves, their office bearers, servants, agents and Associate Clubs be restrained by an Order and perpetual injunction of this Hon''ble Court from reproducing the literary work the Plaintiffs have in their Purposes and Objectives of their Constitution and By-Laws as depicted in Exhibit "B" and "B-1" to the Plaint or in any material form and/or communicating the work to the public and/or issuing copies of the work to the public and/or from substantially reproducing the literary work of the Plaintiffs as well as the Club names of the Plaintiffs as has been done by the Defendants as depicted in Exhibit "S" and Exhibit "U" to the Plaint so as to infringe the copyright the Plaintiffs have in the said literary work as depicted in Exhibit "B" and "B-1" to the Plaint.

(g) that pending the hearing and final disposal of the suit the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and interim injunction from using a confusingly similar Organisation name and misrepresenting to the public that they are "LIONS" or "INDIAN LIONS" or "BHARTIYA LIONS" and by such misrepresentations raising funds for their own benefits and also attracting members by such misrepresentations and furthermore hindering the Plaintiffs benevolent activities on account of the negative propaganda publicized by the Defendants about the Plaintiffs Clubs and their services.

(h) that pending the hearing and final disposal of the suit the Defendants by themselves, their Office bearers, servants, agents and Associate Clubs be restrained by an Order and interim injunction from defaming and sullying the impeccable reputation earned by the Plaintiffs by making speeches and publishing articles insinuating that there is flight of substantial amount of Indian money being transmitted from India to the Head Quarters in USA by the Plaintiffs, when in reality it is a nominal amount, and furthermore from publishing defamatory Articles in Newspapers and Circulars and other material without just cause or excuse, thereby subjecting the Plaintiffs to hatred, ridicule and contempt and/or likely to subject the Plaintiffs to hatred, ridicule and contempt, without any lawful justification or excuse and further prejudicing the Plaintiffs in the way of their social service activities and furthermore indulging in such acts of character assassination of the Plaintiffs.

Ordered accordingly.