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Judgment
S. Jagadeesan, J
The appellant has filed this appeal against the order of the Assistant Registrar of Trade Marks dated 11.10.2000, disallowing the opposition
No.DEL/T 600 of the appellant.
The second respondent herein Sri Shoban Lal Jain, trading as M/s. Hindustan Rimmier, on 6.8.1991 filed an application No. 555920 for registration
of the trade mark 'JOLEN' in respect of cosmetic goods included in class 3 of the Fourth Schedule of the Rules framed under the Trade and
Merchandise Marks Act, 1958 (hereinafter referred to as the 'Act'), claiming the user of the mark since December, 1985. The said application was
advertised before acceptance in the Trade Marks Journal No. 1156, dated 1.8.1997 at page 888 with the condition of its association with registered
trade mark No. 434499 in class 3 of Fourth Schedule of the Rules framed under the said Act. The appellant herein, M/s. Jolen Inc., a company
incorporated and having the principal place of business in USA, gave notice of their intention to oppose the registration of the impugned mark on
24.9.1997 in Opposition No.DEL/ T 600 on the ground that the impugned mark is violative of the provisions of the said Act. The second respondent,
on 16.7.1997, applied for amendment in their application for registration of the mark applied for seeking to substitute the name as M/s. Jolen
International Ltd., Delhi, in the place of Sri Shoban Lal Jain, trading as M/s. Hindustan Rimmier, based on an agreement dated 7.4.1997, wherein the
mark applied for viz., JOLEN was assigned to M/s. Jolen International Ltd. On 7.9.1998, the said M/s. Jolen International Ltd., filed counter statement
denying the statement of opposition. On 29.4.1999, the appellant filed evidence in support of their opposition by way of an affidavit dated 23.2.1999 in
the name of M/s. Evelyn Kossak, President of the company together with photo copies of a few supporting documents. In the meanwhile, the second
respondent withdrew the request on Form TM 16 dated 16.7.1997 based on the agreement dated 8.9.1998 reverting back to the earlier proprietorship
of the mark applied for in the name of the second respondent. On 19.7.1999, the second respondent filed their evidence in support of their application
by way of affidavit dated 1.7.1999 in the name of Shri Shoban Lal Jain together with another affidavit dated 1.7.1999 in the name of Shri Vikas Jain,
the Director of M/s. Jolen International Ltd. along with photo copies of a few supporting documents Exhibits A1 to A91, B1 to B5, C1 to C3, D1, E1
and E2 and F1 and F2. On 9.9.1999, the appellants filed their reply evidence by way of affidavit dated 26.8.1999, in the name of Ms. Evelyn Kossak,
the President of the company together with Exhibits C1, C2, A and B1 to B13. After the completion of the formalities, the Assistant Registrar of
Trade Marks heard the counsel on either side and finally under the impugned order, disallowed the opposition of the appellant and accepted the
application of the second respondent for registration finding that the appellant did not establish their trans border reputation by producing the necessary
material. The Assistant Registrar, further found that the appellant's goods are not being sold in the open market in India and as such, there is no
confusion or deception by the registration of the impugned mark. Consequently, the registration of the impugned mark is not prohibited by operation of
Section 11(a) of the said Act. The second respondent also acquired the proprietorship of the trade mark by virtue of their long use and consequently,
there is no prohibition for registration of the impugned mark even under Section 18(1) of the said Act. Moreover, the second respondent has already
registered the said mark under No. 434499 B in respect of tooth paste and perfumes and the present application being for registration of the same
trade mark in respect of cosmetics included in class 3 is amounting to seeking of an extension of their aforesaid earlier registration. The impugned
mark is qualified under Section 9 of the said Act also since the second respondent had been using the mark since 1987 and the said use is sufficient to
acquire the adoptedness to distinguish their goods from that of the other traders. As against the said order of the Assistant Registrar of Trade Marks,
the appellant filed an appeal CM(M) 104/2001 on the file of the High Court of Delhi and the said appeal was transferred to this Board by virtue of
Section 100 of the Trade Marks Act,1999 and numbered as TA/176/2003/TM/DEL.
We have heard the arguments of Shri Praveen Anand for the appellant and Shri M.K. Miglani for the second respondent.
The learned counsel for the appellant contended that the appellant filed an application No. 522509 in class 3 of the Fourth Schedule of the Rules
framed under the said Act for registering the same trade mark in their name. The second respondent filed the opposition and the same was allowed.
The appellant filed the appeal TA/151/2003 which is also listed for joint disposal. With regard to the registered trade mark of the second respondent in
No. 434499 B is concerned, the learned counsel for the appellant submitted that the appellant has filed a rectification petition and the same is pending.
The appellant also filed a suit CS No. 387/2000 on the file of the Madras High Court on the passing off action, wherein the application for injunction
restraining the second respondent from using the impugned trade mark was dismissed. The appellant moved the Division Bench by way of appeal and
the Division Bench granted the injunction restraining the second respondent from using the trade mark. The second respondent moved the Supreme
Court against the order of the Division Bench and the SLP was dismissed.
Coming to the merits of the case, the learned counsel for the appellant contended that the appellant is the proprietor of the mark 'JOLEN' which
was registered in several foreign countries and the said mark has attained a global reputation. The second respondent has dishonestly copied the said
mark of the appellant and thereby had infringed the appellant's mark. He also contended that even though there is no sales counter for the goods of
the appellant in India, still the goods of the appellant are very much in circulation throughout India and as such, the appellant's mark attained a
reputation in India. Even otherwise, the reputation and goodwill of the said mark attained abroad had been extended within India also by way of trans
border reputation through advertisements. The people in India were aware and had the knowledge about the appellant's mark and their product. Apart
from that, the appellant had periodically advertised their goods with the mark and as such, the wide publicity made within India through foreign journals
also established the goodwill and reputation of the appellant's mark within India. The Division Bench of the Madras High Court had prima facie found
that the second respondent had copied the trade mark of the appellant and consequently by way of injunction, restrained the second respondent from
using the trade mark. The appeal preferred by the second respondent before the Supreme Court was also dismissed in limine. All these would
establish that the registration of the impugned mark would be in violation of Sections 11(a) and 12 of the said Act.
On the contrary, the learned counsel for the second respondent contended that the learned counsel for the appellant did not challenge the finding of
the Assistant Registrar in respect of Section 11(a) of the Act. So far as Section 12(1) is concerned, it is a mandatory provision and as such, when the
second respondent had already registered the mark, the appellant is not entitled for registration. He further contended that the entire claim of the
appellant is only by way of trans border reputation when admittedly, the appellant has not registered their mark till date and also have no sales in India.
The reputation claimed by the appellant is only through the advertisements in magazines which are alleged to be in circulation in India and also the
availability of the goods of the appellant which was brought to India through the Indian tourists visiting abroad. The appellant failed to establish that the
foreign magazines in which the appellant had advertised their goods were in circulation in India. Consequently, there is no infirmity in the impugned
order of the Assistant Registrar in finding that the appellant did not establish the claim of attainment of reputation.
The issues arising for consideration are:
(1) Whether the appellant has established their trans border reputation of the trade mark in India?
(2) Whether the second respondent is the prior user of the impugned mark in India?
(3) Whether the registration of the impugned trade mark of the second respondent violates any provisions of the said Act?
The second respondent has applied for the registration of the trade mark 'Jolen' in application No. 555920 in respect of cosmetic goods included in
class 3 of the Fourth Schedule of the Rules framed under the said Act, claiming user of the said trade mark since December, 1985. The appellant
herein filed their opposition. In the notice of opposition, the appellant has stated that they are the manufacturers and merchants of the wide range of
cosmetics, toiletries and make-up articles under their trade mark 'JOLEN' since the year 1955. Their mark is registered under the mark 'JOLEN' all
over the world in respect of Crème Bleach viz., America, Austria, Australia, Bahrain, Cyprus, Fiji, France, Greece, Hong Kong, Iran, Japan, Jordon,
Kuwait, Lebanon, Mexico, New Zealand, Netherlands, Panama, Portugal, Qatar, Saudi Arabia, Singapore, South Africa, Sultanate of Oman, Sweden,
Turkey, United Arab Emirates. Their produce Crème Bleach under the trade mark 'JOLEN' is sold in several countries all over the world and in
USA. By virtue of long, extensive, and continuous use, the said mark enjoys great reputation and goodwill. The said product is advertised through
various media including inter alia , Television, Radio, Newspapers and Magazines. Hence, the registration and use of the identical mark by the second
respondent is bound to cause confusion and deception and consequently the same cannot be registered. Further, the registration would contravene
Sections 9, 11(a), 11(e) and 18(1) of the said Act.
The onus is on the proprietor of the mark to establish by evidence that the mark is well known. One way of demonstrating the degree of knowledge
or recognition of a mark in the relevant section of the public is by adducing evidence constituted by consumer surveys and opinion polls, which is a
growing industry practice in recent times. The recognition of a trade mark in India could also be shown by promotion of the mark through advertising
in both printing and electronic media including Internet.
In ""Intellectual Property"" by W.R. Cornish, Third Edition, at page 550, the law is stated thus in para 16-31:-
The same considerations apply when the plaintiff establishes a business reputation in one place and the defendant then sets up a similar business in
another so as to suggest that the plaintiff has opened a new outlet. In Brestian v. Try, for instance, the plaintiff had hair dressers' shops in London,
Wembley and Brighton, the defendant was restrained from using the same name for hairdressing in Tunbridge Wells. But Jenkins L.J. was careful to
find ""that damage would probably ensue"" because customers might go to the defendant instead of the plaintiff, and Romer L.J. pointed to evidence
that the plaintiff, credit and reputation might be endangered. More recently a business with ""Chelsea Man"" shops in three cities was held entitled to a
country-wide injunction, because of its intention to extend business beyond these places.
This ought to be the appropriate principle for dealing with cases where a plaintiff has built up a reputation by business abroad and the defendant
imitates him so as to lead customers to believe that the plaintiff has come to Britain. If there is a tangible risk that the plaintiff's goods name will be
hurt by the poor quality of what the defendant provides or adverse publicity about him, or if the plaintiff has plans to come to Britain which will be
jeopardized, these should provide a sufficient basis for his claim. But it would be a new departure to give such a plaintiff relief merely because the
defendant was taking advantage of his reputation."" (Underlining by us).
In Drysdale and Silverleaf on Passing Off Law and Practice"", 2nd Edition, at page 10 in paragraph 2.07 it is stated that the right to protect against
piracy of a plaintiff's name or trade mark was not linked to the name or trade mark itself but to the 'property' which the plaintiff had acquired in that
name or mark by the use which he had made of it. In paragraph 2.27, at page 17 it is stated that the goodwill in a plaintiff's business has been
identified as the property right which the action for passing off protects. In paragraph 3.01 at page 25, the law is stated thus:-
Whilst the title of this chapter is Reputation we have seen that the property which is protected by a passing off action is the goodwill in the business.
In passing off cases the two terms are often used almost interchangeably and confusion arises as to the distinction between them. The difference is
subtle and not always easy to see. Goodwill exists in the minds of a business's customers. It is the state of mind which makes them wish to patronize
its goods or services. It can exist only in relation to a business which they are able to patronize. A reputation is the means by which something is
recognized. In relation to a business which has goodwill it is the manner in which the goodwill operates on the minds of the business's customers. The
difference is most actually seen in two circumstances. Political parties undoubtedly possess reputations. However, they do not have goodwill because
they carry on no business. Foreign traders may have a reputation in the sense that they are known to numbers of the public in this country, even
though they carry on no business in here. Such a reputation, however extensive it is, will not support a passing off action unless the business's goods or
services are available in this country so that the business is able to have customers here."" (Underlinings by us).
As seen from the above passage, the learned author recognized that foreign traders may well have a reputation which can support a passing off action
for the goods or services are available in this country, so that the business is able to have customers here. In paragraphs 3.11 and 3.12 in pages 32 and
33, it is stated thus:-
However, this does not mean that a manufacturer or importer of foreign made goods has to have a place of business in this country. It is sufficient
that the goods are available here and that accordingly there are Customers in whom the goodwill can reside. In Ancients Establishments Panhard at
Levassor SA v. Panhard - Levassor (1901) 2 ch.513: 18 RPC 405), at the beginning of this century, the plaintiffs were French motor car
manufacturers. They had not themselves exported cars to this country or sold them here. Despite this it was held that the use of the name on cars
bought by other people abroad and brought by them into this country was sufficient to establish the plaintiff's reputation here on the footing that as a
result of such importation 'England was one of their markets'. Twenty years later, in Poirot v. Jules Puirot Nash (1920) 37 RPC 177), Lawrence J.
said: 'Paul Poirot is in my judgment in the circumstances of this case entitled to protect his goods and the reputation he has acquired in this country
notwithstanding the fact that he has not got a place of business here.' A further sixty years later Walton J, in Athletes Foot Marketing Associates v.
Cobra Sports Ltd. (1980) RPC 343 reached virtually the same conclusion saying: (Underlinings by us).
........ It would appear to me that, as a matter of principle, no trader can complain of passing off against him in any territory and it will usually be
defined by national boundaries, although it is well conceivable in the modern world that it will not in which he has no customers, nobody who is in trade
relation with him. This will normally shortly be expressed by saying that he does not carry on any trade in that particular country (obviously, for
present purposes, England and Wales) but the inwardness of it will be that he has no customers in that country, no people who buy his goods or make
use of his services (as the case may be) there.""(P.350).
He expressed this view before going on to carry out a comprehensive review of the authorities at the end of which he concluded that they led to the
conclusion that:
'It does not matter that the plaintiffs are not at present actually carrying on business in this country provided that they have customers here. Equally, it
is of no moment, if they have customers here, that they have a reputation in the general sense of the word in this country. It is also of no moment that
reputation may have been brought about by advertising this can be of no moment unless (as it did in the C and A case) it brings in customers, when, of
course, once again there is no need to rely upon it.'
The members of the Court of Appeal in the Budweiser case (Anbeuier - Butch Inc v. Budejovicky Budvar Narayni Pudnik (1984) FSR 413), regarded
the presence of Customers in this Country as the key to the question whether the requisite goodwill had been established and Oliver L. J. in particular
thought Walton J's finding helpful but pointed out that it: (Underlining by us).
....... needs, in the light of authorities, to be approached with the caveat that ""customers"" must not be read restrictively as confined to persons who
are in a direct contractual relationship with the plaintiff, but includes the persons who buy his goods in the market."" (Emphasis by us).
In the case of N.R. Dongre and Ors. v. Whirlpool Corporation - 1996 (5) SCC 71,4 the Supreme Court has held that though there was no sale in
India, the reputation of the plaintiff company was travelling trans border to India as well through commercial publicity made in magazines which are
available in or brought in India. The following is the gist of the finding:
The ""WHIRLPOOL"" has acquired reputation and goodwill in this country and the same has become associated in the minds of the public. Even
advertisement of trade mark without existence of goods in the mark is also to be considered as use of the trade mark. The magazines which contain
the advertisement do have a circulation in the higher and upper middle income strata of Indian society. Therefore, the plaintiff acquired transborder
reputation in respect of the trade mark ""WHIRLPOOL"" and has a right to protect the invasion thereof.
The Delhi High Court in Jolen Inc. v. Doctor and Company (2002)2 C.T.M.R. 6 considered the question of trans-border reputation of the
appellant's goods and held as under:
It is not necessary that the association of the plaintiff's mark with his goods should be well known in the countries other than its origin or to every
person in the area where it is known best. Mere advertisement in other countries is sufficient if the trade mark has established its reputation and
goodwill in the country of its origin and countries where it is registered.
It is unnecessary for us to pile up the authorities. It is manifestly clear from the principles laid down in the judgments referred to above, that the
appellant, in order to disentitle the second respondent in getting the registration, need not establish that they actually carry on the business in this
country. It is enough if they have got customers in this country and if they have got the customers, it necessarily means that they have got the
reputation in the general sense of the word in this country. The said reputation could be brought out by advertisement also.
So far as the circulation of their product in India is concerned, the appellant has stated in the affidavit filed in support of the opposition as follows:
I state that my company's Crème Bleach bearing the trade mark 'JOLEN' is extensively used in the Middle East countries including UAE, Kuwait,
Bahrain, Qatar, Lebanon, Kuwait and Turkey. There is a large immigrant Indian population in each of the said Middle East countries, substantial
numbers of whom frequently visit India and bring with them perfumes and cosmetics including crème bleach for their personal use and as gifts for
friends and relatives. It is pertinent to point out that the international reputation enjoyed by my company's trade mark 'JOLEN' has necessarily spilled
over into India and that my company's mark 'JOLEN' is consciously identified and is well known in India. In addition, a large number of international
travellers carry to India my company's product 'JOLEN' upon their return from overseas trips as the personal baggage.
From the above averment, it is an admitted fact that the appellant is relying upon only their trans border reputation. The appellant has no
distributing channel either official or unofficial in India. It is also clear that the appellant's plea is that the Indian tourists or the Indian immigrants are
bringing the appellant's crème bleach for their personal use and as gifts for friends and relatives. From this plea, it is for us to consider whether the
appellant has established the trans border reputation of their product in India by any sort of spill over from the other nations where the appellant's mark
is registered or the appellant's goods are in free circulation.
As stated already, the appellant's plea itself is that the appellant's products are brought by the immigrants or the tourists for their personal use and
as gifts for their friends and relatives. Hence, it cannot be said that the appellant's goods are freely in circulation in the market in India either officially
or unofficially. Those who are bringing the product of the appellant for their personal use may not announce that they are fond of the appellant's
products or they are using the same regularly. The appellant's products given as gift to friends and relatives may not have any significance with regard
to the trade mark because the product will be received at times without even noticing the mark since it is being a gift from a friend or a relative who
returns from a foreign country. Either way, it cannot be claimed that the appellant's product is in free circulation in India and thereby they have
attained a goodwill and reputation. To attain a good reputation, the product must be known to members of the public in the country. Except the
statement in the affidavit, the appellant has totally failed to produce any piece of evidence regarding the number of immigrants from foreign countries
or the tourists returning to India who brought the appellant's products to India. Apart from that, there is no evidence on record that at least a few
Indians are aware of the product of the appellant leave alone the question of use of such product of the appellant.
Next, we have to look into the advertisements which are the only source for the appellant to establish their claim of reputation and goodwill in
India.
Ex. A1, is the advertisement of the appellant. Ex.B1, B5 and B6 are the worldwide trade mark registrations for JOLEN. Ex. C1 is the statement of
advertisement expenses from the years 1986 to 1997-98. Ex. D series are the bills pertaining to the sale of the appellant mark product in various
countries. Ex.E series are the advertisements. Ex.E1 is an advertisement said to have been published in the magazine BAZAAR published in
February, 1976, Ex..E2 is an advertisement in the magazine VOGUE. But the date of issue is not mentioned. Ex.E3 is an advertisement in the
magazine VOGUE. In this, it is hand written as 1982. Ex.E4, is also an advertisement in an international magazine, the name and date of which are not
clear. Ex.E5 is an advertisement in the magazine BAZAAR, the date of publication is not mentioned. Ex. E6 and E7 are the advertisements in a
journal AL-USRA family weekly in a Gulf country, the date is not mentioned. Ex.E8, is an advertisement in the magazine COSMOPOLITAN, the
date of publication is not clear. Ex.E9, is an advertisement in the magazine LABOUR without the date of publication. Ex.E10, is an advertisement in
the magazine FLARE, Canada 1997, (the name of the magazine and the year is hand written). Ex.E11, is a write up about the product crème bleach,
dated 17.11.1978, the publication of the same is not mentioned. Ex.E12, is the list of advertisements made in the journals/ magazines in USA, Canada
and England in the year 1997. Ex.E13, is the list of publications made in magazines/journals in USA, Canada and England in 1988. Ex.E14, is the list of
advertisements made in the magazines/ journals published in USA, Canada, England and France in the year 1985. Ex.E15 is an advertisement without
the particulars with regard to the date and the name of the magazine. Ex.E16 and 17 are the write ups. Ex.18 is an advertisement in the magazine
BAZAAR. Ex.E19, is an advertisement, the details with regard to the magazines and the date is not clear. Ex.E20, E.21 are the advertisements in the
magazine VOGUE without any date. Ex.E23, is also an advertisement in Gulf News. Ex.E25, is an advertisement in TIMES at Pakistan in January,
1992, the particulars are hand written. Ex.E26 is an advertisement without any particulars. Ex.E27 is an advertisement in a monthly magazine News
Line in Pakistan in January, 1992. Ex.E28 is the cover page of VOGUE of June, 1986, where the advertisement is published in Ex.E29. Ex.E30
appears to be a repetition of Ex.E19, E.31 seems to be a cover page of a magazine which has nothing to do with the advertisement and the name of
the magazine is not clear. Ex.E32 seems to be a repetition of Ex.E20, E.33 seems to be a repetition of Ex.E21. Ex.E34 is the repetition of Ex.E22,
Ex.35 seems to be the repetition of Ex.E24, Ex.36 is the repetition of Ex.E25, Ex.E37 is the repetition of Ex.E27, and Ex.E.38 is the repetition of
Ex.E26, Ex.E39 and Ex.E40 are the advertisements without the name of the magazine or the date. It is mentioned as Hong Kong. Perhaps, the
advertisement might have been made in Hong Kong. Ex.E41 and E.43, are the advertisements in Gulf countries. Ex.E42 is an advertisement without
any particulars. Few other advertisements in the magazine GLAMOUR, FLARE are there. But the advertisements are all in the magazines of foreign
origin. The appellant has not produced any evidence with regard to the circulation of any of those magazines in India and also the channel through
which such magazines are being circulated. In fact, the Assistant Registrar has also considered this aspect and found that in the absence of any
evidence with regard to the volume of circulation of those magazines in India, it cannot be presumed that the reputation has been made out. The
reputation and goodwill are to be proved and not to be presumed.
Apart from this, the appellant has also filed an application C.M. 2162/1999 when the matter was pending on the file of the Delhi High Court
seeking permission to file additional evidence. Considering the reasons stated in the affidavit filed in support of the petition, we allowed the said petition
and the additional evidence is taken on record. The additional evidences are the two letters addressed to the appellant by Ms. Vaishali Pradhan and
Hema G. Lobo. Both the letters are verbatim identical wherein it is stated as follows:
I have been regularly using your product Jolene Crème Bleach which was supplied to me by my relatives in USA. Since your cream bleach is now
available here in India, I used it recently.
The rest of the portion of the letter is unnecessary. From the above extracted portion of the letters, it is clear that the evidence has been procured by
the appellant. Further, it is not clear as to when the relatives in USA supplied the crème bleach of the appellant to the concerned persons. The letters
are of the year 1999. Even if the letters are to be taken as true and genuine, then the availability of the appellant's product can be taken only from
1999. When the second respondent has filed the application in the year 1991 claiming the user since December, 1985, it is for us to consider whether
the appellant had established their reputation on the date of the application which is the relevant date. The appellant has only relied upon the trans
border reputation, that too, by way of advertisement in the foreign magazines. Absolutely, there is no evidence with regard to the circulation of those
foreign magazines in India. In order to obtain a reputation, the mark should be a well known one. To become a well known mark, it must have been
identified by a good number of persons. This can be ascertained only on the basis of evidence regarding the availability of journals and the volume of
circulation. The journals being foreign one may be available in a few shops. But, considering the high price of the same, the circulation may be a
limited one. So, unless the volume of circulation is established, the question of the ""well known mark"" can not be determined. In such a case, the
reputation of such mark also cannot be presumed. The appellant has miserably failed in this aspect. Even in the affidavit filed in support of the
evidence, the appellant has not stated the names of the magazines which are in circulation in India. It is broadly stated that the advertisements have
been made in the foreign magazines having the circulation in India. Hence, from the above, we are unable to hold that the appellant has established
their trans border reputation in respect of their mark 'JOLEN'.
Since the appellant has failed to discharge the initial burden of proving their reputation as held by the Chancery Division in Re Arthur Fairest Ld.""s
case reported in 1951 RPC 197 at page 207, the opposition is liable to be disallowed. Since the second respondent has also let in evidence, we thought
it is better to consider the same on merits.
Coming to the evidence of the second respondent, it is an admitted fact that the second respondent had already obtained the registration of the
same mark JOLEN in No. 434499 as of February, 1985. The Exhibits A series in A1 to A94 which are the bills from September, 1987 to March, 1992,
in the name of Cosmo International, the licensee for some time of the second respondent establishes the use of the trade mark JOLEN. The appellant
does not dispute the genuineness of those bills. The licensee of the second respondent, Cosmo International has also applied for the license from the
Drugs Controller for the manufacture of JOLEN Facial Hair Bleach Cream, JOLEN Vanishing Cream, JOLEN All purpose cream, JOLEN Deep
cleansing milk, JOLEN Make up Foundation, JOLEN Fair & Clear Fairness cream, JOLEN Clear Glow Fairness cream, JOLEN Black & Nice Kesh
Kala Tel. This application is dated 10.6.1987. The affidavit filed by one Shri Ashok Kumar, the sole proprietor of Cosmo International, the licensee of
the second respondent gives out the sales statistics of the goods under the trade mark JOLEN during the period 1987-88 to 1995-96. The sales
turnover in the year 1987-88 was Rs.4,96,360.20 and in the year 1995-96 the same is Rs.5,77,050.00 The sales turnover also reveals the use of the
impugned mark by the licensee of the second respondent. Hence, so far as India is concerned, the second respondent is the one who is the first to use
the impugned trade mark .
The learned counsel for the appellant contended that the registration of the trade mark in favour of the second respondent may not amount to an
absolute right created under Section 28(1) of the Act and is subservient to other provisions of the Act, viz., Sections. 27(2), 33 etc. Ofcourse, the
registration in favour of one party may not confer the absolute right. It is always open to the contesting party to establish that they are the prior users
and raise a dispute with regard to the registration. This is because the mistake in granting registration cannot be taken advantage of. But, so far as the
facts of this case are concerned, as already stated, the claim of the appellant is only the trans border reputation attained by them through
advertisements in the foreign magazines and circulation of their product in India through immigrants and tourists. We have held that the appellant has
not produced any evidence with regard to the circulation of either those magazines or their product in India and as such, the appellant's plea has to fail
for want of evidence.
So far as the appellant's contention that the registration of the mark is likely to cause confusion is concerned, admittedly the appellant has not used
the mark for the manufacture of their goods in India. In their application No. 522509, it is specifically stated that it is one proposed to be used. Having
said so, the appellant has filed a petition Form 16 to amend the user. Irrespective of the same, the user claimed by the appellant is only abroad and the
spilled over reputation of their mark in India is claimed by stating that the immigrants and the tourists are bringing the appellant's goods for their
personal use by way of personal baggage and for giving the same as gifts to their friends and relatives. In order to claim reputation of the mark, the
same must be known to a substantial number of persons who are the actual or potential consumers of the goods. The knowledge of the mark among a
few highly placed immigrants or the tourists may not be sufficient to conclude the well known reputation or goodwill. Even the pleadings of the
appellant do not satisfy the claim of reputation in respect of their trade mark. Even assuming that the nature of product being likely to be used by rich,
still it is for the applicant to establish the same by letting in some credible evidence.
It is not necessary, in order to find out that a mark offends against Section 11 to prove that there is an actual probability of deception leading to a
passing off or an infringement action. It is sufficient if the results of the registration of the mark will be that a number of persons will be caused to
wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary persons entertain a reasonable
doubt, but, the Court has to be satisfied not merely that there is a possibility of confusion, it must be satisfied that there is a real tangible danger of
confusion if the mark which is sought to register is put on the register.
No doubt, the second respondent's mark and the appellant's mark are identical and similar. It is an admitted fact that the appellant has no
distributing channel either official or unofficial. The claim of the appellant is that their mark is a well known mark through the trans border reputation in
India. It may not be out of place to refer to the two judgments, one is 'DIEHL' trade mark reported in 1990 RPC 435, where Mr. Justice Buckley of
Chancery Division has held as follows:
......A reputation gained abroad may, however, spill over into this country, and might, perhaps, in course of time be said to give rise to a goodwill
which the court ought to protect, although it owed nothing to anything done in this country. This however, is clearly not, in my opinion, a case in which
such an argument could be presented with any hope of success, and I should perhaps add that I know of no case decided on this ground. There is
evidence that since 1955 the applicant has exhibited its machines at an annual International Trade Fair held at Hanover where it stand has been visited
by representatives of many important British commercial concerns and by some journalists employed by English technical or trade publications dealing
with office equipment, but there is no evidence specifically indicating what reputation, if any, in this country the applicant consequently acquired. In my
judgment this evidence, at any rate when considered in isolation, is far too inconclusive to displace or outweigh the prima facie evidential effect of the
registration."" (Emphasis by us).
The other case is a case of the Trade Mark Registry in PELICAN trade mark reported in 1974 RPC 692 at page 693, where it is held:
......""there is no evidence as far as I can see that the respondents were aware, at the time they made their application in June, 1965, of any sales of
the applicant's bibs bearing the pelican mark in the United Kingdom. The sample which they acquired in December, 1963, was obtained in Canada and
there is no evidence that they were aware of the inquiries being made by Frances Blake and others for the supply of the applicant's goods or samples
to the United Kingdom prior to the date of their applications. There can be no doubt that they copied the applicant's mark from the sample which they
had acquired; but this is not to say that they were aware that he had made any claim to proprietorship of the mark in the United Kingdom.
(Underlining by us).
It is further held at page 697 as under:
Mr. Price concluded that the grounds for the objection under Section 11 were not strong. I have already indicated the reserve I place on the figures
given by the applicant of sales attributable to the United Kingdom. There is evidence that some people in the United Kingdom, other than the
respondents, knew of the applicant's bibs, prior to June 1965 - the people in the Frances Blake organisation. Flight Lieutenant Robb and Mr. Downs -
and that they received samples. Nevertheless there is no convincing proof, in my opinion, that the applicant's bibs were prior to the relevant date,
available for sale or had been sold in the United Kingdom to any material number of people. The applicant's evidence falls short, in my opinion, of
establishing satisfactory use of his mark to enable me to conclude that the use of the respondents' mark in a normal and fair manner in connection with
plastic bibs would be reasonably likely to cause deception and confusion amongst a substantial number of persons. Consequently the ground raised
under Section 11 also fails."" (Emphasis by us).
In this case also, the appellant has failed to establish that the second respondent had knowledge about their proprietorship of the mark and adopted
the same. There is not even a plea to that effect. In the absence of such evidence, the second respondent is said to have bonfidely adopted the
impugned mark in 1985.
Yet another objection was raised by the learned counsel for the appellant that the second respondent claimed the prior user only through Cosmo
International, the licensee and since the license was an unregistered one, the second respondent cannot have the benefit of the same. We have
considered the above objection. The materials available on record clearly establish that the second respondent has obtained the registration in 1985 and
was using the mark for some time. Thereafter, the second respondent licensed the Cosmo International and again after some time, the second
respondent revoked the license and resumed the sole proprietorship. In such a case, whatever the use put by the licensee undoubtedly is on behalf of
the registered proprietor. We are concerned only with regard to the use of the trade mark and thereby the attainment of reputation. Even otherwise,
the second respondent is Mr. Shoban Lal Jain, the father of Mr. Ashok Kumar, the sole proprietor of Cosmo International, the licensee to use the
impugned mark.
The appellant has also contended that the impugned trade mark and the carton used by the second respondent are totally identical to that of their
colour scheme and get up of the cartons. Hence, the adoption of the same by the second respondent is a dishonest one and as such, the second
respondent cannot claim the length of dishonest use for his benefit. He also relied upon the judgment in the case of J.R. Parkington And Coy. Ltd. v.
Frederick Robinson Ltd. reported in 63 RPC 171 at page 181 . The question of dishonest use or dishonest adoption may come in only when the
appellant succeeded in establishing that they had attained a reputation and goodwill in India either by circulation of their product or otherwise. When
the appellant has not proved the attainment of a goodwill or reputation by letting in evidence, in our view, there cannot be any dishonest use by the
second respondent. As already held that the appellant has also failed to prove that the second respondent had knowledge about the proprietorship of
the appellant in 1985 when the second respondent got the registration of earlier mark 'JOLEN'. The present mark sought to be registered is only an
associated mark with the earlier registration.
The learned counsel for the appellant has also relied upon the judgment of the Division Bench of Madras High Court reported in 2004 (3) MLJ 176
between the same parties where the appellant herein was the appellant. The said appeal was filed against the order of the learned single judge
refusing to grant interim injunction in a passing off claim. The Bench allowed the appeal and granted injunction. In the said judgment the learned
judges had accepted the plea of the appellant that the second respondent has copied their mark completely and they are using the same with the same
colour scheme, get up and layout.
It may be worth to extract some portions of the judgment of the Division Bench of the Madras High Court to appreciate the contention of the
learned counsel for the appellant that the findings are to be taken as conclusive in determining the dispute in this appeal:
In Paragraph 11 at page 186, the learned judges have held:
.......It is also well established that cause of action for passing off action is independent of the trade mark rights."" It is further observed in paragraph
32 at page 194 ""..... As far as the orders of the Registrar of Trade Marks are concerned, we are not expressing any opinion on the correctness of the
same as appeals have been preferred against those orders and the appeals are said to be pending."" Hence, it is clear that the principles governing the
registration are different from the principles for consideration of the issue of passing off. In paragraph 33 at page 195, the Division Bench has held as
under: ""........ We are of the view, it is not necessary to go into the question as to when the respondents started manufacturing and marketing their
products for the purpose of considering the question that arises in the appeal."" In paragraph 26 at page 192, the learned judges have observed:
........However, these are all matters of evidence and we are not expressing any opinion on these points."" In paragraph 42 at page 198, the Division
Bench held as under: ""....... However, we find on the facts of the case that the appellant has effected advertisements bearing the trade mark JOLEN
in international magazines having circulation in India. The appellant in the plaint referred to various magazines in which the goods of the appellant were
advertised having circulation in India and averred that the goods of the appellant have been brought to India by Indians visiting abroad and distributing
among the relatives. The respondents in the counter affidavit have not denied the averments made by the appellant in the plaint, but they merely stated
that they were not aware of the advertisements. In the absence of any denial by the respondents, it must be taken that the appellant has advertised the
trade mark JOLEN in various international magazines having circulation in India.
From the above extracted portions of the judgment of the Division Bench, it is clear that the Division Bench had come to the conclusion that a
prima facie case was made out by the appellant in the pleadings. However, the Division Bench was cautious enough to observe that the finality is to
be arrived at on the basis of the evidence to be let in by the parties. Only with this background, we have to decide the case. In paragraph 12 at page
187-188 of the same judgment, The learned judges held after referring to the magazines as under: "".... It must be therefore held that prima facie the
appellant has established that it has been dealing with the trade mark JOLEN since 1967 in the international market."" The Division Bench has dealt
with an issue of interim relief. When we are deciding the issue with regard to the permissibility of the registration of the trade mark of the second
respondent on the available material, we have to dispose of the matter independent of any observations made by any of the Courts in a passing off
action. Yet another factor to be remembered is that the appellant filed the suit in the year 2000 and till then, they have not raised any objection with
regard to the use of the mark by the second respondent. The second respondent filed the application for registration as early as 6.8.1991 and the same
was advertised in August, 1997. The appellant filed their opposition in September, 1997. But, however, they claimed their knowledge only in the year
2000 which was not accepted by the Division Bench of the Madras High Court as seen in paragraph 18 of their judgment.
Before we conclude, we may also refer to the observations of the Supreme Court in Milment Oftho Industries and Ors. v. Allergan Inc. 2004 (28)
PTC 585 (SC) are instructive:-
However, one note of caution must be expressed. Multinational Corporations, who have no intention of coming to India or introducing their product in
India should not be allowed to throttle an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the
mark and developed the produced and is first in the market. Thus, the ultimate test should be who is first in the market.
The above observations were made by the Supreme Court in a matter where the same trade mark 'OCUFLOX' relating to a medical preparation for
eye care was the subject matter of passing off action initiated by a foreign company which claimed that it had a world-wide reputation in relation to its
product having the mark 'OCUFLOX' against an Indian company which had marketed its medical preparation for eye care with that brand.
In the case on hand, undoubtedly the second respondent is the first in the market in India since 1985 got the registration of the disputed mark in
respect of associated goods. The appellant failed to establish through evidence about their trans-border reputation.
Considering all the above factors, we conclude that the appellant did not establish their reputation and even otherwise, they did not have any visible
activity in furtherance of acquiring reputation in India, assuming for argument sake, such a reputation does exist, no evidence with regard to the
circulation of the foreign magazines containing the advertisements of the appellant's goods with the disputed trade mark, no evidence with regard to
any publicity in the magazines or any other media. In such a case, we have unhesitatingly to hold that the appellant has miserably failed in establishing
the trans border reputation and on this short ground, the appeal fails and accordingly, the appeal is dismissed. However, there will be no order as to
costs.