Judgment:
J.D. Kapoor, J.
1. There are three sources for the creation of trade mark rights in any country, namely, registration, prior and continuous user and widespread reputation and goodwill of the mark irrespective of the fact whether or not goods are sold in that particular country as an aggrieved party has a right to protect its reputation and goodwill wherever it is sought to be encased or traded upon unauthorizedly. Merely because a party has no legal source for sale of its products or even has no business in the fore shares of a particular country does not mean that it has no right to protect the integrity of its reputation or goodwill of its name or trade mark. Such a right is not only inviolable but un-infringeable also.
2. The plaintiff is a company existing under the laws of the United States of America having its principal place of business at 25, Walls Drive, Fairfield, Connecticut, U.S.A. and carries on an established business as manufacturer of a wide range of cosmetics, toiletries and make up articles including inter alias creame bleach to pale hair. Mr. Arunachalam Appaji Mohan is a Constituted Attorney of the plaintiff in India and is duly authorised to sign and verify the plaint and institute the instant suit. Plaintiff has through this suit sought protection of its trade mark 'JOLEN' including the carton and container from being passed off by virtue of long, prior and extensive use and great reputation and goodwill as the defendant has not only adopted the trade mark 'JOLEN' but also the colour scheme, get up, layout of the plaintiff's carton and container.
3. Case of the plaintiff in brief is as under:
That the plaintiff has since the year 1955, been manufacturing and selling creame bleach under the trade mark 'JOLEN'. The plaintiff's creame bleach sold under the trade mark 'JOLEN' is used to lighten/decolour facial hair, hair on the arms, legs and any other part of the body that a person desires to bleach. The plaintiff's 'JOLEN' creame bleach is sold in a bluish green carton with white lettering. The trade mark 'JOLEN' is written in an unique and highly distinctive stylized script wherein the initial 'J' appears in small alphabet as 'j' but in the same size as the remaining letters 'OLEN' which appears in the Capital. A white line runs atop the entire length of the letters 'OLEN'. The trade mark 'JOLEN' is stylized script in bluish green colour appears within a white oval on the top of the carton the trade mark 'JOLEN' in stylized script in white lettering with the words 'creame bleach' and 'lightens excess dark hair' appear on the front and back of the cartons with bluish-green background. The containers inside the carton are white plastic, containers of a distinctive shape with the mark 'JOLEN' in stylized script and the words 'creame Bleach'.
4. The trade mark 'JOLEN' is registered in respect of creame bleach in the United States of America and in several countries all over the world including Austria, Australia, Bahrain, Cyprus, Fiji, France, Greece, Hong Kong, Iran, Japan, Jordan, Kuwait, Lebanon, Mexico, New Zealand, Netherlands, Panama, Portugal, Qatar, Saudi Arabia, Singapore, South Africa, Sultanate of Oman, Sweden, Turkey, UAE (United Arab Emirates). The international sales figures of plaintiff's creame bleach sold under the trade mark 'JOLEN' during the period 1986-1987 to 1992-1993 have been detailed in para 6 of the plaint and run into millions of dollars. Similarly sales promotion and advertisement figures of the plaintiff's creame bleach sold under the trade mark 'JOLEN' for the aforesaid period have been detailed in para 7. The plaintiff's creame bleach bearing the trade mark 'JOLEN' is sold in many Middle East Countries, including inter alia, the United Arab Emirates, Saudi Arabia, Bahrain, Qatar, Lebanon, Kuwait and Turkey. The sales figures have been detailed in para 8.
5. It is stated that the plaintiff's trade mark 'JOLEN' is extensively used int he Middle East countries including the UAE, Kuwait, Bahrain, Qatar etc. There is a large immigrant Indian population in Middle East countries substantial numbers of which frequently visit India and bring with them perfumes, cosmetics including creame bleach for their personal use and as gifts for friends and relatives. By virtue of long, extensive and continuous use the plaintiff's trade mark 'JOLEN' enjoys great reputation and goodwill and forms a predominant feature of the plaintiff's corporate name and trading style.
6. In or about July 1992, the plaintiff became aware of the sale of creame bleach an identical trade mark 'JOLEN' by the defendant. The defendant has copied the plaintiff's trade mark in its entirety including the distinctive style in which JOLEN is written by the plaintiff. The defendant has also copied the colour scheme, get-up and lay out of the plaintiff's JOLEN carton and container in their entirety. The defendant has made a slavish imitation of the plaintiff's 'JOLEN' carton and container with dishonest intentions and ulterior motives with a view to trade upon and benefit from the international reputation and goodwill enjoyed by the plaintiff's trade mark 'JOLEN'. The use of an identical trade mark 'JOLEN' and a carton/container identical to the plaintiff's 'JOLEN' carton and container by the defendant is deliberate with the fraudulent intention to deceive and cause confusion and deception amongst the trade and public this amounts to passing off and enables other to pass off the defendant's gods as and for the plaintiff's goods. By reason of the aforesaid wrongful activities of the defendant the plaintiff has suffered damages which cannot be compensated monetarily; hence this suit.
7. Defendant has not only contested the claim of the plaintiff vigorously but has taken the plea that trademark 'JOLEN' is its own invention. To sup up, the defenses set up by the defendant in the written statement are, in brief, as under:
(i) That the trade-mark 'JOLEN' is the defendant's invention. The defendant adopted the trade-mark 'JOLEN' from the name of his grandparents, Shri Jethanand Lalwani and Smt. Moti Lalwani and by the name of Sindhi God 'Jhule Jhule Jholanhar'. The defendant's proprietor, Shri Dinesh Lalwani belongs to Sindhi Sect. The defendant had filed two applications No. 580958 dated 14.9.92 and No. 600261 dated 25.6.1993 for registration of trade-mark 'JOLEN' and the packaging before the Registrar of Trade-mark.
(ii) That the said trade-mark has been used by the defendant since 1982 continuously all over India. In 1988, the defendant expanded its business activity and started manufacturing bleaching creame under the said trade-mark 'JOLEN' under the quality control. The defendant was given requisite license under the Drugs and Cosmetics Act, 1940 vide Drugs license No. 576/COS/83 to manufacture and sell bleaching creame under the trade-mark 'JOLEN' and the packaging.
(iii). The defendant has also been advertising the trade-mark 'JOLEN' and has been incurring expenses for the same.
(iv) That the plaintiff's allegation that Indians who visit India from abroad bring with them cosmetics including creame bleach manufactured by the plaintiff for their personal use and as gifts, does not mean that the products of the plaintiff are freely marked in India. The plaintiff's cartons are not published in India. If the plaintiff's product has established a sizeable market in India allegedly based on the international reputation acquired by the plaintiff, then it is not understood as to why the plaintiff omitted to give its sales turn-over in India.
(v). That the suit is liable to be dismissed on the ground of delay and laches. The plaintiffs has filed this suit in the year 1993. The defendant has been using this trade-mark since the year 1982 in relation to 'brushes and bindis'. Thereafter, in the year 1988, the defendant has been manufacturing and selling cosmetics including bleaching creame under the trade-mark 'JOLEN' after obtaining the drugs license under the Drugs and Cosmetics Act, 1940. This amounts to not only waiver of the right but acquiescence also.
(vi). That the plaintiff had earlier filed application No. 378772 in Class 3 and application No. 4344998 with the Registrar of Trade-mark which applications were subsequently withdrawn. Thereafter, the plaintiff moved afresh for registration of trade-mark 'JOLEN' in India vide application No. 522509 in Class. Vide detailed order dated 11.3.99, said application was refused for registration. The plaintiff has deliberately suppressed this material fact of refusal of its application No. 522509 for registration. This circumstance disentitles the plaintiff the relief of injunction.
(vii). That the plaintiff was aware that the two parties, namely, Shri Shoban Lal Jain trading as M/s. Hindustan Rimmer, C-2/7, Shopping Complex, Ashok Vihar, Delhi and Shri Ashok Kumar Jain trading as M/s. Cosmo International C-2/6, Community Centre, Ashok Vihar, Phase-II, Delhi, have also been manufacturing and selling cosmetics including bleaching creame under the trade-mark 'JOLEN' but deliberately remained silent and did not take action against said Shri Shoban Lal Jain and Shri Ashok Kumar Jain. Later the plaintiff filed suit against M/s Shoban Lal Jain and Ors. in Chennai being CS No. 397/2000. Vide judgment dated 14.8.2000, the ex parte interim injunction granted in favor of the plaintiff was vacated.
(viii). That the suit is grossly under-valued and even the necessary and proper court fee has not been affixed on the plaint. The suit is liable to be dismissed on this short ground. The plaintiff has wrongly clubbed the valuation of the suit in the manner which is not legally permissible. This court lacks pecuniary jurisdiction as even on the basis of valuation given by the plaintiff not a single valuation exceeds Rs. 5 lacs for the purpose of jurisdiction or court fees.
(ix). That the instant suit is also barred in view of Section 28 of the Foreign Exchange Regulation Act (FERA), which Act was applicable at the relevant time as Mr. Arunachalam Appaji Mohan was not the Constituted Attorney and as such no authority to sign, verify and institute the suit.
8. On the basis of the aforesaid averments of the parties five issues were framed but the area of controversy has been narrowed down to such an extent that there is no need for dealing each and every issue individually. All the issues can be decided together. The issues framed were as under:
'1. Whether the plaintiff is the Proprietor of the trade mark 'Jolen' and the carton relating thereto in relation to the bleach? OPP
2. Did the plaintiff apply for registration of the trade mark in India? If so, to what result and to what effect?
3. Whether the defendant has passed off its own goods as those of the plaintiff? If so, to what effect?
4. Whether the defendant has infringed the copyright of the plaintiff, if any, on the carton & 'Jolen'?
5. Relief.
9. In support of the contention that the delay and laches on the part of the plaintiff amount to not only waiver but acquiescence also and disentitle it to the grant of relief of injunction, Mr. Gambhir placed reliance upon the decision of the Division Bench of this Court in B.L. and Co. and Ors. v. Pfizer Products Incl., 2001 PTC 797 (Del) wherein the plaintiff did not take any action for nearly five months of the launching and manufacturing of the defendants product, it was held that such a delay was fatal and the balance of convenience was in favor of the defendants and thereforee the plaintiff was not entitled for ex parte injunction.
10. On the point of delay Mr. Praveen Anand learned counsel for the plaintiff contended that the plea of the defendant that they adopted the carton in 1982 is inconsistent with its other claim that it had started manufacturing and selling it in 1988. According to Mr. Anand there was no delay at all as the moment the plaintiff came to know about the infringement of the trade mark by aforesaid Jain brothers it immediately initiated the action and when it came to the knowledge of the plaintiff that the defendant was also indulging in the nefarious activities of passing off it filed the instant suit.
11. In support of the contention that the trans-border reputation is built up not only through import of goods but also through advertisements and thereforee confers right upon the owner of the trademark to protect it at a place where it does not have business or legally authorised sale of the goods, Mr. Anand placed reliance upon N.R. Dongre and Ors. v. Whirlpool Corporation and Ors., : AIR1995Delhi300 wherein it was held that the knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been marketed.
12. Other relevant observations are as under:
'When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with through advertisements in newspapers, magazines, television, video films, cinema etc., even, though there may not be availability of the product in those countries because of import restrictions or other factors. In today's world it canto be said a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit and disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market.
13. It is further contended that the plaintiff has pleased that the goods are brought to India by tourists and are sold in grey market yet by way of affidavit of Mr. M. Rajni Kanth and mr. R.R. Hingorani it has been amply shown that the goods are available in India in abundance.
14. As regards the plea that the plaintiff has abandoned the trade mark in India by withdrawing the trade mark application before the Registrar of Trade Mark, Mr. Anand has contended that this claim is ill founded since applications are withdrawn as a matter of regular practice to re-file them with additional evidence without prejudice to the rights of the applicant to file afresh. Admittedly, the application filed by the plaintiff is still pending with the authorities. The defendant has admitted in the written statement that the plaintiff has registration rights and the plaintiff's right in the overseas.
15. As regards the defense that the trade mark 'JOLEN' belongs to the defendant as it was invented by it Mr. Anand assailed it assiduously by contending that this plea suffers from the vice of inconsistency as on the one hand the defendant has taken the stand that the trade mark has been created from the names of his grand parents while on the other it states that the name Jolen was taken from Sindhi God 'Jhule Jhule Jholanhar' and, thereforee, the plea of having invented names is nothing but second thought.
16. It is contended by Mr. Anand that unless the proposed combination of words is a natural combination and gives a particular meaning and the party fails to show as to why the mark or the name which is associated with the plaintiff was chosen the said party has no right to infringe the name of the trade mark of the plaintiff. In support of this contention Mr. Anand has placed reliance upon the Reuters Ltd. v. Tele trust IPR Ltd., Case No. D-2000-0471 (WIPO Arbitration and Mediation Center). In the said case the plaintiff's mark 'Reuters' was registered in many countries throughout the world. Subsequently it also offered mobile data service under the mark 'Reuters Mobile'.
17. However, the defendant also intended to use the 'Reuters' mark to drive visitors to its web sites in connection with its mobile data service and registered six variations of the Reuters mark together with the word 'mobile'. The defendant took a plea that the background of idea of 'reuters mole' and mobile reuters domain came from the abbreviation of a German word containing several parts viz. REttungsUnfallTransportERkennungsService MOBILE.
18. However the Explanationn of the defendant was found to be not convincing firstly for the reason that the proposed combination of words can not be considered a natural combination of words in German: secondly neither forma grammatical point of view, nor from a conceptual point of view, the combination gives any particular meaning; thirdly, even if the combination of words could be accepted as a description of the service in question, a more natural acronym for the combination of words would be RUTESMOBILE; fourthly, the respondent has not made any showing why the syllable 'Reuters' which inevitably will be associated and confused with complainant's well-known trademark should be used in connection with its proposed business.
19. I have accorded cogent consideration to the defenses set up by the defendant and rival contentions and come to the following conclusion:-
20. Concept of goodwill emanates from the goodwill in trademark. The main determining factor is likelihood of confusion which is apparent and pronounced in the instant case. There is no suit or counter-claim filed by the defendant against the plaintiff as proprietor of the trademark. Moreover, there is no dispute that plaintiff has registration rights and proprietary interest overseas. This confers the right to protect goodwill and reputation of one's trademark.
21. It is not necessary that the association of the plaintiff's mark with his goods should be known in the countries other than its origin or to every person i the area where it is known best. Mere advertisement in other countries is sufficient if the trademark has established its reputation and goodwill in the country of its origin and countries where it is registered.
22. In modern world, advertisements i the newspapers travel beyond the country where party is engaged in business through overseas editions or otherwise. Even if it is assumed that such advertisements or mark do not travel beyond the borders of the countries where the plaintiff has the business still it has a right to protect its reputation and goodwill. it is more so where the trade name has been pirated in totality and not by way of having deceptive or confusing similarity. We are living in a world where there is enormous mobility. Well travelled Indians and tourists cannot remain unaware of international commodities. Reputation always travels faster than men. Whenever persons traveling abroad for business or pleasure or any other purpose viz. study or temporary postings come across an article of a tradename of international reputation they are bound to be confused as to the source and quality if they happen to see that commodity in their country where there is no physical market. Mere likelihood of confusion is sufficient.
23. In N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) SC has taken the view that even advertisement of trade mark without existence of goods in the market is also to be considered as use of the trade marks.
24. As regards invention of the trademark, inconsistency and forced Explanationn is writ large on the face. Explanationn is that 'the defendant adopted the trade mark 'JOLEN' from the names of his grand parents, Shri Jethanand Lalwani and Smt. Mohni Lalwani and also by the name of Sindhi God 'Jhule Jhule Jholanhar. The defendants' proprietor, Shri Dinesh Lalwani belongs to Sindhi Sect.
25. As is apparent, the derivative JOLEN by any stretch of imagination is neither a natural combination of words appearing in the names of the grand parents of the defendant nor is it the derivative from the name of the Sindhi God. The combination does not connote a particular meaning either from the grammatical point of view or from the conceptual point of view. Neither is it the natural acronym for the combination of the words. The Explanationn offered by the defendant is almost akin as that of the defendant in Reutersmobile's case and is hereby repelled.
26. In such like defenses where the combination of names of defendant co-incides with the mark of the plaintiff, one has to see whether such a combination was possible in the normal and natural course and the language the name belongs to or is derived from and that too at the point of time of invention of the mark by the plaintiff. Combination should not only sound natural but the derivatives should also form such combination as betrays commonsense and should avoid straining of nerves and be convincing.
27. When a party after copying a trade mark comes out with an Explanationn as t its invention which is unbelievable or may be plausible, its attempt to synchronize combination of words is mere after-thought and is an act of searching excuses and Explanationn. It is natural for the parties who have copied trade mark to try and explain its conduct and to look out for means to explain derivation of words so adopted. if trade mark having element of prior continuance and use has been copied, no amount of Explanationn even if it is plausible is capable of defending infringement of copyright of such prior user.
28. However, in the instant case, there is uncanny degree of similarity between the plaintiff and defendant's trade mark, colour scheme, get up, lay out of the container and the carton etc. This could only mean that one of the parties has copied from the other and it has never been the case of the defendant that plaintiff has copied from them. Plaintiff's trademark has been in continuous and prior use. In the present case, defendants have quagmired themselves to invent Explanationn. Even the Drug Controller has informed that trademark belongs to foreign proprietor.
29. To except a foreign trading company of repute copy of trademark from a non-decrepit, small time trader is mind boggling and hard to ram down the throat. In a situation like this, the inevitable conclusion is the adoption by a non-entity of a trademark of a party that has already established widespread reputation and goodwill as on the one hand adopter encashes and traders upon the goodwill of the trademark while on the other the established trademark suffers dilution and earns bad name.
30. As regards advertisements, sales figure in respect of sale of cosmetic creame of the defendant in India from 1981 to 1983, it is of no relevance if the adoption of the trademark is subsequent, tainted and dishonest. In such a case even long user, reasonable reputation and goodwill of the trademark cannot vest the right in the defendant to protect it.
31. On the question of delay, it is beyond controversy that if there is dishonesty, there can be no acquiescence. No body can usurp one's trademark's reputation, goodwill and prior, long and uninterrupted user unless such a user is authorized and with consent. Otherwise it would result in monstrous injustice and amount to infraction of one's legal right. Unless and until a party consciously and intentionally allows the other person to carry on with and expand its business for years together by incurring considerable expenses on advertisements it cannot be allowed to suffer the consequences of acquiescence which in terms of infringement of the trade mark amounts to consent.
32. The law of acquiescence in terms of user of the trade mark by the defendant has been well enunciated in Protor v. Bannis, (1887) 36 Ch D 740 by Bowen, L.J. as under:
'In order to make out such acquiescence it is necessary to establish that the plaintiff stood by and knowingly allowed the defendants to proceed and to expend money in ignorance of the fact that he had rights and means to assert such rights.'
Cotton, L.J. in the same case stated as under:
'It is necessary that the person who alleges this lying by should have been acting in ignorance of the title of the other man, and the other man should have known that ignorance and not mentioned his own title.'
33. In Power Control Alliences Co. and Ors. v. Summet Machines Ltd. (Civil Appeal No. 2551/93 decided on 8th February 1994) Supreme Court has observed that acquiescence is sitting by when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trademark, tradename etc. It implies positive acts; not merely silence or inaction such as is involved in laches.
34. In trade mark cases the plea of acquiescence is thereforee available only if the defendant succeeds in proving that the plaintiff has been not only standing by but also turning a blind eye for a substantial period. If the defendant succeeds in proving the aforesaid conduct of the plaintiff, then the plaintiff cannot be allowed to trample upon and crush the business or the trade set up by the defendant.
35. In Pfizer Products case (supra) the defendant was fully aware all through the plaintiff's research activity and its plan for introducing the product in India. The development had been subject matter of several articles of health magazine etc. The defendant filed the suit quite belatedly and without serving even a notice. The question was whether on the face of such a delay or conduct of the plaintiff, the plaintiff is entitled to an ex parte injunction or not. Answer is emphatic no.
36. There is no doubt that the delay in applying for interlocutory relief has a very fatal effect. For an ex parte injunction a delay of few days of few months may be a serious matter. But in the instant case we are concerned with the permanent relief.
37. It is not a case where the plaintiff had intentionally overlooked to the use of its trade name in respect of the bleach creame not only by the Jain brothers but by the defendants for years together and thereforee the plea of acquiescence and waiver is not available. Similarly the defense that the plaintiff has discriminated against the defendant by not initiating any action against the Jain Brothers is without any substance as legal proceedings have already been taken up against the said party.
38. In the instant case the plaintiff has succeeded in showing the moment it came to know about the offence of passing off it initiated the legal proceedings. The bona fide of the plaintiff is again demonstrated from the suit filed against the Jain brothers in Chennai.
39. On the one hand the Explanationn of the defendant in choosing the trade name 'JOLEN' is highly unplausible, far fetched and wholly unconvincing, on the other hand, dishonesty in choosing the name and the ill design to trade and cash upon the reputation and goodwill of the plaintiff is pronounced ad prominent. As such the doctrine of acquiescence cannot be restored to or availed of.
40. This is a case of passing off. It involves elements of misrepresentation and deceit. The object of adopting the trade name or deceptively similar name of another person is to trade upon and derive the financial benefit from the reputation and goodwill of that person. As a consequence the business or the goodwill of the other person suffers damage in financial as well as in terms of reputation. That is why the remedy against passing off action is independent of the infringement action arising from the violation of the statutory right to a trade mark.
41. As regards under valuation of suit, the valuation is proper as the suit has been valued for Rs. 5,00,800/- which is over the pecuniary jurisdiction of this Court. The Suit Valuation Act permits value for various reliefs in a multi-relief suit to be clubbed together.
42. As regards rejection of the application for registration, the application was withdrawn for registration of trade mark 'JOLEN' and according to the practice of trade marks, there is no rest judicata for filing of another application. thereforee, plaintiff has never abandoned this trade mark in India. It has rather continued to enforce the same and challenge infringing by third party.
43. As regards order passed by Chennai High Court, it was an interim order and that too against dental cream product whereas trade mark of the plaintiff is mainly confined to creame bleach. Defendant has adopted this trademark in respect of creame bleach. Thus plaintiff has every right to protect it. Moreover appeal against the order of Chennai High Court is still pending and finality has not been provided so far.
44. In the result the plaintiff has not only succeeded in establishing that the defendant is guilty of offence of passing off as the confusion and deception as to the source and origin of the product is manifest, but also that adoption of its name by the defendant is likely to damage irreparably reputation and goodwill of the plaintiff's trade name and plaintiff's product. The defendant has to be injuncted for using the trade name of the plaintiff's product and adopting the colour scheme, lay out and get up of the container and carton of the plaintiff.
45. The plaintiff has established and proved its case for protection of its trademark 'JOLEN' its container as well as the carton. Plaintiff has now confined the relief to prayers (a) & (b) and does not press prayers (c) and (d) of para 20 of the plaint. As a result Suit is decreed in terms of prayers (a) and (b). Decree sheet be drawn accordingly.