S.K. Mahajan, J.
(1) The plaintiffs claiming themselves to be the owners of the trade marks 'Revlon', 'Charlie' and 'Intimate' for cosmetics, perfumery, essential oils, hair and toiletries, etc., have filed this suit for permanent injunction restraining the defendants from in any manner manufacturing and selling the perfumes, toiletries, etc. or any other product bearing the aforesaid trade marks or any other mark deceptively similar to the same. Certain other reliefs have also been claimed in the suit. The facts in short relevant for decision of this application are:
(2) That the plaintiffs have alleged to have coined the trade mark 'Revlon' using the same as the key portion of their trading style and got it registered for various goods in the United States of America and many other countries of the world. Plaintiff states that it deals in cosmetics, perfumery and toiletries, etc. which are mostly used by ladies. In the year 1963, they opened the Revlon Research Centre in New York with highly qualified and scientific staff which today has more than 110 physicians, chemists and other technicians. This was done due to their dedication towards advanced research in the cosmetic industry. The plaintiffs are very concerned that the goods produced by them and their associate Companies, are safe and protect the skin and other parts of the body and that the skin or other parts of the body do not experience any adverse effect. The trade mark 'Revlon' is allegedly used extensively in many countries of the world including India in respect of perfumes, cosmetics, toiletries, etc. and instated to be house mark of the plaintiffs. The plaintiffs also claimed to be the registered proprietor of the following marks :
1.Trade mark 'Intimate' under No. 188919 as of 5th February, 1959; 2. Trade mark 'Region Formula ZP11' under No. 229004 as of 21st May, 1965. 3. Trade mark 'Charlie' registered under No. 369145 as of 2nd December, 1980.
(3) It is alleged that though there had been a ban on the import of cosmetics in India since 1975, however, the advertisements of the products of the plaintiffs with the mark 'Revlon' had been appearing in different magazines circulated in India. The products are also stated to have been imported in India for sale to diplomats. It is also stated that the products of the plaintiffs bearing the aforesaid trade marks were freely available in duty free shops in India and even Itdc had been importing these products for sale in their duty free shops in Delhi, Calcutta, Madras and Bombay. The word 'Revlon' allegedly denotes and connotes the cosmetics and fragrances manufactured, sold and offered for sale by the plaintiffs and its associate Companies in India and other parts of the world and the same are manufactured under the strict supervision of experts who look after quality, control, research and development for maintaining their standards.
(4) Defendant No. 1 is a firm of which defendants 2 and 3 are the partners whereas defendant No. 4 is stated to be an associate firm of defendants 1 to 3. It is alleged that defendants 1 to 3 also dealing in manufacture and sale of cosmetics, perfumes & fragrances were manufacturing and selling their products in cans and containers on which the plaintiffs trade marks were printed. The user of the plaintiffs' trade marks 'Revlon', 'Intimate' and 'Charlie' by the defendants is alleged to be infringing the plaintiffs registered trade marks as not only that the containers and cans of the defendants looks like the plaintiffs but also they were written in exactly the same style of lettering as the plaintiffs have been doing. The defendants' containers allegedly have false descriptions upon them and it is alleged that by using the words 'Revlon'/'Intimate' they were deceiving the public by making them to believe that the goods they were selling were the goods of the plaintiffs and that they have connection and collaboration with the plaintiffs which in fact was not true. It is also alleged that on the top of the containers the defendants were using the words 'manufactured and processed at West Germany plant of John Waldher O.H.G. Revlon'. These containers were allegedly filed in Court, however, they are not available on record. Defendant No. 1 is stated to have brought into market 'Revlon' brand goods, namely, 'Revlon Charlie' perfumes, 'Charlie' perfumes, spray in bottles and other products like 'Revlon Intimate' talc, Revlon video tape head cleaner, etc. These acts of the defendants are stated to be the infringement of the plaintiffs registered trade marks being Nos. 188919,229004 and 369145.
(5) Along with the suit, the plaintiffs had also filed an application for the grant of ad-interim injunction restraining the defendants from selling the perfumes, cosmetics and toiletries under the trade marks 'Revlon', 'Intimate' and 'Charlie' or any other mark which was in infringement of the plaintiffs registered trade marks being Nos.188919,229004 and 369145. it is this application of the plaintiffs which I intend to dispose of by this order.
(6) In paragraphs 14 to 18 of the plaint it was stated by the plaintiffs that the 'defendants 1 to 3 have now started infringing the plaintiffs trade marks with impunity' and 'recently the defendant No. 1 had started advertisement on All India Radio and in The Times of India, New Delhi of their products'. It was also stated in the said paragraphs that 'the defendants 2 and 3 recently started manufacturing perfumes, cosmetics, etc. under the trade mark 'Charlie' which belongs to the plaintiffs and thereby infringing the plaintiffs trade mark'. When the application for injunction came up for hearing before the Court, the Court passed an ex-parte order on 27th October, 1986 wherein it was held that for the reasons stated in paragraphs 14 to 18 and paragraphs 20 and 22 of the application, the Court was satisfied that it was necessary to restrain the defendants as prayed by the plaintiffs in that application.
(7) Defendants 1 to 3 in the written statement have taken the stand that they had been manufacturing and selling their products under the trade mark 'Revlon' openly, continuously and extensively since the year 1969; that they had widely advertised their trade mark 'Revlon' through various media like radio, television, newspapers, magazines, cinema-slides, etc. during the past years; that the plaintiffs had full knowledge about the use of the trade mark 'Revlon' by the defendants at least since the year 1974; the suit instituted after a period of 17 years of the use of the trade mark 'Revlon' by the defendants and after 13 years of the knowledge on the part of the plaintiffs, thereforee, was bad on account of waiver, acquiescence and estoppel. It was also stated that the trade marks, use whereof was sought to be restrained, were not distinctive of the plaintiffs goods or business in India nor there had been any bonafide use of the said trade marks as the continuous period of five years or longer had elapsed during which there had been no use of the trade marks by the plaintiffs. It was also alleged that the trade mark 'Region' had already been removed from the Register of Trade Marks by order dated 6th December, 1976 passed by the Deputy Registrar of Trade Marks in rectification proceedings and, thereforee, the suit on the basis of the said trade marks was not maintainable.
(8) The defendants 1 to 3 had in or about 1973/94 applied for registration of the trade mark 'Region' in relation to the goods of its manufacture and sale and the said application was numbered 283746. The Registrar of Trade Marks on examination of the application of the defendants cited the trade marks of the plaintiffs being the conflicting marks and did not, thereforee, register the trade mark 'Region' in the name of the defendants. It was on the defendants mark 'Region' having not been registered, the same being in conflict with the trade marks of the plaintiffs, that the defendants had in April, 1974 filed the application for deletion of the trade marks of the plaintiffs from the register of trade marks on the ground that the same were not being used for a period of five years prior to the application of the defendants for rectification and it was on this application that Register of Trade Marks was rectified and the trade marks of the plaintiffs were deleted from the register. It is, thereforee, contended that the plaintiffs in any case were aware of the defendants using the trade mark 'Region' since 1974 and their having not filed the suit till 1986, they were estopped from filing this suit by acquiescence and waiver. It was also contended on behalf of the defendants that as the plaintiffs had not come to the Court with clean hands and had suppressed material facts, they were not entitled to the grant of adinter in injunction.
(9) An application was also filed by the defendants for vacating the ex-parte order of injunction granted on 27th October, 1986 on the ground that the plaintiffs had made false and misleading statements in relation to material particulars. This Court by order dated 19th December, 1986 vacated the ex-parte order of injunction granted on 27th October, 1986 on the ground that the plaintiffs were aware of the defendants using the trade mark 'Region' as was evident from the correspondence exchanged between May, 1980 to April, 1984 and the plaintiffs had, thereforee, made false and misleading statements in the application for the use of the trade mark by the defendants inasmuch as it had been stated by them in the application that the defendants had 'now' started infringing the plaintiffs trade mark and that they have. 'recently' advertised their goods with the trade mark in controversy. By the same order, it was directed that the defendants will be heard in opposition to the main application of the plaintiffs for the grant of injunction.
(10) The aforesaid order dated 19th December, 1986 was challenged in appeal before the Division Bench of this Court. The Division Bench has now by order dated 16th September, 1996 clarified that IA.No. 5895/86 would be disposed of by this Court without reference to the order dated 19th December, 1986 passed by this Court or the order made in appeal. On this clarification, the appeal was allowed to be withdrawn by the Division Bench.
(11) The first question, thereforee, for consideration is whether the plaintiffs on account of their having concealed the fact of their having corresponded with the defendants about the use of the trade mark 'Revlon', are entitled to the grant of an ad-interim injunction. Much emphasis has been laid by the defendants on the order dated 19th December, 1986 passed by this Court vacating the ex-parte order of injunction granted in favor of the plaintiffs. It was observed by this Court in the said order that the plaintiffs were admittedly corresponding with the defendants from May, 1980 to April, 1984 which clearly show that the defendants had been using the trade mark 'Revlon' for talecom powder, cosmetics and perfumes manufactured by them and the plaintiffs throughout that period had claimed that the defendants were pirating their trade mark 'Revlon' and the parties were negotiating mutual settlement on the use of the said trade mark by the defendants. All these facts being within the knowledge of the plaintiffs, they had made false and misleading statement in the application in relation to the use of the trade mark and alleged infringement by the defendants. It was further observed that the plaintiffs had misled the Court by alleging particularly in paragraphs 14 and 15 of the application that the defendants had 'now' started infringing the trade mark and that they had 'recently' advertised their goods with the trade mark in controversy and the Court was, thereforee, of the view that the ex-parte order of injunction need to be vacated. However, defendants were held to be accountable for the use of all the goods and material subject to the final decision on the application-after hearing the parties on merits in due course.
(12) It is no doubt true that the grant of injunction is an equitable relief available to a party in the suit. A party who does not come to the Court with clean hands and conceals material facts from the Court will not be entitled to the grant of this discretion. The question, however, is whether, in the facts and circumstances of the present case, mentioning of the words 'now' and 'recently' in the plaint would have any bearing on the grant of injunction. After the order of 19th December, 1986 the plaintiff had made an application for amendment of the plaint in which it tried to explain as to why the words 'now' and 'recently' had been mentioned in paragraphs 14 and 15 of the application and the plaint. This Court by order dated 19th April, 1995 had allowed the amendment and by virtue of the said order paragraph 11-A was added in the plaint. It will be useful to quote paragraph 11-A for purposes of deciding whether the concealment continues or has it been properly explained as to why the fact of the correspondence was not mentioned originally. Paragraph 11-A of the plaint reads as under:
'THE plaintiffs submit that in the year 1974 the defendant No. 2 moved an application before the Registrar of Trade Marks, Calcutta for rectification of the Register and deletion of the petitioner's trade mark Revlon and Revlon Clear. The said application was allowed in 1976. The basis of the defendant's application was non user by the plaintiffs for a period of five years and the defendant's own claim to the said trade marks. It is relevant to point out that 405 in the year 1972 the defendants moved an application for registration claiming Revlon as defendant's trade mark but upon the plaintiff's objection the same was denied to the defendant. Upon the Registrar of Trade Marks passing an order against the plaintiffs, the plaintiffs preferred an appeal before the Calcutta High Court. The plaintiffs have tried to have the said appeals expeditiously disposed of ever since these were filed, but have not succeeded so far. While the proceedings were pending in the Calcutta High Court, the plaintiffs lawyer M/s. De Penning & De Penning Bombay on receiving a letter from the defendants Advocate desiring settlement corresponded with the defendant's Lawyers at New Delhi. This correspondence continued between the period 1980 to 1986. The defendants wanted a permissive user of Region. The defendants tried to trap the plaintiffs in negotiations and delay and settlement so that they could continue their fraudulent misuse of the plaintiff's trade mark. During the course of entire correspondence, the plaintiffs consistently maintained that they had exclusive ownership of the trade mark. The plaintiffs disputed the defendant's right to use the same. In fact, the defendants wanted a permissive user of the same by an arrangement with the plaintiffs. In the year 1986 the plaintiffs realised that the defendants were merely dragging the whole controversy and did not have honest intentions to abandon their misuse of the plaintiff's trade mark. The defendants started claiming that their products were manufactured in factories owned by the plaintiffs or the plaintiff's collaborators. They also started claiming that Region was their registered trade mark. The defendants further extended the misuse of the plaintiff's trade mark Region to other products and even to two other indisputed trade marks namely 'Intimate' and 'Charlie'. It is when the defendant exposed their fraudulent motivations by misusing the plaintiff's said three trade marks with immunity that the plaintiffs are compelled to institute the present suit. The plaintiffs have at no stage accepted or acquiesced to the defendant's right to use the trade marks. On the contrary the plaintiff have always disputed the defendant's right. That it is now settled law that irrespective of the fact whether a particular product is sold in India or not, the reputation of the product and the trade marks in India as independent of the sale of the goods. The plaintiffs are world leaders in the products of cosmetics and perfumeries etc. and their products marketed under the trade mark Region, Intimate and Charlie have a transborder reputation'.
(13) The plaintiffs have tried to explain in paragraph 11-A as to why the words 'now' and 'recently' had been mentioned in the plaint. It is stated that in the year 1974, defendant No. 2 had moved an application before the Registrar of Trade Marks for rectification of the register and deletion of the plaintiffs trade mark 'Revlon' and 'Region Clear'. This application was allowed in 1976 and the plaintiffs had preferred an appeal against this order before the Calcutta High Court which was pending at the time of filing of this suit. It has further been stated that while the proceedings were pending in the Calcutta High Court, the plaintiffs Lawyer received a letter from the defendants Advocate desiring settlement and dence was, thereforee, exchanged between the parties between 1980 and 1984. Defendants wanted a permissive user of 'Revlon' and tried to trap the plaintiffs in negotiations by delaying the settlement so that they could continue their fraudulent misuse of the plaintiffs' trade mark. During the course of entire correspondence, the. plaintiffs had consistently maintained that they had exclusive ownership of the trade mark and the right of the defendants to use the same was disputed. It was only in 1986 that the plaintiffs realised that the defendants were merely dragging the whole controversy and did not have any honest intentions to abandon the user of the plaintiffs trade mark and had even started claiming that their products were manufactured in factories owned by the plaintiffs or their collaborators and had started claiming that 'Revlon' was their registered trade mark. Defendants further extended the misuse of the plaintiffs trade mark 'Revlon' to other products and even to two other distinctive trade marks 'Intimate' and 'Charlie'. It was only then that the plaintiffs were compelled to institute the suit and they had at no stage accepted or acquiesced to the defendants right to use the trade marks. It is contended by Mr. Mukul Rohtagi and Mr. Arun Jaitley, Senior Advocates appearing on behalf of the plaintiffs, that the words 'now' and 'recently' used in paragraphs 14 & 16 of the plaint were used because the defendants had been infringing the trade mark with 'impunity' and these words have to be read along with 'impunity' and consequently it could not be argued by the defendants that there was any concealment by the plaintiffs.
(14) In paragraphs 14 and 16, the plaintiffs have used the words 'now' and 'recently' to denote that it had come to the knowledge of the plaintiffs at the time of filing of the suit or a few days earlier about the user of the plaintiffs trade mark by the defendants. However, if one has to read the contents of paragraph 11-A as a whole, it will be clear that the plaintiffs have tried to explain that though they were aware of the user of the trade mark 'Region' by the defendants as far back as in 1974, however, as they were corresponding with each other they had not taken any action till the filing of the present suit. In my view, merely on the ground that the plaintiffs have used the words 'now' and 'recently' in the plaint, no relief can be refused in case they are otherwise entitled to the same on the merits of the case. I am, thereforee, not in agreement with Mr. R.K. Anand, Senior Advocate, appearing on behalf of the defendants, that the application deserves to be dismissed on this ground alone.
(15) Coming now to the merits of the case, it is not in dispute that 'Revlon', 'Intimate' and 'Charlie' are the registered trade marks of the plaintiffs for cosmetic products. However, the question is whether the plaintiffs had been using the said trade marks for their products in India inspire of their being registered in their name and whether by not taking an action against the defendants for almost 12 years inspire of the plaintiffs knowing about the misuse of their trade marks by the defendants, there is any estoppel, acquiescence or waiver which would dis-entitle the plaintiffs from the grant of relief.
(16) The main stress of arguments of Mr. Anand is that the plaintiffs had come to know about the alleged infringement of their trade mark by the defendants in 1974 and having waited up to 1986, the plaintiffs will be deemed to have waived the objection about the user of their trade mark by the defendants or in any Case they have acquiesced in such user. Reliance for this has been placed by Mr. Anand upon the judgments reported as Dr. Ganga Prashad Gupta & Sons v. S.C. Gudimani, Air 1986 Del 329; and Shri Gopal Engg. 6- Chemical Works v. Pomx Laboratory, Air 1992 Del 302. It is contended that by an inordinate delay in filing the suit, a vested right has accrued in favor of the defendants in the marks which are allegedly registered in the name of the plaintiffs and the plaintiffs are, thereforee, not entitled to any injunction against them.
(17) In Dr. Ganga Prashad Gupta & Sons v. S.C. Gudimani (Supra), the facts were that the plaintiffs had been using the trade mark 'Good means' for their medicines since long and they being the prior user had a right to seek its protection. The defendant in that case started manufacturing its disinfectants under the same mark i.e. 'Good means'. The plaintiffs had come to know about the user of the said trade mark by the defendant in July, 1977 and as such by a letter dated 9th July, 1977 a notice was served upon the defendant. Defendant, however, continued to use the same and had even applied for registration of trade mark 'Good means' on 29th June, 1977 claiming from April, 1976. During the continuance of the suit, the Court dismissed the application of the plaintiffs for the grant of ad-interim injunction. While finally deciding the suit, the Court noticed that the plaintiffs inspire of their having come to know about the user of the trade mark 'Good means' by the defendant in 1977, filed the suit only on 22nd March, 1980 which was thus delayed for too long and during this period the defendant has established his business and made a repute for his disinfectants. The reason given by the plaintiff for delay that they were collecting material was not found plausible by the Court as in the opinion of the Court what plaintiff had to do was to collect some advertisements and effect purchases of the defendant's disinfectants from the market. With this background the Court held that the delay committed in the institution of the suit and leading of evidence may be a vital factor which may dis-entitle the grant of rendition of accounts, however, the disinfectants having been classified in the same category as pharmaceutical goods, the likelihood of deception or confusion that the goods of the defendant were as well being manufactured by the plaintiffs could not be ruled out and while decreeing the suit of the plaintiff for permanent injunction restraining the defendant from manufacturing and marketing disinfectant and purifier under the trade name 'Good means', the Court did not grant any relief of rendition of accounts. The relevant observations of the Court reads as under :
'WITH this being the entire background of facts and circumstances of the case and the pleas raised, I have given my utmost and prolonged consideration to the entire matter. So far as the delays committed in the institution of the suit and the leading of evidence, the same may be a factor which may disentitle grant of rendition of accounts. However, the fact remains that the plaintiffs did serve a notice on the defendant in 1977, requiring him to refrain from using the trade mark 'Good means', and inspire of that the defendant has continued to use the same. This notice was given shortly after the start of the defendant's business and the plaintiffs coming to know of the use of the trade mark. In the circumstances, the defendant choosing to still continue using the trade mark was at his risk and responsibility. There is left little doubt that the trade mark 'Good means' has been used by the plaintiffs from long, and at least from fifties for their medicines. They being the prior user, have the right to seek its protection. I am further of the opinion that considering the nature of the goods 408 manufactured by the parties the trade channels through which they are marketed and the field of activity that they have, they can be termed as cognate goods. As already noted above in appendix 3 Schedule 4 relating to classification of goods, disinfectants are classified in the same category as the pharmaceutical goods. The likelihood of deception or confusion that the goods of the defendant are as well being manufactured by the plaintiffs, cannot be ruled out. Reference has already been made above to j. Brown & Co. Ltd., (1920)38 Rpc 15, in which case also similarity of name for disinfectants was declined when the other party was found using the name for medicines. Issues NOS. 1 to 3 are, thereforee, decided in the affirmative, while the relief for rendition of accounts is declined as per discussion above. The result, thereforee, is that the suit of the plaintiff is decreed for permanent injunction restraining the defendant from manufacturing and marketing disinfectants and purifier under the trade name 'Good means'.'
(18) In Shri Gopal Engg. & Chemical Works v. Pomx Laboratory (Supra), the plaintiff firm based in Uttar Pradesh had adopted the trade mark 'Doctor' for phenyl being manufactured by them. The defendant, a Calcutta based firm, also started selling phenyl since 1983 under its mark 'Doctor's' with large sales in Eastern and Southern India and the State of Uttar Pradesh. Both the parties had been advertising their goods and their sales had been progressing with the passage of each year. The plaintiff filed a suit for injunction and passing off against the defendant claiming that when in the second week of June, 1990 it came to know that the defendant was selling its goods under the trade mark 'Doctor's', it had addressed a notice of 14th June, 1990 calling upon the defendant to refrain from using the said mark in relation to phenyl but the defendant refused to do so by its letter of July 24, 1990. Plaintiff also alleged to have come to know in 1991 about the advertisement of defendant's goods published in the newspaper on 18th June, 1991. Suit was filed on September 15,1991.11 was in these circumstances that the Court held that the plaintiff having admittedly come to know about the activities of the defendant in June, 1990 waited till the end of September, 1991 to file the suit, no Explanationn had been given by the plaintiff as to why it waited for almost one and a half years and no attempt was made to explain the said delay.
(19) In the case of Dr. Ganga Prashad Gupta & Sons v. S.C. Gudimani (Supra), the Court inspire of delay of almost three years in the filing of the suit granted injunction against the defendant in that suit restraining it from using the registered mark of the plaintiff and it was only the relief of the rendition of accounts which was refused. In Shri Gopal Engg & Chemical Works v. Pomx Laboratory (Supra), the delay of almost one and a half years in the filing of the suit was not explained and even the trade mark was not registered in the name of the plaintiff and it was in these circumstances that the Court had refused to grant an injunction in favor of the plaintiff in that case. In my view, none of the two judgments will be of any assistant to the defendant in this case.
(20) In M/s. Hindustan Pencils Private Limited v. M/s. India Stationery Products Company and Another, : AIR1990Delhi19 , this Court had an opportunity to consider the question as to whether relief of injunction can be refused in the case of a trade mark to a party merely on the ground of delay and laches. It was held by the Court that where the defendant acts fraudulently with the know liedge that he was violating the plaintiffs right then in that case even if there was an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction should not be denied.
(21) It is not in dispute that the plaintiffs are the registered proprietor of the trade marks 'Revlon', 'Intimate' and 'Charlie'. The contention of the defendant is that as the plaintiffs had not been using this mark for at least five years prior to the time when they had moved an application for rectification of the trade marks in April, 1974, the said marks were liable to be deleted from the register of trade marks and the plaintiffs cannot claim any right therein. Defendant No. 2 himself made an application for registration of trade mark 'Revlon' in his own name in 1972, however, this registration was refused in his name as the said mark already stood registered in the name of the plaintiffs. It was then in April, 1974 that an application was made by the defendants for rectification of the register of trade marks by deleting the said marks from the name of the plaintiffs on the ground that the plaintiffs had not been using the same for a period of at least five years prior to filing the application. In the first instance, the Deputy Registrar of Trade Marks by his order dated 6th December, 1976 had allowed the application and rectified the register on the ground that the plaintiffs had not been using this mark for a period of at least five years prior to the date of the application. In appeal, however, the Calcutta High Court by order dated 10th February, 1995 set aside the said order. I am informed that an appeal has been preferred by defendant No. 2 before the Division Bench of the Calcutta High Court against the order dated 10th February, 1995 passed by learned Single Judge of that Court setting aside the order of the Deputy Registrar of the Trade Marks. The effect of this is that the trade marks continue to be registered m the name of the plaintiffs.
(22) Under Section 28(1) of the Trade and Merchandise Marks Act, 1958, the registered proprietor gets exclusive right to use the said mark in relation to the goods in respect of which the trademark is registered and the said owner also gets the right to get relief in respect of infringement of the trade mark in the manner provided by the Act. Under Section 29 of the Act a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark and in an action for infringement of a trade mark registered in Part-B of the register the injunction shall not be granted if the defendant establishes to the satisfaction of the Court that use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark. In my view, the provisions of Sections 28 and 29 clearly apply to the facts of the present case. Not only that marks under which the defendants are manufacturing and marketing their goods are registered in the names of the plaintiff they are also similar. Though, it is the admitted case of the parties that defendants are not importing their goods, still they are describing themselves as importers of Revlon products. Plaintiffs have the exclusive right to use the marks in relation to the goods they are manufacturing and in respect of which the trade mark is registered and user of the identical marks by the defendant in respect of similar goods, in my view, will clearly cause a confusion and deception in the mind of the general public that the products which are manufactured by the defendants are the products manufactured and marketed by the plaintiffs or in any case have a connection with them.
(23) In N.R. Dottgre v. Whirlpool Corporation, : AIR1995Delhi300 , a Division Bench of this Court held that a product and its trade name transcends the physical boundaries of a geographical region and acquires a trans-border or overseas or extraterritorial reputation not only through import of goods but also by its advertisement. The knowledge and awareness of the goods of a foreign trader and its trade mark can be available even at a place where the goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial.
(24) 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. 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 it 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 cannot be said that 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.
(25) Again is Gold Star Company Limited v. Gold Star Industries & Ors., : 57(1995)DLT658 , learned Single Judge of this Court has held that after registration of the trade mark in case the plaintiff had not been able to import the goods into India due to import restrictions, it cannot be a case of non-user of the trade mark so as to rectify the register of trade marks on the ground that the registered proprietor had not been using the mark for a period of five years prior to the date of application for rectification. Such a non-user would constitute special circumstances within the meaning of Section 46(3) of the Act justifying non-user of the trade mark. Ban imposed by the Government of India constitute special circumstances for nonuser of the trade mark. Though the matter about rectification of the register of trade marks due to the plaintiffs' non-user for a continuous period of five years is pending before the Calcutta High Court and I am not giving any finding on the same, however, on the basis of material placed on record, I am prima facie of the opinion that the products of the plaintiffs were available in India even at that time at the duty free shops and they were also being imported and sold to diplomats.
(26) Though the plaintiffs had been negotiating with the defendants for the grant of a license to them for use of the trade mark registered in the name of the plaintiffs, however, that itself, in my view, will not amount to any acquiescence or waiver on the part of the plaintiffs. Correspondence on record shows that defendants had been requesting for the permissive user of the trade marks by them. This clearly implies that defendants were aware that the plaintiffs were the registered proprietor of the trade marks and the said marks could not be used by the defendants without the permission of the plaintiffs. There was a restriction upon the import of these goods into India arid naturally a person, who is a registered proprietor of a trade mark and has market all over the world for its products, would like the products to be manufactured in the country where the goods cannot be sent m normal course, if in that process the plaintiffs had been negotiating with the defendants for the grant of a license to them to use the trade marks of the plaintiffs for the products in India, in my opinion, the same cannot in any case amount to waiver and acquiescence so as to disentitle the plaintiffs from the grant of injunction.
(27) I have not been persuaded to agree with the contention of Mr. Anand that by negotiations with the defendants, the plaintiffs had acquiesced in the user of the trade marks by the defendants. The material on record, prima facia, shows that the plaintiffs had all along been objecting to the user of the mark by the defendants and they had been waiting for the negotiations to come to an end. It was only when the defendants started using two other trade marks of the plaintiffs that the plaintiffs were persuaded to file the present suit. In my view, thereforee, prima fade, there was no acquiescence and waiver on the part of the plaintiffs in the user of the marks by the defendants. Acquiescence means encouragement on the part of the plaintiffs to the defendants There should be a mistaken belief by the defendant that there is no objection to the plaintiffs in visiting their mark. None of the said conditions are available in the present case. Not only that the plaintiffs had not permitted the defendants to use its trade marks but they had also been objecting to its user by the defendants. Plaintiffs were also pursuing the remedy before Calcutta High Court against the order of the Deputy Registrar of Trade Marks by which their trade mark was deleted from the register.
(28) No satisfactory Explanationn has been given by the defendants as to how they came to adopt the trade marks which are registered in the name of the plaintiffs. Word 'Revlon' does not appear in the dictionary. It cannot be a mere co-incidence that the defendants had adopted the same mark for their products which was registered in the name of the plaintiffs and which have a world wide market. In my view, the adoption of marks registered in the name of the plaintiffs by the defendants for their products cannot be considered honest and in such a case even the plea of delay and laches, in my opinion, would be of no avail to the defendants. In case, the defendants had chosen to continue to use the trade marks registered in the name of the plaintiffs, inspire of plaintiffs' objection, they, in my view, had been doing so at their own risk and they cannot derive any advantage from such user. From the record, I find that the defendants firm had been describing itself as importers and exporters of Region perfumes. It is not even the case of the defendants that they had at any time imported' these perfumes. It clearly shows that the intention of the defendants from the very beginning had been fraudulent and dishonest and their adoption of the marks 'Charlie', 'Intimate' and 'Region', prima facie, appear to have been done to deceive the general public so as to encash upon the reputation and goodwill of the products of the plaintiffs and pass off their goods as those of the plaintiffs.
(29) In my view, the action of the defendant, prima fade, amounts to confuse and deceive the general public so as to pass off their products as those of the plaintiffs. It is a clear case of infringement of the trade marks of which the plaintiffs are the registered proprietors by the defendants and, in my view, the defendants cannot be permitted to continue to use the same. The defendants are, thereforee, restrained till the decision of the suit from manufacturing and selling perfumes, cosmetics and toiletry under the trademarks 'Region', 'Intimate' and 'Charlie' or any other mark deceptively similar to them.
(30) Any observation or expression of opinion in this order will have no bearing on the merits of the suit.
WITH these observations the application stands disposed of.