Delhi High Court

Jolen Inc. vs Shobanlal Jain & Ors on 28 April, 2010

Author: S. Muralidhar

       IN THE HIGH COURT OF DELHI AT NEW DELHI


                              W.P. (C) No. 1210 of 2005


                                                 Reserved on: 10th March 2010
                                                 Decision on: 28th April 2010

       JOLEN INC.                                               ..... Petitioner
                              Through: Mr. Sanjay Jain, Senior Advocate with
                              Mr. Reetesh Singh, Mr. Virendra Kumar and
                              Ms. Prabhsahay Kaur, Advocates


                     versus


       SHOBANLAL JAIN & ORS                        ..... Respondents
                    Through: Mr. M.K. Miglani with
                    Mr. Sanat Kumar, Mr. Gaurav Miglani,
                    Mr. Kapil Kumar Giri and
                    Mr. Ankit Relan, Advocates


                                    AND


                              W.P.(C) No. 1213 of 2005

       JOLEN INC.                                               ..... Petitioner
                              Through: Mr. Sanjay Jain, Senior Advocate with
                              Mr. Reetesh Singh, Mr. Virendra Kumar and
                              Ms. Prabhsahay Kaur, Advocates


                     versus


       SHOBANLAL JAIN & ORS                        ..... Respondents
                    Through: Mr. M.K. Miglani with
                    Mr. Sanat Kumar, Mr. Gaurav Miglani,
                    Mr. Kapil Kumar Giri and
                    Mr. Ankit Relan, Advocates.


        CORAM: JUSTICE S.MURALIDHAR

       1. Whether Reporters of local papers may be
WP(C) Nos. 1210 & 1213 of 2005                                         Page 1 of 29
            allowed to see the judgment?                          No
       2. To be referred to the Reporter or not?                 Yes
       3. Whether the judgment should be reported in Digest? Yes


                                  JUDGMENT

28.04.2010

1. These petitions challenge the separate orders dated 12th January 2005

passed by the Intellectual Property Appellate Board (IPAB) dismissing the

Petitioner‟s appeals thereby upholding the orders dated 11th March 1999 and

11th October 2000 of the Assistant Registrar of Trade Marks („AR‟) refusing

registration of the trademark JOLEN applied for by the Petitioner.

Background Facts

2. The Petitioner Jolen Inc., was formed as a partnership firm in the year

1955 in USA and later incorporated as a company in 1964. The Petitioner

states that it is the proprietor of the invented trademark JOLEN coined from

the names of the founders of the Petitioner company John & Evelyn. It is

stated that the trademark JOLEN forms a predominant feature of the

Petitioner‟s corporate name and trading style. Its trademark JOLEN has been

registered in more than 40 countries all over the world.

3. The Petitioner‟s JOLEN crème bleach is sold extensively in various

countries including countries in the Middle-East and Gulf from where a

number of Indians frequently visit India and bring with them the Petitioner‟s

JOLEN products for their personal use and as gifts for friends and relatives. It

is stated that Petitioner‟s JOLEN products have been brought to India also by

Indians visiting abroad. The Petitioner‟s JOLEN crème bleach are

extensively advertised in international magazines having large circulation in

India. According to the Petitioner its JOLEN crème bleach is freely available

in India in several Customs notified shops and duty free shops in India.

Therefore, it is submitted that by virtue of the long, extensive and continuous

use in the international market and wide publicity, the Petitioner‟s trademark

JOLEN enjoys great reputation and goodwill. In the above circumstances, it

has been pleaded that the Petitioner‟s mark JOLEN has acquired trans-border

reputation which spilled over to India.

4. The Petitioner applied for registration of the trademark JOLEN in India

under No. 522509 on 9th January 1990 in Class 3. Respondent No. 1 trading

as M/s Hindustan Rimmer through its proprietor Shobanlal Jain and its

licencee Ashok Kumar trading as M/s Cosmo International filed oppositions

DEL-9820 and 9821 respectively. By an order dated 11th March 1999, the AR

allowed the oppositions and rejected the Petitioner‟s applications. The

appeal, CM (M) No. 422 of 1999 filed in this Court by the Petitioner was

transferred to the IPAB after the enactment of the Trade Marks Act, 1999

(TM Act, 1999). By the impugned order dated 12th January 2005 in

TA/151/2003/TM/DEL [CM (M) 422/1999], the IPAB dismissed the

Petitioner‟s appeal.

5. The Respondent No. 1 Shobanlal Jain also applied for registration of the

trademark JOLEN under No. 555920 in Class 3 on 6th August 1991 (as

associated with the registered trademark No. 434499 in Class 3) for a wide

range of cosmetic goods. The said application was opposed by the Petitioner

under Opposition No. DEL 600. The AR by an order dated 11th October 2000

dismissed the Petitioner‟s application and allowed the Respondent‟s

application for registration. The Petitioner‟s appeal filed in this Court, CM

(M) No. 104 of 2001 was transferred to the IPAB. By the impugned order

dated 12th January 2005, the IPAB dismissed the said appeal.

6. Certain related developments need to be mentioned. It is stated that

Respondents 1 and 2 obtained registration of trademark JOLEN in India

under No. 434499B in Class 3 in respect of "tooth paste and perfumery".

The Respondents applied for the above registration on 25th February 1985

and a registration certificate was issued on 15th November 1991. The

Petitioner filed rectification petition being Del-694 on 6th May 1994 for

removal of the trademark JOLEN registered in favour of the Respondents

under No. 434499B. The said application is stated to be pending before the

Registrar. It is submitted by the Petitioner that as long as the said opposition

was pending, the present case ought not to have been decided by the AR.

7. The Petitioner filed Civil Suit No. 397 of 2000 in the High Court at

Madras against the Respondents and others for permanent injunction

restraining them from passing off their cosmetic preparations bearing the

trademark JOLEN and from infringing the copyright in the artistic work in

the JOLEN carton. The Petitioner applied for interim reliefs in the said suit.

Against the refusal by the Single Judge to grant reliefs, the Petitioner

preferred appeals before the Division Bench. By a judgment dated 30th April

2004 Jolen Inc., v. Shobanlal Jain 2005 (30) PTC 385 (Mad-DB), the

Division Bench allowed the Petitioner‟s appeal and granted injunction

restraining Respondents and others from using the trademark JOLEN for

cosmetic preparations and from using the imitative carton. Special leave

petition Nos. 11663 to 11665 of 2004 filed by the Respondents were

dismissed by the Supreme Court on 2nd August 2004.

8. It is stated that since the Respondents and others continued to use the

trademark JOLEN as part of their corporate name/trading style

notwithstanding the judgment of the Division Bench of the Madras High

Court, the Petitioner filed yet another suit, C.S. No. 831 of 2004 in the

Madras High Court and an interim injunction was granted on 20th October

2004 restraining Respondents from using the trademark JOLEN as part of

their corporate name/trade name. The injunction is stated to be operating.

9. The ground of opposition by the Respondents to the Petitioner‟s

application for registration of the trademark JOLEN under No. 522509 in

respect of "hair bleach, skin creams and lotions, astringents toilet waters,

colognes, perfumes, eye makeup, face power, rouge and nail polish" in Class

3 was that the mark applied for was not distinctive of the goods of the

petitioner and was hit by Sections 9, 11(a) and 11(e), 12 and 18 of the Trade

and Merchandise Marks Act, 1958 (TM Act 1958). The Petitioner filed

separate counter statements to the above notice of opposition in the month of

November 1996. The Respondents 1 and 2 filed evidence in support of their

opposition along with their affidavit. The Petitioner filed affidavit by way of

evidence in February 1997. In this affidavit, the Petitioner set out in detail the

packaging of the mark, its prior adoption and use, the worldwide registration,

international use and sales figures, goodwill and reputation attached to the

mark JOLEN. The Petitioner also gave details of the worldwide registration

for the trademark JOLEN, range of cosmetic products in respect of which it

had registrations; year-wise expenditure on advertisement in US$ for the

years 1986 to 1993; the sale invoice in different countries; advertisements in

various international magazines and newspapers having circulation in India,

and documents showing the sale of the Petitioner‟s mark JOLEN crème

bleach in India.

10. The case of the Petitioner was that the adoption of the Petitioner‟s mark

JOLEN by the Respondents was fraudulent. It was a slavish imitation of the

Petitioner‟s mark and failed to substantiate the claim of the user of the mark

JOLEN. It was stated that the trademark JOLEN was a well-known trade

mark used exclusively by the Petitioner. It was submitted that the earlier

registration No. 434499 in Class 3 had been obtained by the respondents

through fraud and misrepresentation.

The Orders of the Assistant Registrar

11. By an order dated 11th March 1999, the AR allowed the opposition filed

by Respondents 1 and 2 and dismissed the Petitioner‟s application. The

summary of the findings of the AR was as follows:

(a) The trademark applied for by the Petitioner was identical

to the registered trademark JOLEN of the Respondent

under No. 434499B dated 25th February 1985 and the

perfumes covered by the said registration were goods of

the same description as that applied for by the Petitioner.

Hence the registration of the mark was prohibited under

Section 12(1) of the TM Act 1958.

(b) The respondent could rely upon the use of the said mark

JOLEN by their licencee, Respondent No. 2 and it was

not necessary for the purpose of Section 11(a) that the

Respondents should rely upon the use and the reputation

of their own trademark. The Petitioner had failed to

prove that there was any sale of goods or advertisement

of trade mark JOLEN by it in India.

(c) There was no evidence produced by the petitioner to

show that the magazines and newspapers in which the

trademark JOLEN was advertised, had any circulation in

India at that point in time. There was, therefore, no use

by or reputation of the Petitioner in India in respect of the

trademark JOLEN as on the date of its application. There

was also no clear and cogent evidence in respect of the

said mark‟s trans-border reputation in India.

(d) The evidence produced by the Respondents indicated that

a substantial number of traders identified JOLEN

products as manufactured by the Respondents as on the

date of the application. Therefore, the use of the said

trademark by the Petitioner was likely to cause confusion

and therefore was prohibited under Section 11(a) of the

TM Act 1958.

(e) The claim by the Petitioners for registration of the trade

mark JOLEN held by the Respondents was hit by Section

18(1) of the TM Act 1958.

(f) The Petitioner‟s evidence did not show use of the

trademark JOLEN prior to the date of the application.

Therefore, the Petitioner could not take advantage of

Section 33 of the TM Act 1958.

12. As regards the Petitioner‟s Opposition No. DEL 600 under No. 555920 in

respect of cosmetic goods included in Class 3, the Registrar passed an order

dated 11th October 2000 holding that:

(a) There was no merit in the contention of the Petitioner

that since the Respondents had not filed any counter-

statement under Section 21(2) of the TM Act, 1958 to

the application filed by the Respondents, their

opposition should be deemed to have been abandoned.

(b) There was no evidence on record to show that there

would be any likelihood or confusion in India if the

Respondents use the mark JOLEN. Therefore Section

11(a) of the TM Act 1958 had no application.

(c) Admittedly the earlier registration of the mark under No.

No. 434499 in Class 3 was in the name of the

Respondents. This was an additional factor in their

favour. The application made by the Respondents for

registration in Class 3 was only an extension for the

earlier registration already granted in Class 3 (tooth

paste and perfume).

(d) As such the Respondents had been using the mark since

1987, i.e., for about four years as on the date of the

application. The said use was sufficient to distinguish

the Respondent‟s goods from other traders. Therefore,

the registration of the mark in favour of the Respondents

was justified under Section 9 of the TM Act 1958.

The impugned order of the IPAB

13. By the impugned order dated 12th January 2005 the IPAB rejected the

Petitioner‟s appeals. After referring to the observations in "Intellectual

Property" by W.R. Cornish, Third Edition, at page 550, the decision of the

Supreme Court in N.R. Dongre v. Whirlpool Corporation 1996 (5) SCC 714

and this Court in Jolen Inc v. Doctor & Company (2002) 2 CTMR 6, it was

held that the Appellant, i.e., the Petitioner herein had "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". There was no evidence to show that even a

small number of Indians were aware of the products. After discussing the

various advertisements in the foreign magazines, the IPAB held that the

Petitioner had not produced any evidence with regard to the circulation of

any of the said magazines in India as well as the channels through which such

magazines were circulated. The Respondents had established prior use since

1985 whereas the Petitioner‟s application was filed in 1991 claiming user of

the said trade mark since December 1985. The Petitioner had failed to

establish through evidence that by way of advertisements in foreign journals

they had acquired trans-border reputation. It was held that in order to

substantiate the claim to a trans-border reputation the mark should be shown

to be a well- known one having been identified by a large number of persons.

Therefore evidence regarding availability of journals and the volume of

circulation had to be proved. Reputation and goodwill had to be proved and

not presumed.

14. Referring to the judgment of the Madras High Court in Jolen Inc., v.

Shobanlal Jain, the IPAB held that the said judgment was not binding since

the findings on facts were only prima facie. It was held that the IPAB had to

dispose of the appeal independent of any observations of the Madras High

Court in the aforementioned judgment. It is further held that the fact that the

Petitioner had filed the suit in 2000 and had not till the date of the disposal of

the appeal raised any objection to the use of the mark by the Respondent No.

2 further weakens the Petitioner‟s case. Respondent No. 2 had proved that

they were the prior users. The Petitioner had failed to establish trans-border

reputation. The appeals were accordingly dismissed.

Submissions of Counsel

15. This court has heard the submissions of Mr. Sanjay Jain, the learned

Senior Counsel, appearing for the Petitioners and Mr. M.K. Miglani, the

learned counsel appearing for the Respondents 1 and 2.

16. It is submitted by Mr. Sanjay Jain that the IPAB erred in holding that the

Petitioner had not proved its trans-border reputation. Relying on the

observations of this Court in N.R. Dongre v. Whirlpool Corporation AIR

1995 Delhi 300, it is submitted that in the present case, the existence of

trans-border reputation of the Petitioner‟s marks was proved by the evidence

placed on record. Since the Petitioner‟s goods were being sold in the open

market there would be confusion or deception by the registration of the

impugned mark. Therefore, Section 11(a) of the TM Act 1958 did not apply.

It is submitted that the Respondents‟ marks are identical with that of the

Petitioner. The trademark, trade dress, colour scheme, get up, font size, lay-

out, carton and the labels used therein were identical with that of the

Petitioner. The IPAB also failed to appreciate that in Class 3 there are several

other items and therefore the mere fact that the registration is obtained for

toothpaste and perfumes by the Respondents did not automatically mean that

the registration could not be granted to the Petitioner in respect of other

goods although falling in the same class. Referring to the decision in

Vishnudas Trading v. Wazir Sultan Tobacco Ltd. 1996 PTC 16 (SC) 512, it

is submitted that registration with regard to one category of goods does not

prevent registration of trademarks with respect to other goods in the same

class. The findings of the Madras High Court in Jolen Inc. v. Shobanlal Jain

affirmed by the Supreme Court clinched the issue in favour of the Petitioners.

Mr. Jain also places reliance on the judgments in Milmet Oftho Industries v.

Allergan Inc 2004 (12) SCC 624 and Hyundai Corporation v. Rajamal

Ganna 2007 (35) PTC 652 (Del). Highlighting the approach of the Courts in

cases of passing off and infringement involving identical marks, Mr. Jain

referred to the decisions in Atlas Cycles Ltd. v. Atlas Products Pvt. Ltd.

146(2008) DLT 274; Kaviraj Pandit Sharma v. Navratna Pharmaceuticals

Laboratories AIR 1965 SC 960; Hero Honda Motors Ltd. v. Shree

Assuramji Scooters 2005 (4) RAJ 186 (Del); Revlon Inc. v. M/s Sarita

Manufacturing Co. AIR 1998 Del 38 and Frito Lays India v. Radesh Foods

2009 (40) PTC 37 (Del).

17. Appearing for the Respondents, Mr. M.K. Miglani, the learned counsel

submitted that the Respondent‟s licencee had obtained the permission of the

Drugs Controller and started manufacturing and selling cosmetics under the

trademark JOLEN in 1987. According to the Respondents, its use of the mark

was long, continuous and extensive. When the Respondent‟s application for

registration of mark JOLEN was accepted and advertised in the Trademarks

Journal, it was not opposed by any member of the trade or public and

therefore registration was granted for toothpaste and perfumery.

18. It is submitted that after the Petitioner filed a subsequent application on

15th November 1991 for registration of cosmetics, the Petitioner herein filed

oppositions and issued various caution notices. It filed a suit against Doctor

& Company in 1993. Therefore, it had complete knowledge about the

Respondents and yet took no action. It is submitted that the JOLEN is not an

invented word but is a name of the city in Afghanistan. It is claimed that

there are several businesses being run in the name JOLEN. While the

Respondents successfully proved by evidence their long and bona fide user of

the mark, the Petitioner had failed to prove any sale, advertisement of its

goods in India using the mark JOLEN. The Petitioners failed to prove that its

goods under the mark JOLEN had any trans-border reputation. Since the

goods of the Petitioner were not available in India at the relevant point in

time, the learned AR had rightly concluded that there was no likelihood of

deception or confusion.

19. It is submitted that the present petition concerns a mark adopted and used

in and around the 1980s, i.e., the era of pre-globalization and pre-

liberalization of economy. It is claimed that in the said era, the means of

communication, publicity and advertisement as also the means of travel were

not as advanced as now where simultaneous launching of a product and/or

brand in various countries throughout the world has become the norm. If one

went by the sale figures of the Petitioner‟s products in 20 countries

worldwide, then only 35,000 odd products priced at 3$ each were found to be

sold. The sales were therefore negligible and could not substantiate the claim

of the Petitioner‟s product enjoying an immense reputation which has spilled

over to India. Therefore, there is no question of the Respondents trading upon

any goodwill or reputation of the Petitioner in the said market. Relying upon

the decisions in Management of Madurantakam Co-op. Sugar Mills Ltd. v.

S. Vishwanathan (2005) 3 SCC 193 and Union Bank of India v.

Chanderkant Gordhandas Shah (1994) 6 SCC 271, it is submitted that the

High Court exercising jurisdiction under Article 226 of the Constitution will

not re-examine factual disputes or the evidence and sit in appeal over the

concurrent findings of the AR or the IPAB. The scope of the powers of the

judicial review were limited to correcting errors of law or procedural errors

leading to manifest injustice or violation of principles of natural justice.

Reliance in this regard is also placed on the judgments in Chandigarh

Administration v. Manpreet Singh JT 1991 (4) SC 436; Lalit Popli v.

Canara Bank (2003) 3 SCC 583 and Indian Iron & Steel Co. Ltd. v.

Prahlad Singh (2001) 1 SCC 424. It is submitted that in any event in paras

14 to 18, the IPAB had discussed the evidence produced on record. It had

discussed law relating to trans-border reputation and held that that the

Petitioner had miserably failed to prove the same. The IPAB had rightly

opined that the question of dishonesty of adoption has to be gone into only

where the Petitioner proved that it is a well known mark having trans-border

reputation. The Petitioner admittedly never manufactured or sold its products

in India and even its application for registration was on "proposed to be

used" basis. Therefore, the question of confusion between the two marks did

not arise since the Petitioner‟s mark was not even known, much less, used in

India. Further as held in Pioneer Nuts & Bolts Pvt. Ltd. v. Goodwill

Enterprises [2009 (41) PTC 362 Del.], the use of a mark in advertising

media must be concurrent with the placing of the goods in the market if it is

to be regarded as a trademark. Reliance is also placed on the judgments in

The Gillette Co. v. A.K. Stationery [2001 PTC 513 Del.] and M.S.

Smithkline Beecham Plc v. M.S. Hindustan Lever Ltd. [2000 PTC 83 Del.].

Comparison of the two marks

20. Before considering any issue in the present case, the two competing

marks and cartons may first be examined. This Court was shown the cartons

and packaging used on the Petitioner‟s products and those for the

Respondent‟s products. If these two are placed side by side, even the most

trained eye would not be able to make out one from the other. In fact, this

was acknowledged too by the counsel for the Respondents. The Court had to

use a black rubber band around the carton of the Petitioner only to identify it.

The portion of the packaging reflecting the mark used by the Petitioners is as

under:

21. The portion of the packaging reflecting the mark used by the Respondents

is as under:

22. Elsewhere in the packaging and in the container placed within it, the

Respondents have depicted the word `JOLEN‟ within an oval ring with

identical lettering in identical font against a blue background. The mark

JOLEN and every aspect of it as used and depicted by the Respondents is a

classic example of slavish imitation of the mark of the petitioner. It is so

brazen that the Respondents have copied even the byline „Lightens Excess

Dark Hair‟ appearing below the word JOLEN. There is also no manner of

doubt that an average customer will mistake the Respondents‟ products as

that of the Petitioner. The confusion is also likely to be about the origin of the

goods. The name of the manufacturer is given in an insignificant portion of

the Respondents‟ carton in an extremely small font. The Respondents

products in the above packaging with the JOLEN mark are likely to be

viewed as counterfeit of the petitioner‟s obviously more expensive foreign

branded products. The Indian law concerning trademarks does not permit this

kind of a brazen and slavish imitation of a well known international mark. It

is inconceivable how the AR and IPAB did not appreciate this most obvious

feature of the case.

23. Along with its written submissions, the Respondent has placed samples of

eight such packages each containing mark JOLEN since 1985. That by itself

makes no difference to the strength of the Petitioner‟s mark JOLEN which

has been shown to have international goodwill and reputation. It is also not

disputed that the Petitioner had registration in respect of the said mark

JOLEN in 40 different countries worldwide and other categories. The

adoption and use of the mark JOLEN by the Respondents in Class 3 goods

including perfumery is neither prior nor honest.

Sub-species of articles in a class to be considered

24. What was required to be appreciated by both the AR as well as the IPAB

was that in particular the goods in Class 3 with which they were concerned,

cosmetics was a sub-species. As rightly explained by the Supreme Court in

Vishnudas Trading v. Wazir Sultan Tobacco Ltd., the mere fact that the

Respondents had a registration for the mark JOLEN in respect of toothpaste

and perfumery did not automatically mean that they were entitled to the

registration for the trade mark JOLEN for cosmetics as well. In para 45 and

46 of Vishnudas Trading v. Wazir Sultan Tobacco Ltd., it was explained

(PTC @ p.534-35):

"In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be ground under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who get such registration had not intended to use any other article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the Scheme of the registration of trade mark as envisaged in the Trade Marks Act and the Rules framed there under, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances... The "class" mentioned in the 4th Schedule may subsume or comprise a number of goods or articles which are separately identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of 4th Schedule of the Rules but within

the said class, there are number of distinctly identifiable goods which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only in respect of such articles are intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be comprised."

International market and reputation for cosmetic products

25. The second peculiar feature is that there is a relatively large international

market and therefore formidable reputation for international brands of

cosmetics even in India. While there is a domestic industry in cosmetics, the

attraction for the perfumes, facial crèmes and other toiletry products from

abroad is phenomenal. This explains why when travelling abroad or visiting

India as NRIs persons who have settled abroad invariably pick up perfumes

and other foreign brand toiletry items. The duty-free shops in international

airports abound in these luxury goods. Therefore the question of foreign

cosmetic products having a trans-border reputation is nothing strange or

unique. The AR and the IPAB have obviously missed this distinction when

appreciating the evidence of use and marketing in the form of advertisements

of the products in foreign and Indian magazines. It is not uncommon to find

foreign magazines carrying glitzy advertisements in beauty and hairdressing

saloons. In the era of cosmetics, therefore, the visibility and reputation

enjoyed by an international brand has to be viewed differently from that

enjoyed by non-luxury and non-cosmetic products.

26. This Court rejects the wholly improbable explanation given by the

Respondents that JOLEN is not an invented word but the name of a city in

Afghanistan. There is no way that the Respondents who also claim to be in

the cosmetics industry for many years, were not aware of JOLEN bleach

crème which has been available internationally since 1955. It is impossible

that the Respondents were suddenly inspired to adopt the name of a city in

Afghanistan for their products. It is incredible how such a far-fetched

explanation was accepted by both the AR and the IPAB. This Court has no

hesitation whatsoever in holding that the adoption by the Respondents of

JOLEN, a well known mark of the Petitioner internationally, was dishonest.

Goodwill and reputation of the Petitioner's product

27. It is not the first time that the Courts have been asked to examine whether

the Petitioner enjoys an international reputation for its marks. Between the

same set of parties, a judgment has been delivered by the Division Bench of

Madras High Court in Jolen Inc. v. Shobanlal Jain. The said judgment

discusses in detail the goodwill and reputation enjoyed by the Petitioner‟s

products. It also discusses the comparison between the marks and the labels

used by the Petitioner and the Respondents. Paras 35 and 36 of the said

judgment in Jolen Inc. v. Shobanlal Jain are relevant and read as under

(PTC @ p.407-408):

"35. Before considering the question whether the appellant has prima facie established that it has trans border reputation, we find from the sample of products produced before us that the respondents have copied the trademark JOLEN in its entirety not only in the colour scheme, get up and lay out, but also in the

style in which the word JOLEN is printed by the appellant both in the container as well as in the carton. We find that the respondents have copied the colour scheme, getup and lay out of the appellant completely and in its entirety in respect of the products marketed by the respondents in the container as well as in the carton. We also find that there is neither an addition of a letter, nor there is any subtraction of any letter from the word JOLEN, nor there is any modification in the style in printing the letters JOLEN by the respondents. In other words, the appellant's trademark JOLEN has been copied slavishly by the respondents and the copy is complete in all respects. No doubt, in the container of the respondents an additional information is available to the effect that it is manufactured by Hindustan Rimmer which is followed by the expression, 'manufactured in technical collaboration with Laboratoire Nouveau, U.S.A. and marketed by Jolen International Limited'. We are of the view that the addition of the words in the container and carton does not help the respondents as in the advertisements they have advertised that the goods were manufactured in collaboration with Laboratoire Nouveau, U.S.A. and marketed by Jolen International Limited and the expression used in the advertisements cannot be said to be without any purpose except to convey to a purchaser that he or she is purchasing a product made in collaboration with a company in U.S.A.

36. The appellant has also prima facie established that it has got prior user, though it has been denied by the respondents. The appellant has produced several advertisements, the earliest of which is of the year 1967 published in the magazine Glamour, found in volume II of the typed-set of papers. It was followed by other advertisements effected in the years 1968, 1976, 1977, 1980, 1982, 1983 and 1984 all found in volume II of the typed- set of papers. The appellant produced various invoices prior to 1997 and also produced copy of statement of advertising

figures, found at page 8 of Vol. II of the typed-set of papers. No doubt, the respondents deny that the appellant is having prior user, but these documents prima facie establish that the appellant has been marketing the goods under the trademark JOLEN from the year 1967 and there are no grounds to disbelieve or discard those documents. In Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. & Ors 1996 PTC (16) 311 it was held as under:

"At the interlocutory state, it is the practice to accept documents filed along with affidavit. The respondents have also filed number of such documents and if regular proof is necessary, the documents filed by both sides should be completely ignored. If that procedure is adopted, it is not possible in any interlocutory application to grant relief to parties."

No doubt, the respondents got the registration of the trademark. This Court in Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. & Ors 1996 PTC (16) 311, in paragraphs 78 and 79 held that it is no defence to passing off that the defendant's mark is registered. This Court also noticed the judgments in Century Traders v. Roshan Lal Duggar and Co. AIR 1978 Delhi 250 and Sushil Vasudev v. M/s. Kwality Frosen Foods Private Limited 1993 (1) Kar. LJ 609 which was confirmed on appeal in C.A.No.234 of 1994 by order of the Supreme Court dated 19.7.1994 and ultimately in paragraph-87 it held that the prior registration of trademark is not a ground in the case of passing off action. The Delhi High Court in N.R. Dongre v. Whirlpool Corporation AIR1995 Delhi 300 has taken the same view and the Supreme Court in N.R. Dongre v. Whirlpool Corporation 1996 PTC (16) 583 has approved the view of the Delhi High Court holding that the registration of trademark has no consequence for passing off action."

28. The Madras High Court also considered the decision of this Court in

Jolen Inc v. Doctor & Company (2002) 2 CTMR 6. Paras 21, 22 and 23 of

the said judgment of this Court, which are relevant read as under:

"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 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.

22. In modern world, advertisements in 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 travelling abroad for business or pleasure or any other purpose viz., study or temporary postings come across an article of a trade name 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) 583 (SC), Supreme Court 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."

29. In para 41 of its judgment in Jolen Inc. v. Shobanlal Jain , the Madras

High Court observed as under (PTC @ p. 411-412):

"41. Learned senior counsel for the respondents submitted that the cases relied upon by the learned senior counsel for the appellant are distinguishable and the decision of the Delhi High Court in the appellant's own case Jolen Inc. v. Doctor & Company (supra), has been rendered without any evidence. He referred to the orders of the Registrar of Trade Marks and submitted that the appellant has not established the trans-border reputation. He referred to N.R. Dongre case, cited supra, and submitted that in that case the goods were sold in India and the mark was advertised in magazines having circulation in India and Whirlpool is one of the fortune 500 companies. As far as Tiger Balm case (supra), is concerned, he submitted that the plaintiff had made actual sales in India and had advertised the goods in magazines having circulation in India. He also referred to the facts of that case and submitted that there was no long user by the defendant therein and hence, the decision is not applicable. However, we find on the facts of the case that the appellant has effected advertisements bearing the trademark 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 distributed 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 trademark JOLEN in various international magazines having circulation in India. Learned senior counsel for the appellant also referred to various magazines found in paragraph-10 of the plaint. The respondents have also not stated that there were no sales of the appellant's products in India. The appellant has also produced copy of invoices. Moreover, the

policy of the Government of India is open economy and under the Government Policy, the entry of appellant's goods to India is not prohibited. The Delhi High Court in N.R. Dongre case (supra), held that 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, etc. though the product may not be available in those countries. As far as the present case is concerned, it is the case of the appellant that the goods are available in India. The appellant has produced two bills to show the sales in India. It is also its case that the goods are brought to India by the visitors from foreign countries. The Delhi High Court also held that the knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used and the manner in which or the source from which the knowledge has been acquired is immaterial. The Supreme Court in N.R. Dongre case (supra), held that the advertisement of trademark without existence of goods in the market is also to be considered as use of the trademark and it is not necessary that the association of the plaintiff's mark with his goods should be known all over the country or to every person in the area where it is known best."

30. The Madras High Court in para 42 of its judgment in Jolen Inc. v.

Shobanlal Jain noticed that the Petitioner had produced copies of

advertisements to show that its goods have been advertised in various

international magazines having circulation in India. Further in view of the

free market, the goods were freely available in India. The bills produced by

the Petitioner would not be held to be false documents. It was consequently

held that "the availability of goods in India coupled with the advertisements

in various international magazines having circulation in India would prima

facie establish that the expression JOLEN points to the appellant which is the

source for manufacture of the mark is emanating from the appellant". It was

categorically held that there was no need for an agency or dealer in India to

be there to deal with the Petitioner‟s goods in order to establish trans-border

reputation. It was then observed as under (PTC @ p. 413):

"The circulation of international magazines in India wherein the goods of the appellant are advertised, the availability of the goods in India by the visitors bringing the goods to India or by persons going abroad from India and the availability of information in internet, web sites, etc., would be sufficient to create trans-border reputation. The respondents used the mark JOLEN by copying the same completely and they are using the trademark with same colour scheme, get up and lay out of the appellant on the carton and container and that would prima facie show the intention of the respondents is to pass off their goods as that of the appellant and the buyers are likely to be misled as if the products of the respondents are that of the appellant. The similarity in the products is also a relevant consideration and it is possible to visualize that a person who has settled in U.S.A. using the appellant's products on his or her visit to India would be easily misled by the respondents' products as that of the appellant's goods or it is possible to visualize the case of persons going abroad and bringing with them the appellant's goods to India either for their own use or to offer as gifts to the relatives and friends in India. The respondents have not offered any explanation for the adoption of the expression, 'JOLEN' as it is not a common expression which is a coined word derived from the names of the appellant's founders. We find that the adoption by the respondents of the mark is complete in all respects and the

intention of the respondents in adopting the same lay out, colour scheme and get up is only to gain economic advantages, the reputation and goodwill of the appellant."

Trans-border reputation

31. In the considered view of this Court, the IPAB could not have simply

labelled the judgment of the Madras High Court in Jolen Inc. v. Shobanlal

Jain as "mere prima facie finding". This Court has been shown the materials

produced before the AR which was not even discussed by the IPAB. It also

requires to be noted that much of this evidence has been discussed in the

above judgment of the Madras High Court in Jolen Inc. v. Shobanlal Jain.

32. In light of the above evidence, this Court is satisfied that the decision of

the AR as well as the IPAB ought to be categorized as perverse. Although

there is no quarrel about the settled proposition that this Court should not

interfere under Article 226 of the Constitution with the concurrent findings of

quasi-judicial authorities, this Court finds in the instant case that both the AR

and the IPAB has ignored the settled principles of law by failing to appreciate

the evidence placed on record and have rendered decisions that have resulted

in manifest injustice to the Petitioner.

33. This Court has in Jolen Inc v. Doctor & Company, acknowledged the

trans-border reputation enjoyed by the Petitioner‟s bleach crème. In paras 27,

28 and 29 of the said judgment it was observed by this Court as under

(CTMR @ p. 15 ):

"27. When a party after copying a trade mark comes out with an Explanation as to 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 Explanation. 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 Explanation 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 Explanation. 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 trades upon the goodwill of the trademark while on the other the established trademark suffers dilution and earns bad name."

34. In Milmet Oftho Industries v. Allergan Inc., the Supreme Court

acknowledged the fact that since nowadays goods are widely advertised in

newspapers, periodicals, magazines and other media which are available in

the country a product acquired a worldwide reputation. Thus, "if a mark in

respect of a drug is associated with the respondents worldwide, it would lead

to an anomalous situation if an identical mark in respect of a similar drug is

allowed to be sold in India". One note of caution that was struck was that if a

multinational corporation had no intention of coming to India or introducing

its products, such a company should not be permitted to prevent an Indian

company from selling its products in India if the Indian company had

genuinely adopted the mark and manufactured the product first in the market.

Thus the ultimate test should be, who is first in the market.