Goodwill, misinterpretation and damage to be established in a trademark infringement case: Delhi High Court
Actions of infringement of trademark have a public interest element of protecting customers at large from the possibility of confusion. The Supreme Court bench consisting of J. Rajiv Sahai Endlaw decided upon the criteria to determine trademark infringement in the case of Roland Corporation v. Sandeep Jain &amp; Ors. [CS (COMM) 565/2018 &amp; CC (COMM) No. 6/2018]. The plaintiff is a company incorporated in Japan in1972 and is the registered proprietor of various trademarks including BOSS, RODGERS, RSS, EDIROL and ROLAND. The trademark BOSS had been registered in favour of the plaintiff in India, in Class 9 and 15, with effect from 2nd July, 2004. The plaintiff through Rivera Digitec (India) Pvt. Ltd., their distributor, has been importing products bearing the trademark BOSS to India since 1993 and have acquired an excellent reputation for the same. The defendant Hi Tone Electronics, of which Sandeep Jain is the proprietor and Janata Electronics the retailer, is engaged in similar business under the trademark of BOSS and also exporting under the trademark of Hi Tone BOSS (registered under Class 9). The plaintiff instituted a suit against the defendants in the year 2007 to restrain them by way of permanent injunction from passing off their goods as that of the plaintiffs by using the trademark BOSS or Hi Tone BOSS and for ancillary reliefs. Relief was granted to which the defendants contested by filing a written statement along with a counter0claim, pleading that that the trademark was being used by the defendants and registered well before the plaintiffs started using it and that the defendant was not trying to ride on the goodwill of the plaintiff. A counter claim was again filed by the plaintiffs to the same. The HC relied on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited [(2018) 2 SCC 1], wherein it was observed that “(a) to prove and establish an action of passing off, three ingredients are required to be proved by the plaintiff, i.e., his goodwill, misrepresentation by the defendant and damage; (b) the test, of whether a foreign claimant may succeed in a passing-off action, is whether his business has a goodwill in a particular jurisdiction, which criterion is broader than the “obsolete test” of whether a claimant has a business/place of business in that jurisdiction; if there are customers for the plaintiff’s products in that jurisdiction, then the plaintiff stands in the same position as a domestic trader; (c) the overwhelming judicial and academic opinion all over the globe, therefore, seems to be in favour of the territoriality principle which should apply to this country also; (d) to give effect to the territoriality principle, the Courts must necessarily have to determine if there has been a spillover of the reputation and goodwill of the mark used by the claimant who has brought the passing off action; and, (e) if goodwill or reputation in the particular jurisdiction i.e. in India is not established by the plaintiff, no other issue really would need any further examination to determine the extent of the plaintiff’s right in the action of passing off”.
 IN THE HIGH COURT OF DELHI AT NEW DELHI Date of decision: 6th January 2021. CS(COMM) 565 2018 & CCNO.6 2018 ROLAND CORPORATION ..... Plaintiff Through: Mr. Pravin Anand Mr. Shrawan Chopra Mr. Vibhav Mithal Mr. Bobby Jain and Mr. Souradeep Mukhopadhyay Advs. SANDEEP JAIN & ORS. ..... Defendants Through: Mr. Neel Mason Mr. Vihan Dang and Mr. Shivang Sharma Advs. HON BLE MR. JUSTICE RAJIV SAHAI ENDLAW The plaintiff in the year 2007 instituted this suit to restrain Sandeep Jain Proprietor Hi Tone Electronics Hi Tone Electronics and c) Janata Electronics by way of permanent injunction from passing off their goods as that of the plaintiffs by using the trade mark BOSS or Hi Tone BOSS and for ancillary reliefs. It is the case of the plaintiff that the plaintiff is a company incorporated in Japan in the year 1972 engaged in manufacturing marketing and exporting electronic musical instruments electronic equipment and software and is a world leader in design manufacture and distribution of electronic musical instruments including keyboards and synthesizers guitar products electronic percussion kits digital recording equipment amplifiers and audio processing devices the plaintiff is the registered proprietor of various trade marks including BOSS RODGERS CS(COMM) 565 2018 & CC No.6 2018 RSS EDIROL and ROLAND in respect of electronic equipments the trade mark BOSS is used in respect of compact effect pedals twin effect pedals multi effect pedals acoustic processors metronomes tuners rhythm machines sound recording equipment and also accessories and is recognized across the world as a hallmark in musical equipment the BOSS mark was first used in June 1976 in respect of Chorus Ensemble products in Japan and was adopted to connote “lead role” the trade mark BOSS has been registered in favour of the plaintiff in India in Classes 9 and 15 with effect from 2nd July 2004 Rivera Digitec Pvt. Ltd. was established in Mumbai as exclusive distributor of products of the plaintiff to serve the Indian music industry by making available to them the musical instruments under the brands Roland BOSS and Edirol the plaintiffs through their distributor have been importing products bearing the mark BOSS in India since 1993 and have acquired an excellent reputation by continuous import and sale of BOSS products the sales in India of goods bearing the mark BOSS have risen from Rs.68 68 330 in 2002 2003 to Rs.96 79 190 in 2006 2007 the defendant no.2 Hi Tone Electronics of which defendant no.1 Sandeep Jain is the proprietor and defendant no.3 Janata Electronics is retailer is engaged in the business of manufacturing and marketing musical instruments such as amplifiers microphones speakers stereos mixers and cassette players under the trade mark BOSS and also exporting products under the mark Hi Tone BOSS the defendant no.2 on its website www.hitoneelectronics.com advertises products under the trade mark BOSS the defendants have also registered the trade mark BOSS in India in Class 9 the manner of use and of the trade mark BOSS by the defendant is the same as that of the trade CS(COMM) 565 2018 & CC No.6 2018 mark of the plaintiff the defendants have dishonestly adopted the trade mark and trade dress of the plaintiff and at the time when the defendants registered the trade mark the plaintiff’s products were already well known under the said trade mark. The suit accompanied with an application for ex parte ad interim relief came up first before this Court on 23rd April 2007 when though summons of the suit and notice of the application were ordered to be issued no ex parte relief claimed granted. The defendant no.2 has contested the suit by filing written statement and also filed a Counter Claim pleading that the defendant no.2 a partnership concern adopted the trade mark BOSS in relation to public address amplifiers echo and reverb amplifiers microphones speakers disco lights and sound invertors and other similar products way back on 15th January 1979 and have been using the trade mark BOSS continuously and extensively since then the trade mark BOSS was adopted since the defendant no.2 was the first entity in India to start manufacturing echo reverb amplifiers disco lights sound invertors the defendant no.2 commissioned an artist Mr. Kedar Nath of Lalit Kala Kuteer for designing and stylizing the representation of the trade mark BOSS that the alphabet ‘B’ in the word BOSS was stylized to look like a chair of the boss v) the defendant no.2 in the year 1999 participated in India Tech 1999 Exhibition in Nigeria and has also exported its products to Syria Bangladesh Dubai Sri Lanka Yemen Ethiopia Uganda and Kenya the sales of the defendant have multiplied from Rs.19 786.78 paise as on 31st March 1979 to Rs.2 61 31 241 as on 31st March 2007 the CS(COMM) 565 2018 & CC No.6 2018 defendant no.2 on 14th August 1985 applied for registration of the trade mark BOSS in Class 9 in respect of public address amplifiers echo amplifiers reverb amplifiers microphones speakers disco lights and sound invertors the said registration was granted on 29th November 1991 and is existing till date the said registration has not been challenged by any person the plaintiff has acquiesced the use by the defendant by not opposing the registration the registration claimed by the plaintiff is of a word mark and not of a logo the plaintiff did not have any reputation in India on 15th January 1979 when the trade mark BOSS was adopted by the defendant and according to the plaintiff also the goods of the plaintiff became available in India first in the year 1993 only the plaintiff must have been aware of use of the trade mark BOSS by the defendant for long xiii) that the plaintiff’s claim of having adopted the mark BOSS in 1976 is denied BOSS is a common dictionary word and used by several entities and the bona fides of the defendant are evident from the use of the trade mark BOSS by the defendant in conjunction with Hi Tone in the manner of “Hi Tone BOSS” making it clear that the defendant is not attempting to ride on the goodwill of the plaintiff or any other person. On the said pleas the defendant no.2 in its Counter Claim against the plaintiff seeks permanent injunction restraining the plaintiff from using the trade mark BOSS in relation to electronic musical equipment and ancillary Vide order dated 27th August 2018 the name of the defendant no.1 Sandeep Jain was ordered to be deleted from the array of defendants. CS(COMM) 565 2018 & CC No.6 2018 No written statement is found to have been filed by the defendant no.3 Janata Electronics and there is no order recording service of summons of the suit on the defendant no.3 Janata Electronics and no order proceeding ex parte against the defendant no.3 the defendant no.3 Janata Electronics is now deleted from array of defendants leaving Hi Tone Electronics as the sole defendant to the suit. Though the plaintiff filed replication to the written statement of defendant no.2 and written statement to the Counter Claim of the defendant no.2 Hi Tone Electronics and defendants filed replication thereto but the need to refer thereto is not felt. On the pleadings in the suit and the counter claim the following issues were framed on 16th January 2009: “1. Whether the suit has been signed verified and instituted by a duly authorized person on behalf of plaintiff OPP Whether the plaintiff is the proprietor of the BOSS trademark OPP acquiescence OPD India OPD Whether the plaintiff is guilty of delay latches and Whether the defendant is the prior user of the trademark in terms of statutory is barred acquiescence in terms of Section 33 of the Trade Marks Act 1999 the suit Whether the defendants have passed off their products as those originating from the plaintiff OPP Whether the adoption of the BOSS trademark by the Defendants is dishonest OPP Whether the defendants’ adoption of the BOSS trademark is honest and concurrent OPD CS(COMM) 565 2018 & CC No.6 2018 Whether the plaintiff had a reputation in India at the time of adoption of the defendants adoption of the trademark OPP AND “1. Whether the counter claimant is the proprietor of the trademark BOSS in India OPCC Whether the counterclaim is liable to be rejected under the provisions of Order VII Rule 11(d) of the Code of Civil Procedure in view of Section 28(3) of t he Trade Marks Act 1999 OPD Whether the counter claimant has a reputation in relation to the BOSS trademark OPCC Whether the use of the trademark BOSS by the counter claimant will amount to passing off OPD Whether the defendant is the prior user of the trademark BOSS OPD Whether the adoption of the trademark BOSS and the logo by the counter claimant is dishonest OPD Whether the counter claimant is the owner of copyright in the stylized manner of representation of HiTone OPCC Whether the manner of adoption by the counter claimant amounts to infringement of copyright in the stylized manner of representation OPD and the parties relegated to evidence. 10. No order is found to have been made on the application of the plaintiff for interim relief. 11. On 24th November 2015 the counsels for the parties informed that recording of evidence stood concluded. The suit and the Counter Claim were accordingly directed to be listed in the category of ‘Finals’. The plaintiff applied under Order XV A of the CPC read with Commercial CS(COMM) 565 2018 & CC No.6 2018 Courts Act 2015 and the suit and the Counter Claim vide order dated 25th April 2017 were ordered to be listed for final hearing in the category of ‘After Notice Miscellaneous Matters’. 12. Vide order dated 15th January 2019 on the application of the plaintiff under Order XV A the time for making arguments in the suit was limited. 13. On 12th September 2019 inter alia the following order was passed: The counsel for the plaintiff has sought to demonstrate similarity between the products of the plaintiff and the defendants. At this stage the counsel for the defendants are interrupted and stated that the defendants are now no longer using the said mark for Guitar Pedal Effects as was being done earlier and are now using the mark only with respect to Public Address Systems and have no intention to use the mark for any other goods. On enquiry as to what all falls in Public Address System the counsel for the defendants has shown its catalogue and has handed over a copy thereof to the counsel for the plaintiff and states that the defendants will in future also use the subject mark only with respect to the goods as shown in the said catalogue and not for other goods. On enquiry it is stated that though the Guitar Pedal Effects may fall in Class 9 itself in which Public Address System fall but the musical instruments with respect whereto the plaintiff is also using the mark fall in Class 15. The counsel for the plaintiff states that he will study the catalogue handed over today in the Court to verify whether the plaintiff has any objection to use by the defendants of the subject mark with respect to the goods as shown in the said catalogue. The counsel for the defendants has also stated that the defendants are willing to make a statement that the defendants will use the prefix ‘Hi Tone’ along with the mark ‘BOSS’ in the manner as shown in the catalogue and will obtain instructions whether the CS(COMM) 565 2018 & CC No.6 2018 defendants are open to change the font of the alphabet “B” in the word ‘BOSS’. The counsel for the defendants to inform the counsel for the plaintiff in this respect within one week and if workable also share the font in which the alphabet ‘B’ is intended to be used in the word ‘BOSS’ in future. It is made clear that the aforesaid is only for the purpose of injunction and the aforesaid will not affect the claim if any of the plaintiff for damages for use by the defendants of the subject mark for other goods as the defendants were earlier using. List on 11th October 2019.” 14. However no settlement was arrived at between the parties and the counsels were heard further on 11th October 2019 and 14th October 2019. Though the order judgment was expected to be dictated in Chamber on the same day and was indeed dictated but the draft of the order judgment remained in the files for correction and went on the back burner. The counsel for the plaintiff mentioned the matter to the Court Master before the Winter Break of the year 2020 and now this judgment after making corrections is being listed for pronouncement. 15. The counsel for the plaintiff has referred to: i) Neon Laboratories Ltd. Vs. Medical Technologies Ltd.2 SCC 672 holding that it would not be unfair or fanciful to favour the view that the defendant appellant’s delayed use was to exploit the niche already created and built up by the plaintiff respondent and that the ‘first in the market’ test has always enjoyed pre eminence CS(COMM) 565 2018 & CC No.6 2018 ii) Milmet Oftho Industries Vs. Allergan Inc.12 SCC 624 holding in the context of trade mark with respect to medicines that if a mark in respect of a drug is associated with the plaintiff 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 and that the mere fact that the plaintiff respondent had not been using the mark in India would be irrelevant if they were the first in the world market iii) Staples Incorporation Vs. Staples Paper Converters Pvt. Ltd. 2014 SCC OnLine Del 2092 where I have held that though injunction in N.R. Dongre Vs. Whirlpool Corporation 5 SCC 714 may have been granted on the premise of trans border reputation in India but the injunction in Milmet Oftho Industries supra was de hors the same and merely on the test of who is first in the world market and granting interim injunction on the said premise alone iv) Prius Auto Industries Ltd. Vs. Toyota Jidosha Kabushiki Kaisha236 DLT 343holding that post the internet era the law of trans border reputation has expanded because the internet virtually broke the domestic walls in areas of trade and business and that on the internet through search engines one can access information put up on the website be it by the manufacturer of the goods or in e journals and e magazines. v) Suzuki Motor Vs. SuzukiLtd. 2019PTC 227holding that it is natural for the parties who have copied the trade mark of another to try and explain their conduct and derivation of words so adopted copied that if the trade mark has element of CS(COMM) 565 2018 & CC No.6 2018 prior continuous use and has been copied no amount of explanation even if it is plausible is capable of defending infringement of the trade mark and that mere concurrent user is not sufficient in law it must be honest. In that case injunction was granted in spite of use by the defendant therein since 1982 finding dishonesty in vi) William Grant & Sons Ltd. Vs. McDowell & Company Ltd. 1994DRJ 105 where finding the defendant to have taken all the features of the label of the plaintiff it was held to be deliberate and it was further held that what is deliberate copying cannot but be 16. The counsel for the plaintiff has contended that the DW 1 Arun Jain examined by the plaintiff has not been able to prove that the font and style of the mark BOSS used by the defendant was designed by him. It is contended that the plaintiff having proved its prior use of the mark there is no possibility of the plaintiff having copied from the defendant and that the explanation put forth by the defendant of the defendant’s marks being of the same font and style as the plaintiff’s is improbable. It is further argued that the defendant being in the same trade since 1950 is bound to have had knowledge of mark of the plaintiff. Attention is invited to registrations in favour of the plaintiff of the mark BOSS and logo in respect of electronic musical instruments and parts and fittings therefor granted on 9th April 1976 in Australia. It is further contended that the mark used by the defendant is an exact copy of the logo of the plaintiff. It is also stated that CS(COMM) 565 2018 & CC No.6 2018 the dimensions of the mark of the defendant are identical to that of the 17. Per contra the counsel for the defendant has argued that in an action for passing off the plaintiff is required to prove goodwill and reputation in the relevant territory. It is contended that it is the pleaded case of the plaintiff that the plaintiff started business in India for the first time in the year 1993 and thus the question of the mark of the plaintiff having goodwill and reputation in India prior thereto does not arise and the defendant has been able to prove use of the mark in India since the year 1979. Reliance is placed on Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries Limited2 SCC 1 and Vishnudas Trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd. Hyderabad4 SCC 201. It was clarified that the injunction claimed by the defendant in the counter claim is only with respect to use of the mark BOSS in respect of the same goods as manufactured and sold by the defendant. 18. Attention is also drawn by the counsel for the defendant counter claimant to cross examination by the defendant of PW 1 Mr. Paul Youngblood President of BOSS US whose 100% subsidiary the plaintiff claims to be to the effect that the area of business of the plaintiff is electronic musical instruments and computer peripherals and that the plaintiff does not manufacture public address mega phones or cassette players with public address amplifiers. It is argued that the plaintiff learnt of the defendant when the examination report pursuant to an application for registration by the plaintiff disclosed the defendant and inspite of which the plaintiff did not respond thereto. Attention is also invited to the affidavit by CS(COMM) 565 2018 & CC No.6 2018 way of examination in chief of PW 3 Yasuji Shirai an employee of the plaintiff to the effect that in 2004 though the examination report disclosed the defendant but in the absence of any information of use by the defendant of the mark on any specific product mentioned in their trade mark application under the BOSS mark the plaintiff believed that the conflict was adequately addressed by the plaintiff by pursuing their trade mark application for the BOSS mark. It is thus stated that there is a delay from 1986 till 2007 when the suit was filed and that the plaintiff is not entitled to any reliefs on the cause of action for passing off on the said ground alone. Attention is also invited to the communication of the year 2004 Ex.PW 3 1 of the plaintiff to its agent G.L. Sanghi in India asking the agent to enquire about the popularity of the products of the defendant under the subject mark BOSS. It is stated that thus on 2nd September 2004 the plaintiff knew of the website of the defendant but did not sue because the plaintiff then did not have registration. 19. The counsel for the defendant has contended that the products of the defendants are different from that of plaintiff’s and no ground for injuncting the defendant which is having large volumes of sales is made out. It was also informed that the defendant is primarily selling to Africa and to Middle East. Attention was invited to Section 12 of the Trademarks Act 1999 with respect to honest concurrent user and it is contended that if it is possible for both trademarks to exist no injunction will be granted. 20. The counsel for the plaintiff in rejoinder arguedthat the defendant in its written statement has admitted possibility of confusion that the defendant has an alternative mark attention is invited to Ex.DW 2 B where CS(COMM) 565 2018 & CC No.6 2018 the defendant is using the mark it is contended thus that the defendant will thus not suffer any prejudice even if injuncted the explanation given by DW 4 Kedar Nath who designed the logo of BOSS sitting on a chair is unbelievable and in Prius Auto Industries Ltd. Supra the explanation of the defendant therein was believed by the High Court and Supreme Court did not go into the question and injunction was denied because the defendant had not copied the logo or the model numbers. 21. The counsel for the defendant added that in a claim on the ground of passing of it is essential to establish reputation and goodwill and it is contended that it was for the plaintiff to establish possibility of confusion and which the plaintiff has failed to do and the that counter claim of the defendant cannot be the basis of confusion especially when PW 1 has admitted that the plaintiff is not manufacturing the same products as the defendant. It is contended that in 1979 when the defendant adopted the mark there was no internet and access could only be through magazines and the plaintiff has not proved any magazines containing the advertisements of the plaintiff having circulation in India. It is further argued that use by the defendant of the mark with the words "Hi Tone" distinguishes the mark of the defendant from that of the plaintiff and had the defendant been dishonest the defendant would not have used the mark "BOSS" along with Hi Tone". With respect to the mark "Hi Tone BOSS" attention is drawn to IA No.17065 2018 filed by the defendant where the defendant has pleaded that the partnership firm which comprised of Arun Jain and Sushila Jain as CS(COMM) 565 2018 & CC No.6 2018 its partners had been reconstituted on 1st April 2018 with Sushila Jain retiring and Sunny Jain replacing Sushila Jain as partner in the defendant. It is stated that it is the outgoing partner Sushila Jain who is using the mark Hi Tune BASS". It is further argued that there is no presumption of dishonesty. The delay on the part of the plaintiff from 1979 till 2007 in instituting the suit is reiterated. 22. The counsel for the plaintiff during the hearing handed over the opinion of Ahuja Radios with respect to the catalogue handed over to the counsel for the plaintiff in the Court on 12th September 2019 and as recorded in the order dated 12th September 2019 in this suit reproduced above to the effect that the goods being marketed by the defendant under the subject mark are the same as those marketed by the plaintiff under the mark. It is reminded that the plaintiff besides injunction is also entitled to damages. It was also informed during the hearing that rectification applications filed by both plaintiff and the defendant are pending consideration. 24. As would be obvious from the above the plaintiff has pegged its case merely on the principle of being the first adopter of the mark in the world even if not in India and being entitled to restrain the defendant even without proving any goodwill or reputation in India at the time when the defendant adopted the mark. The other leg of the argument of the plaintiff is that since the manner and style adopted by the defendant in respect of the mark is identical to that of the plaintiff copying by the defendant is writ CS(COMM) 565 2018 & CC No.6 2018 25. As would also be obvious from the above the defendant contests by taking the defense of honest and concurrent user difference in goods and 26. As far as the plea noticed above of the defendant of concurrent user and there being no possibility of confusion and of the mark BOSS being generic and a dictionary word are concerned the same are belied from the defendant making a counter claim against the plaintiff and also seeking rectification before the authorities concerned of the registration in favour of the plaintiff. The defendant in the counter claim and in the Rectification Petition has admitted inherent confusion owing to similarity of the two marks and the defendant cannot as an after thought now argue that there is no possibility of confusion. Similarly defendant who has itself obtained registration of the same mark is not permitted to take the plea of the same being generic. Reference in this regard may be made to Ozone Spa Vs. Ozone Club MANU DE 0151 2010 and Mind Gym Ltd. Vs. Mind Gym Kids Library 2014 SCC OnLine Del 1240. 27. The first question to be adjudicated is the test to be applied to determine passing off i.e. whether the appropriate test is that of first in the market wheresoever in the world as contended by the counsel for the plaintiff relying primarily on Neon Laboratories Ltd. supra and Milmet Oftho Industries supra or of first in the market in India and or even if not first in the market in India having goodwill and reputation in India as contended by the defendant counter claimant relying on Toyota Jidosha Kabushiki Kaisha supra. CS(COMM) 565 2018 & CC No.6 2018 28. All the three judgments are of Benches of two Hon’ble Judges of the Supreme Court. Having examined all the three judgments minutely in my view in the facts of the present case the law as laid down in Toyota Jidosha Kabushiki Kaisha supra would apply and not the law laid down in Neon Laboratories Ltd. supra and Milmet Oftho Industries supra. Though Milmet Oftho Industries supra unequivocally lays down that the mere fact that the mark had not been used in India would be irrelevant if the mark was first used in the world market but holds so in the context of drugs and medicinal products and after holdingthat nowadays the field of medicine is of an international character that doctors particularly eminent doctors medical practitioners and persons or companies connected with medical field keep abreast of latest developments in medicine and preparations worldwide that medical literature is freely available in this country that doctors medical practitioners and persons connected with the medical field regularly attend medical conferences symposiums lectures etc and that nowadays goods are widely advertised in newspapers periodicals magazines and other media which is available in the country leading to a product acquiring a worldwide reputation and all of which increase the possibility of likelihood of deception or confusion and the possibility that with the passage of time some conflict may occur between the use of the mark by the Indian company and the use of the mark by the overseas company and the Court must ensure that public interest is in no way imperiled. The Supreme Court after holding so also cautioned that multinational corporations which have no intention of coming to India or introducing their product in India may not attempt to throttle Indian companies by not permitting it to sell a product in India if the Indian CS(COMM) 565 2018 & CC No.6 2018 company has genuinely adopted the mark and developed the product and is first in the market. I am afraid the said reasoning cannot be extrapolated to apply with respect to musical instruments and public address system and their parts. Moreover Supreme Court in Milmet Oftho Industries supra was concerned with an application for interim injunction. The stage at which the Supreme Court was approached in Neon Laboratories Ltd. supra was also at the stage of application for interim relief. Though the said judgment also holds that the “‘first in the market’ test has always enjoyed pre eminence” but again has observed so in the context of manufacture and marketing of pharmaceutical products and medicinal preparations and after finding that though the defendant appellant therein had applied for registration on 19th October 1992 and was granted registration on 14th September 2001 but commenced use of the mark only from 16th October 2004 onwards and that the mark had remained dormant for 12 years and that by the time the defendant appellant therein commenced use of the mark the plaintiff respondent therein was already in the market and was thus first in the market with the subject trademark. Again this distinguishing fact is enough for what is laid down in the said judgment not to be blindly followed. DW 1 Arun Jain partner of the defendant in his affidavit by way of examination in chief unequivocally deposed use of the mark since 1979. Though he was cross examined at length but a dissection thereof does not show the plaintiff to have challenged the use of the mark by the defendant since 1979 as deposed by DW 1 Arun Jain in examination in chief. The plaintiff in its written arguments has contended that there is no documentary evidence on record of use of the mark by the defendant in 1979. Plaintiff in its written arguments has further contended that evidence CS(COMM) 565 2018 & CC No.6 2018 of first use of the mark by the defendant is of the year 1996. However in the face of no challenge in cross examination to the deposition of DW 1 Arun Jain of use since 1979 the plaintiff is found to have admitted the same. The emphasis of the plaintiff even otherwise has been on establishing that some international registrations of the mark in favour of the plaintiff are of prior to 1979 when the defendant claims first use of the mark in India. I may notice that in Neon Laboratories Ltd. supra relied upon by the counsel for the plaintiff herein the plaintiff Neon Laboratories Ltd. was the first user of the mark in the Indian market despite earlier registration in favour of the defendant therein who was ultimately injuncted from using the mark subject matter of that case. Here the defendant counter claimant is the first user of the mark in the Indian market. 29. Supreme Court in Toyota Jidosha Kabushiki Kaisha supra was concerned with a final decree in a suit for permanent injunction restraining passing off. The plaintiff therein claimed to be the first worldwide user of the mark ‘PRIUS’. However the defendants therein were the first user of the mark in India. The Single Judge of this Court relying on Milmet Oftho Industries supra granted a decree for injunction in favour of the plaintiff therein restraining the defendants from use of the mark ‘PRIUS’. In appeal the Division Bench of this Court reversed the decree holding that the first use by the plaintiff outside India of the mark though widely reported and advertised did not have much reportage in India that the Territoriality Doctrineholds the field that prior use of the trade mark in one jurisdiction CS(COMM) 565 2018 & CC No.6 2018 would not ipso facto entitle its owner or user to claim exclusive rights to the said mark in another dominion that it is necessary for the plaintiff to establish that its reputation had spilled over to Indian market prior to commencement of the use of the mark by defendant in India that internet penetration in India in 1997 was lean and it could not be said that prior to April 2001 the plaintiff had established its goodwill and reputation in the Indian market which the defendants had taken advantage of and that the test of possibility likelihood of confusion would be valid at the stage of quia timet action and not at the stage of final adjudication of the suit particularly when the defendants had used the impugned mark for a long period—the test would be one of actual confusion and no evidence with respect whereto was led by the plaintiff in that case. The Supreme Court while affirming the order of the Division Bench of this Court further held that to prove and establish an action of passing off three ingredients are required to be proved by the plaintiff i.e. his goodwill misrepresentation by the defendant and damage the test of whether a foreign claimant may succeed in a passing off action is whether his business has a goodwill in a particular jurisdiction which criterion is broader than the “obsolete test" of whether a claimant has a business place of business in that jurisdiction if there are customers for the plaintiff s products in that jurisdiction then the plaintiff stands in the same position as a domestic trader the overwhelming judicial and academic opinion all over the globe therefore seems to be in favour of the territoriality principle which should apply to this country also to give effect to the territoriality principle the Courts must necessarily have to determine if there has been a spillover of the reputation and goodwill of the mark used by the claimant who has brought CS(COMM) 565 2018 & CC No.6 2018 the passing off action and if goodwill or reputation in the particular jurisdiction i.e. in India is not established by the plaintiff no other issue really would need any further examination to determine the extent of the plaintiff’s right in the action of passing off. In my view in the light of the aforesaid judgment in an action for passing off as the present suit is the factum of the plaintiff being first in the world is irrelevant without the plaintiff establishing goodwill and reputation in India and which the plaintiff has failed to prove. Though the plaintiff has claimed having an exclusive distributor in India since 1993 but the same also remained to be proved. Thus as far as India is concerned defendants are the first user and that being the position the action for passing off has to I may mention another interesting facet of the present case. Though the registrations of the plaintiff outside India are of the registration in favour of the plaintiff in India is not the same and is of the word mark ‘BOSS’ with the alphabet ‘B’ depicted only in commonly used font and not in the stylized logo found in in the registrations outside India. Else the use by the plaintiff of the mark is as and by the defendants is as It would thus be seen that while the registration in favour of the plaintiff is of the word mark ‘BOSS’ with the alphabet ‘B’ therein being not in the style as in the logo registrations of plaintiff abroad the registration in favour of the CS(COMM) 565 2018 & CC No.6 2018 defendant is of a device with the word ‘BOSS’ with alphabet ‘B’ in the same style as used by the plaintiff in its international registrations as under: In the light of the aforesaid discussion I now proceed to return issue wise findings. Issues in the suit: 1. Whether the suit has been signed verified and instituted by a duly authorized person on behalf of plaintiff OPP 2. Whether the plaintiff is the proprietor of the BOSS trademark Issue in the Counter Claim: 1. Whether the counter claimant is the proprietor of the trademark BOSS in India OPCC 33. No arguments were addressed by the counsels on these issues though of course in the written arguments the said issues have been referred to. On perusal of the evidence these issues are found to have been proved. It is thus held that the suit has been signed verified and instituted by a duly authorised person on behalf of the plaintiff that the plaintiff is the proprietor of word mark ‘BOSS’ and that the defendants counter claimants are the proprietor of device mark ‘Hi Tone BOSS’. Issues in the suit: 4. Whether the defendant is the prior user of the trademark in India OPD CS(COMM) 565 2018 & CC No.6 2018 6. Whether the defendants have passed off their products as those originating from the plaintiff OPP 9. Whether the plaintiff had a reputation in India at the time of adoption of the defendants adoption of the trademark OPP Issues in the Counter Claim: 3. Whether the counter claimant has a reputation in relation to the BOSS trademark OPCC 4. Whether the use of the trademark BOSS by the counter claimant will amount to passing off OPD 5. Whether the defendant is the prior user of the trademark BOSS 8. Whether the manner of adoption by the counter claimant amounts to infringement of copyright in the stylized manner of representation OPD I have already hereinabove held that the plaintiff has failed to prove that marks had reputation and goodwill in India prior to commencement of use of the mark in India by the defendants and the plaintiff is thus not entitled to any relief in an action for passing off. Resultantly it is heldthat the defendants are the prior user of the trade mark in India that the defendants have not passed off their products as those originating from the plaintiff that the plaintiff did not have a reputation in India at the time of adoption of the mark by the defendant that the defendants by use had a reputation in relation to the ‘BOSS’ trade mark that the use by the defendants will not amount to passing off and that the defendants are the prior user in India of the trade mark. Issues in the suit: 7. Whether the adoption of the BOSS trademark by the Defendants is dishonest OPP CS(COMM) 565 2018 & CC No.6 2018 Issues in the Counter Claim: 6. Whether the adoption of the trademark BOSS and the logo by the counter claimant is dishonest OPD 7. Whether the counter claimant is the owner of copyright in the stylized manner of representation of HiTone OPCC 8. Whether the manner of adoption by the counter claimant amounts to infringement of copyright in the stylized manner of representation OPD 35. Adoption by the defendant of the mark ‘BOSS’ with alphabet ‘B’ thereof in the same style as in the first use of the mark by the plaintiff though not in India but outside India appears to be more than a coincidence. It is highly unlikely that the defendant carrying on business in allied even if not same goods would conceive the same mark as the plaintiff’s would style the alphabet ‘B’ thereof identically to that in the mark of the plaintiff launched a few years earlier though not in India but outside India. The defendant on this aspect has examined the son of the artist who is claimed to have designed the device mark of the defendant and who deposed that his father who has since died had designed the mark for the defendant but the same is not sufficient to dispel the doubt in this regard. Though there is no definite evidence in this context but the smell on delving deep into the evidence is of the probability of the defendant being aware while adopting its device mark being aware of the mark conceived by the plaintiff outside India in relation to allied if not similar goods. The evidence of the defendant having styled the alphabet ‘B’ of its mark on the basis of the chair of a boss in an office is also unbelievable. However inspite of the aforesaid I am unable to on the existing evidence return a finding of dishonesty against the defendant. Merit is found in the contention of the CS(COMM) 565 2018 & CC No.6 2018 counsel for the defendant that the use by the defendant of the mark Hi Tone BOSS and not BOSS alone dispels any notion of dishonesty. It is significant that the plaintiff has failed to prove use or registration in India at that time and had the defendant being dishonest the defendant would have blatantly copied the mark of the plaintiff. The awareness of the defendant of the goods and marks of the plaintiff can thus only be said to have led to the idea behind the mark of the defendant. Accordingly I holdthe adoption of the mark by the defendant is not dishonest the defendants’ adoption of the mark is honest that the adoption of the mark and logo by the defendant is not dishonest and the defendant is the owner of copyright in the stylized manner of representation of Hi Tone. Issue in the suit: 3. Whether the plaintiff is guilty of delay latches and acquiescence It has come on record that the plaintiff at the time of applying and obtaining registration in India was made aware of the prior registration in favour of the defendant. The plaintiff has not proved the enquires made by it at that time on the basis of which it is claimed that the existence of the mark of the defendant and or use thereof did not affect the plaintiff. The suit has undoubtedly been filed long thereafter. Though it is the case of the plaintiff that the plaintiff instituted the suit when found the defendant was passing off its goods as those of the plaintiff but again there is no evidence of actual passing off of its goods by the defendant or of any confusion in the market or of any complaints having been made to the plaintiff by anyone CS(COMM) 565 2018 & CC No.6 2018 who may have dealt with the defendant believing that the dealing was with the plaintiff. I thus hold the plaintiff to be guilty of laches and acquiescence. Issue in the suit: 10. Relief. Issue in the Counter Claim: 37. As a result of the findings above the plaintiff is not entitled to any injunction or ancillary relief against the defendant. As far as the Counter Claim is concerned the defendant made the same only as a counter blast to the suit brought by the plaintiff and the defendant even now as recorded in the order dated 12th September 2019 reproduced above has offered to restrict the use of the mark. In any case the claim of the defendant is of the goods of the defendant being different from that of the plaintiff. In these circumstances the defendant cannot succeed on its Counter Claim. 38. However actions for infringement of trade mark and passing off also have a public interest element of protecting the customers at large from possibility of confusion and of being misled into buying goods of one assuming them to be of another. In the said light it is deemed apposite to notwithstanding the above bind the defendant to its statement as recorded in the order dated 12th September 2019 reproduced above of confining the use of the mark to the goods catalogue whereof was handed over to the counsel for the plaintiff on 12th September 2019 and to not use the mark ‘BOSS’ without using the prefix Hi Tone as is presently being done and in the manner as shown in the said catalogue and to not expand their business in CS(COMM) 565 2018 & CC No.6 2018 the goods under the said mark beyond the jurisdictions where the same is presently being carried on. 39. Accordingly the suit of the plaintiff is disposed of by passing a decree in favour of the plaintiff and against the defendant restraining the defendant from using the subject mark in contravention of its statement as recorded in the order dated 12th September 2019 and binding the defendant to the said statement and the Counter Claim of the defendant is disposed of by passing a decree of dismissal thereof. 40. The parties are left to bear their own costs. Decree sheets be drawn up. JANUARY 6 2021 RAJIV SAHAI ENDLAW J. CS(COMM) 565 2018 & CC No.6 2018 