RANGOON CHEMICAL WORKS PVT LTD Vs. ROYAL MEDICALS

JUDGEMENT

(1.) This M.F.A. is filed under Order 43, Rule 1(r) of CPC against the order dated 29.3.96 passed in O.S. 5426/95 on the file of the XVI Addl. City Civil Judge, Bangalore, dismissing I.A.III filed u/o. 39, Rule 4 of CPC for vacating T.I. and allowing I.A.I filed u/o. 39 Rules 1 & 2 for T.I. This appeal having been reserved for judgment, the Court delivered the following: The second defendant is aggrieved by the order passed by the Additional City Civil Judge, Bangalore, rejecting their application for vacating the ex-parte order of temporary injunction and allowing the plaintiff's application I.A.I and granting an injunction re-straining them from using in relation to any balm or any other medicinal product manufactured by them, the impugned trade mark 'Flying Tiger Balm,' the device of Flying Tiger in English and Chinese characters, the device of leaping tiger with wings, wrappers containing 64 circles each enclosing the device of leaping tiger and the hexoganal shape of bottle or container which are deceptively similar to the plaintiff's trade mark Tiger Balm so as to pass off the second defendant's product as and for the product of the plaintiff's pending disposal of the suit.

(2.) For purposes of convenience the second defendant, who is the contesting defendant, will be referred to as the defendant and the respondents 1 to 3 will be referred to as the plaintiffs. The plaintiff have filed the suit for perpetual injunction restraining the defendant from using in relation to any Balm or any other medicinal product the impugned trade mark 'Flying Tiger Balm' or Flying Tiger or Flying Tiger in English and Chinese character, the device of leaping tiger with wings as well as the impugned labels, wrappers, cartons and hexagonal shaped bottle/container or any other trade marks, labels or cartons or device which are deceptively similar in any manner whatsoever to the plaintiff's trade mark Tiger Balm, 'Tiger' in English and Chinese characters, the device of leaping tiger and labels, wrappers, cartons and hexagonal shaped bottle/container produced as Annx-B and C, so as to pass off or enable others to pass off the defendant's goods as and for the goods of the plaintiff's. The plaintiffs have also sought a sum of Rs. 1 lakh tentatively as damages. The plaintiffs also sought for an order of temporary injunction. The plaintiffs case in brief is as hereunder: One Aw Chu Kin a Chinese herbalist prepared a medicinal ointment in 1890 in Rangoon and in or about 1900 his two sons by names Aw Boon Haw and Aw Boon Par decided to manufacture and market the medicinal ointment and they adopted a trade mark consisting of the device of a leaping tiger and the word "Tiger". The device of a leaping tiger is derived from the word "Par" forming part of the younger brother's name which means the animal 'Leopard'. The word "Tiger" was derived from the word "Haw" forming part of the elder brother's name which means the animal Tiger. The said trade mark and labels acquired tremendous reputation and goodwill in Rangoon as well as in India. In or about 1932 the two brothers incorporated a private limited company known as Haw Par Brothers Private Limited in Singapore and that company took over the business of those two brothers and continued that business in Singapore and various other countries including India till the world war-II. The plaintiffs goods continued to be available in India by virtue of being brought and also sold by persons of India origin travelling abroad and returning to India. The plaintiffs goods bearing the trade mark Tiger and words 'Tiger Balm' and the device of leaping tiger had tremendous reputation in India. The plaintiffs trade marks were registered in various countries and their applications for registration are pending in other countries. In 1969 the first plaintiff took over the business of the said Haw Par Brothers Pvt.Ltd. in respect of the Balm and other products with all rights in all the trade marks of the said company. The first plaintiff thus became the proprietor of the trade mark and they gave licence to the second plaintiff to manufacture and market the said balm and other medicinal products under its supervision and control. By another agreement dated 9.8.84 the third plaintiff has been appointed as the licensee in India to manufacture and market the said medicinal products. The plaintiffs goods bearing the trade marks Tiger Balm, the word "Tiger" written in English and Chinese character and the device of leaping tiger are sold globally with the help of a wide network of subsidiaries, associates, licensees, dealers, etc. The said trade marks of the plaintiff have acquired trans-national and transborder reputation and good-will all over the world including India and they are internationally well known and reputed brands. Advertisements and articles relating to the plaintiffs products have appeared from time to time in newspapers and magazines having exposure and circulation in India. The predecessors of the first plaintiff had made an application for registration of a label mark inter alia containing the words Tiger Balm, tiger in English and Chinese characters and the device of leaping tiger in respect of medicinal ointment, but the same could not be proceeded further. The first plaintiff made applications for registration of this trade mark in India and as the second defendant filed opposition to those applications on the ground that it was the proprietor of the similar trade marks registered in India, the plaintiffs applications were not granted. The plaintiffs have now filed appeals before the High Court of Calcutta and the same are pending. The first plaintiff is also the proprietor of hexagonal shaped bottle which has been used as a container for several decades in relation to the Balm and the ointment and the same as become distinctive of the plaintiffs goods and has come to be associated with plaintiffs goods alone in the course of the trade. The defendant claims to be the registered proprietor of trade mark being the device of a leaping tiger with preminent wings and the Chinese characters bounded in a circle in respect of a medicinal balm and ointment for sale in the State of Gujarat and another mark consisting of 3 labels inter alia containing the device of a leaping tiger with wings and the words 'Flying Tiger Balm' and 'Flying Tiger' to be used collectively in relation to the medicinal balm excluding the states of Tamil Nadu, Andhra Pradesh, Kerala, Mysore (now known as Karnataka) and Union Territory of Pondichery. The second defendant also claims to be the owner of copy right under No. A-32395/81 in respect of the aforesaid 3 lables. The plaintiff has filed applications for rectification of the entries relating to the above registered trade marks and for removal of the said entries from the registration of trade marks on the ground that the said registrations were obtained by fraud and that the marks are causing confusion and deception. Those proceedings are pending. The second defendant has fraudulently and by making false claim of originality has obtained registration of copy right in respect of artistic work contained in the 3 labels. The very artistic work, colour scheme, design, layout, getup and peculiar scheme of arrangements were contained in the labels, wrappers and cartons which were originally adopted by the plaintiffs predecessors many decades earlier. All the impugned labels, wrappers and cartons contained identical or deceptive design, colour scheme, layout and getup and peculiar scheme of arrangement as that of the plaintiffs' labels, cartons and wrappers. The defendant with the full knowledge of the world-wide existence of plaintiffs trade mark has fraudulently and dishonestly obtained registration of 3 labels which are identical or deceptively similar to the plaintiffs labels. By using the impugned trade mark, labels and cartons the defendants are passing off their medicinal balm, oil and other products as those of the plaintiffs. This is bound to cause confusion and deception. The intention of the defendant is to trade upon the reputation acquired by the plaintiffs in respect of their trade mark Tiger Balm, Tiger, the device of leaping tiger and the word 'Tiger' written in Chinese characters and the distinctive labels, cartons and wrappers. In these circumstances the plaintiffs seek an injunction.

(3.) The defendant in their objections have pleaded that their company is an old established company engaged in the business of manufacturing and marketing balms and ointments, that its predecessor in interest and itself have been carrying on the said business since 1965 at Surat, that their trade mark containing the device of winged tiger and the words 'Flying Tiger Balm' has been registered and renewed that another trade mark with regard to the labels has also been registered and their products have been popularised by wide advertisements and that on account of the long and large user their product as well as their trade marks and lables with their distinctive features and get-up and design have got associated with their company. They have also pleaded that they have filed a suit against the plaintiff and other concerns for infringement and passing off in the district Court of Surat. With regard to the plaintiffs claim, the defendant has asserted that the plaintiff has no base in India and that they admitted after to get two trade marks registered in India, which were opposed by the defendant and the opposition has been allowed. The defendant has pleaded ignorance about the plaintiffs company and has contended that the averments about plaintiffs business in other countries are not relevant and have denied the allegations about the plaintiffs product being sold in India or having a reputation in India. According to the defendant the plaintiffs have no sales of their products in India and their products do not have any goodwill or reputation here and as such the suit for passing off was not at all maintainable. Another contention taken is that the plaintiff had full knowledge about the defendant's products being sold for over 30 years in Indian market and having kept quite all these years the plaintiffs cannot now seek any relief as they are estopped by reason of acquiescence, laches and delay. The defendant has contended that in view of the long user of its trade mark by the defendant the plaintiff's have no prima facie case for grant of temporary injunction.