SRINIVASAN, J. - (1.) WITH the consent of parties, all these matters are heard together. For the sake of convenience, the parties will be referred to in this judgment by their rank in O.S.A. Nos. 55 and 56 of 1995. The second appellant in O.S.A. Nos. 59 and 60 of 1995, who is also the second respondent in O.A. Nos. 179 and 180 of 1995 is not a party to O.S.A. Nos. 55 and 56 of 1995, but he will be referred to as the second appellant.
(2.) THE first appellant has instituted C.S. No. 1464 of 1994 against the respondents praying for a perpetual injunction restraining them from using in relation to pain Balm or any other medicinal preparations, the trade mark TIGER BALM , TIGER in English and Chinese characters, the device of a leaping tiger and the cartons, labels, containers and sachets being Annexures E, F, G and H respectively and/or any other Trade Marks, device or carton, label, container and sachets which are an imitation or deceptively similar in any manner whatsoever to that of the plaintiff's trade marks TIGER BALM, TIGER in English and Chinese characters, their cartons, labels, containers and sachets being Annexures A, B, C and D respectively, so as to pass off, or enable others to pass off their goods as and for that of the plaintiffs. THE second prayer in the suit is to testrain the first respondent from using the words TIGER BALM as part of its corporate name or trading style or any other trading style containing the words TIGER BALM or others words similar thereto so as to pass off and enable others to pass off the first respondent's goods and/or business as and for the first appellant's goods and/or business. THE third prayer is for directing the respondents to pay a sum of Rs.5, 00, 000/- as damages for their wrongful activities. THE fourth prayer is for a preliminary decree directing the respondents to render an account of the profits made by them through sale of goods under the trade marks TIGER BALM and a final decree for the amount of profits found to have been made by them after the rendition of accounts. THE fifth prayer is to direct the respondents to surrender to the first appellant all goods, cartons, labels etc. bearing the trade marks TIGER BALM, TIGER in English and Chinese Characters, device of leaping tiger or any mark similar thereto and which are deceptively similar to the first appellant's cartons, labels, containers and sachets. THE 6th prayer is for passing interim and ad interim orders in terms of prayers 1 and 2. THE first appellant filed O.A. No.999 of 1994 for interim injunction pending disposed of the suit in terms of the first prayer in the plaint. O.A. No. 1000 of 1994 was filed for an interim injunction pending the suit in terms of the second prayer in the plaint. THE case set out by the first appellant in the plaint as well as the affidavit filed in support of the applications is as follows:- THE first appellant carries on an internationally well-established business as manufacturers and merchants of herbal products including inter alia, pain balm, a medicinal ointment. It is the proprietor of various trade marks, the essential features of each pf which are, inter alia, the device of a leaping tiger, the words"TIGER BALM" and TIGER in English and Chinese characters. THE history of the adoption of the said marks by the predecessor of the first appellant is briefly stated as under:- "One Aw Chu Kin, a Chinese Herbalist in Rangoon, Burma, prepared a medical ointment in the year 1890. In or about 1900, his two sons by name Aw Boon Haw and Aw Boon Par decided to manufacture and market the medicinal ointment under the name Eng Aun Tong. In respect of the said balm, they adopted a trade mark consisting of the device of a tiger. THE word "TIGER" is taken from the name of the elder brother Aw Boon Haw. THE Chinese word Haw means the animal tiger. THE Chinese word Par in the name of the Younger brother means the animal leopard. THE trading name Eng Aun Tong was coined to denote the quality of the product. THE trade mark TIGER and the device of a leaping tiger were being used in respect of the balm since 1900. It acquired tremendous reputation not only in Rangoon but also in other countries to which it was exported. In or about 1932, a Limited Company was incorporated in Singapore, know as Haw Par Brothers (Pvt.) Ltd. It took over the business of the two brothers referred to earlier as well as the assets including the trade marks. The company continued to carry on business and export balm to various countries including India till the Japanese occupation of Burma and Singapore during the II world war. The company devised various trade markets to be used in various countries, the essential features of each of which was the device of a leaping Tiger, the word 'Tiger Balm' written in English and also in Chinese character. The trade marks were registered in different countries all over the world. In the year 1969, the first appellant took over the business of the said company. It become the subsequent proprietor of various trade marks which were used by the company earlier. The business was flourishing all over the world. In 1976 the approximate value of the world-wide sales was 5.5 million US $. In went upto 16 Million U.S.$. in 1992. In the interregnum, it was even higher. In 1988 it was 23.5 Million U.S.$ and in 1990 it was 22.6 Million U.S.$. The trade marks of the first appellant were known all over the world including India. The advertisement of the products of the first appellant sold under the said trade marks have appeared in various newspapers and magazines. Travellers from India visiting countries like Hong Kong, Singapore, Malaysia, Gulf countries, etc. purchase the first appellant's balm under the said trade marks and bring them to India. People in India have associated the said trade marks and particularly the words TIGER BALM and the device of the tiger with the products manufactured by the first appellant. The first appellant's Tiger Balm is advertised in several international newspapers, periodicals and magazines having a large circulation in India. It also advertised in STAR TV telecast in India.
(3.) DURING the second World War, the export to India was stopped on account of Japanese occupation of Burma. After Indian independence, on account of import restrictions imposed by the Government of India, the balm could not be exported to India. Notwithstanding the same, the product of the first appellant was being continuously used in India, as the goods were being carried by the tourists and available through non official channels also. A Market Survey carried out on behalf of the appellants show that the people in India associated the trade marks and particularly the words 'Tiger BALM' and the device of the Tiger with the products manufactured by them.;