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2000 DIGILAW 811 (MAD)

Jolen Inc v. Shoban Lal Jain and Others

2000-08-14

A.RAMAMURTHI

body2000
Judgment :- A. Ramamurthi, J. 1. Original Applications No. 553 and 554 of 2000 were filed by the applicant/plaintiff to grant interim injunction restraining the respondents and their men from manufacturing, selling, offering for sale, advertising and directly or indirectly dealing in cosmetics preparations including creme bleach in packaging which is identical to or a colourable imitation/substantial reproduction of the applicant's JOLEN creme bleach packaging including the carton and container thereof, amounting to infringement of the applicant's copyright in the artistic work JOLEN creme bleach carton, container and JOLEN written in distinctive script and also restraining them from passing off or enabling others to pass off the respondents' goods as the goods of the applicant. 2. The case in brief for disposal of all the applications is as follows: The applicant carries on an established business as manufacturer of a wide range of cosmetics, including creme bleach to pale hair. The applicant since 1955 is manufacturing and selling creme bleach under the trade mark JOLEN. The applicant's JOLEN creme bleach is sold in a bluish green carton with white lettering. The trade mark JOLEN is written in an unique and highly distinctive stylised script wherein the initial 'J' appears in small alphabet as 'J' but in the same size as the remaining letters JOLEN which appears in capital. A white line runs atop the entire length. The trade mark JOLEN in stylised script in bluish green colour appears within a white oval on the top of the carton. The trade mark JOLEN in stylised script in white lettering with the words 'CREME BLEACH and lightens excess dark hair' appear on the front and back of the cartons with bluish green background. The containers inside the carton are white plastic containers of a distinctive shape. 3. The applicant's trade mark is an invented word coined from the founders of the applicant company John and Evelyn. Their trade mark is registered in respect of the creme bleach in USA and in several countries all over the world. Their product is sold in several countries all over the world and in USA and the particulars of the sales for the period 1986 to 1999 are approximately given in US dollars. They have also advertised through medias including Television, Radio, Newspapers and Magazines and the sales promotion and advertisement figures for the period 1986 to 1998 are also given approximately. They have also advertised through medias including Television, Radio, Newspapers and Magazines and the sales promotion and advertisement figures for the period 1986 to 1998 are also given approximately. Their product sold in many Middle East/Gulf Countries and for the period 1986 to 1999 the sales turnover are given approximately. Their product is extensively advertised in international magazines which have a large circulation in India. The applicant's creme bleach bearing the trade mark JOLEN is brought into India by Indians visiting from abroad and distributed as gifts to friends and relatives. This product is freely available in several shops in India and the particulars of the shops are also furnished. By virtue of long extensive and continuous use, the applicant's trade mark enjoys great reputation and goodwill. 4. The applicant's trade mark JOLEN is extensively used in Middle East/Gulf countries. There is a large immigrant Indian population who frequently visit India and bring with them perfumes, cosmetics including creme bleach for their personal use and as gifts for friends and relatives. A survey conducted in a few cities in India reveals that the trade mark JOLEN is a well known brand name in India. India is a member of Paris Convention. Under Article 6 Bis of the Paris Convention and internationally well reputed trade mark ought to be protected in India. Section 11 of the Trade Marks Act also provides for protection of internationally well reputed trade marks. The distinctive script with the letter J written with the elongated top line which extends over the letters OLEN, the entire script having an aesthetic appeal to the eye. The applicant's carton has a bluish green colour scheme with white lettering. The applicant is the proprietor of copyright in the artistic work JOLEN in script with a distinctive bluish green carton with white letter. The artistic work was first published in 1956 in USA and since then it has been continuously published. India and USA are members of Berne Convention. Under Section 40 of the Copyright Act, works which enjoy protection in USA enjoy automatic protection in India. The applicant applied for registration of the trade mark JOLEN dated 9.1.1990 in class 3 in respect of hair bleach, skin cream and lotions, astringents, toilet waters, colognes, perfumes, eye make-up, face powder, rouge, and nail polish. Under Section 40 of the Copyright Act, works which enjoy protection in USA enjoy automatic protection in India. The applicant applied for registration of the trade mark JOLEN dated 9.1.1990 in class 3 in respect of hair bleach, skin cream and lotions, astringents, toilet waters, colognes, perfumes, eye make-up, face powder, rouge, and nail polish. The application was opposed by the respondents and after evidence, the applicant's application was dismissed by the Order dated 11.3.1999 by the Assistant Registrar of Trade Marks, New Delhi. The applicant preferred an appeal against the said order and the same is pending before the High Court of Delhi. 5. The second defendant has registered the trade mark JOLEN in class 3 in respect of tooth paste and perfumes. The applicant has filed a rectification petition and it is also pending before the Registrar of Trade Marks, New Delhi. The 2nd respondent applied for registration of trade mark JOLEN on 6.8.1997 in class 3 in respect of cosmetic being goods included in class 3. The applicant filed an opposition to the said application and it is pending. The first respondent claimed that he had assigned his rights in the trade mark to Jolen International Private Limited, a company promoted by the first respondent, by a Deed of Assignment dated 8.9.1998. Later, the first respondent claimed that the mark was re-assigned by Jolen International Private Limited. The registration was registered contrary to the provisions of Section 18 of the Act. The respondents have claimed to have a collaboration with M/s. Laboratoire Nouveau, USA. A search carried out in the Registrar of Companies in USA reveals that there is no such company. The respondents have played fraud on the trade and public. They are selling inferior quality creme bleach bearing applicant's internationally well known trade mark. The respondents' products causes irritation in the skin and some times rashes. It has caused confusion and deception amongst the trade and public. The applicant has received several complaints from customers in India who have purchased the respondents' creme bleach assuming it to be original JOLEN creme bleach manufactured by the applicant. The respondents have also copied the applicant's artistic work JOLEN carton in its entirety including the distinctive style. The respondents have also copied the colour scheme, get-up and layout of the applicant's trade mark JOLEN carton and container. The respondents have also copied the applicant's artistic work JOLEN carton in its entirety including the distinctive style. The respondents have also copied the colour scheme, get-up and layout of the applicant's trade mark JOLEN carton and container. The use of an identical trade mark would amount to infringement of applicant's copyright and to passing off and enable others to pass off the respondents' goods as that of the applicant's goods. 6. The applicant received complaints regarding JOLEN creme bleach sold by the respondents in May and June, 1999. The applicant thereafter caused purchases to be made in the City of Chennai from different shops. Considering the time involved in exchanging correspondence between New York and Chennai, there is no delay or latches in filing the suit. The applicant had made out a prima facie case. The applicant's product is sold in India including in the shops in the City of Chennai. The balance of convenience is also in favour of the applicant. The respondents have copied, made a slavish imitation on the applicant's trade mark, colour scheme and get up. The applicant would suffer irreparable loss and injury unless the respondents are restrained by an order of injunction from using the trade mark JOLEN and the imitative JOLEN bluish green container. Hence, the petitions. 7. Respondents 1 to 3 filed Application No. 2558 of 2000 to revoke the leave granted to the plaintiff and filed Applications No. 2559 and 2560 of 2000 to vacate the order of interim injunction and also to suspend the order of interim injunction granted on 19.6.2000. 8. Respondents 1 to 3 contended that the suit is liable to be dismissed for want of jurisdiction. None of the defendants resided within the jurisdiction of this Court and entire cause of action arose at Delhi. They have registered the trade mark JOLEN as a proposed mark for the tooth paste and perfumes included in class 3. The said trade mark has been duly renewed and the same is in force. They have also registered the artistic work JOLEN carton under the Copyright Act claiming first publication in India in 1987. They applied for registration of the trade mark as a 'proposed mark' and the same was published in the Trade Marks Journal and commenced sales from the year 1987, and the sales turnover for the years 1987 to 1999 are furnished. They applied for registration of the trade mark as a 'proposed mark' and the same was published in the Trade Marks Journal and commenced sales from the year 1987, and the sales turnover for the years 1987 to 1999 are furnished. On the other hand, the applicant has applied for registration of trade mark JOLEN on 9.1.1990 as a proposed mark and it was published in the Trade Mark Journal and the respondents filed necessary objections. On merits, the objection was allowed and the application for registration was refused by the order dated 11.3.1999. Against the said order, the applicant, no doubt, has preferred an appeal before the Delhi High Court and it is pending. Even on the date when they filed the objection, the applicant was fully aware of the existence of the mark of these respondents and its user, but the applicant has not taken any legal action against them and they chose to file the present suit only now with a view to drag them all the way from Delhi and to harass them and compel them to come to terms. They were not aware that the applicant is using the trade mark till August, 1995 when it was published in the Trade Mark Journal. In fact, the applicant had not furnished the sales turnover in India. They are aware of the registration made in other countries. Till today the applicant has not marketed its product JOLEN in India. Some of the shops mentioned in the plaint which are situate in Chennai and Bengalore are not selling the applicant's product. In any event, the plaintiff's sale in Chennai is not relevant and it will not confer any jurisdiction on this Court. The sample bills at Chennai are all illegally imported and the plaintiff's goods are not legally imported in this country. The bills produced by the applicant also show that the price of the applicant's JOLEN bleach for various sizes vary from Rs. 210/- to Rs. 450/- whereas the respondents' price list varies from Rs. 23/- to a maximum of Rs. 130/-. The plaintiffs are manufacturing only bleaching creme which is used for beautifying the face whereas the respondents are manufacturing not only creme for hair removal but also various products like rejenuating massage creme, all purpose creme, cold creme and other products. 9. 450/- whereas the respondents' price list varies from Rs. 23/- to a maximum of Rs. 130/-. The plaintiffs are manufacturing only bleaching creme which is used for beautifying the face whereas the respondents are manufacturing not only creme for hair removal but also various products like rejenuating massage creme, all purpose creme, cold creme and other products. 9. The allegation that Indians who visit India will bring with them the perfumes, cosmetics including creme bleach for their personal use and as gifts does not mean that the products of the applicant's are freely marketed in India. The plaintiff's carton was not published in India. The respondents had already made an application in Form TM-28 for recording M/s. Cosmo International as a Registered User. The company called M/s. Laboratorie Nouveau, USA is very much in existence. There is no scope for the respondents to copy the artistic work or the trademark of the plaintiffs since the plaintiffs have not marketed their product in India. The alleged complaints from the customers in India were got up by the plaintiff only for the purpose of this case. There is no cause of action for the present suit. The plaintiff has not produced even a single document to show that the defendants' goods are sold in Chennai. The respondents have employed around 90 workers and unless the order of injunction is vacated, they will be out of job and their family will be in the streets. In view of the order of interim injunction, the company's products has come to a stand still and the large quantity of the goods purchased will go a waste. The balance of convenience is also in favour of these respondents. No prejudice would be caused to the applicants who have no market for their product in India. Hence, the leave granted ought to be vacated and the interim injunction already granted is liable to be vacated. 10. The plaintiff filed a reply statement denying the various averments made in the counter affidavit filed by the respondents. The defendants cream bearing the trade mark JOLEN is sold in the city of Chennai on a commercial scale. They have also advertised their JOLEN creme bleach in magazines and newspapers circulate in the city of Chennai. Cause of action in respect of copyright infringement and passing off has arisen at Chennai, and as such this Court has got jurisdiction. The defendants cream bearing the trade mark JOLEN is sold in the city of Chennai on a commercial scale. They have also advertised their JOLEN creme bleach in magazines and newspapers circulate in the city of Chennai. Cause of action in respect of copyright infringement and passing off has arisen at Chennai, and as such this Court has got jurisdiction. There is no delay or latches in filing the suit. The defendants cannot claim any statutory protection in the trade mark JOLEN in respect of cream bleach. The defendants also cannot derive any right by virtue of copyright registration. The plaintiff has exclusive copyright in the artistic work and the distinctive script with a distinctive colour scheme and get up. The registration of trade mark JOLEN in the name of Shoban Lal Jain Trading as Hindustan Rimmer is obtained by fraud. The plaintiff in other respects have again reiterated the averments made by them relating to the affidavit filed in O.A. 553 and 554 of 2000 and, as such, it is unnecessary to reproduce the same. 11. Heard the learned counsel of both parties. 12. The points that arise for consideration are (1) Whether the applicant has got prima facie case and the balance of convenience is in their favour? (2) Whether the interim injunction already granted is liable to be vacated? (3) To what relief? 13. Points : The plaintiff has been manufacturing and selling creme bleach under the trade mark JOLEN since 1955. It is sold in a bluish green carton with white lettering and JOLEN is written an unique and highly distinctive stylised script and the initial 'J' appears in small alphabet as 'j'. A white line runs atop the entire letters JOLEN and the trade mark JOLEN in stylised script in bluish green colour appears within a white oval on the top of the carton. The word JOLEN is an invented one coined from the founders of the plaintiff company John and Evelyn. Their trade mark is registered in respect of creme bleach in USA and several countries all over the world including Austria, Australia, Baharain, Cyprus, Fini, France, Hong Kong, Iran, Japan, Singapore, South Africa and other countries. They are also extensively advertising in International magazines having large circulation in India such as Vogue, Demoiselle, Gulf News, Khaleej Times, Glamour, Fashion Spring, etc. They are also extensively advertising in International magazines having large circulation in India such as Vogue, Demoiselle, Gulf News, Khaleej Times, Glamour, Fashion Spring, etc. Moreover, the product of the plaintiff is brought into India by Indians visiting from abroad and distributed as gifts to their friends and relatives. It is freely available in several shops in India and by virtue of long extensive and continuous use, they enjoy great reputation and goodwill. It is extensively used in the Middle East/Gulf countries. A survey conducted in a few cities in India would reveal that it is a well known brand name in India. The plaintiff is also the proprietor of Copyright in the artistic work JOLEN and it was also first published in 1956 in USA. 14. Learned Senior Counsel for the plaintiff stated that the plaintiff applied for registration of trade mark ZOLEN dated 9.8.1990 in clause 3 in respect of hair bleach, skin cream and lotions, toilet waters, perfumes, eye make-up, etc. and it was also advertised in the Trade Mark Journal dated 16.8.1995 and the application was opposed by the respondents and after evidence, the plaintiff's application for registration was refused by the order dated 11.3.1999 by the Assistant Registrar of Trade Marks, New Delhi and they have filed an appeal against the order and now pending before the High Court of Delhi. The plaintiff also filed rectification petition and it is pending before the Registrar of Trade Marks, New Delhi. The trade mark of the plaintiff has international market and now the defendants are selling inferior quality of creme breach bearing the identical name JOLEN which had caused confusion and deception among the trade and public. The plaintiff had also received complaints from customers in India who had purchased the product of the defendants assuming to be the product of the plaintiff. Further, the defendants have also copied the plaintiff's artistic work JOLEN carton in its entirety including its distinctive style and the use of the identical trade mark by the defendants would amount to passing off and enable others to pass off the goods of the defendants as that of the plaintiff. The plaintiff company have got prima facie case and the balance of convenience is also in their favour and sought the relief of temporary injunction restraining the respondents from infringing the plaintiff's copyright as well as passing off the goods. 15. The plaintiff company have got prima facie case and the balance of convenience is also in their favour and sought the relief of temporary injunction restraining the respondents from infringing the plaintiff's copyright as well as passing off the goods. 15. Defendants 1 and 2 are the proprietors of trade mark JOLEN registered under No. 434499 in class 3 in respect of tooth paste and perfumes with effect from 25.2.1985. Defendants 1 and 2 also applied for registration of trade mark under No. 555920 dated 6.8.1997 in class 3 in respect of cosmetic goods. The defendants commenced sales of their product since 1987 and they have also given the sales figures from 1987 to 1999. Learned counsel for the defendants further contended that there is no cause of action for the plaintiff to file this suit and leave to sue already granted in liable to be revoked. The defendants are doing business at New Delhi and their products are not sold within the jurisdiction of this court. There is no material to show that the plaintiff is selling any of their goods within India. The Registrar had already given a finding that the defendants are the prior user and they are also the proprietors of the registered trade mark and as such, they have got a prima facie case. In fact, the plaintiff already filed the suit as early as 1993 in New Delhi against a third party and similarly the defendants have also filed a suit against the same third party in New Delhi in 1993 and both the suits were tried together and under the circumstance, the plaintiffs are well aware that the defendants are the registered proprietors of the trade mark JOLEN and in spite of this, they have not set the law in motion nearly for a period of 7 years and as such, they are guilty of latches and under the circumstance, they are not entitled to the discretionary relief of interim injunction. The two bills produced by the plaintiffs as if their products are sold in Madras City are created only to give a cause of action. They further stated that the power of attorney given is also not in accordance with law and taking into consideration of these facts, the interim injunction already granted in favour of the plaintiff is liable to be vacated. 16. They further stated that the power of attorney given is also not in accordance with law and taking into consideration of these facts, the interim injunction already granted in favour of the plaintiff is liable to be vacated. 16. It is admitted that the defendants filed an application for registration of trade mark JOLEN as a proposed mark for various cosmetics goods in 1985. The defendants started selling their product since 1987. Similarly the plaintiff also applied for registration of the trade mark JOLEN as a proposed mark in January, 1990. The defendants mark was advertised in the Trade Mark Journal on 16.3.1991. Later the defendants filed second application relating to cosmetics on 6.8.1991 and the registration certificate of the trade mark was issued to the defendants on 15.11.1991. Further the defendants also issued caution notices in the newspapers on 18.6.1993. The plaintiff's application was advertised in the Trade Mark Journal on 16.8.1995 and notice of opposition was filed by the defendants in December, 1995. The defendants produced documents and copies to the counsel for the plaintiff on 1.3.1997. Their second application was also advertised in the Trade Mark Journal for cosmetics on 1.8.1997 and the plaintiff filed opposition on 22.9.1997 and it was rejected by the Registrar on 11.3.1999. Now the plaintiffs would contend that the goods of the defendants are alleged to be purchased in Chennai in August, 1999 and the survey is said to have been conducted in September, 1999 and the leave to sue was obtained in April, 2000 and interim injunction was granted in June, 2000. The aforesaid facts were highlighted by the learned counsel for the defendants in order to establish that even in the year 1993, the plaintiffs are well aware about the trade mark JOLEN of the defendants and in spite of this, they have kept quiet without filing any suit against them. Learned counsel for the defendants further stated that the defendants are actually residents of New Delhi and they also carry on business only at New Delhi and earlier proceedings between the parties are also at New Delhi and this being the state of affairs, after the expiry of 7 years, the plaintiffs have chosen this forum to file a suit only to harass the defendants and in view of latches, they are not entitled to the discretionary relief. 17. 17. Learned senior counsel for the plaintiff contended that the Shoban Lal Jain Trading alone was the registered proprietor of the trade mark and the assignment was also later in point of time. Learned senior counsel also relied upon Section 2(1)(a) of the Trade and Merchandise Marks Act (hereinafter referred to as 'The Act') by which, 'Assignment' means an assignment in writing by act of the parties concerned. Section 2(1)(s) relates to 'registered user'. It means a person who is for the time being registered as such under Section 49. As per Section 8, a trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods. According to Section 28(1), subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trademark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. 18. Learned senior counsel for the plaintiff stated that the present suit has been filed not on the ground of registration of the trade mark, but based upon the infringement of the copyright and also on the ground of passing off action. It is admitted that the defendants are the registered proprietors of the trade mark JOLEN in India whereas the plaintiffs have obtained the registration of the same trade mark in other parts of the world. Learned senior counsel further stated that the plaintiffs are in a position to explain as to how the trade mark JOLEN is invented, but such an explanation could not be put forwarded by the defendants. He relied on Plasticians (India) v. Rakesh Cottage Industries, 1997 PTC 200 : 1996 PTR 220, wherein it was observed as follows: "An action for infringement of trade mark is a statutory remedy conferred on the registered proprietor of a registered trade mark for the enforcement of his right to use the trade mark in relation to the goods for which the mark has been registered. An action for passing off, however, is an action for deceit for colourable imitation of a mark adopted by a person in relation to his goods which has acquired distinctive reputation in the market as referring to the goods belonging to or produced by that person only. In such a case evidence of actual deceit is not necessary. In order to succeed in an action for passing off, the plaintiff has to establish user of his mark prior in point of time than impugned user by the defendant" . 19. Learned senior counsel also relied on the decision reported in N.R. Dongre v. Whirlpool Corporation, that the knowledge of awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been marketed. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinema, etc. even though there may not be availability of the product in those countries because of import restrictions or other factors. In today's world it cannot be said a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit and disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to one of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market. Satellite Television is a major contributor of information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to one of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market. This decision is relied on by the plaintiffs in order to meet the contentions raised by the defendants that the product of the plaintiffs are not marketed in India and, as such, they cannot have any cause of action. Learned senior counsel further stated that publications have been issued by the defendants in number of Indian Journals relating to their product and that itself is sufficient to give a cause of action to the plaintiffs to set the law in motion. 20. Learned senior counsel for the plaintiff also placed reliance on the decision reported in N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583, for the proposition that passing off action is maintainable in law even against a registered owner of trade mark and, therefore, the fact that the defendants have obtained a registration is by itself not sufficient to render the suit not maintainable. There is no dispute about this proposition. 21. Reliance is also placed upon another decision reported in Haw Par Bros. International Ltd v. Tiger Balm Company (P) Ltd., 1996 PTC (16) (DB) 311, wherein it was observed that the appellants' goods are available in this country through official and non-official sources and that the first appellant has acquired reputation all over the world including in India. Hence, this question of law has to be decided on the aforesaid finding which will hold good for the present. This decision is relied upon by the learned senior counsel for the plaintiff in order to show that people coming from foreign countries will bring the product of the plaintiff and they used to present the same as gift to other persons. It is not necessary that the plaintiff's themselves should actually market their product in India, but in the decision cited, it is evidently clear that the goods were available in the country through official and non-official sources. But in the present case, there is no material to show that the goods of the plaintiff have been marketed through official sources. It is not necessary that the plaintiff's themselves should actually market their product in India, but in the decision cited, it is evidently clear that the goods were available in the country through official and non-official sources. But in the present case, there is no material to show that the goods of the plaintiff have been marketed through official sources. Simply because the goods of the plaintiff were brought to India through smuggling or other non-official sources, that cannot be taken note of to give a cause of action to the plaintiff. 22. Reliance is also placed upon another decision in Caterpillar Inc. v. Jorange, 1998 PTC (18) 31(DB) , wherein a contention was raised that there is no evidence to show that the garment products of the plaintiff were available in India and for which it was replied that number of Indians who visit countries like United Kingdom, and United States of America do get the garments of the plaintiff and the garments of the plaintiff spill over to this country. Further the plaintiff has also applied for registration of the trade mark in respect of their garments in India. This decision cannot be made applicable to the case on hand for the simple reason that even assuming that the products of the plaintiff are brought to India through some sources, the application filed for registration of the trade mark by the plaintiff was dismissed and on the other hand the trade mark of the defendants has been registered. 23. Reliance is also placed upon another decision in Alfred Dunhill Limited v. Kartar Singh Makkar, 1999 PTC (19) 294, wherein it was observed that a trader needs protection of his right of prior user of a trade mark/trade name as the benefit of the name, fame, reputation and image and goodwill earned by him cannot be taken advantage by another trade by passing off his goods as those of the prior user of the trade mark or trade name. It is further stated that assuming for the sake of arguments that textile articles manufactured by plaintiff are not available for sale in India, yet plaintiff company is entitled to protect its reputation, image, name, fame and goodwill, etc. and marks does not depend upon its availability in a particular country. It is further stated that assuming for the sake of arguments that textile articles manufactured by plaintiff are not available for sale in India, yet plaintiff company is entitled to protect its reputation, image, name, fame and goodwill, etc. and marks does not depend upon its availability in a particular country. This decision is also not applicable to the case on hand because in the decision cited, it was admitted that the plaintiff is the exclusive owner of number of registrations of the trade mark Dunhill in India; but in our case, it is not so. 24. Learned counsel for the defendants relied on a decision reported in The Fairdeal Corporation (Pvt) Ltd. v. Vijay Pharmaceuticals, 1985 PTC 80, wherein it was observed that the plaintiff is aware of the use of alleged offending trade mark by the defendants as far back in February, 1981. The plaintiff cannot get temporary injunction just as a matter of course to the detriment of the defendant, particularly when balance of convenience appears in favour of the defendant and the plaintiff is guilty of making a false declaration. In the circumstances, order of interim injunction against the defendant is vacated... This decision is relied on by the defendants in order to prove that there is latches and acquiescence on the part of the plaintiff. As adverted to, there is material to show that even in 1993, the plaintiffs are well aware that the defendants are trading in the trade mark JOLEN in India and further more, the plaintiff already set the law in motion against another company before the Delhi High Court in 1993 itself. Under the circumstance, no reasonable explanation has been given for the delay of 7 years in filing the case before the Court. 25. It is quite probable since the objection raised by the plaintiff has been rejected and the trade mark of the defendants has been registered, the plaintiff after waiting for a considerable length of time, have chosen this place and on the basis of the advertisement in the Indian magazines and on the basis of two bills secured, they have filed the suit as well as applications. As adverted to, according to the plaintiff even in August, 1999 they came to know about the sale of the product of the defendants at Madras; but in spite of this, the leave to sue was obtained in April, 2000. As adverted to, according to the plaintiff even in August, 1999 they came to know about the sale of the product of the defendants at Madras; but in spite of this, the leave to sue was obtained in April, 2000. After securing the leave only, the two bills have been secured and there is also no record to show that the shopkeepers are the dealers of the defendants' product. In fact, learned counsel for the defendants stated that on verification, one of the shops referred to in the plaint is dealing in some other goods and, as such, raised a doubt whether the particulars given in the plaint represent the true state of affairs. 26. Learned counsel for the defendants further relied on Suraj Industries v. Manek Industries, 1991 (1) ALR 283, wherein it was held that a suit for passing off should be filed in a court in whose jurisdiction the parties reside and work for gain. The defendants also relied on Amrutanjan Ltd. v. Mehta Unani Pharmacy Company (1977 IPLR 20), wherein it was observed that if the defendants had sold the goods to some one and he in turn sold it to some other dealer in the City of Madras, and he in turn sold it to some person, there will be a sale within the original territorial jurisdiction of this Court and this Court will have jurisdiction. But, presently, there is no material to show that the defendants have sold their product to any person within the jurisdiction of this Court, who in turn have sold this product to the shops mentioned in the plaint and in the circumstances, prima facie it is evident that the jurisdiction has been invented only for the purpose of this case. 27. Learned counsel for the defendants relied on Prina Chemical Works v. Sukhdayal, (1974) I Delhi ILR 545, relating to the Equity-Maxim "He who comes into equity must come with clean hands". It is well established that this Maxim applies strongly to parties seeking relief against the infringement of trade marks or in passing off action and against unfair competition. One seeking relief against the fraud of others must be free from fraud. It is well established that this Maxim applies strongly to parties seeking relief against the infringement of trade marks or in passing off action and against unfair competition. One seeking relief against the fraud of others must be free from fraud. It is essential that the plaintiff should not in his trade mark or in his advertisements and business himself be guilty of any false or misleading misrepresentation: that if the plaintiff makes any material false statement in connection with the property, which he seeks to protect, he loses his right to the assistance of a Court of Equity. This principle can be made applicable to the case on hand. 28. Learned counsel for the defendants further brought to the notice of this Court relating to the sales turnover given by the plaintiff in foreign countries. The sales turnover are given approximately in U.S. dollars and according to the learned counsel for the defendants, they do not represent the correct figure and it has been boosted. In support of his contention, learned counsel relied upon the affidavit filed on behalf of the plaintiff in support of the application for rectification before the authorities, and a comparison of the same would clearly expose that actual sales turnover are furnished in the affidavit filed before the authorities but the sales turnover given in the plaint are only approximately. This has not been properly explained by the learned senior counsel for the plaintiff as to why such discrepancy should be there. This is one circumstance to show that the plaintiff company have not come to court with clean hands. 29. Learned senior counsel for the plaintiff contended that the plaintiff is the proprietor of the trade mark JOLEN since 1955 used in USA and the same trade mark used in several countries all over the world and it is advertised in several international magazines having wide circulation in India also. The plaintiff's creme bleach is extensively sold in Gulf/Middle East Countries and they enjoy international reputation. It has spilled over into India. It is necessary to state that the sales turnover of the plaintiff's product in India has been significantly omitted. The sales turnover by the plaintiff relates to Western countries as well as the Gulf countries. The plaintiff's creme bleach is extensively sold in Gulf/Middle East Countries and they enjoy international reputation. It has spilled over into India. It is necessary to state that the sales turnover of the plaintiff's product in India has been significantly omitted. The sales turnover by the plaintiff relates to Western countries as well as the Gulf countries. If the plaintiff's have established a sizeable market in India based on the international reputation acquired by them, it is not difficult for them to give the sales turnover in India. The absence of any such particulars is one more circumstance to show that there is no basis for their statement. 30. Learned senior counsel for the plaintiff contended that the defendants cannot seek protection by virtue of the registration of trade mark JOLEN because it was done only for tooth paste and perfumes and the mark is not registered in respect of cream bleach. The plaintiff claims that he is the prior user of trade mark JOLEN in the Western countries, but the trade mark has been registered only in favour of the defendants in India and the objections of the plaintiff had been rejected. It is further stated that India and USA are members of Paris Convention and the Universal Copyright Convention. The Central Government has passed International copyright Order and in view of Section 40 of the Copyright Act, prior use and prior publication is superior. No doubt, Section 40 of the Copyright Act relates to the power to extend copyright to foreign works. Learned senior counsel also pointed out that the registration of the copyright is not mandatory and does not confer any statutory right as against the prior publication and prior owner. According to the plaintiff, the defendants have slavishly copied the plaintiff's artistic work JOLEN in distinctive script with distinctive colour scheme, get up and layout. It is seen from para 5 of the counter affidavit that the defendants have also registered their artistic work JOLEN carton under the Copyright Act claiming first publication in India since 1987. They have also given the sales turnover in India for the period 1987 to 1999. If the defendants have not registered their product under the Copyright Act, then there would be much force in the contention of the plaintiff. 31. They have also given the sales turnover in India for the period 1987 to 1999. If the defendants have not registered their product under the Copyright Act, then there would be much force in the contention of the plaintiff. 31. Learned counsel for the defendants contended that the plaint has been presented through the power of attorney viz., one Arul Selvan. As per Rule 16 of the Civil Rules of Practice, the Agent should produce original Power of Attorney Deed and obtain permission from the Court to get the suit numbered. The Original Power of Attorney Deed should be produced for verification and after due scrutiny only, the suit will be numbered. Moreover, in the present case, the alleged person being the Power of Attorney agent of the plaintiff filed fax copy of the power of attorney. It has been executed on 17.10.1998 in the presence of Notary Public in USA and it is allegedly revalidated at Chennai on 17.12.1999 by the Assistant Superintendent of Stamps by affixing the adhesive stamp for Rs. 100/- on the fax copy. The fax number is mentioned at the top of the Power of Attorney Deed produced before the Court. It appears that the first power agent Arul Selvan is an Office Assistant of the plaintiff's counsel. The second power agent is said to be the then Typist of the plaintiff's counsel. The address of the agents is also the address of the counsel's office whereas in the plaint and in the affidavit, the residence of the counsel is mentioned as the address of the power agent. This has been relied on in order to show that the plaintiff's company claiming themselves to be a Multi National company doing business in 40 countries all over the world is not having any office or an authorised agent or dealer in India as the company is not transacting any business in India. 32. Learned counsel for the plaintiff contended that the original power of attorney was produced before the court. There is also presumption under Section 85 of the Evidence Act as to the validity of the power of attorney executed before a Notary Public. The presumption extends to an authentication by a foreign notary public. Section 14 of the Notaries Act provides for reciprocal arrangements for recognition of Notaries Acts done by foreign Notaries. There is also presumption under Section 85 of the Evidence Act as to the validity of the power of attorney executed before a Notary Public. The presumption extends to an authentication by a foreign notary public. Section 14 of the Notaries Act provides for reciprocal arrangements for recognition of Notaries Acts done by foreign Notaries. When a seal of the Notary is put on the document, Section 57 of the Evidence Act comes into play and a presumption can be raised regarding the genuineness of the seal of the said Notary, meaning thereby that the said document is presumed to have been attested by a competent Notary of the Country. As such, there is a valid power of attorney has been executed by the plaintiff. 33. Perusal of the power of attorney disclosed that it is only a xerox copy and not the original. In the bottom of the document, the fax date is given as 17.10.1998 and the common seal is given as 17.12.1999. It appears that the earlier power of attorney taken from the plaintiff has been made use of for a different purpose and, as such, I am of the view that the power of attorney filed by the plaintiff is also not proper and correct. Although there is a presumption under Section 85 of the Evidence Act, by the production of the copy I am of the view that the presumption cannot be taken advantage by the plaintiff. 34. Learned counsel for the plaintiff also relied on Rajesh Wadhwa v. Sushma Govil, 1989 AIR(Delhi) 144, that an unregistered lease deed, which is required to be registered compulsorily, can be looked into to determine the nature and character of possession. There is also reference in the same decision that petition filed by the attorney under power of attorney executed in USA is valid and the first power of attorney is not duly authenticated and second power ratifying earlier one is valid and, as such, presumption under Sections 57 and 85 is applicable. Under the circumstance, this decision will not improve the case of the plaintiff in any way. 35. Learned senior counsel for the plaintiff further stated that on the ground of delay, the relief of injunction cannot be denied. Learned senior counsel further stated that the plaintiff has filed documents proving international sales registrations in several countries, advertisements in international magazines were circulated in India. 35. Learned senior counsel for the plaintiff further stated that on the ground of delay, the relief of injunction cannot be denied. Learned senior counsel further stated that the plaintiff has filed documents proving international sales registrations in several countries, advertisements in international magazines were circulated in India. Applying the ratio laid down by the Apex Court in Whirlpool case and by this Court in Tiger Balm's case (cited supra) that in view of the international reputation enjoyed by the plaintiff's trade mark JOLEN, the defendants' use of identical trade mark of JOLEN ought to be restrained by this Court. Even assuming that the plaintiff company is having trans-border reputation relating to the goods in question, their products are not marketed in India through official sources. It is also not the case of the plaintiff that their products are sold in India in duty free shops. Simply because people visiting foreign countries bring the product of the plaintiff they cannot claim any copyright or cause of action against the defendants who have obtained the registration of the trade mark and also copyright in India. The plaintiff cannot claim any superior right over the defendants who have acquired valid right in accordance with law. By virtue of this injunction, naturally the defendants who are in business since 1987 would be much affected and, as such, the balance of convenience is also in favour of the defendants. Considering the fact of registration of the trade mark as well as the copy right, the defendants are having the prima facie case. There is enough material to come to the conclusion that the plaintiff's have not come to court with clean hands and they are not entitled to get the relief of interim injunction. There is inordinate delay on the part of the plaintiff in moving this Court. The fact that the plaintiffs applied for registration on 9.1.1990 as a proposed trade mark in India and the same was rejected is not in dispute. Even then the plaintiff was aware that the defendants are dealing with the same trade mark at least from 1990. As a matter of fact, the plaintiff filed a Suit No. 1398 of 1993 before the Delhi High Court against one Doctor & Company. Even then the plaintiff was aware that the defendants are dealing with the same trade mark at least from 1990. As a matter of fact, the plaintiff filed a Suit No. 1398 of 1993 before the Delhi High Court against one Doctor & Company. Similarly, the defendants also filed Suit No. 410 of 1993 earlier to that of the plaintiffs against the same Doctor & Company, which is also pending before the Delhi High Court. It is stated that both the suits were listed together from time to time and for the past 7 years, no interim order has been granted in favour of either party. This circumstance has been pointed out by the learned counsel for the defendants that for the last 7 years, the plaintiff has not taken any action and if really aggrieved, the plaintiffs who have thought it fit to file a suit against one Doctor & Company, could have filed the suit in the Delhi High Court itself against these defendants. The inaction or silence or latches on the part of the plaintiff is a strong circumstance to be taken into consideration against the plaintiff. The plaintiff having allowed the defendants in carrying on the business under the trade name JOLEN for the last 7 years are priringement of a registered trade mark. It has been submitted by him that there is a statement in the plaint to the effect that the plaintiffs are doing the business in the entire country and therefore it has been impliedly stated that the cough drops under trade name 'VICKS' are also being sold in Ahmedabad by the plaintiffs. Thus, Sr. Advocate Shri Nanavati has submitted that there is an averment to the effect that cough drops 'VICKS' are being sold in Ahmedabad and till some evidence is led to the contrary, it cannot be concluded that cough drops 'VICKS' are not being sold in Ahmedabad and it cannot be said that the trial Court has no jurisdiction. With regard to maintainability of suit by plaintiff No. 2, it has been submitted by Sr. Advocate Shri Nanavati that plaintiff No. 2 is a licensee and plaintiff No. 1 is a registered owner or proprietor of the mark and therefore it cannot be said that the suit has not been filed by the registered proprietor of the mark 'VICKS'. With regard to maintainability of suit by plaintiff No. 2, it has been submitted by Sr. Advocate Shri Nanavati that plaintiff No. 2 is a licensee and plaintiff No. 1 is a registered owner or proprietor of the mark and therefore it cannot be said that the suit has not been filed by the registered proprietor of the mark 'VICKS'. This is in reply to the submission made by learned advocate Shri RR Shah that suit was not maintainable in view of the fact th ma facie guilty of acquiescence and now they cannot take advantage of their own mistake to restrain the respondents from carrying on the business. Under the circumstance, I am of the view that the plaintiff company have miserably failed to establish that they have got prima facie case and the balance of convenience is in their favour. On the other hand, the defendants were able to establish that they have got prima facie case and the balance of convenience is in their favour and apart from that, they have established that the plaintiff is prima facie guilty of latches and acquiescence. Hence, these points are answered against the plaintiff. 36. For the reasons stated above, O.A 553 and 554 of 2000 are dismissed and the interim injunction already granted is vacated. Applications No. 2559 is allowed and 2560 of 2000 is closed. Consequently, Application No. 2558 of 2000 is also allowed.