Judgment :- Prabha Sridevan, J. The applicants in O.A. No. 1193 of 2000, who are the plaintiffs had obtained interim injunction, restraining passing-off which was sought to be suspended and vacated by the respondents. (1) The case of the applicants is this. The first applicant is a public limited company, which started the 'Cinnamon' division to manufacture and sell readymade garments, apparel accessories etc. in the year 1999. Within a short period, the sales reached a figure of around Rs. 1.4 crores. Their products are sold under the trade name 'Cinnamon', and therefore, distinguishable from similar articles. The Retail Outlet, which markets their products at Bangalore has the name 'Cinnamon' and it draws a large number of clients. All the leading departmental stores and fashion arcades sell the applicant's 'Cinnamon' products. On 29.7.1999, the applicant applied for registration of trademark "Cinnamon" for products, which come under Class 20 and 16. On 9.10.2000, the applicant applied for registration of the same trademark for products, which come under Class 25 and 24. Numerous customers buy the ready-made garments and articles sold under the brand name 'Cinnamon'. The 'Cinnamon' products have acquired distinctiveness. More than 42 articles were published in various magazines and newspapers praising the 'Cinnamon' products. (2) In November 2000, the applicants were informed that the Director of the third and fourth respondents Mr. Nitin Kasliwal had announced marketing of Indian garments under the brand name 'Cinnamon' which was similar to the trademark registered by the plaintiffs. There was a press release. Reports of this were carried by several newspapers circulated allover India including Chennai. Brochures were also issued by the respondents. Therefore, a cease and desist notice was sent to the respondent on 6.11.2000. The respondent sent a reply dated 18.11.2000 taking an evasive stand. The use of identical brand name with respect to similar goods will confuse and deceive the purchasing public and would dilute the trademark to a great degree. It will injure the plaintiff who has become the proprietor of the Trademark 'Cinnamon'. The conduct of the respondents is dishonest and mala fide. The cause of action arose when the defendants announced their intention to use for their products, the trade name 'Cinnamon' which is lawfully registered by the applicant's company. It will injure the plaintiff who has become the proprietor of the Trademark 'Cinnamon'. The conduct of the respondents is dishonest and mala fide. The cause of action arose when the defendants announced their intention to use for their products, the trade name 'Cinnamon' which is lawfully registered by the applicant's company. The passing off of the goods of the respondent arises at Chennai where the newspaper reports are circulated and where the applicants also have a branch office in Chennai and market their goods in Chennai. In view of the infringement and passing off the suit was filed and pending suit interim injunction was asked for. On 20.12.2000, ex parte interim injunction was granted for a period of 4 weeks by this Court. On 8.1.2001, the fourth respondent moved the two applications, referred to above, to suspend and vacate the interim injunction. (3) The stand taken by the respondent is as follows : There is no office in Madras for the third respondent and the address shown in the cause title is false. The inclusion of the first and fourth respondent has been made deliberately when no cause of action has arisen within the jurisdiction of this Court. The fourth respondent is a part of the S. Kumar's group of Companies established about fifty years ago. The house mark 'S. Kumars' enjoys the trust and confidence of the people. The fourth respondent which carries on the textile business was established in and around the year 1990. The fourth respondent has been introducing from time to time various types of fabrics and textile materials under various trademarks. The 'Reid & Taylor' mark is one such, which has become very popular amongst the people. In the year 1998, this respondent decided to enter the arena of ready-made garments and apparel merchandising. They approached an advertising agency to choose the trademark and brand name for this purpose. After several rounds of discussion the name 'Cinnamon' was chosen. In or about January 1999 this respondent commenced selling materials under the trademark 'Cinnamon'. There was a good response to it and thereafter, this respondent decided to extend the use to stitched garments. Extensive sampling and market opinion was obtained and by April 2000 shirts, trousers, and jeans were marketed under the same name. The trademark was honestly adopted by this respondent. There was a good response to it and thereafter, this respondent decided to extend the use to stitched garments. Extensive sampling and market opinion was obtained and by April 2000 shirts, trousers, and jeans were marketed under the same name. The trademark was honestly adopted by this respondent. Thereafter, this respondent decided to extend the same trademark for marketing a 'total wardrobe solution'. So they appointed a celebrity as their brand ambassador to promote the said range of products. The conception and adoption of the trademark was in August-September 1998 and it has been subsequently used till today. Figures were given to show the turnover of the respondent in respect of "Cinnamon" goods, and also the publicity expenses. It is in fact, the applicant who is imitating the trademark of the respondent. On 3.8.2000, this respondent applied for registration of the mark 'Cinnamon' under Class 24 and 25. Originally, in the application the user was shown as 'proposed to be used'. Thereafter, amendment applications were made to show that the user was since 1999. When the notice dated 6.11.2000 was received by this respondent they sent a reply asking the applicant to furnish details regarding the user of the trademark and other details. The rejoinder did not give details, but merely repeated what was said in the initial notice. To this the respondent sent the letter dated 1.12.2000, which has been suppressed by the applicant. Apprehending legal action the applicant filed caveats in Bangalore. But the respondent has deliberately chosen to file the suit at Madras. The statement of the applicant that their main business is ready-made garments and their products were sold all over the country are not right. No figures have been given by the applicant for the turnover. There is no outlet for sales of garments of the applicants bearing the trademark 'Cinnamon'. The applicants' application for registration of the trademark of 'Cinnamon' was originally made in respect of goods, which are totally different and dissimilar. After noticing the reputation, goodwill and enormous publicity of the Cinnamon brand of textile goods and readymade-wear of the respondents, the applicants had made an application under Class 25 and 24. The applicants' application for registration of the trademark of 'Cinnamon' was originally made in respect of goods, which are totally different and dissimilar. After noticing the reputation, goodwill and enormous publicity of the Cinnamon brand of textile goods and readymade-wear of the respondents, the applicants had made an application under Class 25 and 24. The reference to the launching of garments by the applicant in November 2000 is true and the applicant wanted to commence the marketing of entire range of men's apparel and the accessories i.e. to provide one name solution for the men's dressing all over the world. The claim made by the applicant as if the mark had been registered was not true and amounted to fraud upon the Court. No part of the cause of action has arisen in Chennai and the address given by the applicant as if it was carrying on the business in Madras is false. The applicant has come out with certain statements, which are baseless and, therefore, it is not entitled from getting relief of injunction. (4) Two replies one by the applicants and one by the respondent were filed. The applicants in their reply pointed out that out of alleged nation-wide wholesale dealers and retail outlets only 110 invoices have been filed by the respondent. These relate to only 4 firms and are concocted for the purpose of the case. Normally textile manufacturers weave the brand name, whereas when enquiries were made with the dealers whose name have been found in the invoices they admitted that there were suit materials under the brand name 'Cinnamon' and in this bale the name of 'S. Kumars' was not woven but there was only a seal of the word 'Cinnamon'. A comparison was made of the alleged publicity expenditure incurred by the respondents for the previous year and this year and it was stated that such a noticeable increase in the expenditure was extremely unlikely. The Managing Director of the fourth respondent had specifically referred to the launch of 'Cinnamon', in November 2000 and that it would be retailed through the major sources across the city. Therefore, the claim made by the respondent that right from 1st April 2000, the 'Cinnamon' products were marketed can only be false. It was represented that the applicants were manufacturing and marketing 'Cinnamon' products from the latter half of 1999. Therefore, the claim made by the respondent that right from 1st April 2000, the 'Cinnamon' products were marketed can only be false. It was represented that the applicants were manufacturing and marketing 'Cinnamon' products from the latter half of 1999. (5) In the reply filed by the fourth respondent, they have stated that the fourth respondent markets 25 trademarks in the course of their business and the annual report referred to, two of them viz : 'Reid and Taylor' and 'World player' because they constituted about 30% of the Annual turnover. The invoices are prepared in the ordinary course of trade. The textile fabrics need not necessarily have the brand name woven in the fabric; some have the brand name stamped or fixed or some have the brand name woven ; this would depend upon the fabric as well as the market requirement. The noticeable increase in the advertising expenses was on account of the promotion campaign by appointing a brand ambassador. There was no user by the applicant of the trademark in respect of the textile goods. There was neither infringement nor passing-off. The applicant was not entitled to injunction. (6) Mr. N.S. Sivam, learned counsel for the applicant submitted that this was a clear case of infringement and passing-off and there was no doubt about it. The 'Cinnamon' division of the first applicant was established in Madras, Delhi, Jaipur and Hong Kong. The applicants get designs from leading designers and get the apparels stitched by job-workers. The applicants acquired an international recognition and reputation for marketing apparel under the name 'Cinnamon' from July 1999. The applicants sell their goods at various shops. Several articles were referred to and filed in the paper-book to show that 'Cinnamon' had existed right from 1999. The learned counsel said these were not ordinary journals but reputed ones like Economic Times, Deccan Herald, etc. They all testify to the existence of 'Cinnamon' right from 1999. On the other hand, the respondent was unable to produce even one advertisement in respect of their marketing products under the brand name 'Cinnamon'. The learned counsel took me through all the invoices filed by the respondent in their paper-book from page 191 to 328 and he submitted that it was curious that when the respondents have numerous outlets they should have chosen to produce invoices from the chosen 3 or 4 dealers. The learned counsel took me through all the invoices filed by the respondent in their paper-book from page 191 to 328 and he submitted that it was curious that when the respondents have numerous outlets they should have chosen to produce invoices from the chosen 3 or 4 dealers. These invoices were concocted and ought not to be relied on. The learned counsel vehemently argued that when the Managing Director himself has stated that the product was only launched in November 2000, it did not lie in the mouth of the deponent of the affidavit of the respondents, to make a statement that, goods bearing the brand name of 'Cinnamon' were sold in 1999 itself. The Annual Reports, which were also filed by the respondent while referring to the marketing of 'Reid and Taylor' are curiously silent about the launching of 'Cinnamon' brand products. This would show that the respondent' had not marketed their products under this brand name prior to the announcement made by the Managing Director. Publicity expenses for this brand did not find a place in the said Reports either. According to the learned counsel, their notice dated 06.11.2000, elicited a reply from the respondent, which was absolutely evasive and vague and there was not even any mention about the fact that the respondent had already been using 'Cinnamon' trademark. Learned counsel also said that though the Annual Report dated 20.01.2000 refers to 'Ready to wear' apparels it does not mention the brand name 'Cinnamon' and therefore, 'Cinnamon' was not in existence on 20.01.2000. In contrast to this, the presence of the applicants in the market is proved by the several articles in prestigious papers and newspapers and the sales of the applicant's products is also reflected in the invoices which were filed by the applicant in their paper-book (page 54 to 72). The copy of the application for registration is also filed in the paper-book. It was submitted that the application for registration in respect of this name was made by the applicant before the respondent. The respondent's launch of ready-made garments under the trademark 'Cinnamon' was a clear case of infringement of the applicant's proprietary right under the brand name 'Cinnamon'. Several letters were also produced across the Bar, from various persons who had addressed 'Cinnamon' stating that they would be designing exclusively for 'Cinnamon'. The respondent's launch of ready-made garments under the trademark 'Cinnamon' was a clear case of infringement of the applicant's proprietary right under the brand name 'Cinnamon'. Several letters were also produced across the Bar, from various persons who had addressed 'Cinnamon' stating that they would be designing exclusively for 'Cinnamon'. A certificate of the Chartered Accountant speaks of the turnover for the period from 01.10.1999 to 31.12.2000. Several affidavits by various persons who have deposed that on enquiry they found that the regular dealers had not received respondents' products bearing the brand name 'Cinnamon'. (7) The following decisions are referred to by the learned counsel : (A) National Electric Stores and others v. General Electric Co. Ltd., through attorney, Herold Alen Battan, AIR (31) 1944 Lahore 386. In this case the trademark Osram used by the plaintiffs who were registered in Great Britain, was infringed by defendants who used the same name for their flashlight batteries at New Delhi. The Court granted injunction on the ground there was likelihood of deception. (B) Chelsea Man Menswear Ltd. v. Chelsea Girl Ltd. and Another, 1987 RPC 189 CA. In this case, the plaintiffs had been selling men's wear under the name 'Chelsea Man'. The defendant's had sold mass produced women's clothing under the name 'Chelsea Girl'. Later, the defendants intended to sell men's wear under the name 'Chelsea Man' through shops near the plaintiffs' Chelsea Man shops and intimated the plaintiff. The plaintiffs brought a passing-off action against the defendant and succeeded. The learned Judge held that, (1) A plaintiffs who has established a cause of action in passing off can obtain relief by way of injunction extending beyond the boundaries of the particular areas in which he has proved the existence of his reputation and goodwill; and (2) since both the plaintiffs and defendants had intention to expand the geographical scope of their men's wear business prima facie the plaintiffs were entitled to a nationwide injunction. (C) Poiret v. Jules Poiret Ltd. and A.F. Nash, 1920 (37) RPC 177 Ch. D.). In this case one Paul Poiret had set up business as a costumier. Later one Alexander F. Nash, set up a company called Jules Poiret and Company Limited, and acquired reputation as costumier. The defendant was restrained by an order of injunction notwithstanding that Paul Poiret had no place of business in London. D.). In this case one Paul Poiret had set up business as a costumier. Later one Alexander F. Nash, set up a company called Jules Poiret and Company Limited, and acquired reputation as costumier. The defendant was restrained by an order of injunction notwithstanding that Paul Poiret had no place of business in London. It was held that the name was an uncommon one and notwithstanding that the plaintiff Paul Poiret had no place of business in London the continued use by the defendant of the name Poiret would lead to confusion in the trade. (D) Brestian v. Try (1958 R.P.C. 161 C.A. ). Both the plaintiff and the defendant carried on the business of ladies' hairdressers under the name 'Charles of London', one carrying on the business from 1952 and the other from 1955. The plaintiff had his business in certain areas and the defendants had his business elsewhere. But, yet, injunction was 'granted because it was held by Dancwerts, J., (1957 R.P.C. 443) that, ".....there was a certain amount of justified apprehension of potential customers of plaintiff being diverted to defendant." (E) Ellora Industries, Delhi v. Banarasi Dass Goela, 1981 PTC 46. In this case, the plaintiffs were selling watches, timepieces, clocks and other parts in the name 'Elora'. The trademark was registered in 1956. In 1962, the defendant advertised 'Ellora' as their trademark for timepieces. The learned Judge while deciding whether there was passing off held as follows : "The purpose of this tort is to protect commercial goodwill; to ensure that people's business reputations are not exploited." (F) Dhanalakshmi Weaving Works, Kakkat v. Hajee Mohammad Abdul Azeez Sahib, AIR (29) 1942 Madras 179 In this case the plaintiff was selling Cotton twill shirting under the name 'diamond'. The defendant commenced selling his goods which were coloured and striped shirtings and put the word 'diamond' on their goods. The learned Judge held that there can be no doubt in this case that the goods sold by the defendant are so similar to that of the plaintiff that the purchaser might infer a common origin. "Reference was made to the 'Dunlop' case and the 'Kodak' case to arrive at the conclusion. (G) Daimler Benz Aktiegesellschaft and another v. Hybo Hindustan. This is a case where the name 'Benz' was used by the defendant to sell undergarments. "Reference was made to the 'Dunlop' case and the 'Kodak' case to arrive at the conclusion. (G) Daimler Benz Aktiegesellschaft and another v. Hybo Hindustan. This is a case where the name 'Benz' was used by the defendant to sell undergarments. Injunction was granted on the ground that the defendant's user was not "honest concurrent user." (H) Caterpillar Inc. v. Jorange, 1998 (18) PTC (DB). The Caterpillar Co., which was manufacturing and marketing only heavy machinery in India, but, manufacturing and selling a wide range of garments elsewhere, sought to restrain the defendant from manufacturing and selling articles of clothing including jeans under the trademark 'Cat' and 'Caterpillar'. The Division Bench of this Court relying on the 'Benz' case held that, the plaintiffs had made out a prima facie case in regard to transborder reputation, though with regard to heavy-duty vehicles, and granted injunction. (I) Allergan Inc, v. Milment Oftho Industries and others, 1998 AIR(Calcutta) 261 : 1999 PTC (19) 160(Cal)(DB). Two pharmaceutical products with identical names were put in issue. The foreign manufacturer Company was the earlier user. The Indian Company entered in the market later and the injunction was granted on the ground given hereunder : "An action for passing off, as the word" passing off" itself suggests, is to restrain the defendant from passing off its goods to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods in a manner, which has deceived or would be likely to deceive the public into thinking that the defendant's goods are the plaintiff's. "(J) Kirloskar Diesel Recon Pvt. Ltd. and another v. Kirloskar Proprietary Ltd. and others. Injunction was granted on the ground that the plaintiff trademark had become almost a household word and even if the defendant did not carry on similar activity they ought to be restrained. (K) Bata India Limited v. M/s. Pyare Lal & Co., Meerut City and others, 1985 AIR(Allahabad) 242 : PTC (Suppl)(1) 116(All). The plaintiff, Bata India Limited restrained the defendant from using mark 'Batafoam' and the Court allowed the action on the ground that since Bata was a name well-known in the market, the user of it is likely to cause deception in the mind of an ordinary customer and injury to the plaintiff. The plaintiff, Bata India Limited restrained the defendant from using mark 'Batafoam' and the Court allowed the action on the ground that since Bata was a name well-known in the market, the user of it is likely to cause deception in the mind of an ordinary customer and injury to the plaintiff. (L) R. Gopalkrishnan v. M/s. Venkateshwara Camphor Works, 2000 (IV) CTC 222 : 2001 PTC (21) 233(Mad). In this similarities in the two mark of the respondent was held to be on account of dishonesty. (M) Finally, N.R. Dongre and others v. Whirlpool Corporation and another, 1996 (5) Supreme Court Cases 714 : 1996 PTC 583. In this case the Supreme Court laid down seven guidelines or principles for the grant of injunction, (a) Long prior user, (b) Prior registration, (c) Grant of registration to the defendants on the ground of proposed user and not actual user, (d) No evidence of defendants marketing the goods, (e) Irreparable injury to the plaintiffs, f) No injury to the defendants, (g) no delay on the side of the plaintiffs. (8) According to the learned counsel for the applicant all these cases would support the claim of the applicants. They had established prior user and was the respondent was obviously trying to market his product as though it were the applicants'. In any event the likelihood of confusion and deception in the mind of the consumers cannot be ruled out, so injunction shall be issued. (9) Mr. R. Krishnamoorthy, learned Senior Counsel appearing for the respondent on the other hand submitted that the applicant had not established a prima facie case to deserve an order of injunction. To show prior user, it was not sufficient to attack the invoices of the respondent as concocted. The applicant must to show atleast some evidence of sale of products under the brand name 'Cinnamon' on the date, which is averred and alleged by the plaintiff-applicant to be the date of commencement of user. The learned Senior Counsel submitted that the articles and other newspaper reports referred to by the applicant, merely showed that there was a shop called 'Cinnamon'. There was absolutely nothing in these documents to show that wearing apparels were marketed under the name 'Cinnamon'. According to the plaint, the applicant had coined and adopted their trademark as early as January 1999. There was absolutely nothing in these documents to show that wearing apparels were marketed under the name 'Cinnamon'. According to the plaint, the applicant had coined and adopted their trademark as early as January 1999. But the documents, which were referred to by the applicant would show that the opening of 'Cinnamon' was in October 1999. The applications for registration of the trade mark 'Cinnamon' under Class 20 and 16 were made in July 1999. But in these two applications, the trademark is shown as one that is 'proposed to be used'. Therefore the claim of the applicant that user commenced in January 1999 was false. Even in the invoices produced by the applicants, which were very few, compared to the numerous invoices produced by the respondent there were only 3 or 4 sales in which the word 'Cinnamon' was used. Therefore, to say that the applicants marketed the textile goods on a large scale is not true. It was further submitted that there is nothing to show that apart from the shop "Cinnamon" any other shop sold wearing apparels bearing the brand name 'Cinnamon' (assuming without admitting that the few invoices were true) and their claim that they were sold widely cannot be true. When the respondents by the reply dated 18.11.2000, called upon the applicants to give details of their products, the date of commencement of user, the details of trademark application and evidence showing use of the trademark 'Cinnamon' in the use of garments and quantum of sales, there was absolutely no reply to this in the applicant's rejoinder dated 25.11.2000. In the rejoinder referred to above, the applicant merely reiterated the facts mentioned in their legal notice, but would not come forward with any of the details that were sought for by the respondent. Not only did they not furnish the details in their rejoinder, but even in the plaint there is absolutely no reference to these details. The plaint itself is very vague and bereft of details and the details that have been given are not based on truth. The counsel for the respondent sent a reply on 01.12.2000 asking the applicants to furnish the details sought for in the reply dated 18.11.2000 and stating that it was the applicants who were violating the respondents' right. The applicants had received this. The counsel for the respondent sent a reply on 01.12.2000 asking the applicants to furnish the details sought for in the reply dated 18.11.2000 and stating that it was the applicants who were violating the respondents' right. The applicants had received this. But they did not reply to this nor was this even referred to in the plaint. It was submitted that there was no material to show that the applicant had started using the trademark 'Cinnamon' with reference to readymade garments before the respondent did or that the applicant had manufactured garments under the brand name 'Cinnamon' or that products manufactured by the applicants under the brand name 'Cinnamon' were sold as such outside and had a ready market. So the averments made in the plaint were not factually correct and the applicant was not entitled to injunction regardless of the position of the respondent. (10) In response to the allegations made against the respondents he made the following submissions. The press release referring to the launch of Cinnamon as announced by Mr. Nitin Kasliwal was not in fact contrary to the statements made in the affidavit filed by the respondents. In 1999, the fourth respondent started selling shirting and suiting bearing the name 'Cinnamon'. This is referred in the affidavit. In April 2000, it was extended to shirts and jeans and in November 2000 the launch of the entire wardrobe for men was started. What was started in 1999 was only extended and developed. Therefore both the statements made in the affidavit and in the press release were not mutually contradictory and prior usage by the respondents was clearly established. As regards the invoices, it was submitted that the respondent was a well-established Company subject to sales tax etc., and there was no question of them producing false invoices. What was produced before the Court was only a sample to show that products had been sold by the respondent under the name 'Cinnamon' right from January 1999. The steep increase in the publicity expenditure was because a celebrity has been engaged to be the brand 'ambassador' for the launch of total wardrobe solution. The Annual Reports are only to show the financial position of the Company to the shareholders. It is not necessary for them to list item-wise each product that is sold. So the non-mention of "Cinnamon" in the reports is really not of any importance. The Annual Reports are only to show the financial position of the Company to the shareholders. It is not necessary for them to list item-wise each product that is sold. So the non-mention of "Cinnamon" in the reports is really not of any importance. As far as registration of the trademark 'Cinnamon' for goods included in Class 24 and 25 were concerned the application made by the respondent was earlier in point of time. No doubt it is true that when originally the application was made as against column 'user' it was shown as 'proposed to be used'. This was subsequently corrected and nothing really turned on it, since it was a bona fide mistake. There was acceptable evidence before the Court to show that the respondent had been marketing their products under the name 'Cinnamon' earlier. This minor error will not come to the aid of the applicant. The applicants' first application for the trade name 'Cinnamon' was for totally dissimilar goods, which had nothing to do with textiles. (11) The learned Senior Counsel referred to the following decisions : (A) Consolidated Foods Corporation v. Brandon and Co. Private Ltd., 1965 AIR(Bombay) 35. This arose out of the order of the Joint Registrar in respect of the mark 'Monarch'." For the purpose of claiming such proprietorship, it is not necessary, as already stated, that the mark should have been used for considerable any length of time. As a matter of fact, a single actual use with intent to continue such use eo instanti confers a right to such mark as a trade mark. "(B) M. Mahender Shah v. Tiruchy Flour Mills, 1997 PTC 432. This was a case in which the plaintiff sought restraint order against the use of the trademark and the defendant claimed prior user and sought injunction against plaintiff. There were cross suits. The trademark was 'Annapurna'. The plaintiff was engaged in the manufacture of wheat flour under this trade name and had also applied for registration. The defendants started using the same trademark 'Annapurna' alongwith the word 'Gold Seal Annapurna' for their product wheat flour and, therefore, sought injunction. Meanwhile, the defendant said they were engaged in manufacturing food items and they had adopted the trademark 'Annapurna', for iodized salt from 1992. So they filed a cross suit to restrain the plaintiff. The defendants started using the same trademark 'Annapurna' alongwith the word 'Gold Seal Annapurna' for their product wheat flour and, therefore, sought injunction. Meanwhile, the defendant said they were engaged in manufacturing food items and they had adopted the trademark 'Annapurna', for iodized salt from 1992. So they filed a cross suit to restrain the plaintiff. The Court held in favour of the defendant on the ground that though they marketed flour under the trademark 'Annapurna' only after the plaintiff as far as the trademark is concerned they had started using the said mark for their salt prior to the plaintiff. (C) Bimal Govindji Shah v. Panna Lal Chandu Lal, 1997 PTC 17 In this case it was held that registration is not an absolute right to use trademark, the effect of rights of registration is irrelevant in the case of passing off. (D) Gaw Kan Lye v. Saw Kyone Saing, 1939 AIR(Rangoon) 343. This is a case which is relied on in many subsequent cases and the learned Judges put the entire issue in a nut-shell. The following paragraph is extracted hereunder :" Now, if the mark or design be a distinctive one it seems clear upon authority that thetrader who adopts it is entitled to protection directly the article, having assumed a vendible character, is launched upon the market : (1864) 10 LT (NS) 442. As between two competitors who are each desirous of adopting a mark which is distinctive in character it is, to use familiar language, entirely a question of who gets there first. In the case of distinctive marks and adopting the language of Iqbal Ahmad, J. in 57 All 510at p. 548 all that is necessary for the plaintiff to prove is that the mark used by the defendant is likely to deceive purchasers of the class who buy the goods bearing the plaintiff's mark and it is not necessary to prove actual deception. "(E) The famous Cyanamid case reported in American Cyanamid Company v. Ethicon Limited, 1975 RPC 513. "(E) The famous Cyanamid case reported in American Cyanamid Company v. Ethicon Limited, 1975 RPC 513. The House of Lords expressed what the governing principle should be in such cases." As to that, the governing principle is that the court should first consider whether if the plaintiff were to succeed at the trial in establishing his right to a permanent injunction he would be adequately compensated by an award of damages for the loss he would have sustained as a result of the defendant's continuing to do .......If damages in the measure recoverable at common law would be adequate remedy and the defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the plaintiff's claim appeared to be at that stage. If, on the other hand, damages would not provide an adequate remedy for the plaintiff.... the court should then consider whether, (if) the defendant were to succeed at the trial..... he would be adequately compensated under the plaintiff's undertaking as to damages for the loss he would have sustained... If damages in the measure recoverable under such an undertaking would be an adequate remedy and the plaintiff would be in a financial position to pay them, there would be no reason upon this ground to refuse an interlocutory injunction. "(F) M/s. Manoj Plastics India v. M/s. Bhola Plastic Industries, 1983 PTC 368 this was a case which relates to household mirrors and the plaintiff was granted injunction on the ground that the defendants though alleging sales of a considerable quantity did not produce any accounts or copies of bills to show the sales and" failure to produce documents in support of their case is a ground to draw presumption against them at this stage", and again," Although the defendants allege that they have been using the trade mark 'Tony' since 3rd April, 1981 but they have not placed any material to show even prima facie that they were the prior users. "(12) The following extracts from two text books were also referred to : The Law of Trade Marks and Passing Off of P. Narayanan, 5th Edition page 27" It is not necessary to show that the mark should have been used for considerable length of time. "(12) The following extracts from two text books were also referred to : The Law of Trade Marks and Passing Off of P. Narayanan, 5th Edition page 27" It is not necessary to show that the mark should have been used for considerable length of time. A single actual user with intent to continue such use eo instanti confers a right to such a mark of a trademark as held in Consolidated Food Corporation case, "and to para 25.42 at page 526, Proprietary right of plaintiff in the goodwill of business-prior user. The plaintiff must show that at the date of the user by the defendant of which he complains, he has a proprietary right in the goodwill of the name, or, in other words, that the name remains distinctive of some product of his, so that the use by the defendant of the name is calculated to deceive." (13) Then again reference was made to Kerly's Law of Trademarks and trade names, wherein the classical trinity that is the foundation in passing off cases was stated to be goodwill, misrepresentation and damage and it was submitted that the applicant had not established the foundation. It was also pointed out that in the plaint in para 9 of the affidavit and in the Judges Summons, the applicant had stated that the trademark has been registered in his favour. This is patently untrue. This is another factor, which would disentitle the applicant from obtaining injunction. Looked at from any angle, injunction ought not to be granted. 14) Is there a yardstick for deciding the issue of injunction in a passing-off action ? (A) Every case has to be decided with due regard to the evidence, direct and circumstantial, brought on the record and there can be no hard and fast rule which is applicable universally.- (AIR (31) 1944 Lahore 386) (B) As between two competitors it is entirely a question of who got their first. - 1939 AIR(Rangoon) 343) (C) Judges cannot for lack of evidence shut of their eyes to the realities of the everyday life. - 1939 AIR(Rangoon) 343) (C) Judges cannot for lack of evidence shut of their eyes to the realities of the everyday life. - (1987 R.P.C. 189 C.A.) (15) The issue is whether on the facts of the case the respondents are likely to mislead the persons who are either members of the trade or of the public to suppose that their goods were in fact the applicants', and whether the applicants have shown that they have used the mark in relation to the specified goods before the respondent. Whatever be the defect or lacuna in the case of the respondent, it is for the applicant to establish his case, since it is he who seeks protection of his so called proprietary right. While attacking the 100 and odd invoices produced by the respondent as false the learned counsel for the applicant produced what he called the unimpeachable evidence of prestigious newspapers and magazines, which had spoken about the existence of the applicant. (16) Now I have gone through each one of these articles found in pages 1 to 40 of the paper book filed by the applicant. They speak of an important social even, which is the opening of a shop called 'Cinnamon', which will feature clothes, home furnishing, design and more and the public will find in this place called 'Cinnamon', antiques, contemporary jewellery, metalware, Bidri work, stoneware, glassware, lamps, candles, and in women's fashion the designer clothes fashioned by Abraham and Thakore, Neeru Kumar, Vivek Narang, Jason Cheriyan, Hidden harmony and Bandhej, who are said to be exclusive clothes designers. 'Cinnamon' is referred to as a life-style store a 11 Walton Road Bangalore. At this store, clothes which are designed for women by the aforesaid designer are available. (17) It is evident that products of exclusive design and quality are collected and sold at this store. There is reference in these articles to the shop "Cinnamon" being the creation of one person where "people can see and buy good designs" One Extract says : "Eventually, people like to see 'Cinnamon', turn into a design centre where international talents may meet, exchange ideas and ultimately design for the cinnamon label." In another issue dated 31.12.1999 there is a reference to the label A and T, which is displayed at 'Cinnamon'. An Italian designer appears to have designed it for the person who has conceived this store and she is quoted "One day I told him that it would be wonderful if he could design a store for me"and again," the store will stock lines from leading names in women's fashion."" I wanted it to contain well designed products for the house."" It's a one-stop shop for everything from clothes and essence to flowers and food." In another article it is said that the persons behind this shop travel all over the country to collect samples, talk to product designers and sometimes persuade them to design exclusively for the store. "(18) Therefore the only conclusion is that two persons started a shop which is called 'Cinnamon', where they have collected a variety of articles ranging from agarbathis, flower shops, shawls, duppattas, cushion covers etc., which are exclusive in their design and designed by very exclusive designers so that the customers can come to this one store for buying their needs. The manner in which this shop is referred to also show that the clientele of this shop is an educated exclusive elite clientele. A number of invoices have been filed to show the sale of products from this shop called 'Cinnamon' and the earliest of them is dated 24.10.1999. All the invoices filed by the applicants in their paper-book only referred to sales from this shop at 11, Walton Road, Bangalore - 560001. The items that are sold range from khadi pyjama and Khadi tops to vases, games, rattle etc. A person who visits 'Cinnamon' is quite aware of what he or she can expect to get from the store, clothes, shawls, and scarves made by exclusive designers carrying their label and all other house wear. Their expectancy is in conformity with their own life style, which belongs to the higher income group. (19) The plaint states that in the year 1999, the Cinnamon division was started to manufacture and sell readymade garments, apparel accessories and articles and other household materials including furniture materials and that all leading departmental stores and fashion arcades are selling cinnamon products manufactured by the plaintiff-company, and that in a short period of 14 months, the readymade garments markets by the plaintiffs under the trade name 'Cinnamon' had a substantial sale in the market. In the affidavit filed in support of the application O.A. No. 1193 of 2000 too, it is stated that the products of the plaintiff-company are sold all over India including Chennai and in foreign countries also and the cinnamon garments and articles are sold in retail outlets all over India. (20) But the documents filed by the applicant do not tell the tale of a manufacturing division launched in 1999, to sell readymade garments. All that they speaks of is a shop, which sells household accessories. The sale bills produced were with reference to just that one shop. There is absolutely no evidence to show that all the leading departmental stores and arcades are selling Cinnamon products manufactured by the applicant-company. Not even one bill or invoice has been produced to support this claim. In fact, all the magazine articles which were referred to by the learned counsel for the applicant as unimpeachable evidence of prior user, do not speak of any manufacturing activity by 'Cinnamon', which results in readymade garments. (21) The claim made by the plaint that their product has become a familiar brand through out the country is not supported by any document. If the applicants' product bearing the trade name 'Cinnamon' had gained substantial sales in the market, surely, the bill of atleast one departmental store could have been produced. In fact, even in the sales bill issued by the shop 'Cinnamon' the goods sold do not bear the brand name 'Cinnamon'. Reference is made to Pages 62, 68 & 80 of the applicants' paper book. I am assuming the letters 'cin' in the bill refers to 'Cinnamon'. If this were so merely 10% of the product sold at the shop 'Cinnamon' bears the brand name 'Cinnamon'. The averment that various magazines praised the 'Cinnamon' products marketed by the plaintiffs is also not based on fact. These magazines only refer to the shop 'Cinnamon'. In contrast to this the respondent has produced documents, which show prima facie that they had been looking out for a brand name in 1998 and had identified the name 'Cinnamon'. The invoices also reflect sales of suitings and shirtings bearing the trade name 'Cinnamon' from January 1999. Of course, these are attacked by the learned counsel for the applicant to be bogus. But in their own counter affidavit filed in O.A. Nos. The invoices also reflect sales of suitings and shirtings bearing the trade name 'Cinnamon' from January 1999. Of course, these are attacked by the learned counsel for the applicant to be bogus. But in their own counter affidavit filed in O.A. Nos. 77 and 78 of 2001, it is stated as follows :" When enquiries were made with M/s. H.K. Textiles, M/s. A. Prakash & Co., and Kahanchand Surendrapal in Delhi, in whose names 36 invoices had been raised, the above Retailers admitted to possess suit material under the brand name "Cinnamon" and brought a bale from inside and offered them for sale. In the 'Ready to Stitch Fabric' of Cinnamon, the name 'Cinnamon' was not woven in the above fabric and only the name of S. Kumars was woven and in the beginning of the bale, a seal with the word 'Cinnamon' is found embossed. "(22) It is the case of the applicants that enquiries at the various outlets revealed that no suiting or shirting under the brand name 'Cinnamon' was available. But the fact remains that the retailers mentioned above possessed suit materials of the respondent bearing the brand name "Cinnamon". It would be extremely far-fetched to hold that these retailers expecting to be interrogated by the applicants had fabricated some material and affixed the seal 'Cinnamon' for this purpose. Therefore, materials bearing the name 'Cinnamon' marketed by the fourth respondent admittedly exist. These materials were available in the market. To the other allegation that normally trade names are woven, not stamped or embossed; the respondents produced before the Court atleast one dozen materials from various Mills. In some the trade names were woven and in some embossed, and in others stamped. Therefore, nothing really turns upon the fact that the length of material produced by the dealer at the request of the applicant bore only a seal and the trademark was not woven. (23) The respondents on the other hand, have produced documents to show the discussions with the advertisement agency, the invoices from Jan. 99, the Annual Report and the Chairman's Financial Statement which show the intention to launch a Ready to Wear Apparel project. These documents support the case of the respondents. (23) The respondents on the other hand, have produced documents to show the discussions with the advertisement agency, the invoices from Jan. 99, the Annual Report and the Chairman's Financial Statement which show the intention to launch a Ready to Wear Apparel project. These documents support the case of the respondents. As regards the alleged clerical error regarding the entry "proposed to be used" in the respondent's application for registration, the learned counsel for the applicant posed this query as to whether a company with business of the magnitude that is boasted of by the 4th respondent would make such an obvious clerical error with regard to a vital matter as registration of their trademark. According to him the only logical conclusion that can be drawn from this is that the respondent did not use the trademark 'Cinnamon' from 1999, and that their application in August 2000 was only prompted by the run away success of the applicant's 'Cinnamon'. But the injunction here is for passing off and the factum of registration is not as relevant as prior user. (24) In Century Traders v. Roshan Lal Duggar & Co. and others, 1978 AIR(Delhi) 250 : PTC (Suppl)(1) 720(Del)(DB), Division Bench of the Delhi High Court, following Refining Co. v. Shangrila Food Products Ltd., PTC (Suppl)(1) 13(SC), held that in passing off cases to get interim injunction the plaintiff must establish prior user before the impugned user by the defendants. (25) Therefore, what is relevant is, in the words of the Full Bench of the Rangoon High Court, who got their first, the error in the application which was subsequently amended is not relevant at this stage. Even an regards registration it is seen that whether the user is current user or proposed user, so far as goods under class 24 and 25 are concerned the application for registration was made by the respondents in August 2000 and by the applicant only in November 2000. The applicant's registration of trademark for the name of 'Cinnamon' in the year 1999 was for goods belonging to Class 16 and 20, which were totally dissimilar from the goods, which are supposed to be passed off by the respondents as the applicant's goods. These applications were for leather goods furniture, mirror, cane, wicker, amber, stationery, cardboard, and books etc. The applicant's registration of trademark for the name of 'Cinnamon' in the year 1999 was for goods belonging to Class 16 and 20, which were totally dissimilar from the goods, which are supposed to be passed off by the respondents as the applicant's goods. These applications were for leather goods furniture, mirror, cane, wicker, amber, stationery, cardboard, and books etc. (25) All the decisions, which relate to dissimilar goods like the 'Benz' case, the 'Bata' case, the 'Kodak' case, or the 'Caterpillar' case were all instances where the trademark of the plaintiff had been ingrained in the mind of the public as representing a certain product of excellence and, therefore, the Courts would not allow the defendant to ride piggyback on the reputation of the plaintiff. In the 'Whirlpool' case, the Supreme Court extracted the following passage from Wander Ltd., v. Antox India (P) Ltd., 1990 SCC 727 : 1991 PTC 1." The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man.....In an action for passing off it should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trade-mark. He cannot represent his own goods as the goods of somebody else. "The order of injunction was confirmed by the Supreme Court, applying the principle that a man is not to sell his own goods under the pretence that they are goods of another man. The seven principles laid down in this case have no application to the facts of the case. There is nothing to show that respondent is representing his goods to be the applicants. In the Chelsea Man Meanswear case., in the Poiret v. Jules Poiret Ltd. and A.F. Nash, 1920 (37) RPC 177 Ch. D., in Brestian v. Try case, the Courts granted injunction because there was evidence of confusion and the apprehension that potential customers may be diverted was held to be justified. The decision reported in the 'Ellora' case, was relied on by the applicant To urge that the applicants' goodwill in respect of the trademark 'Cinnamon' it had to be protected. D., in Brestian v. Try case, the Courts granted injunction because there was evidence of confusion and the apprehension that potential customers may be diverted was held to be justified. The decision reported in the 'Ellora' case, was relied on by the applicant To urge that the applicants' goodwill in respect of the trademark 'Cinnamon' it had to be protected. But in the same decision the learned Judges held as follows :" The plaintiff must establish that his business or goods have acquired the reputation he alleges; that for example, "a particular name has become distinctive of his goods and that a reputation has attached to them under the name in question, and this can be done by showing that a substantial proportion of people who are likely to become purchasers of the goods of the kind in question associate the name with them." This fact-situation is not likely to arise in this case. The decision reported in Dhanalakshmi Weaving Works v. Hajee Mohammad Abdul Azeez Sahib, 1942 AIR(Madras) 179 went in favour of the plaintiff because the learned Judge held that it was possible to infer that the goods of the plaintiff and that of the defendant could be traced to a common origin. Allergan Inc. v. Milment Oftho Industries and others, 1998 AIR(Calcutta) 261 which relates to pharmaceutical products, was a case where the plaintiff was granted injunction because of the nature of reputation of the plaintiff and the likelihood of the public purchasing Indian goods under the impression that he is buying the foreign Companies product. 26) None of these cases come to the help of the applicant since in this case there is no evidence to show that they had established a reputation in the market for this particular product prior to the respondent. Their reputation also is not of the Kind that came up for consideration before the Court in the 'Benz' case or 'Bata' case. Moreover, there is not a scrap of evidence to show and support the claim made by them in their plaint of nation-wide sales in leading departmental stores and fashion arcades. Now, if one were to look at the realities of the market, it is crystal clear that there can be no confusion or deception in the mind of the customer that the respondent's goods are passed off as the applicants. Now, if one were to look at the realities of the market, it is crystal clear that there can be no confusion or deception in the mind of the customer that the respondent's goods are passed off as the applicants. In the book the Law of Trademarks and Passing Off of Dr. S. Venkateswaran, 4th Edition, while dealing with Section 12 of the Trade and Merchandise Marks Act, 1958, it is stated that only the persons likely to purchase the goods are to be considered and persons who buy expensive articles such as pianos or motor cars are presumed to be persons of some education and would buy after careful inspection. The author of the book distinguishes such persons from persons who are generally illiterate, for instance, purchasers of 'beedies' as observed by the Privy Council in Subbiah Nadar v. Kumaraval Nadar. The clientele at the applicant's shop 'Cinnamon' are not likely to be confused or deceived, that the mass produced 'ready to wear apparel' marketed by the respondent and sold over the numerous wholesale and retail outlets all over India are the applicants' products. Even in the documents filed by the applicant at page 32 with regard to future file it reads as follows : "Branches in other cities to showcase contemporary designs.", and while decribing what is presently on the racks, it refers only to various designer labels, but not to the 'Cinnamon' label. Therefore, the averments in the plaint are not supported by any material. (28) There is no proof of prior user, no likelihood of confusion or deception, no evidence of the plaint statements and no factual basis to justify grant of an interim order. Further, though in the plaint at para 3, they refer to the date of application for registration, at para 16 they refer to the trade name 'Cinnamon' as having been lawfully registered by the plaintiff company. This is repeated in the Judges summon and the affidavit filed in support there to. Of course, the applicant might say that in the earlier para when they have specifically refer to their application being pending, there is no intention to mislead. But an applicant seeking injunction has to be careful about the averments he makes since interim orders are granted only on the basis of affidavits. Of course, the applicant might say that in the earlier para when they have specifically refer to their application being pending, there is no intention to mislead. But an applicant seeking injunction has to be careful about the averments he makes since interim orders are granted only on the basis of affidavits. The applicants' claim regarding commencement of the "Cinnamon" division, manufacture of ready-made garments, and nation-wide sales have been found to lack basis. (29) Further, the legal notice sent by the applicant's counsel dated 6.11.2000 runs as follows : "My client is a renowned seller of garments branded under CINNAMON name amongst other goods for a long time." The notice is carefully ambiguous as to the nature of the garments that is sold under the name 'Cinnamon and the date of commencement of user. Whatever invoices that were filed, certainly do not reflect the case of the applicant. An additional paperbook was filed carrying letters from third parties referring to the Shop Cinnamon and their willingness to design for the shop, and affidavits sworn to by persons stating that dealers have denied the sales of respondent's "Cinnamon". These documents are by and large after the suit, and cannot be given much weightage and further on the basis of other materials I have found that the respondent has shown prior user, while the applicant has not been able to support even the plaint claim. (30) The contradiction with regard to dates of user by the respondent has been explained by stating that the prior user referred to in the affidavit was with reference to the textile suiting and shirting marketed under the trade name 'Cinnamon' whereas what was launched by the Managing Director was the total wardrobe solution which was a mega product and, therefore, released and advertised in the press with fanfare. This explanation is quite plausible and acceptable. The decisions referred to and relied on by the respondents also come to their aid. The importance of prior user, the relevancy of registration at this stage, the adequacy of damages and the consequence of failure to produce evidence of prior user have been considered in them. At this stage atleast the respondent's evidence showed that they got there first, as opposed to the applicants'. The importance of prior user, the relevancy of registration at this stage, the adequacy of damages and the consequence of failure to produce evidence of prior user have been considered in them. At this stage atleast the respondent's evidence showed that they got there first, as opposed to the applicants'. (32) To the notice dated 6.11.2000 the respondents replied seeking the following details :(a) Specimens of their Cinnamon products, (b) date of commencement of user of the mark for ready made garments, (c) details of applications for registration, (d) evidence to show user with regard to garments (e) quantum of sales. To this no material was furnished by the applicant. So the respondent sent another letter on 4th December 2000. This notice was received by the applicants, though no reference is made to it in the plaint. Not only that out of the five queries raised by the respondent in their notice only question Nos. 3 and 5 were answered by the applicant even in their plaint. Questions 1, 2, 4 have been consigned to a limbo of unremembered things. When the respondent produced snatches of materials to show materials bearing the stamp 'Cinnamon' and marketed by them, materials bearing the trademark 'Cinnamon' woven into them and marketed by them and materials bearing other trademark like Colorado, Columbia etc., which were also marketed by them, the applicant produced absolutely no evidence to show ready to wear apparel marketed by them in invoice to support their claim or any sign of trading activity outside the shop called 'Cinnamon'. (33) I find the applicants have been selective about the facts to be placed onest. The applicants' mark whatsoever, being without user does not create any special circumstances for consideration under Section 12(3) of the Act on honest concurrent user. Hence, objection raised under 12(1) of the Act is sustained. Next, I will take up the opponents' objection raised under Section 11(a) of the Act, this objection is apparently based on the alleged use and reputation of the opponents' trade mark 'BACTRIM'. It is well settled that when before the Court. Such a party cannot get injunction, which is a purely discretionary one. Next, I will take up the opponents' objection raised under Section 11(a) of the Act, this objection is apparently based on the alleged use and reputation of the opponents' trade mark 'BACTRIM'. It is well settled that when before the Court. Such a party cannot get injunction, which is a purely discretionary one. The Supreme Court in The Cynamid case held as follows : "if damages is the measure recoverable at common law would be adequate remedy and the defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the plaintiff's claim appeared to be at that stage....." In this case even the applicants cannot deny that the respondent is a company whose turnover exists Rs. 50 crores. Therefore, even if damages have to be awarded to the applicant in the final instance, the respondent would definitely be in a position to pay them. Further, in this case the applicant's claim is far from strong. (34) Applicants have not shown prior user, nor sales of the goods of the nature and to the extent described in the plaint, nor established satisfactorily likelihood of deception or confusion. In the absence of prima facie case, injunction cannot be granted. Injury and balance of convenience are not in favour of issue of an order of injunction either. There is absolutely no real or tangible risk of confusion or deception as claimed by the applicants. The factors which are repeatedly stressed to be the essence of a passing-off action, by the English Courts and the Supreme Court, are not present here. (35) In the result, O.A. No. 1193 of 2000 is dismissed. The interim injunction granted in vacated. Application 78/2001 is therefore allowed. No orders are necessary in Application No. 77/2001.