JUDGMENT A.S. Bopanna, J.— The defendants in O.S. No. 5426/1995 are before this Court in this appeal against the judgment and decree dated 30.11.2007. By the said judgment, the suit of the plaintiff is decreed. The suit is for permanent injunction against the defendants and persons claiming under them from using in relation to any balm or any other medical product, the impugned trade mark Flying Tiger Balm or Flying Tiger in English and Chinese characters, i.e., the device of Leaping Tiger with wings which is deceptively similar in any manner whatsoever to the plaintiffs' trademark Tiger Balm, Tiger in English and Chinese characters so as to pass off or enable others to pass off the defendants goods as that of the plaintiffs. 2. The case of the plaintiffs is that the first plaintiff is a company constituted under the Laws of Singapore carrying on business as manufactures and dealers of medicinal products known internationally as 'Tiger Balm'. The second plaintiff is also constituted similarly and is stated to be the subsidiary of the first plaintiff since the first plaintiff owns 75% of its shareholding. The first plaintiff is said to be operating through the second plaintiff who is a licencee of the first plaintiff in respect of medicinal products sold under the trade marks Tiger, Tiger Balm and the device of Leaping Tiger. The third plaintiff is said to be a company incorporated in India and is appointed as the licencee by the first plaintiff to manufacture and market the above said medicinal products. The second defendant is said to be a manufacturer and dealer of medicinal products including balm and oil and the first defendant is engaged in selling the second defendants' products in Bangalore. The said manufacture and sale is by using the trademark Flying Tiger Balm, Flying Tiger, Tiger Balm, Tiger and the labels, cartons and both are said to be deceptively similar to the trademark, labels, cartons and bottle of the first plaintiff as used by the second and third plaintiffs' in respect of goods manufactured by them. 3. The plaintiffs contend that one Aw Chu Kin, a Chinese in Rangoon, Burma in the year 1890 prepared a medicinal ointment. About the year 1900, his two sons by name Aw Boon Haw and Aw Boon Par decided to manufacture and market the balm under the trading name Eng Aun long in Rangoon, Burma. 3. The plaintiffs contend that one Aw Chu Kin, a Chinese in Rangoon, Burma in the year 1890 prepared a medicinal ointment. About the year 1900, his two sons by name Aw Boon Haw and Aw Boon Par decided to manufacture and market the balm under the trading name Eng Aun long in Rangoon, Burma. In this regard, the said brothers adopted a trademark consisting of the device of the Leaping Tiger and the word 'Tiger' forms part of the name of the elder brother since 'Haw' in the name Aw boon Haw means Tiger in Chinese language. The word 'Par' in the younger brother's name means leopard in Chinese. Therefore, the trademark Tiger and the device of a leaping Tiger was used in respect of Balm and oil manufactured by the said brothers in 1900 and the said trademark and labels have acquired tremendous reputation and goodwill not only in Rangoon but also in other countries including India since it was being exported to India. In 1932, a the company known as Haw Par Brothers (Pvt.) Ltd., was incorporated which took over the business of the said two brothers and also the assets including the trademark. The business was therefore carried on in Singapore and exported the Balm to various countries including India until the occupation of Burma and Singapore by the Japanese Army during the II World war. After the war, it was once again being imported in India and it has become a common household item. It is contended that though the import restriction was imposed in 1958, the said goods continued to be available in India since persons travelling abroad would bring it on their return. As such, at all times, the plaintiffs' goods had tremendous reputation in India. The said trademark is stated to be registered in several countries and pending in some countries. 4. The first plaintiff is said to have taken over the business of Haw Par Brothers (Pvt.) Ltd., in respect of the said balm in the year 1969 which included all rights including the trademark and have become the subsequent proprietors of various marks. Hence, the first plaintiff claims to have become the proprietor of the said trademark and the Chinese characters/letters which means Tiger. The first plaintiff has given the licence to the second plaintiff to manufacture and market the said Balm, Oil and other medicinal products. Hence, the first plaintiff claims to have become the proprietor of the said trademark and the Chinese characters/letters which means Tiger. The first plaintiff has given the licence to the second plaintiff to manufacture and market the said Balm, Oil and other medicinal products. The plaintiffs have referred to the various labels, photographs and also the advertisements and articles in newspapers and magazines to indicate the popularity. Reference is also made to charitable institutions for social objects and public utilities, gardens and attractions known as Tiger garden, Tiger Balm garden. Tiger villas etc in Hong Kong, Singapore, Burma and other places. 5. The plaintiffs made applications for registration of its six marks in India. The predecessors of the first plaintiff had also made applications containing the words Tiger Balm, Tiger in English and Chinese characters and the device of Leaping Tiger. In respect of two of the applications bearing Nos. 306622 and 316936, two oppositions are filed by the second defendant claiming prior registered similar trademarks in India. The oppositions were allowed by the Deputy Registrar of Trade Marks, Calcutta and the first plaintiff has preferred two appeals to the Hon'ble High Court at Calcutta in Appeal No. 194/1989 and 195/1989 which are pending. Though the second defendant claims to be registered proprietors of the devise of leaping Tiger with prominent wings and Chinese characters under Nos. 244978 and 263300, the first plaintiff has filed application for rectification of the entries in the trade marks Registry, Ahmedabad for removal of the same since it has been obtained by fraud and since the same are causing confusion as they are deceptively similar. The said proceedings were also pending and the Registrar by order dated 10.07.1995 is stated to have removed the said trademark. That apart, the second defendant has made application for registration of Flying Tiger and device leaping Tiger with wings under Nos. 375905, 421935 and 470891 and the same have been opposed by the plaintiffs upon the same being advertised. The proceedings are stayed till disposal of the Appeal before the High Court of Calcutta. The details of the other proceedings and opposition is also referred. 375905, 421935 and 470891 and the same have been opposed by the plaintiffs upon the same being advertised. The proceedings are stayed till disposal of the Appeal before the High Court of Calcutta. The details of the other proceedings and opposition is also referred. Since the defendants are using trademark Flying Tiger Balm, Flying Tiger in English and Chinese characters and the device of Leaping Tiger with wings being identical and/or deceptively similar to the first plaintiffs mark, it is contended that it amounts to the tort of passing off, actionable at the instance of the plaintiff. 6. The plaintiffs allege that the Directors of the second defendant despite being aware of the reputation of the plaintiffs' trademark, on their migration from Rangoon in Burma, applied for registration of trademark making false claim of proprietorship and use, On 21.3.1970 the defendants' predecessors again with full knowledge of the plaintiffs' worldwide existence fraudulently and dishonestly applied for and obtained registration of three labels collectively being top seal round label, rectangular label and wrapper label each containing the words Flying Tiger Balm, Flying Tiger in English and Chinese characters and the device of Leaping Tiger with significant wings. The trademark No. 26330 was obtained by practicing fraud and has now been removed. The plaintiffs contend that the colour scheme, layout, getup, scheme of arrangement and paneling adopted and used by the defendants in respect of their labels and carton are identical and or deceptively similar to the one used by the plaintiffs. The defendants have recently adopted the hexagonal shaped carton and bigger cartons with deceptively similar marks, which show the intention of the defendants to trade upon the plaintiffs reputation and goodwill. The defendants instead of refraining from passing offf their goods have instead filed a suit, for infringement and passing offf against the first and third plaintiffs from using the trademark Tiger Balm, Tiger. The trial Court passed an ex parte order of injunction. The plaintiffs filed appeal and the High Court of Gujarat set aside the same by order dated 07.07.1995 in Appeal No. 385/1995. The plaintiffs therefore contend that the trademarks of the plaintiffs consisting of the device of leaping Tiger, the words Tiger Balm and Tiger in English and Chinese characters meaning Tiger and the labels, wrappers, cartons and the hexagonal shaped bottle/container have acquired reputation all over the world including India. The plaintiffs therefore contend that the trademarks of the plaintiffs consisting of the device of leaping Tiger, the words Tiger Balm and Tiger in English and Chinese characters meaning Tiger and the labels, wrappers, cartons and the hexagonal shaped bottle/container have acquired reputation all over the world including India. The defendants have fraudulently adopted the identical and/or deceptively similar trademark to pass off their goods and as such the plaintiffs seek for permanent injunction to restrain the defendants. The plaintiffs have also sought for damages. 7. The second defendant has filed the written statement. It is contended that the business of the defendant commenced in the year 1965 and has rapidly expanded. The sales turnover of the defendant as on 31.3.1998 is stated to be Rs. 1.20,38,173.03 ps. The products are being exported to several countries and the sales promotion expenditure for publicity of its products as on 31.03.1998 is stated to be Rs. 1,10,275/- per annum. The defendant has continuously used its trade mark Flying Tiger Balm, the device of leaping Tiger with wings, the words Flying Tiger in English and Chinese characters along with its distinctive labels and packaging. The defendant has been selling openly for nearly 35 years. In this regard, it is contended that Ahmed Adam Moola, one of the senior Directors of the second defendant company is a nephew of one Ibrahim Hoossen Moola. The said Ibrahim Hoossen Moola went to Rangoon in 1922 and set up his business which included the business in chemicals and Pharmaceuticals. In 1939, Ahamed Adam Moola joined him in the said business. During the outbreak of II World War Ibrahim Hoossen Moola returned to India and went back to Rangoon on cessation of war. Ahmed Adam Moola was a partner of the firm M/s. Goolab and Moola company which was stockist for pharmaceutical companies in the world. The products stocked for sale included Tiger Balm. Ahmed Adam Moola therefore knew of the existence of Tiger Balm since then. Moreover. Ibrahim Hoossen Moola was aware of the balm known as Tiger Balm available in Rangoon since 1922, during which period the plaintiff nor its predecessors had any market presence. The products stocked for sale included Tiger Balm. Ahmed Adam Moola therefore knew of the existence of Tiger Balm since then. Moreover. Ibrahim Hoossen Moola was aware of the balm known as Tiger Balm available in Rangoon since 1922, during which period the plaintiff nor its predecessors had any market presence. The defendant accordingly engaged in the manufacture of medicinal balms and established its place of business at Surat, Gujarat State and has been carrying on its business since 1965 and they have been selling its products under the distinctive trademark of Flying Tiger Balm with distinctive labels. The device winged Tiger with the words Tiger Balm have been registered under No. 244978 from 20.10.1967 in Gujarat. It was registered in other parts except Tamil Nadu, Andhra Pradesh, Kerala and Karnataka. The said registration bears TM No. 263300 with effect from 23.07.1970. The application for registration for rest of India is pending. The products manufactured by the defendants enjoys excellent market both in India and overseas. Extensive advertisement has been made and also the quality of the product has achieved considerable goodwill and popularity. 8. The defendants have referred to the suit filed by the defendant, against the first and third plaintiff before the District Court at Surat in No. 3/94 for infringement of its trademark. The suit against others in No. 4/94 is also referred. The defendant has also contended about opposing the attempts of the plaintiff in obtaining registration. It is contended that the first and second plaintiffs are foreign companies which have neither registered their trademark in India nor they have market presence in India. The alleged goodwill and reputation as claimed by the plaintiffs is only by virtue of the plaintiffs passing off their goods as those of the defendant. The plaintiffs were all along aware of the presence of the defendant company and its products, trademark and copyright. They applied for registration of their alleged marks for the first time in India in 1973-76 vide application No. 306622 and No. 316936 dated 20.07.1976, but the same was not pursued for several years and it was advertised by the Trade mark registry only in 1983-84. The same was opposed by the plaintiff and the present suit has been filed merely to overcome the serious hurdles. The defendants have also secured copyright for its artistic "Flying Tiger" under copyright Act 1957. The same was opposed by the plaintiff and the present suit has been filed merely to overcome the serious hurdles. The defendants have also secured copyright for its artistic "Flying Tiger" under copyright Act 1957. The defendant commenced and has continuously used the mark "Flying Tiger Balm" for nearly 35 years and has built up a large volume of business for its goods, the plaintiffs for the first time have filed the suit in August 1995. The defendants have also contended that pursuant to the orders of the Hon'ble Supreme Court of India in S.L.P. No. 13978/97, the defendants have changed the get up of its labels and shape of the bottle and though the same is done without prejudice, the objections of the plaintiff would not survive in view of such changes. In addition to the above, the defendants have also traversed the plaint parawise and have denied the contentions put forth therein. The defendants have therefore sought for dismissal of the suit. 9. In the light of the rival contentions urged by the parties, the trial court framed five issues initially and three additional issues thereafter on 03.09.2002 and as such in all eight issues were framed. The issues read as hereunder. Issues 1) Do plaintiffs prove that the defendants are using identical and/of deceptively similar trademarks? 2) Do they further prove that the labels, wrappers and cartons used by the defendants contain the identical and/or deceptively similar design, colour scheme, layout and getup? 3) Do they further prove that they have suffered damages due to the acts of defendants? 4) Are plaintiffs entitled to the reliefs as claimed? 5) What relief? Additional Issues 1) Do the plaintiffs prove that they are prior users of the trademark 'Tiger Balm" consisting of the device of a leaping tiger and the word 'Tiger' in respect of its Balm in India? 2) Do the plaintiffs prove that they had built up a reputation and trade name in India for the mark Tiger Balm' consisting of the device of a leaping Tiger when the defendant commenced its production and sales of flying tiger balm in India? 3) Who is the owner/proprietor of the disputed trademarks? 10. 2) Do the plaintiffs prove that they had built up a reputation and trade name in India for the mark Tiger Balm' consisting of the device of a leaping Tiger when the defendant commenced its production and sales of flying tiger balm in India? 3) Who is the owner/proprietor of the disputed trademarks? 10. In order to discharge the burden cast on the parties by the said issues, the plaintiffs examined PW-1 to PW-3 and marked documents at Ex.P-1 to P-268 (a) and also C-1 to C-3 and M.O. 1 to 3. The defendants examined DW-1 to DW-3 and marked documents at Exhs.D-1 to D-180. The trial Court after analysing the evidence and law on the point, has answered all the relevant issues in the affirmative in favour of the plaintiff and has accordingly decreed the suit. The defendants therefore claiming to be aggrieved by the judgment and decree dated 30.11.2007 are before this Court in this appeal. 11. Sri S.S. Naganand, learned Senior counsel appearing for the appellants-defendants as narrated in the pleadings has stressed about the commencement of business by the defendants from 25.06.1965. The Trademark registration application dated 20.10.1967 (Ex.D-25) was referred to. The suit is for passing offf and not for infringement. The witness of the plaintiff has admitted that sale in India was in 1974 though sale in other countries at an earlier point is stated. Hence defendants claim is to a period prior in time. In 1965 the plaintiffs were not interested and as such by merely relying on pamphlet would not be sufficient. The averments in the plaint itself would indicate acquiescence. On these two aspects, the averments in para 9(c) and 16 are pointed out. Though plaintiffs were aware what happened in 1965, no steps were token. The learned senior counsel referred to the evidence tendered on behalf of both the parties. Commenting on the evidence of PW-1 it is pointed out that the said witness was born on 04.06.1948 while the issue relates to the user during the year 1965 and as such evidence of a person who had no knowledge cannot be relied on. The document at Ex. P-129 is referred and is contended that first plaintiff commenced in 1969 in Singapore while second plaintiff claims commencement in 1988. Hence link between predecessor is not shown and no documents are produced between 1939 to 1988. The document at Ex. P-129 is referred and is contended that first plaintiff commenced in 1969 in Singapore while second plaintiff claims commencement in 1988. Hence link between predecessor is not shown and no documents are produced between 1939 to 1988. Though PW-2 stated about turnover has not produced materials regarding sales. The said witness also does not have personal knowledge. The witness PW-3 also has no knowledge since he continued to state that the bottle is hexagonal though the same was changed in 1998 pursuant to the order of the Court. It is therefore contended that the case of the plaintiffs is not advanced by the three witnesses. In a passing offf action, evidence should have been there regarding reputation and sales made in the country and also the goodwill earned due to advertisement and reputation. The application filed earlier alone will not indicate earlier market. In trademark the territory is specific. 12. It was further contended that on the other hand DW-1 who was examined on behalf of defendants is the person who manufactured the balm, is aged 82 years and as such has stated the manner in which it was started after a conscious decision was taken on making enquiries. The witness D.W.2 has stated about the sales figure and D.W.3 has stated about the distributor ship. The relevant documents in 'D' series is referred from the point of passage of Ahmed Adam Moola from Burma to India on 18.10.1960 and the manner in which the business was commenced and the sale of products as indicated in Exhs.D10 to D91. The documents relating to public notice and advertisement in respect of Flying Tiger are referred to point out that there were open, clear and categorical advertisement. The applications made by the defendant for registration and also that of the plaintiff and abandonment of the same is stated. The judgments cited before trial Court and referred therein were commented upon to contend that the case of Milment Oftho Industries v. Allergan Inc. AIR 2004 SC 3355 ought not to have been relied on against the defendants. The delay, laches and acquiescence have not been appreciated properly by the trial Court. The question is regarding the position as in the year 1965 and not as in 1995. AIR 2004 SC 3355 ought not to have been relied on against the defendants. The delay, laches and acquiescence have not been appreciated properly by the trial Court. The question is regarding the position as in the year 1965 and not as in 1995. In this regard, it is contended that all the observations made by the trial Court is not with reference to 1965 since there is no documents relating to reputation at that point. The magazine at Ex.P.109 could not have been relied on since the author of the book is not examined. They are international magazines and more so when the witness admits that there was no advertisement. It is contended that the trial Court has failed to notice that the defendants are the first users. The fact of application under Section 12(3) does not mean admission of concurrent use. The trial Court has not assessed the documents in its correct perspective except referring to the same. Though the reply argument was also exhaustive, the same is a reiteration of the arguments addressed and noticed above. The emphasis was on the aspect of who got there first. In that regard and also on the aspect of reputation and goodwill, decisions were cited which would be referred while considering the contentions. 13. Sri K.G. Raghavan, learned senior Counsel appearing for the respondent-plaintiff contended with regard 10 the pragmatic way of looking at commercial transaction Para-9 of the plaint was referred to contend that the plaintiff has explained the reason for which the mark 'Tiger' was adopted by the plaintiff. Ex.P.2(63), Ex.P.8(5) and Ex.P.177 are referred to indicate the mark of the plaintiff and that of the defendant to point out the deceptive similarity of the mark adopted by the defendant. Except for the wings, in every respect the mark is similar. The leaping tiger in 64 circles with same design including the Chinese character has been copied. There is no explanation as to why a similar mark was adopted and on the other hand, there is admission in para-3 of the written statement. When there is such dishonest adoption, the plea of delay and acquiescence on the face of it should fail. The appellants have claimed that they are the users from 1965 as per Ex.D.2, whereas Ex.P.236 indicates the registration of the plaintiffs mark in 1940 itself. When there is such dishonest adoption, the plea of delay and acquiescence on the face of it should fail. The appellants have claimed that they are the users from 1965 as per Ex.D.2, whereas Ex.P.236 indicates the registration of the plaintiffs mark in 1940 itself. Even otherwise, the parties have been contesting against each other before the Trade Mark Registry and also the suits in Surat and as such even on that count, the plaintiff has not laid back to watch the invasion of their right so as to attribute delay. When there is admission by the defendants in the written statement with regard to the manner of adoption and the plaintiff being a leading pharmaceutical company, that itself is sufficient to indicate that they have used a similar mark to trade on the reputation. The evidence of P.W. 1 in any event is not claimed as one of personal knowledge. He has referred to the documentary evidence. The additional issues are important and would decide the entire case. The documents at Exhs.P.233 to 238 are also referred to indicate that the plaintiffs were already in the market and the Internet Guide, Tiger Balm Garden, Haw Par Villa etc, are also referred. Vide Ex.P. 133, the defendants have filed application under Section 12(3) of the Act and stated regarding concurrent user and as such they cannot contend regarding prior user. 14. The evidence of D.W.I and his cross-examination is referred to indicate that the contents of para-3 of written statement is admitted by the said witness as being within his knowledge. On pointing to the discrepancies, it is also contended that Mukesh Gamanlal Mandalaywala has not been examined though it is stated that he had all the files relating to registration. D.W.2 is the Chartered Accountant, whose evidence is not helpful and the sales certificate (Ex.D.173) does not indicate regarding Flying Tiger Balm. The cross-examination of D.W.3 is referred to indicate that he has no knowledge. Even assuming the defendants started in 1965, when it is not fair and honest adoption, no benefit should be given. If the explanation for the manner in which it was started is accepted, the character should have been in Burmese and not Chinese. In that circumstance, the prior use of the mark anywhere in the world is sufficient. Even assuming the defendants started in 1965, when it is not fair and honest adoption, no benefit should be given. If the explanation for the manner in which it was started is accepted, the character should have been in Burmese and not Chinese. In that circumstance, the prior use of the mark anywhere in the world is sufficient. The only question is whether prior use should be within the country alone or whether outside India when transborder reputation is sufficient. In this regard, the decisions of the Hon'ble Supreme Court in, Whirlpool, Ramdev and Allergan are relied to indicate that marketing need not be in India also. Hence, it is contended, in the instant case, there can be no dispute that the plaintiffs were prior users and when the defendant has failed to show honest adoption, the question of delay does not arise. The trial Court has in that regard referred to all the evidence and law and has come to its conclusion which does not call for interference. 15. The decisions relied on by the learned senior Counsel appearing for the parties, and those of which are relevant for the purpose would be referred and discussed at the appropriate stage. 16. Based on the rival contentions, the following points arise for consideration: (i) Whether the plaintiffs have established that they are entitled to claim right over the product and mark 'Tiger Balm'? (ii) Whether the Court below was justified in accepting the evidence available on record to come to the conclusion that the plaintiffs have established transborder reputation? (iii) Is the mark 'Flying Tiger Balm' adopted by the second defendant deceptively similar to the mark Tiger Balm' and if similar, whether such adoption of the mark can be considered honest adoption? (iv) Even if the defendants establish that they were the first to adopt the mark in India and if it is found that such adoption cannot be considered as honest adoption, can the continuance be permitted? (v) Has the Court below granted the appropriate relief in the facts arising in this case or does it call for interference? (vi) What order? 17. In the above background, what is noticed is that the suit in question is one for relief against passing off. (v) Has the Court below granted the appropriate relief in the facts arising in this case or does it call for interference? (vi) What order? 17. In the above background, what is noticed is that the suit in question is one for relief against passing off. The plaintiff-respondent claims right in respect of the mark 'tiger Balm' and such other allied products and the grievance is that the appellant-defendant by use of the mark 'Flying Tiger Balm' is passing off the products which is similar to that of the plaintiff by use of deceptively similar mark. In such case of passing off, the question of trading on the reputation of the plaintiff as claimed by them would arise. The issue as to whether the plaintiffs have established transborder reputation would also arise since the defendants have contended that they had started their business under the said trademark in the year 1965 at a time when the plaintiff had no business in India. However, the plaintiff on the other hand contend that their predecessors had established the business with the mark of leaping Tiger and had not traded officially in India from 1958 due to trade restrictions, but the product was known in India and was also available as a duty paid product. 18. The issues as framed by the trial Court in view of such rival contentions has already been extracted above and noticed. Since both the learned senior counsel appearing for the respective parties have commented upon the oral evidence tendered by either of the parties, it would be appropriate to notice the evidence as tendered before the trial Court. Sri Han Ah Kuan is examined as P.W.1 on behalf of the plaintiffs. The said witness is a Singapore National and is the Executive Director of Haw Par Corporation Ltd., Singapore i.e., the first plaintiff. He is also associated with the second plaintiff. He has stated that due to his position, he has access to the various documents and records of the first and second plaintiff companies. The said witness has stated with regard to the manner in which Tiger Balm was concocted in the year 1890 and also about the subsequent sequence of events and about the reputation of the product. He has stated that due to his position, he has access to the various documents and records of the first and second plaintiff companies. The said witness has stated with regard to the manner in which Tiger Balm was concocted in the year 1890 and also about the subsequent sequence of events and about the reputation of the product. He has furnished the details about the trademark registration of the first plaintiff from the year 1928 in different countries to point out that the same existed even prior to the year of 1965 i.e., the year of adoption claimed by the defendants. The publications and books are referred to point out the popularity of the plaintiffs' products. He has also referred to the knowledge of the defendants about the plaintiffs' products as it existed in Burma when the defendants left that place and also of having stated that there is no competitor in India. In that background, the manner in which the Flying Tiger has been adopted with deceptive similarity has been stated. Since the evidence was tendered in the form of an affidavit, the documents have been marked subsequently. In the cross-examination, the witness has stated that his date of birth is 04-06-1948 and about the association from the year 1991. There is detailed cross-examination directed at establishing that the said witness has no personal knowledge and more particularly, to point out that the said witness was a young boy at a time when the defendant had started business in India and that the said witness does not have knowledge about the sale claimed to have been made in India by the plaintiffs during that period and as such to contend that the said witness is not a competent witness. The learned senior counsel for the appellant also contended so before this Court. In fact, the admission in the cross-examination that he was not aware of the advertisements made during 1958 to 1969 and that the advertisement and direct marketing made only in 1994 was referred to. Having perused the evidence, it is no doubt true that, the very nature of the evidence would indicate that the said witness has no personal knowledge to events which occurred prior to his joining the company and in any event, such claim has not been made. Having perused the evidence, it is no doubt true that, the very nature of the evidence would indicate that the said witness has no personal knowledge to events which occurred prior to his joining the company and in any event, such claim has not been made. The said witness being a responsible officer of the company has produced and marked the documents which were in the custody of the company. The documents produced from his custody relate to the trade mark registration dating back to 15.11.1928 and also in different countries and in such circumstance based on the documentary evidence when he has spoken about the predecessors' interest and thereafter when he has spoken about the entire details relating to the dispute in question, the evidence cannot be discarded as if it has no evidentiary value whatsoever. The voluminous documentary evidence produced through the said witness in any event cannot be ignored and would have to be analysed while looking into the nature of contentions regarding the transborder reputation and the right to protect the trademark even if there was no marketing in a particular territory keeping in view the legal position and the other attendant circumstance. Hence, the documents would be noticed at the appropriate juncture. 19. The second witness Sri Shrikrishna Panduranga Date was examined as P.W.2. He is said to be the Company Secretary of Elder Pharmaceuticals Ltd., which is the distributor of the third plaintiff. He has stated about having knowledge of the commercial negotiation between the first and third plaintiff. He has also stated about the nature and popularity of the product 'Tiger Balm'. The said witness has also stated about the manner in which the defendants have made use of the Flying Tiger mark for selling their product in India, while the mark Peacock/Tuhu has been used in other major territories as otherwise it would have attracted passing off/infringement since the plaintiff had registration in such of those territories. The subsequent manufacturing from 1994 onwards has also been stated and the turnover details from 1994-95 onwards have been furnished. The subsequent manufacturing from 1994 onwards has also been stated and the turnover details from 1994-95 onwards have been furnished. In the nature of the contention that the relevant period is 1965 when the defendants commenced their business in India, the cross-examination is also to the effect that the said witness does not have knowledge of the relevant period and to indicate that the witness has stated that the third defendant commenced production of Tiger Balm in India only in 1994. One other witness examined on behalf of the plaintiff is one Sri V. Lokesh, who was examined as P.W.3. The said witness who hails from Tamil Nadu and working in Mysore has stated with regard to the product Tiger Balm which was manufactured in Singapore being available in his native Trichi. He has stated about the popularity of the product even though it was not manufactured and marketed in India. In that context, he has stated about the situation when he was mislead into buying Flying Tiger Balm. The cross-examination is directed at testing the veracity of the statements made by the said witness and to drive home the contention of the defendants that Tiger balm was not popular in India and that the question of deception did not arise. 20. On the other hand, on behalf of the defendants Sri Ahmed Adam Moola i.e. the Founder Director of the second defendant has examined himself as D.W.1. He has stated about his birth in Gujarat and having migrated to Burma in 1938 seeking better prospects and having returned to India in view of the II World War in 1946. He has spoken about the starting of M/s Goolab and Moola Company and that he was trained by his uncle in preparation of chemicals and other medicinal products. In 1964, since all the properties in Burma were nationalised, the said witness and his family returned to India. On return, he commenced business in India with Yusuf Ibrahim Moola, Sulaiman Yusuf Hasia and Yacoob Cassin Bham during 1965 under the name and style Rangoon Chemicals Works and manufactured balms such as 'Lion Balm', 'Burmex' and 'Flying Tiger Balm'. In 1964, since all the properties in Burma were nationalised, the said witness and his family returned to India. On return, he commenced business in India with Yusuf Ibrahim Moola, Sulaiman Yusuf Hasia and Yacoob Cassin Bham during 1965 under the name and style Rangoon Chemicals Works and manufactured balms such as 'Lion Balm', 'Burmex' and 'Flying Tiger Balm'. He has stated about the manner in which the business was carried on and also about the registration of the mark 'Flying Tiger Balm' on 20.10.1967 for the State of Gujarat and for the States of Tamil Nadu, Andhra Pradesh, Kerala and Karnataka on 23.07.1970. The sales turnover has been stated by him. The registration of other brands and the copyright registration of 'Flying Tiger' is also referred and also the advertisement to popularise the same is also stated. He has stated that the plaintiffs in fact attempted to infringe the defendants mark in the Indian market and as such Civil Suit No. 3/94 is filed in Surat. The plaintiff having filed application for registration in 1975 and not pursuing the same till 1983-84 is stated. The defendant is stated to have filed opposition and on hearing the same was allowed by order dated 28.12.1988 and the appeal filed is pending. The plaintiff thereafter filed rectification application which was allowed but on appeal by the defendant, it was set aside by the High Court of Gujarat on 05.09.19S5. The witness further states that the second defendant has commenced and continuously used the trademark 'Flying Tiger Balm' and its products from 1965-66 and the same has been openly used. In support of the statement made by way of affidavit, the said witness has also produced and marked the same in evidence. He was subjected to extensive cross-examination. Apart from other aspects of the matter relating to the manner in which the business was started in India, the cross-examination was directed at the manner in which the trademark 'Flying Tiger' was adopted. He has attempted to explain that Goolab Moola and Co., comprising of Ibrahim Hussain Moola and Goolab Khan conceived the name 'Flying Tiger' but has stated that he does not know as to how they conceived the same. He has attempted to explain that Goolab Moola and Co., comprising of Ibrahim Hussain Moola and Goolab Khan conceived the name 'Flying Tiger' but has stated that he does not know as to how they conceived the same. Since the said explanation is contrary to what has been stated in the written statement, it has been extracted from the witness about the correctness and the knowledge of the contents of the written statement. With regard to registration of the trademark, he has stated that it was done at the instance of Sri Gaman Lal Nana Bhai Mandalaywala who joined the partnership and subsequently his son Mukesh Gamanlal Mandalaywala become the Director and with regard to the trademark he has stated that the files are with him and that he was available at Bangalore at the time of recording his evidence. The line of cross-examination made further is in the direction that the defendants have adopted Flying Tiger to copy the mark Leaping Tiger belonging to the plaintiffs. No doubt, the witness has denied such suggestions but the over all effect of the evidence would have to be considered in the light of the documents and the other evidence. 21. The next witness Sri Harivacian Balavantram Kansariwala, Chartered Accountant with M/s Christi and Co., is examined as D.W.2. The firm in which the said witness was working is said to have been the auditors of Rangoon Chemical Works Pvt. Ltd., and thereafter of the second defendant after the business was taken over. He has referred to the audit report and relied on Ex.D.173 i.e., the statement of sales for sale of Flying Tiger Balm from 1965 till 2001. The said witness while being subjected to cross-examination has stated that the said document was prepared as per the information furnished by Sri Gamanlal Nana Bhai Mandalaywala. It has been extracted from him that except for the information received he has not made any further verification. The witness has also admitted that he cannot say to which product the figures in Ex.D.173 pertains to. The evidence of the said witness relates only with regard to the sale particulars and not on the aspect of the trademark. The next witness examined on behalf of the defendants is one Sri Harikrishnadas Namalal Chitaliya as D.W.3. The witness has also admitted that he cannot say to which product the figures in Ex.D.173 pertains to. The evidence of the said witness relates only with regard to the sale particulars and not on the aspect of the trademark. The next witness examined on behalf of the defendants is one Sri Harikrishnadas Namalal Chitaliya as D.W.3. He is said to have started partner of the partnership firm of M/s B. Jayantilal and Co., who were said to be the leading distributors of pharmaceutical products. He has stated that during 1966-67, Sri Ahmed Adam Moola, the partner of M/s Rangoon Chemical Works contacted them to distribute and sell various products such as 'Flying Tiger Balm' and 'Lion Balm'. He states that at that point he had heard of Tiger Balm' in the market. In the cross-examination, the authenticity and veracity of the evidence tendered by the said witness is questioned since he was unable to refer to any documents to establish the existence of the firm or the said witness having been associated with the same. The business relationship stated with Shreeji Distributors has also been questioned and even in that regard no documents have been produced. 22. The purport of the oral evidence tendered by the parties would indicate thai the effort on behalf of the plaintiff is to establish that their predecessors were the first in the world market to adopt the mark Tiger Balm' having leaping tiger with Chinese and English characters dating back to 1900 and also the registration from 1928 onwards and they have thereafter carried on the same. Though there was no manufacturing and official sale in India in 1965 due to trade restrictions imposed in 1958, the popularity of the product due to its availability through other channels even during that period is contended. It is further their case that even if the defendants had adopted the trade mark Flying tiger at a point as claimed, the very manner in which it has been adopted and way of presentation with regard to use of Chinese characters and number of circles etc. shows dishonest intention to pass of their products, since they had knowledge of the popular product known as Tiger Balm. shows dishonest intention to pass of their products, since they had knowledge of the popular product known as Tiger Balm. The defendants are however contending that in 1965, the plaintiffs had no presence at all in India and as such product of the defendants which had reputation in Burma was thereafter manufactured and marketed in India. They claim right to the trademark as the same was registered and they further contend that even otherwise there is no similarity and they were the first to use the mark in India and that they have carried on the business from 1965. They have therefore contended acquiescence on the part of the plaintiffs even if they establish any right. In this background, the documentary evidence relied on would have to be noticed to determine the first adoption of the mark the. nature of the mark and even if the defendant had adopted such mark in India whether there is similarity. In that circumstance whether the explanation is acceptable and with regard to the nature of marketing carried out in India is also to be considered. In that context even if it was not marketed by the plaintiffs' predecessor in India at that point, whether the defendant could have adopted the mark which is similar and if such adoption is not honest whether the delay would amount to acquiescence. 23. Therefore, on the first aspect of trademark of plaintiffs which has been acquired from their predecessors as claimed even though the oral evidence of PW-1 would not indicate personal knowledge regarding the adoption of mark by the plaintiff and similar mark adopted by the defendants, the documents have been produced from proper custody and marked as already noticed above and in a matter of this nature, where the adoption of the mark is century old in any event evidence by way of personal knowledge alone cannot be expected and such other satisfactory evidence can be noticed and considered. 24. In this regard the plaintiff in order to establish that their predecessors had started the business and had adopted the device of leaping tiger as their trade mark which has thereafter been adopted by them have produced and marked the list of the registration of the trade mark in different parts of the world. It is no doubt true that such trade mark had not been registered at an earlier point in time in India. It is no doubt true that such trade mark had not been registered at an earlier point in time in India. The list refers to registrations in more than 40 countries which include the countries such as Singapore, Malaysia, Hongkong etc., from where it is claimed to have been carried to India. In that regard, a reference to Exhibit P-11 to P-108 would indicate details of such registrations which is as far back as in the year 1922. The documents at Ex.P2 series relates to labels, cartons, seals which indicates the mark used by the predecessors of plaintiff in various countries and this has reference to the leaping tiger and Chinese character in round labels as seen in Ex.P-2(i) to 2(81) among which Ex.P-2(69) is of Tiger Oil. The shape of the bottle is hexagonal in respect of balm and the label used for packing has 64 circles and in each of the circles, the mark of leaping tiger is printed. These documents are produced to show the distinct manner of the use of container and. the labels used from a long period by the plaintiffs' predecessors and the plaintiffs and that too in almost all major destinations in the world. The documents to indicate the sale made in India subsequent to 1975 by way of invoices have been marked as Ex.P3 series at Ex.P-3(12) and (15) while the other documents in that series relate to sales in other parts even earlier. Of course in the nature of defence of the defendant with reference to 1965 though sale in India in 1975 may not clinch the issue the world wide presence will be a relevant aspect. The tourism promotional leaflets and also the magazines to indicate the establishment of Haw Par Villa and tiger Balm Garden are marked as Ex.P4. The documents at Exhs.P11 to P102 relate to the certificate of registration of the trade mark and the renewal from time to time in different parts of the world which as noticed would relate to the list furnished. The documents at Ex.P103 to 108 are the applications made by the plaintiff through their attorney to the Comptroller of Customs. Ex.P109 is the book titled Tiger Balm King' which reconstructs the life of Mr. The documents at Ex.P103 to 108 are the applications made by the plaintiff through their attorney to the Comptroller of Customs. Ex.P109 is the book titled Tiger Balm King' which reconstructs the life of Mr. Aw Boon Haw and has detailed reference to Tiger Balm and the manner in which it traveled to different countries with reference to India as being carried by Indian Civil Servants. The original wrappers, the carton and the package materials are marked at Ex.P110 to P112. The traveller's guide brochures etc., are marked as Ex.P115 to 116(b). The advertisements of the plaintiffs products have been marked at Ex.P120 to P124(a). The copies of the Articles of Association of Haw Par brothers and the certificate of incorporation etc are marked at Exhs.P125 to 132A. Further the other materials to indicate the establishment of Tiger Balm garden and the Villa are once again marked at Ex.P134 to 135(b). To indicate the popularity of the product and also the advertisement in this regard have been marked as Exhs. 142 to 179. The certificate of incorporation of the first plaintiff and the office copies of the invoices regarding the sale made in India have been marked as Exhs.P180 to 190 and the sale invoices in the neighbouring counties have been marked at Ex.P191 to 199. The annual returns of Haw Paw brothers for the different periods from 1970 to 1994 are marked at Exhs.P200 to P224. The annual reports of the second plaintiff have been marked at Exhs. P225 to 232. The certificate of registration and invoice-cum-challan book for the periods 1999 onwards are at Ex.P235 to 260. The stock challan and the gate passes are marked at Ex.261 to 263. The subsequent advertisement is also marked at Ex.264 series. The certificate of the chartered Accountant regarding the sales turnover is at Ex.P265. The copy of the trade mark assignment agreement has been marked as Ex.P268. The manufacturing agreement dated 4.1.1994 and the novation agreement dated 9.8.1994 were marked as Ex.C1 and C.2. In addition to the above documents? The subsequent advertisement is also marked at Ex.264 series. The certificate of the chartered Accountant regarding the sales turnover is at Ex.P265. The copy of the trade mark assignment agreement has been marked as Ex.P268. The manufacturing agreement dated 4.1.1994 and the novation agreement dated 9.8.1994 were marked as Ex.C1 and C.2. In addition to the above documents? which were marked by the plaintiffs to establish the popularity of their product with the trade mark of the leaping tiger and the Chinese character all over the world, the plaintiffs have also marked documents to indicate that the defendants have adopted a deceptively similar trade mark of the flying tiger for the very same product and had passed of their product using the popularity and goodwill of the plaintiffs products. In this regard the plaintiffs marked documents at Ex.P8 series, P9 series and P10 to indicate the seals, labels, wrappers and also the cartons used by the defendants to market their products. Similarly the documents at Ex.P113 and 114 series were marked. The copy of the application for registration of the trade mark in respect of such device by the defendant are produced as Exh.P117 and 118. In this regard the dispute raised by the plaintiff and the copy of the order passed in O.S. No. 3/1994 by the District Court, Swat is at Ex.Pl!9. The certified copy of the trade mark application and defendant's advertisement are marked at Ex.P133. The issue which was raised even when the defendant sold a similar product under the brand 'Flying Peacock' and the compromise entered into by the importer in Europe with Haw Par Corporation Ltd., is marked at Ex.P138. The advertisement of the second defendant in the trade mark journal are at Ex.P139 to 141. The application made by the defendants for registration of trade mark on 20.10.1967 is at Ex.267. 25. As against the said documents relied on by the plaintiff the defendants in order to establish that Sri Ahmed Adam Moola had migrated from Rangoon to Surat and had established business as far back as in the year 1965 at a point of time when the plaintiffs did not have any business in India have produced the documents at Ex.D10 to D24 relating to the passport details and the registration as well as partnership of Rangoon Chemical works. The drug licence and the certificates relating to the business are marked at Ex.D7, D29 series, D30 to D36 and D121. The lorry receipts, the bills and the invoices and also the purchase orders relied on by the defendants and marked at Exhs.D38 series to D85 and the excise and sales tax documents are at Ex.D37 series, D42 to 47. The financial data are marked at Ex.D88 to D119. The advertisement and the publicity made are at Ex.D120 to 143. The documents relating to the trade mark and copy rights are at Exhs.D-1 to D-6, D-9, D-25 to D-28, D-174 and D-175. The defendants have also marked the copy of the plaint in the said civil suit at Ex.D8 and the copy of the order, the trade mark dispute at D180 and the partnership documents at Ex.D171 to 180. 26. Though both the parties have marked voluminous documents as Exhibits in support of their respective cases, while analysing the contentions only such of those documents which are relevant for the purpose needs reference more particularly in view of the fact that the Court below has in fact referred to all the documents exhaustively. Farther it is to be clarified at this stage itself that the detailed reference made to the oral and documentary evidence will form the basis for the analysis and conclusion even if any one of it is not specifically referred once again. 27. In view of the findings rendered by the Court below and the contentions raised herein, based on the materials and evidence noticed, the issue revolves around the question with regard to the fact as to whether the plaintiffs had any business in India during the year 1965 when the defendant started business in Surat. Even if official sale or manufacturing is not established, whether their product enjoyed any reputation and good will. In that context, whether who got there first alone would matter or as to whether there was transborder reputation and in that view, is there passing off is an issue for consideration. Even if official sale or manufacturing is not established, whether their product enjoyed any reputation and good will. In that context, whether who got there first alone would matter or as to whether there was transborder reputation and in that view, is there passing off is an issue for consideration. Further in such circumstance and in the facts of the instant case if the defendant was aware of the reputation and the existence of a similar product with the similar mark, in such circumstance, whether the adoption of the mark which is similar to that of the plaintiff can be considered as honest adoption would be the prime issue to be considered. In this view also, only such of those documents which are relevant for the said purpose need be referred to once again. 28. Keeping the above aspects in view, firstly relating to the manner in which the plaintiffs claim right is to be noticed since the defendants contend that even if Haw Par Brothers Ltd., had established the business under the said mark, the plaintiffs cannot claim any right. In this regard the establishment of the company Haw Par Brothers Private Ltd., is seen to be established by the document dated 5.9.1932 which is at Ex.P126 and P127. The establishment of the first plaintiff viz., Haw Par Brothers international Ltd., is indicated by the Articles of Association dated 18.07.1969 at Ex.P128. One of the objects of the establishment of the company is to acquire Haw Par Brothers (Private) Ltd., and engage in manufacture of pharmaceutical products. Thereafter an agreement dated 16.8.1969 has been entered into which is at Ex.P129 and the Transferee under the said agreement is the first defendant. The said documents indicate the details of the transfer which has been made. The first plaintiff who is Transferee is held entitled to the premises and assets described in the schedule. The second schedule has reference to the Goodwill and all Trade Marks registered in Singapore and elsewhere including pending applications and all advertisements etc. The document at Ex.P130 is the document viz., the certificate of incorporation and the change of the name of the company. The learned senior counsel appearing for the defendant/appellants no doubt contended that the said documents have not been satisfactorily proved. The document at Ex.P130 is the document viz., the certificate of incorporation and the change of the name of the company. The learned senior counsel appearing for the defendant/appellants no doubt contended that the said documents have not been satisfactorily proved. A perusal of the said documents indicate that they are all certified copies issued by the office of the Registrar of Companies, Singapore and is produced and marked through the Executive Director of the company. In this regard it is to be stated that in so far as the right of the first plaintiff having acquired the same from Haw Par Brothers Ltd., in the manner indicted above, it is established by the documents relating to the transfer of the rights. 29. The documents which have been produced at Ex.P1, P-11 to P-112 and also the details with regard to the nature of business carried on by Haw Par Brothers from the year 1922 onwards which are referred to would lend credence to the claim of the plaintiffs herein in addition to the same, the said documents and the documents relating to the predecessors which have been produced and marked have been produced from proper custody and the explanation with regard to the non-availability of certain documents since the issue relates to the period of nearly a century prior to present period would have to be accepted. One more aspect which also has to be noticed is that there was certain compromise entered into by the importer of the defendants with Haw Par Corporation Limited with regard to the mark Flying Peacock as at Ex.P138 and the appellant who was also a party to that proceedings has remained ex parte. Though the same may not be directly relevant for the purpose, the manner in which there has been transition from Haw Par Brothers Limited to the present plaintiffs cannot be lost sight of more particularly, when such compromise was entered into with Haw Par Corporation Limited which had acquired the said name from Haw Par Brothers International Limited in view of the change effected in the year 1997 and at that stage the appellant though a party to the proceedings has not objected to the same by questioning the locus-stand of the respondent herein. That apart, with regard to the plaintiffs Nos. 2 and 3, when the first plaintiff has also joined the plaintiffs Nos. That apart, with regard to the plaintiffs Nos. 2 and 3, when the first plaintiff has also joined the plaintiffs Nos. 2 and 3 and there is sufficient material to indicate that the first plaintiff had acquired right from Haw Par Brothers Limited, it cannot be said that the plaintiffs had not made out any right to maintain the suit. The Court below in fact has appreciated this aspect of the matter in its correct perspective. 30. In view of the above conclusion, the next question would be with regard to the manner in which the mark of the plaintiff acquired from its predecessors had come into existence and the claim of the plaintiffs with regard to the popularity of the same including in India and in that context, whether the defendants were riding on such popularity needs consideration before coming to a conclusion with regard to the territory of operation of the defendants and the reputation in such territory and would there be immunity in such situation. In this regard, the manner in which the predecessors of the plaintiff had adopted the name Tiger' for their product has been explained with reference to the name of the two brothers viz., Aw Boon Haw and Aw Boon Par. It is explained that the word 'Haw means the 'Animal Tiger' and the word 'PAR' in the younger brother's name means the 'Animal Leopard'. In that context, in combination of the same, they have adopted the device leaping tiger as far back as in the year earlier to 1900. The manufacture of the balm and oil at that point was being made in Rangoon and subsequently in the year 1932, the company known as Haw Par Brothers Private Limited was set up in Singapore. With regard to the registration of the trademark as Tiger Balm' and the registration of the said trademark in different countries is indicated in the list marked as Ex.P1 and the documents at Ex.P-11 to P-112 which is already noticed. The countries indicated therein include Australia, Newzealand, Canada Denmark, Greece, Korea, Spain. Switzerland, Saudi Arabia, United Kingdom and Singapore among several other countries. To establish this fact, the documents in Ex.P2 series is produced and marked. The said documents in fact establish that the Tiger Balm product was registered in the said countries. The countries indicated therein include Australia, Newzealand, Canada Denmark, Greece, Korea, Spain. Switzerland, Saudi Arabia, United Kingdom and Singapore among several other countries. To establish this fact, the documents in Ex.P2 series is produced and marked. The said documents in fact establish that the Tiger Balm product was registered in the said countries. The labels, cartons and the seal of the product is also marked in the said Ex.P2 series which indicates the device leaping tiger with a Chinese character and the said product was known in all the said countries where the mark was registered and the product was being sold. The label for the packing of the bottle apart from indicating the leaping tiger in a round label also contained 64 circles and each of the circle has the mark of a leaping tiger and the Chinese character. The bottle is of hexagonal shape and the balm is both red colour as well as white. These aspects indicate the distinctness of the mark, the product and also the presentation of the product as that of the predecessor of the plaintiff and thereafter as that of the plaintiffs in different parts of the world. No doubt, insofar as India is concerned, the registration was sought for by the predecessor of the plaintiff for the first time vide applications No. 3G6622 and 316936 dated 20.07.1976 which had remained pending and was advertised only in 1983-84 and the same is said to be a subject matter in appeal. However, the case of the plaintiff is that since the product was popular all over and was freely available in Singapore, though there was no official sale in India prior to that period in the year 1974, it was very much popular since the tourists and relatives travelling abroad carried the product to India in view of its demand. 31. In the background of the above documents, the adoption of the mark Tiger Balm' and the popularity of the product in different parts of the world due to its registration and manufacture in such of those countries and also the knowledge and demand for the product in India even during the time of the predecessors of the plaintiff and also subsequently is spoken to by Mr. Han Ah Kuan who was examined as PW.1. Han Ah Kuan who was examined as PW.1. With regard to the oral evidence tendered by the said witness, as already noticed, the learned senior counsel for the defendant/appellant vehemently contended that the said evidence would be of no consequence in as much as the said witness has no personal knowledge and as such the details furnished by him cannot establish the case of the plaintiffs. It is no doubt true that the said witness has not claimed any personal knowledge of the manner in which the right for use of the mark is traced. However, what cannot be ignored is that the said witness at the point of tendering evidence was holding responsible post of Executive Director in the first plaintiff/company. In that view, Pw.1 has referred to the documents available with the company and in that context, when he has produced voluminous documents which relates to the periods as claimed regarding the manner in which the business was commenced by Haw Par Brothers and thereafter by the subsequent corporate bodies, the oral testimony cannot be brushed aside and the evidence tendered in the background of the documents produced is noticed by the Court below and in that regard, the Court below was also justified. In this regard, the documents at Exh.P233 to 239 and Ex.C1 and C2 relate to the incorporation of the company and the use of the mark Tiger as that of The Eng Aun Tong, Haw Par Corporation Ltd., Haw Par Brothers Ltd. and thereafter of How Par Brothers International Ltd. The device of leaping tiger with Chinese and English characters with 64 circles containing the said mark was registered as early as in the year 1912. In this regard, the documents at Ex.P11 to P108 as noticed relate to the registration of the trade mark and renewal in different parts of the world. In this regard, the documents at Ex.P11 to P108 as noticed relate to the registration of the trade mark and renewal in different parts of the world. Among the said documents though some of the certificates produced are photo copies and even if the same are ignored, the other voluminous documents which indicate the registration of the trade mark in the different parts of the world would indicate that though the mark was not registered in India at an earlier point in time, the use of the specific trade mark in a particular get up with 64 circles and the bottle being in hexagonal shape was the mark adopted by the predecessors of the plaintiff much prior to the claim of the defendant and as such the predecessors and thereafter the plaintiff are the prior users of the said mark. Though the learned Senior counsel for appellants contended that the registration in other countries would not be sufficient when registration and sale in India was not established, what is to be noticed is that the suit in question is not for infringement but one for passing off. In that context, a perusal of the documents at Ex.P8 and P9 series i.e., Ex.P-8(1) to P-8(8) and P-9(1) to (50) would indicate that the defendant have used a similar mark of a leaping tiger, but wings attached to the tiger by varying the size of the wings and also the stripes and have called it the flying tiger as a mark for the product of Rangoon Chemical Works Pvt. Ltd. Above the said flying tiger there is also a Chinese character. The mark itself would indicate that the same is similar to the mark of the plaintiff and therefore deceptive in nature. Further the product is also put in a hexagonal shaped bottle as indicated from the document at Ex.P9 series. The said series of documents also indicate that the defendant has made a round label and the documents at Ex.P8(4) and P8(8) indicate that the wrapper made for covering the bottle which is similar to that of the plaintiffs also contains 64 circles and each of the circles has the mark of the flying tiger as against the mark of leaping tiger indicated in the wrapper of the plaintiff. The defendants hove also packed red and white coloured balm and the entire get up of the mark and the packing is similar to that of the plaintiffs. The similarity in the mark is more than enough to deceive a purchaser of imperfect recollection. From the materials noticed above, since it clearly indicates that the predecessors of the plaintiff had adopted such mark and also since there is a clear explanation indicating the reasons for which the plaintiffs have adopted the said mark, the plaintiffs in any event are the prior users of the said mark in the world market with reputation in India. Since the mark adopted by the defendant is similar to the mark of the plaintiff and since the said mark has been adopted by the defendant in the circumstances explained by them, i.e., despite having knowledge of the existence of Tiger Balm the said aspect requires consideration since only a honest adoption without knowledge of a similar mark would save such adoption. 32. While adverting to that aspect, apart from the plaintiffs contending that their product was well known all over the world including India, the question that would arise is also as to whether the defendant was justified in adopting the mark despite having knowledge that a similar mark has been adopted and a similar product is available notwithstanding even if it was a fact that the defendant were of the belief that it is not available in India. To explain the said circumstances, the defendant has examined Mr. Ahmed Adam Moola who is the founder Director of the second defendant as DW-1. The said witness has stated with regard to starting of the business in Burma and the manner in which the business was thereafter commenced in Surat after returning to India. The details of the production from the year 1968 is also referred to and Ex.D-10 to D-91 is marked to indicate sales in India and Ex.D-173 is the sale certificate. The registration of the flying tiger mark is also referred to, under Nos. 244978 and 26330 and Ex.D-25 is relied regarding registration from 20.10.1967. The details of the production from the year 1968 is also referred to and Ex.D-10 to D-91 is marked to indicate sales in India and Ex.D-173 is the sale certificate. The registration of the flying tiger mark is also referred to, under Nos. 244978 and 26330 and Ex.D-25 is relied regarding registration from 20.10.1967. Since the said witness was aged 82 years and had spoken regarding the manner in which the business was commenced and the reason for which the mark was adopted, it was contended on behalf of the defendant/appellant that even though certain averments in the written statement is referred to as admission, the same would have to be considered as honest adoption of the mark as at that time, the plaintiff had no presence in India. It is therefore contended that the statement of the said witness will have to be considered in the background of the position that existed in 1965. The said witness has no doubt been cross-examined in detail and on behalf of the plaintiff it is pointed out that the statements in the cross examination of the said witness will indicate that it is contrary to what has been stated in para 3 of the written statement. 33. In that light, a perusal of the written statement and the oral evidence of the defendants as a whole would indicate that the said witness has stated that he does not know how his uncle and partner thought of flying tiger as a trade mark. He has also stated that he cannot establish that they were using flying tiger as a trade mark in Burma prior to coming to India. The manufacture of the other products as Burmex, Lion Balm, Tuhu Balm and Flying Peacock Balm by the second defendant is also referred to. In that context, the cross examination of the said witness would reveal that on the vital aspect with regard to the adoption of the mark, the witness has indicated ignorance even though personal knowledge due to his age factor was contended. The statement made in para-3 of the written statement is admitted as having been made to his knowledge. In this background, the nature of business of the firm M/s Goolab and Moola company has been stated in the written statement. The statement made in para-3 of the written statement is admitted as having been made to his knowledge. In this background, the nature of business of the firm M/s Goolab and Moola company has been stated in the written statement. The categorical assertion is that the said firm was the stockists for pharmaceutical products manufactured by most of the leading pharmaceutical companies in the world. It is stated that among the products stocked for distribution and sale, Tiger Balm was one of the products and the said witness DW.1 knew of the existence of Tiger Balm since then. It is also stated that Ibrahim Hoossen Moola was aware of the balm known as Tiger Balm available in Rangoon since 1922 a period of time during which neither the plaintiff nor its predecessors had any market presence. The said statement would clearly indicate that the mark adopted by the second defendant is not a creation of the defendants but the existence of the Tiger Balm was already known to them and the only attempt was to make certain changes even after which it will appear similar and such mark has been adopted. In this background, the document at Ex.P133 becomes relevant with regard to the application made by the defendant for registration of the said mark since the question as to whether the adoption of the mark was honest is also an issue which becomes relevant in a passing off action when two marks are similar and adoption of such mark is claimed to be honest. Firstly the learned senior counsel for the appellant/defendant contended that the very averment in the written statement which is referred to as admission by the plaintiff would indicate that the defendants have disclosed the manner in which the mark has been adopted and therefore the same is honest adoption and the defendants were not clandestinely using any mark which is claimed to be similar to the mark of the plaintiff to encash on the reputation and goodwill but such mark has been adopted since in the year 1965, the plaintiffs had absolutely no business in India. In this regard it is to be stated that honesty does not lie in disclosing as to why a deceitful act was committed when one is confronted about such act. In this regard it is to be stated that honesty does not lie in disclosing as to why a deceitful act was committed when one is confronted about such act. On the other hand the explanation should be such that it should indicate that the act itself is not deceitful but was an honest one. To be openly deceitful cannot be considered as a virtue and therefore cannot be an honest action. Further the documents of the defendants themselves at D.122 and 123 indicate that the representation is as if it is Tiger Balm and the advertisements at Ex. D124 to 142 are from 5.3.1977 onwards by which time the predecessor of the plaintiffs had filed an application. Though the earlier advertisements do not refer to the period the advertisements at D.138 to D.142 which are of the period when the dispute had already started, mentions 'since 1965' which is absent in the earlier advertisements. 34. With regard to the above, apart from the plaintiffs establishing the transborder reputation, the defendants themselves have filed the trade mark application No. 244978 i.e., Ex.P133 with regard to their product being world famous and the said application has been made as if they are honest and concurrent user which would indicate that the defendants were aware of the existence of a similar product and mark. Further the enclosure to the said application is a pamphlet wherein it states 'No competitor in India for Tiger Balm' and in the said pamphlet the picture of a flying tiger and a hexagonal shaped bottle is indicated in the name of Rangoon Chemical Works. The said advertisement by the defendant stating that there is no competitor in India for Tiger Balm if considered in the background of the statement made in the written statement wherein it is stated that M/s Goolab and Moola company were the stockists for Tiger Balm would indicate that the defendants were aware of the existence of the Tiger Balm as a product with the mark as leaping tiger and were attempting to trade upon such reputation. It also indicates that the Flying Tiger itself was being represented as if it is Tiger Balm by stating that there is no competitor in India for Tiger Balm. It also indicates that the Flying Tiger itself was being represented as if it is Tiger Balm by stating that there is no competitor in India for Tiger Balm. Hence the adoption in any event cannot be considered as honest adoption since it is not a situation where the defendants were not at all aware of a similar mark while adopting such mark and on coming to know of such mark subsequently they have claimed such right of honest and concurrent user. 35. Apart from the fact that the said statement would indicate that the defendants themselves had knowledge of the prior existence of Tiger Balm, the documents at Exhs.P109 and 132 referred to the said product Tiger Balm in the said books relating to International Marketing Strategy and the different products. In this regard certain other books and magazines at Ex.P142, 143, 159, 160 and 174 to 177 were also relied on. The said books and magazines refer to the history of the product and also the product itself which gives a lot of insight with regard to the existence of the product much earlier to the period from which the defendant claims right. The learned senior counsel for the appellant no doubt contended that the said books cannot be relied on since the authors have not been examined and the magazines were not published in India and as such, the same can be considered only as hearsay evidence. On this aspect in addition to the fact that it would attract the provisions of Section 56 and 57 of the Evidence Act as noticed by the Court below, in my view while taking judicial notice what cannot be lost sight of is, in the said books and magazines the same is not confined only to the product Tiger Balm. Though the book relates to Tiger Balm, the same was published at an undisputed period and the magazines referred to several other popular products and each of them have been analysed among which the product Tiger Balm is also one among them and as such the reference and discussion would enure to the benefit of the plaintiffs to establish that it is a pre-existing product and had its reputation even at places where the same was not manufactured or marketed as travelling people would have access to such magazines. It is no doubt true that the evidence of PW3 may not make much headway for the plaintiffs, but the documentary evidence tendered on behalf of the plaintiff and the very fact that the defendants have adopted the mark knowing well about the existence of a product with a similar mark cannot succeed only on the contention that they are the first in India. When the defendants were aware of the existence of the plaintiffs' predecessor, they could not have assumed that they would not enter the Indian market when in fact the sale was made in 1974 and application was filed in 1976 and that too in the background that there was trade restrictions for sometime. In fact on the other hand DW-3 who is the distributor of the defendants' product in his evidence has stated that he had heard of Tiger Balm at the time when the defendants had approached them in 1968-67 for distribution of their product. Therefore, considering all the aspects, to the said extent, it can be stated that the plaintiffs had established that the said product had transborder reputation. 36. One other aspect which also cannot be lost sight of is the admitted position that the defendants had manufactured other products such as Burmex, Tuhu Balm and Flying peacock Balm and the products Tuhu Balm and Flying peacock Balm are being marketed in other places except in India where they have adopted Flying Tiger Balm. This would indicate that the flying tiger mark has been adopted only due to the fact that though they were aware of the product were also aware that there was no registration in India while in other places in view of the registration of the product Tiger Balm, the product of the defendant was being marketed by other names and as such the defendants have attempted to take advantage of the brand name, goodwill and reputation of the plaintiffs. In that view, when the defendants were required to establish the honest adoption of the mark, apart from the evidence of D.W.1 indicating ignorance about the details of the same and also in view of statement contained in the written statement indicating knowledge of existence of Tiger Balm, the reference made by D.W. 1 in his evidence to one Mr. Mukesh Gamanlal Mandalaywala also becomes relevant with regard to the manner of adoption of the mark. Mukesh Gamanlal Mandalaywala also becomes relevant with regard to the manner of adoption of the mark. The said witness has stated that after the death of Mr. Gamanlal Nana Bhai Mandalaywala, his son Mukesh Gamanlal Mandalaywala was handling the trademark registration of the second defendant company. The said Sri Mukesh is also the Director of the second defendant. The witness (DW-1) has stated that all the files and papers relating to the trademark 'Flying Tiger Balm' is in the custody of the said Sri Mukesh. It is also admitted by the witness that the said Sri Mukesh was with D.W.1 in Bangalore when he had come to give evidence in this case and the said Sri Mukesh was also present when his evidence was being recorded by the Commissioner. Despite such admission of D.W. 1 in his cross-examination, the said Sri Mukesh has not been examined to state with regard to the registration of the mark 'Flying Tiger' and also the manner in which the said mark came to be adopted. If the bonafide and honest adoption of the said mark was to be established, the defendants ought to have placed ouch evidence, which would establish the same. 37. In the above situation, where the defendants contend that they had started manufacture of the product in the year 1965 in India when the plaintiffs did not have presence in India, the question would he when the plaintiffs have established transborder reputation and even if they did not have physical presence viz., neither manufacture or official sale during 1965, can the plaintiffs still succeed in their contention. In order to consider this aspect, it is necessary to refer to the decisions on which both the learned senior counsel have placed reliance. While on that aspect, the contention of the defendants with regard to the delay and acquiescence also has to be considered. Firstly, the decision in the case of Milment Oftho Ind. v. Allergan Inc. AIR 2004 SC 3355 was referred to and was also relied by the Court below. While on that aspect, the contention of the defendants with regard to the delay and acquiescence also has to be considered. Firstly, the decision in the case of Milment Oftho Ind. v. Allergan Inc. AIR 2004 SC 3355 was referred to and was also relied by the Court below. The said decision relied on by the learned senior counsel for the plaintiffs was commented upon by the learned senior counsel for the defendants contending that in fact, the said decision should have been noticed to the extent where it has been held that an Indian Company should not be throttled, if the mark has been genuinely adopted and developed the product. A perusal of the said decision rendered by the Hon'ble Supreme Court would indicate that in fact, the issue which was considered is in respect of medicinal products itself. No doubt, the issue was being considered at the interlocutory stage. Though with regard to the contention that the respondents therein were not the first to use the mark in India, the observation is that on those aspects it would require examination on evidence. Further on referring to the earlier decisions, the Hon'ble Supreme Court has stated that it must be remembered that the goods are widely advertised in newspapers, periodicals, magazines and other media which is available in the country. This results in a product acquiring world wide reputation. Hence, it is stated that in respect of a drug associated with the respondents world wide, it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. The note of caution however expressed is that the multinational corporations who have no intention of coining to India or introducing their products in india should not be allowed to throttle an Indian company by not permitting it to sell a product in India if the Indian company has genuinely adopted the mark, developed the mark and is first in the market. Stating so, in the said case, the Hon'ble Supreme Court has observed that the marks are the same and they are in respect of pharmaceutical products. Hence, it has been held that the mere fact that the respondents have not been using the mark in India would be irrelevant if they were first in the world market. Stating so, in the said case, the Hon'ble Supreme Court has observed that the marks are the same and they are in respect of pharmaceutical products. Hence, it has been held that the mere fact that the respondents have not been using the mark in India would be irrelevant if they were first in the world market. In view of the said opinion expressed by the Hon'ble Supreme Court, in the instant case also since it is a pharmaceutical product and since the materials noticed above would indicate that the plaintiffs and their predecessors had adopted the mark nearly a century ago and the documents noticed also indicate that it had registration in several parts of the world and had widely publicized the product, only because they had not used the mark in India prior to the period claimed by the defendants, the plaintiff cannot be denied their right. Further, the documents noticed above would also indicate that the mark adopted by the defendants is similar to that of the plaintiffs and the get up and presentation is also similar. The defendants therefore cannot take advantage of the fact that there was no official market in India at that point. That apart, the evidence noticed above would indicate that it was not a honest adoption without knowing that there is no such product in the market but in fact, the defendants had adopted the mark having been stockists for such products in Burma and in such situation, the defendants cannot claim genuine adoption of the mark and developing of the product to India before the use of the reputed mark of the plaintiffs in India as indicated by the Hon'ble Supreme Court. In addition, the observations of the Hon'ble Supreme Court relied on by the learned senior counsel for the defendants with regard to the survival of the Indian company would not enure to the benefit of the defendants in the instant case. In this regard, it. is not a case where the plaintiffs did not have intention to market their product in India. The circumstances with regard to the policy of providing scope to the Indian products such as Amrutanjan etc., and there being trade restrictions from 1958 has been explained and an application in fact had been filed in the year 1976. is not a case where the plaintiffs did not have intention to market their product in India. The circumstances with regard to the policy of providing scope to the Indian products such as Amrutanjan etc., and there being trade restrictions from 1958 has been explained and an application in fact had been filed in the year 1976. Though such application was advertised subsequently, the intention to enter the Indian market is there and ultimately the official marketing has commenced. The manner in which the plaintiffs had been entering the world market in different countries during different periods would indicate that in such process, the plaintiffs have also chosen to subsequently enter the market in India. Hence, keeping all these aspects in view, the said decision would assist the case of the plaintiffs and the trial Court had appropriately relied on the same. 38. The learned senior counsel for the appellant-defendant relied on the decision of the Hon'ble Supreme Court in the case of Khoday Distilleries Limited (Now known as Khoday India Limited) Vs. The Scotch Whisky Association and Others, AIR 2008 SC 2737 to contend that the plaintiffs would not be entitled to any relief in view of the delay and acquiescence. The question therein arose with regard to the filing of an application for rectification and in that context, it was noticed that the respondents therein who had come to know of the appellant's mark on 20-09-1974, filed the application only on 21-04-1986. In that context, the reason assigned for the delay was also considered by the Hon'ble Supreme Court and found that the reason was not satisfactory more particularly, in a circumstance where the explanation was with regard to a pending Court proceeding. The same was not acceptable since even at that stage, the proceeding was pending. It was further noticed that action was taken against all the others when the word 'Scotland' was used except against the appellant therein. After discussing the facts therein, the Hon'ble Supreme Court was of the view that in the peculiar facts and circumstances of that case, the Hon'ble Court was of the view that the action of the respondents is barred under the principle of acquiescence and/or waiver. In that circumstance, the said decision and also the decision in the case of McDonald's Corporation repr. by its Attorney Ms. In that circumstance, the said decision and also the decision in the case of McDonald's Corporation repr. by its Attorney Ms. Shiela M. Lehr and McDonald's India Private Ltd. through its Director Ravi Oberoi Vs. Sterling's Mac Fast Food repr. by its Partner John Mathew, ILR (2007) KAR 3346 which is also referred in the above cited decision would not be of assistance. 39. On the other hand, the decisions relied on by the learned senior counsel for the respondent-plaintiff Sumit Machines Pvt. Ltd. 1995 PTC 165 SC and the case of Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel and Others, AIR 2006 SC 3304 would explain the principle of acquiescence as a conduct of sitting by and allowing the invasion of rights. The said decisions no doubt are rendered in a case of infringement but in any event, in the instant case, there is no material to indicate that there was laches on the part of the plaintiffs in the manner explained. 40. That apart, in the case of N.R. Dongre v. Whirlpool Corporation 1996 (16) PTC 583 SC the Hon'ble Supreme Court considering the issue relating to the transborder reputation in a situation of registration in different parts of the world and the subsequent entry to India. The situation where the earlier application filed in the year 1977 in India had lapsed and thereafter had formed joint venture with the plaintiff No. 2 therein and the subsequent application on 15.07.1988 was noticed. In that situation also the Hon'ble Supreme Court has taken the view that the advertisement of trademark without existence of goods in the market is also to be considered as use of the trademark. In that circumstance, the prior use claimed by the respondents before the Hon'ble Supreme Court was considered as valid. Further, in the said case, the Hon'ble Supreme Court was of the view that the appellants therein had not put forth any plausible and convincing explanation as to how they came to adopt the mark 'Whirlpool'. Hence, the Hon'ble Supreme Court was of the view that in the absence of explanation, the adoption cannot be honest and the plea of delay and laches would be of no avail and for acquiescence there should be something to indicate that there is tacit or express assent. Hence, the Hon'ble Supreme Court was of the view that in the absence of explanation, the adoption cannot be honest and the plea of delay and laches would be of no avail and for acquiescence there should be something to indicate that there is tacit or express assent. In similar set of circumstances, in the instant case, as already noticed, the transborder reputation of the plaintiffs is established by the evidence which has been noticed. With regard to the adoption of the mark 'flying tiger' by the defendants, there is no plausible and convincing explanation but on the other hand, as noticed from the admission in the written statement, the same was adopted since they were aware of a product as 'tiger balm' and the same was not at that point marketed in India. Therefore, in any event, the defendants cannot plead delay, laches or acquiescence in the present facts also. 41. The decision in the case of Conagra Inc. v. McCain Foods (Australia) 1992 (106) ALR 465 rendered by the Federal Court of Australia was extensively referred to by the learned senior counsel for the appellant-defendants to contend that the plaintiff should necessarily canyon the business or have a place of business in the country concerned to maintain an action for passing offf. In this regard, it is seen that in the said case, two questions arose for consideration viz., i) Is it necessary that a plaintiff canyon business or have a place of business in Australia to maintain action for passing offf? ii) What is the significance of fraudulent intention of a defendant? 42. The Federal Court while considering the said issues has considered in detail with regard to the facts involved in the said case. The questions therein were considered in the background of the provision contained in Section 53(c) of Trade Practices Act and to hold that the appellant had no significant reputation in Australia. Even in the said case, the observations made in paras 129, 134, 145 and 153 would indicate that the reputation and awareness of the existence of such product in Australia is to be established. Therefore, it was more in a circumstance of the nature of evidence tendered to establish the fact and the conclusion was that the reputation has not been established. Therefore, it was more in a circumstance of the nature of evidence tendered to establish the fact and the conclusion was that the reputation has not been established. Contrary to the some, in the instant case, that aspect of the matter has been considered in detail by the Court below and also by this Court with regard to the reputation of the plaintiffs. That apart on the second aspect, in the instant case it is held that the defendant has not established honest adoption of the mark. Further, while considering these aspects of the matter, as against that view, the observations made by the Hon'ble Supreme Court in the case of Milment Oftho IND. and Whirlpool Corporation was noticed by this Court and as such when this Court has the benefit of the decisions rendered by the Hon'ble Supreme Court of India, the need for reference to the cited decision In any further detail is unnecessary and thereby the same would not be of assistance. 43. The learned senior counsel for the appellant-defendant has also referred to the decision in the case of Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd., AIR 2004 SC 3540 . The said case was in relation to the domain name and since it is accessible from any point, the question as to who got their first would be relevant since the only act of starting first would be the issue and would assume importance. The same is not a situation as confronted with in this case. The decision in the case of Inter Lotto (U.K.) Ltd. v. Camelot Group PLC. 2004 (1) WLR 955 and Irvine and Anr. v. Talk Sport Limited 2002 (1) WLR 2355 were also referred on the same point with regard to who is the first and with regard to the goodwill and reputation to be assessed at the relevant point i.e., when the defendants went to the market. The said two decisions are of no assistance in the instant case inasmuch as the issue relating to the transborder reputation, the manner of adoption of the mark and in that context, the business interests of the plaintiff and the defendants have been considered with reference to the evidence tendered by the parties and the observations of the Hon'ble Supreme Court in the cases referred above. 44. 44. Having considered the above position, who got there first is of course a test to determine not only as to who is imitating whom and also who should be allowed to continue even if the marks are similar. But, in passing off action, who went first to the smaller territory is not the only question when some one else has got to the larger territory much earlier though not specifically to such smaller territory, which may have a bearing. In such situation, it would depend on the nature and type of the product in issue and the possibility of its availability is also one of the criteria and there cannot be straight jacket formula. Thus, considering that in the instant case the product is such that it can be easily carried, it would be available in a smaller territory where official presence is not shown and in such circumstance who was first in the world market would be relevant and that too in the background of the materials produced. Hence in the instant case when the plaintiffs' predecessors are the first in several countries, the same cannot be ignored. 45. The decision in the case of Cococola Company 1986 (1) WLR 695 need not be referred to in detail since the said issue was with regard to the shape of the bottle and as to whether the same can be registered as a mark. In the instant case, though the shape of the bottle as hexagonal is pointed out to indicate the getup and the manner of packing, the trademark is that of the Tiger' and as such the issue therein is not of relevance. The decision in the case of R. Rajagopal Reddy and Ors. v. Padmini Chandrashekharan 1995 (2) SCO 630 was relied on by the learned senior counsel for the appellant to counter the contention of the learned senior counsel for the plaintiffs that the mark of the plaintiffs is to be considered as a well known mark as defined in Section 2(zg) of the Trademarks Act (1999). Relying on the said decision it is contended that in the instant case the provisions of the Trademarks Act 1958 would apply and in that circumstance, the assignment of the trademark and the goodwill should be as provided under Section 38 of the said Act, since there is no question of goodwill if there is no business. Relying on the said decision it is contended that in the instant case the provisions of the Trademarks Act 1958 would apply and in that circumstance, the assignment of the trademark and the goodwill should be as provided under Section 38 of the said Act, since there is no question of goodwill if there is no business. On this aspect, as already noticed above, the reputation and the goodwill of the plaintiff has been considered in the background of the facts involved in the present case and also the evidence available with regard to the transborder reputation and also the manner in which the defendants have established their business by adopting the mark and as such, the right of the plaintiffs has not been considered based merely on the definition of a well known trademark in the new act. 46. The learned senior counsel for the plaintiff/respondents has referred to a decision of the Hon'ble Division Bench of the High Court of Madras in the case of Haw Par Brothers International Ltd. v. Tiger Balm Co., (P) Ltd. and Ors. 1996 PTC (16). The appellant therein is none other than the plaintiff herein but the respondent is a different company. The Hon'ble Court has accepted the contention of the appellant to injunct the respondent in the manner done. No doubt, the law is well settled that in the case of passing off, the order in favour of the plaintiff against another defendant cannot be made applicable automatically since the facts and defence may vary. Further the said decision is rendered in the interlocutory stage. However what is to be noticed is that the plaintiffs herein had advanced similar contentions including transborder reputation. The respondents therein had relied on the registration secured on 25.09.1961. Though the view expressed at the interlocutory stage is based on the prima facie opinion, the position of law expressed in earlier decided cases has been relied on to hold that the adoption of the mark must be honest and it should not be even unintentionally unfair and that passing off action cannot be defeated because the mark of the defendant is registered. The necessity or otherwise of actual business in India was also considered and the further observation made by noticing the other decisions is that foreign traders may well have a reputation which can support passing off action and it does not matter that the plaintiffs are not actually carrying on business. The Hon'ble Division Bench has also taken note of the decision of the Division Bench of the Bombay High Court in the case of Kamal Trading Co. v. Gillette U.K. Ltd. 1988 (I) PLR 135 wherein it is held that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Even the Whirlpool Corporation case which had at that stage been decided by the Delhi High Court was noticed. As such, though, at the interlocutory stage, the law has been noticed and similar contentions of the plaintiff has been accepted. 47. Thus after considering all the aspects of the matter in the manner indicted above, the points (i) to (iv) raised above are answered against the appellant/ defendants. Despite the same, the correctness of the relief granted by the Court below raised in point (v) requires consideration. With regard to the mark, apart from the transborder reputation, since the mark is held to be deceptively similar and since honest adoption has not been established by the defendants, the perpetual injunction granted to restrain the defendants in the manner directed by the Court below is justified. The issue however is as to whether the Court below was justified in ordering payment of Rs. 1,00,000/- as damages and to render a true and faithful account of all the profits earned by them by using the impugned labels and cartons and pay to the plaintiffs such amount as may be found due on such account being taken. Though both the prayers are made for monetary claims in the prayer column and it is also indicated in para 28 of the plaint that additional court fee would be paid, the averments in para-25 of the plaint would indicate that it had been sought as alternative relief and as such at the outset both the reliefs could not have been granted. At best if the restricted claim of Rs. 1,00,000/- was granted, the next relief of paying up after accounting would not arise. At best if the restricted claim of Rs. 1,00,000/- was granted, the next relief of paying up after accounting would not arise. In any case for either of the reliefs, there should have been evidence in this regard at least to discharge the initial burden to shift the onus on the defendants. The witness PW-1 in paras 26 and 27 of the affidavit evidence has merely stated that the plaintiff had suffered substantial loss in their market share and that in the industry, the -manufacturer of these products make a profit of atleast 10% of the total sales turnover. But the said PW-1 in his cross examination recorded on 11.03.2007 has stated thus: We entered the Indian market in 1995 and I am unable to tell to what extent we suffered loss of market since then and our sales were very small. I am unable to be (sic) exact figure of expenditure referred to at para 26 of my affidavit. 48. The said evidence is sketchy and insufficient for claiming damages either in lumpsum or based on accounting in the manner sought. No doubt the defendants themselves had indicated their turnover and even Ex. D-173 was relied on in an attempt to indicate that they have established huge business over a period of time. However, the plaintiffs themselves have disputed the same to contend that it does not relate to Flying Tiger Balm alone since they had other products also. Though for the purpose of reputation and goodwill to protect their trademark acquired from their predecessors the plaintiffs would be entitled to take advantage of the reputation and goodwill enjoyed by their predecessors even though the plaintiff has entered the market in 1995, the same cannot hold good for damages considering the nature of evidence tendered. Further the business carried on at an earlier point is in the circumstances stated above. On entry of the first plaintiff to Indian market, the dispute has been raised and pursuant to the order passed by the Hon'ble Supreme Court of India in S.L.P. No. 13978/97, the mark and shape of bottle was altered to some extent, even that would have to merge with the final order and they would be injuncted but for damages, all of it will have to be kept in view. Hence taking into consideration all aspects, the decree for damages and accounting for the purpose of damages ought not to have been granted in the instant case in the nature of evidence tendered on that aspect and also without detailed discussion by the Court below. The point No; (v) is accordingly answered in part in favour of the appellants-defendants and partly in favour of the respondents-plaintiffs. As such, the judgment of the Court below calls for modification to that extent only. 49. In the result, the following: ORDER i) The judgment and decree in so far as grant of perpetual injunction against the use of the impugned trade mark by the defendants and persons claiming under or for them; to deliver the goods, articles etc bearing the impugned mark and the award of costs incurred in the suit is upheld and confirmed. ii) The judgment and decree to the extent of directing the defendants to pay a sum of Rs. 1,00,000/- as damages and to render true and faithful account of all the profits earned by using the mark and to pay to the plaintiffs such amount as may be found due is set aside. iii) The appeal in RFA No. 251/2008 is accordingly allowed in part and the judgment and decree dated 30.11.2007 passed by the VIII Addl. City Civil Judge, Bangalore city in O.S. No. 5426/1995 shall stand modified in the above terms. iv) The costs incurred in this appeal shall be borne by the respective parties.