Research › Search › Judgment

Delhi High Court · body

2012 DIGILAW 2189 (DEL)

ICRAVE, LLC v. ICRAVE DESIGNS PVT LTD

2012-07-05

KAILASH GAMBHIR

body2012
JUDGMENT KAILASH GAMBHIR 1. This order shall dispose of the application filed by the plaintiff under order 39 Rules 1& 2 read with Section 151 of the Code of Civil Procedure. Before I deal with the said application it will be necessary to give narration of brief facts of the case as set out by the plaintiff in the plaint and the defence raised by the defendant in the written statement. The plaintiff has filed the present suit for permanent injunction restraining the defendants, its directors/ proprietor/ partners etc from using the trade-mark/trade-name ICRAVE or any other mark/name as may be confusingly or deceptively similar to the said trade-mark/trade-name of the plaintiff in respect of goods of their manufacture and sale and services provided by them amounting to passing off their goods and services and business of the plaintiff and from taking any benefit of the reputation or goodwill of the plaintiff in respect of the said trade-mark or name ICRAVE in any manner whatsoever. The plaintiff has also prayed for an order of delivery up and has also claimed damages to the tune of Rs.20,05,000/-from the defendants for passing off the goods and services of the plaintiff. The plaintiff is a Limited Liability Company and is said to be a world renowned Design Studio having its headquarters in New York, USA and is engaged in providing consultancy and turn key project services in the area of interior and architectural designing and is amongst the market leaders in the said field world wide. The plaintiff has claimed that in the year 2002 the plaintiff coined and adopted the inherently distinctive mark ICRAVE as its trademark and also as a prominent part of its trade name and since then the plaintiff has established a high profile client base in the hospitality and retail sectors and the reputation of the plaintiff is well known for delivering many of the Manhattan’s top nightclubs and restaurants including six restaurants within the new terminal at USA’s John F.Kennedy International Airport. The plaintiff has further claimed that its reputation grew over the years around the globe from the Mc Cormick Center in Glasgow, Scotland to the recently opened Holland Casino in Rotterdam, Netherlands. The details of various such projects have been given by the plaintiff in para 3 of the plaint. The plaintiff has further claimed that its reputation grew over the years around the globe from the Mc Cormick Center in Glasgow, Scotland to the recently opened Holland Casino in Rotterdam, Netherlands. The details of various such projects have been given by the plaintiff in para 3 of the plaint. The plaintiff has also claimed that it has been recognized from time to time for its quality services in the area of interior and architectural design and in pursuance of this recognition in the said field the plaintiff has been recipient of innumerable international awards and some of them have been detailed by the plaintiff in para 4 of the plaint. The plaintiff has also claimed that the name of the plaintiff and its projects have been in news world-wide through various newspapers and magazines having global circulation and prominent among those have been Razor, Mondo, Club Systems, Zink etc. and that many of such publications have a regular circulation in India. The plaintiff has also claimed that the said trade-mark/trade-name of the plaintiff is used alongwith stylized version ICRAVE. The plaintiff has also claimed that ICRAVE is a coined term and has no dictionary meaning and due to long and extensive use of the said trade mark consuming public across the world today associates the said mark with the plaintiff alone and none else. The plaintiff has also claimed that it has considerable presence in India since the last many years and substantial segment of the public which uses and require such services associate the trade name ICRAVE exclusively with the name of the plaintiff. The plaintiff has also claimed that it has been receiving business queries from various Indian entities since the last 3-4 years and the plaintiff has been forwarding its proposals to many Indian companies. The plaintiff has placed on record few such proposals as were forwarded by it to the renowned Indian entities such as Fame Multiplex at Bangalore, Adlabs Multiplex in Mumbai and Jubilee Hills and Restaurant and Lounge in Hyderabad way back in the year 2008-09. The plaintiff has further claimed that in addition to the above proposals the plaintiff was also engaged in advanced discussions for various projects in various parts of India, the details of which are in para 10 of the plaint. The plaintiff has further claimed that in addition to the above proposals the plaintiff was also engaged in advanced discussions for various projects in various parts of India, the details of which are in para 10 of the plaint. The plaintiff has thus claimed that it has presence all over India and has a substantial trans-border and spill over reputation in India especially after the popularity gained by the plaintiff after completing various projects at USA’s John F.Kennedy Airport which as per the plaintiff is visited by thousands of Indians when such Indians have opportunity to appreciate the plaintiffs work and bring such reputation to India in both tangible and intangible form. The plaintiff has further claimed that it has presence on the World Wide Web being owner of the domain name www.icrave.com after the website was created by the plaintiff on 23.8.2010. The plaintiff has further claimed that it has earned USD 39,37,878 in the year 2010 through world wide sale of its products and services. The plaintiff has also claimed that in order to acquire statutory rights of its said trade mark the plaintiff had filed application for registration of the said trade-mark in India as well in respect of goods and services falling in classes 19,20,42 & 43. 2. Further The case of the plaintiff is that in the month of November 2011 representatives of plaintiff discovered the use of its trademark/trade name by the defendant when the plaintiff was carrying diligence search on the internet and was alarmed to learn that the defendant is using identical trade mark/trade name in respect of its services and have also registered a domain name identical to that of the plaintiff being www.icravedesigns.com. The plaintiff has further claimed that the defendant is also engaged in the architectural and interior designing services which are identical to the field of the plaintiff. The plaintiff has claimed that the defendant company was incorporated only in the year 2010 much after the plaintiffs adoption and use of its trade-mark ICRAVE. The plaintiff has further claimed that the defendant is also engaged in the architectural and interior designing services which are identical to the field of the plaintiff. The plaintiff has claimed that the defendant company was incorporated only in the year 2010 much after the plaintiffs adoption and use of its trade-mark ICRAVE. The plaintiff has submitted that use, sale and advertisement of products and services by the defendant under the trade mark/trade name ICRAVE amounts to passing off of the plaintiffs services and use of such similar trade mark by the defendant is nothing but an attempt to wrongfully trade upon the plaintiffs goodwill and is done with the sole intent to mislead the public and to cause confusion and deception in their minds to make them falsely believe that the goods and services of the defendant originates from the plaintiff or at least have some affiliation. Based on the above facts the plaintiff has claimed grant of ad-interim injunction in its favour. 3. In the written statement filed by the defendant, the defence raised is that the plaintiff has very localized business and has no trans-border reputation whatsoever. The defendant also states that the plaintiff has miserably failed to place on record any document or letter to show that it has any business in India or it has spent any amount on advertisement in India or that it has acquired any goodwill or reputation in India or the defendant at any occasion has misrepresented its name to the clients of the plaintiff in India. The defendant further states that the defendant company was incorporated on 11.2.2010 under the name and style of ICRAVE Interiors Pvt. Ltd. and the name of defendant company was changed from ICRAVE Interiors Pvt. Ltd. to ICRAVE designs Private Limited. It is also the case of the defendant that earlier the defendant had proposed to set up the name of company as CONCEPTS but since the said name was not available in the records of ROC therefore they were compelled to select the present name. It is also the case of the defendant that earlier the defendant had proposed to set up the name of company as CONCEPTS but since the said name was not available in the records of ROC therefore they were compelled to select the present name. It is also the case of the defendant that the defendant had engaged the services of a firm named M/s Rave Designs for the selection of a new name of their company with logo and design and out of the few names suggested by the said company, ICRAVE was selected by one of their Directors as the composite meaning of the said word is innovative design or zeal to do something. It is also the case of the defendant that the consumer public in India associate the name of ICRAVE with the defendant alone and at present the defendant company has 17 running projects as per the details given in para 7 of the written statement. It is also the case of the defendant that they have been spending huge amounts on account of advertising and they have their own web portal. It is also the case of the defendant that various clients and customers approach the defendant company because of their own reputation and goodwill and no clients or customers of the field recognizes the plaintiff in the said field so far the business in India is concerned. The defendant has further stated that the plaintiff has filed their application to seek registration of trade mark only in August 2011 without explaining the fact as to why they had moved said application at such a late stage although they had claimed that they are in the business since 2002. The defendant has seriously refuted the use of trade-mark ICRAVE by them means passing off the plaintiffs services or the defendant company in any manner is encashing upon the alleged goodwill of the plaintiff. The defendant has further stated that they did not know or come across the aforesaid trademark ICRAVE at any point of time and therefore adoption of the said trade mark by the defendant is absolutely bonafide and that too after the said name was suggested by a third company engaged in this field. 4. Expansive arguments were addressed by counsel representing both the parties. 4. Expansive arguments were addressed by counsel representing both the parties. Mr.Neeraj Grover, counsel representing the plaintiff contended that the plaintiff has substantial trans-border and spill over reputation in India and this reputation of the plaintiff had increased manifold after it completed many projects at USA especially the John F.Kennedy International Airport project. Counsel further argued that the use of identical trade-mark/trade-name by the defendant is nothing but an attempt to wrongfully trade upon the plaintiff”s goodwill and reputation of the plaintiff. Counsel further argued that the malafides of the defendant are apparent as it has also adopted identical domain name as that of the plaintiff. Counsel further argued that the defendant cannot claim that just as a coincidence they have adopted the same trade name. Counsel further argued that before adopting the said name, the defendants either have not done due diligence as on one click of the mouse on google search one can easily find the said trade-mark/trade-name of the plaintiff and its prior existence. Counsel further argued that through internet research the plaintiff could find that M/s Rave Designs, whose services were alleged to have been engaged by the defendant for suggesting the name of their company, trade name, logo etc were found to be a reseller of wooden flooring instead of a professional brand consultation agency as has been claimed by the defendants. Counsel further argued that the plaintiff has sufficient material on record to prove prior adoption and use of the said trade-mark/trade name ICRAVE since the year 2002 and also the fact that the plaintiff has been receiving business queries from India much prior to defendants adoption of the said name. Counsel further argued that physical presence of the plaintiff in the territory of India is no-longer a pre-requisite for claiming relief of passing off in terms of the law laid down by the Supreme Court in the case of Milment Of tho Industries & Ors. vs. Allergan Inc 2004 (28) PTC 585 SC. Counsel for the plaintiff further placed reliance on the judgment of this court in the case of Austin Nichols & Co. & Anr. vs Arvind Behl &Anr.2006 (32) PTC 133 (Del) and a Division Bench judgment of this court in the case of Century Traders Vs. Roshan Lal Duggar & Co. AIR 1978 Delhi 250. Counsel for the plaintiff further placed reliance on the judgment of this court in the case of Austin Nichols & Co. & Anr. vs Arvind Behl &Anr.2006 (32) PTC 133 (Del) and a Division Bench judgment of this court in the case of Century Traders Vs. Roshan Lal Duggar & Co. AIR 1978 Delhi 250. Counsel further referred to the judgment of the Hon’ble Division Bench of the Madras High Court in the case of Caesar Park Hotels and Resorts Inc Vs. Westinn Hospitality Services Ltd. 1999 PTC (19) (DB) 123 to support his argument that physical presence in the territory of India is not a pre-requisite for claiming the relief of passing off. Counsel further argued that proof of actual damage is unnecessary in a passing off action and it would suffice if there is likelihood of the offending trade mark invading the proprietary rights of the plaintiff. Counsel further argued that it is a well settled principle of law that passing off action is not restricted to the same set of goods and services and remedy is available to all goods and services. In support of this argument counsel for the plaintiff placed reliance on the following judgments: 1. Dailmer Benz Vs. Hybo Hindustan 1994 PTC 287 2. Honda Motors Vs. Charanjeet Singh 2003(26) PTC 1 3. Larsen & Toubro Ltd. Vs. Lachmi Narain Traders 2008(36) PTC 223 (del) (DB) 4. Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills 2009(41) PTC 184 (Cal.)(FB) 5. Counsel further argued that the defendant is also engaged in the same field and therefore any consumer requiring services in the same field would certainly believe the association of the defendant with that of the plaintiff. Counsel thus argued that the nature of business and the field has to be kept in mind as in the field of architecture and designing there is not a long list of consumers and therefore there is every likelihood of deception and confusion being caused to the person or company requiring to engage the services in the said field. Counsel further argued that millions of people visit the John F.Kennedy international airport and therefore it cannot be said that reputation and goodwill of the plaintiff company has not travelled to India. Counsel further argued that millions of people visit the John F.Kennedy international airport and therefore it cannot be said that reputation and goodwill of the plaintiff company has not travelled to India. Counsel further submitted that through various advertisements in magazines and newspapers having world wide circulation, the reputation of the plaintiff has travelled far and wide and the Indian consumer public cannot remain ignorant of the same. 6. Opposing the said arguments of the counsel for the plaintiff, Mr.Samrat Nigam, counsel for the defendant, with no less vigour argued the case of the defendant. Counsel submitted that the plaintiff has not claimed any statutory violation of its trade-mark/trade name as the plaintiff has not yet been granted registration of the said trade mark/trade name in India. Counsel further argued that the case of the plaintiff is based on passing off but the plaintiff has failed to fulfill the necessary ingredients for claiming a relief on the basis of alleged passing off action as neither the plaintiff has any goodwill so far as India is concerned nor the use of the said trade mark has caused any damages to the plaintiff as there was not any kind of misrepresentation by the defendant in the adoption of the said trade-mark. Counsel further argued that even as per the own case of the plaintiff it has no base in India and none of the projects on which the opinion of the plaintiff was sought by the alleged consumers in India have fructified into any concrete contract. Counsel further submitted that the plaintiff may have reputation or specialization in a limited field of designing lounges, casinos etc and therefore it cannot claim that it has any transborder reputation in every field of architecture and designing, and in any case not in the field where the defendant is engaged. Counsel further argued that the consumer today is very wise and they are well aware of the fact that whose services they are undertaking and for what purpose. Counsel further argued that the plaintiff has a very localized business and has no trans-border reputation whatsoever and in any case the plaintiff has no goodwill or reputation so far India is concerned. Counsel further argued that the plaintiff has a very localized business and has no trans-border reputation whatsoever and in any case the plaintiff has no goodwill or reputation so far India is concerned. Counsel also submitted that the plaintiff has failed to place on record any document to show that it has any business in India or it has any earnings from any of projects handled by it in India. Counsel further argued that clients and customers of the defendant company engaged their services on the basis of reputation of defendant company itself and not because of existence of similar trade mark or brand name elsewhere in the world. Counsel thus submitted that over a period of time, the defendant has created a niche in the said field of architecture and design and there will be a threat to the reputation and goodwill of the plaintiff company only if the plaintiff company undertakes any project in the same field. Counsel further argued that the copies of the magazines and newspapers in which the plaintiff has claimed to have advertised has not been annexed by the plaintiff with the plaint and therefore no weightage can be given to any such assertion made by the plaintiff . Counsel further argued that the defendant has bonfidely adopted the said trade mark without knowing about the existence of the said trade mark of the plaintiff company and that too at the advise of a professional brand consultancy firm. Counsel thus submitted that the plaintiff has neither tangible or intangible presence in the said field in India and therefore cannot claim any restrain order against the defendant as the defendant are getting business because of their own excellence and quality work in the field of architecture and design and not due to the goodwill of the plaintiff . 7. I have heard learned counsels for the parties and have given by thoughtful consideration to the arguments advanced by them. I have also carefully gone through the pleadings of the parties and documents placed by them on record. Before I proceed to decide the rival contentions of the parties, some of the facts prima-facie not in dispute between the parties are as under:- i. That the plaintiff is the registered owner of trade-mark/trade-name ICRAVE with its registration in USA which dates back to the year 2002. Before I proceed to decide the rival contentions of the parties, some of the facts prima-facie not in dispute between the parties are as under:- i. That the plaintiff is the registered owner of trade-mark/trade-name ICRAVE with its registration in USA which dates back to the year 2002. Necessary documents have been placed on record by the plaintiff to this effect. ii. Plaintiff is also the owner of the domain name www.icrave.com from the year 2010 and documentary evidence to this effect has also been placed on record by the plaintiff iii. Plaintiff is engaged in providing consultancy and turn key project services in the area of interior and architectural designing and amongst various projects undertaken by the plaintiff one of the landmark project is completing various projects at USA’s John F.Kennedy International Airport and its projects have been in news worldwide through various newspapers and magazines having global circulation. Documentary material to this effect has also been placed on record by the plaintiff. iv. That the plaintiff was engaged in advanced discussions for various projects in various parts of India as per the details disclosed by the plaintiff in para 10 of the plaint. The plaintiff till date has not undertaken any project in India and the projects for which the plaintiff was consulted never fructified into any final contracts. v. The defendant has also adopted the said trade mark ICRAVE as a part of its corporate name after its incorporation in the year 2010. The defendant is also engaged in the consultancy services in the field of architecture and interior designing. The defendant had engaged the services of M/s Rave Designs for the selection of the said trade name ICRAVE after various suggestions were given by the said company. vi. The defendant company has 17 running projects as on date as per the list given by the defendant in the written statement. vii. Both the plaintiff and the defendant are engaged in the common field i.e. architectural and interior designing, infrastructure development and designing etc. 8. In the backdrop of the aforesaid facts which are by and large not in dispute between the parties, this court will proceed to test the case of the plaintiff for the grant of ad-interim injunction in the light of the established principles for the grant of injunction. 8. In the backdrop of the aforesaid facts which are by and large not in dispute between the parties, this court will proceed to test the case of the plaintiff for the grant of ad-interim injunction in the light of the established principles for the grant of injunction. These principles which are well known in the legal world inter-alia are that whether plaintiff has made out a prima-facie case,(ii) whether the balance of convenience is in favour of the plaintiff (iii) whether the plaintiff would suffer an irreparable injury if his prayed for whether the protection from the species of injuries of irreparable loss is necessary before the legal right of the plaintiff can be established and that whether the mischief of inconvenience which is likely to arise from withholding the injunction would be greater than what is likely to arise from granting it. It is also a settled principle of law that at the stage of deciding application for temporary injunction, the court is not required to go into the merits of the case in detail and what the court has to examine is that a prima-facie case has been established by the plaintiff for trial of the case. 9. World-over, the first lesson that is taught to every child entering the school is that one should not cheat by copying from the answer sheet of the other student. This principle still holds good in every school as philosophy behind this principle is that if one student has prepared for his exam by his hard work and devotion then his work should not be copied by the other student without putting the requisite hard work and devotion by him as well. The students of yesteryear when they enter in the commercial world tend to forget this basic principle and tenents of morality and ethics. What is called when one copies the answer sheet of other student in examination as cheating and when any person engaged in commercial world without putting any hardwork and devotion either uses the trade-name or the brand name of the other company or steals any artistic or other performing art of other person or copies designs, logo etc of other person or company it is called infringement. The said basic principle has been expressed by various courts in different ways through catena of legal decisions. 10. The said basic principle has been expressed by various courts in different ways through catena of legal decisions. 10. Admittedly, the case at hand is not a suit for infringement but an action in the tort of passing off. It is a settled legal position that in an action for passing off, the plaintiff has to establish that his business or goods have acquired the reputation he is claiming by showing that his trade name has become distinctive of his goods and services and the consuming public associates such goods and services with the trade name of the plaintiff .The plaintiff, however, is not required to establish fraudulent intention on the part of the defendant but what is required to be established is that there is likelihood of deception or confusion in the mind of public at large if the defendant is allowed to use the trade name of the plaintiff. The plaintiff should be able to establish that the said confusion is likely to cause damage or injury to the reputation, goodwill and name of the plaintiff. Here, it would be relevant to refer to the judgment of the Apex Court in the case of Laxmikant V. Patel Vs. Chetanbhat Shah & Anr. 2002(24)PTC1(SC), wherein the Apex Court explained passing off as under: “10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that he goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.” Thus to prima facie establish passing off action, the plaintiff has to pass the three tests. Firstly, the plaintiff has to establish that he has considerable goodwill and reputation in India, secondly; that the trade name of the plaintiff is distinctive to its goods and services and thirdly; that there is similarity in the mark of the plaintiff and the defendant which is likely to cause confusion in the mind of the public. 11. It was vehemently argued by Mr. Samrat Nigam, learned counsel for the defendant that the plaintiff does not in any manner have any presence in India, hence the question of any goodwill or reputation does not arise. The counsel for the defendant also argued that the plaintiff has in a vague manner claimed that there were business enquiries from India and none of them have admittedly fructified into any project and thus there arises no case of any trans border reputation. The tenets of the law of trans-border reputation has undergone considerable change in the past decade with the advent of technology and modes of communication. One of the first cases to deal with the doctrine of trans border reputation was Kamal Trading Co. Vs. Gillette U.K. Ltd. (1988) 1 I.L.P.R, wherein the Hon’ble Division Bench of the Bombay High Court held that goodwill 'cannot be restricted to one particular country in the present scenario of wide spread advertisement. The relevant paras of the said judgment is reproduced as under: “…It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The relevant paras of the said judgment is reproduced as under: “…It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers periodical, magazines and in other medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Take for example, the televisions, and Video Cassette recorders manufactured by National, Sony or other well Japanese concerns. These televisions and V.C.R’s are not imported in India and sold in open market because of trade restrictions, but is it possible even to suggest that the word "National" or "Sony" has not acquired reputation in this country? In our judgment, the good will or reputation of goods or marks does not depend on its availability in a particular country. In yet another case of this High Court in the case of Apple Computer Inc. Vs. Apple Leasing and Industries (1993)1I.L.P.R63, it was held that it was not necessary for a plaintiff in a passing off action to carry on business in India to prove prima facie case and balance of convenience to obtain an order of interim injunction and it was enough that the plaintiff has reputation in India. Hence, it is manifest from the above that the goodwill of a company and reputation is not limited to the country where the goods and services of the plaintiff are manufactured but also to another country where it has reputation and goodwill and the public know about the goods and services of the plaintiff. It is therefore not imperative for the plaintiff to prove that it manufactures any goods or services in India in an action for passing off. Here it would be pertinent to refer to the judgment of this court in the case of WWF International Vs. It is therefore not imperative for the plaintiff to prove that it manufactures any goods or services in India in an action for passing off. Here it would be pertinent to refer to the judgment of this court in the case of WWF International Vs. Mahavir Spinning Mills Ltd.1994PTC250, wherein the question of trans border reputation was considered at length and held as under: “Mere fact that the plaintiff has never manufactured any products in this country does not prevent it from acquiring the goodwill here in its trade mark. It is no doubt true that an action for passing of relates to the business and it must be established that the plaintiff has a reputation or goodwill of his business in this country. The foundation for the action for passing off is the protection of goodwill and so, one must prove the existence of goodwill in this country before obtaining a relief of passing off. The principle of law of passing off has been also made applicable to non-trading business or non-profit making bodies as well.” The law was finally settled by the Apex Court in the case of N.R. Dongre Vs. Whirlpool Corporation 1996 (16) PTC 583 wherein, the court considered the question of trans border reputation and laid down that the mark had considerable reputation in India even though it was not sold in India as washing machine being a product used by considerable section public thinking the consumer were well aware of the existence and the goodwill and reputation of the same in India. Hence, the law is well settled that to prove goodwill or reputation in a country, it is not incumbent upon the plaintiff to show that there was actual work or sale of its goods or services in that country or that the product or services need to be manufactured in that country.. 12. The plaintiff in the present case, admittedly, is in the market since 2002 whereas the defendant started its business in 2010. The argument of the counsel for the defendant was that what is important to see is who is first in the market in India and the that the public identifies the tradename ICRAVE with the services of the defendant in India. The controversy at hand was laid to rest by the Apex Court in the case of Milment oftho Industries & Ors. Allergan Inc. The controversy at hand was laid to rest by the Apex Court in the case of Milment oftho Industries & Ors. Allergan Inc. 2004 (28) PTC 585 (SC), wherein it was held that what is important is who is first in the world market. The relevant para of the said judgment is reproduced as under: “8. We are in full agreement with what has been laid down by this Court. Whilst considering the possibility of likelihood of deception or confusion, in present times and particularly in the field of medicines, the Courts must also keep in mind the fact that nowadays the field of medicine is of an international character. The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the Applicant in India and the user by the overseas company. The Court must ensure that public interest is in no way imperiled. Doctors particularly eminent doctors, medical practitioners and persons or Companies connected with medical field keep abreast of latest developments in medicine and preparations worldwide. Medical literature is freely available in this country. Doctors, medical practitioners and persons connected with the medical field regularly attend medical conferences, symposiums, lectures etc. It must also be remembered that nowadays goods are widely advertised in newspapers, periodicals, magazines and other media which is available in the country. This results in a product acquiring a worldwide reputation. Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product 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 and developed the product and is first in the market. Thus the ultimate test should be who is first in the market.” A similar question came up before this court in the case of Austin Nichols & Co. & Anr. Vs. Arvind Behl & Anr. Thus the ultimate test should be who is first in the market.” A similar question came up before this court in the case of Austin Nichols & Co. & Anr. Vs. Arvind Behl & Anr. 2006 (32) PTC 133 (Delhi),in which the plaintiffs were the manufacturer of whisky Blenders Pride which was available for sale in a large number of countries since 1973 and the defendant was manufacturing Blenders Pride in India since 1995. The court held that with huge advances made in information and communication technology over the years, the argument of the defendant that a regular sale of a product in one or more foreign counties would be unknown to a person living in India was without any merit. The court while relying on the judgment of the Apex Court in the case of N.R. Dongre (Supra) and Milment Of tho Industries (Supra) held that merely being first past the post in India is not enough and what is required to be seen is who was first past the post world wide. In the facts of the case at hand the plaintiff has been able to prove that they were established in 2002 with its headquarters in New York i.e., they were established prior to the defendants in the world market and thus prior in time. 13. The other contention of the counsel for the defendant was that the plaintiff has not been able to show that any damage or injury has been caused to its goodwill or reputation by virtue of the fact that the name ICRAVE has been adopted by the defendants. The law on the said subject has been well settled by the Division Bench of this Court as far back as in 1978 in Century Traders Vs. Roshan Lal Duggar & Co. AIR1978Delhi 250, wherein it was held that the proof of actual damage or fraud is unnecessary in a passing off action where the relief asked for is injunction alone or injunction coupled with rendition of accounts and damages. What is important to see is if there is a likelihood of the offending trade mark invading the proprietary right of the plaintiff, the case for injunction is made out. What is important to see is if there is a likelihood of the offending trade mark invading the proprietary right of the plaintiff, the case for injunction is made out. The said view was fortified by the Apex Court in the case of Laxmikant V.Patel (Supra), wherein it held that the plaintiff in an action for passing off does not have to prove actual damage or injury. 14. The second limb of the argument of the counsel for the defendant was that the defendants have adopted the name “ICRAVE” after engaging a professional brand consultancy firm with the name of M/s. Rave Designs which had suggested them a variety of options but the defendants chose the name “ ICRAVE” as it is unique and meaningful as “I” reflected innovation and “CRAVE” means desire and zeal to do something.; the composite meaning of the aforesaid word being „innovative desire or zeal to do something, which was immediately selected by the defendants. Admittedly, the word ICRAVE has no dictionary meaning and is an invented and coined word. The explanation put forth by the defendant for adoption of the said word for its business venture is far from convincing and is plainly obscure. Aspersions on the bona fide adoption of the said mark by the defendant is cast by the contention of the plaintiff that M/s. Rave Designs is a seller of wooden furniture and not any brand consultancy firm and surprisingly no document to the contrary has been placed on record by the defendant. What benevolently weighs in favour of the plaintiff also is that on punching the words ICRAVE on the internet google search, the first name that comes is the domain name of the plaintiff i.e. www.icrave.com and any brand consultancy firm in its due diligence must have conducted an internet search before suggesting the said brand name and the plaintiff cannot be heard to say that it was completely unaware of the presence of the plaintiff when it set up its domain name as www.icravedesigns.com. 15. The other facet of the argument of the defendant was that the plaintiff and the defendants area of operations is different as the plaintiff caters to five star hotels and lounges whereas the defendant is engaged in interior designing of offices and houses etc. 15. The other facet of the argument of the defendant was that the plaintiff and the defendants area of operations is different as the plaintiff caters to five star hotels and lounges whereas the defendant is engaged in interior designing of offices and houses etc. and thus there can be no likelihood of confusion between the said two entities in the mind of the public. Unfortunately, the said argument of the defendant does not hold any water as the services of both the plaintiff as well as the defendant is in the realm of interior designing and architecture and it would be nothing but a desolate endeavour to bifurcate and fork out sub divisions in the same for the purposes of an action of passing off. Furthermore, it is a settled legal principle that passing off is not restricted to same set of goods and services and the remedy is available to all sets of goods and services. Here, it would not be out of place to mention land mark cases of this court in this regard. In the case of Dailmer Benz Vs. Hybo Hindustan 1994PTC287, wherein, the plaintiff was the manufacturer of world class luxury cars Mercedes Benz and the defendant used the name Benz for manufacturing and selling underwears and the court taking note of the goodwill and reputation of the plaintiff restrained the defendant from using the said mark. Another case is of Honda Motors Co. Ltd. Vs. Charanjit Singh & Ors.2003(26)PTC1(Del) wherein the plaintiff was the manufacturer of cars and automobiles and the defendant used the said mark on pressure cookers and the court granted interim injunction against the defendant and held that the plaintiffs and defendants sets of goods or services need not be identical and the plaintiff does not have to be in direct competition with defendant to suffer injury from the use of its trade name by the defendants. The Hon’ble Division Bench of this court in the case of Larsen & Toubro Ltd. Vs.Lachmi Narain Trades & Ors. 2008(36)PTC223(Del.)(DB) held that dissimilarity in products in which the parties trade does not make any material difference in so far as the grant or refusal of injunction against the defendant in an action for passing off is concerned. The Hon’ble Division Bench of this court in the case of Larsen & Toubro Ltd. Vs.Lachmi Narain Trades & Ors. 2008(36)PTC223(Del.)(DB) held that dissimilarity in products in which the parties trade does not make any material difference in so far as the grant or refusal of injunction against the defendant in an action for passing off is concerned. Here it would be relevant to quote the observations of the Hon’ble Full Bench of the Calcutta High Court in the case of Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills 2009 (41) PTC 184 (Cal.) (FB) as under: “Where the defendant's activities, although not in an area of business in which the claimant is engaged, are in an area of business which might be assumed to be a natural extension of the claimant's business, likelihood of deception will readily be inferred. However, even where the fields of activity in which the claimant and the defendant are engaged are remote from each other, it is possible for deception to occur if the name or mark used is highly distinctive, or if the claimant's mark or name is well known and is closely copied with regard to style, lettering etc.” From the above it would be manifest that it is not the obligation of the plaintiff to prove that the plaintiff and the defendant are operating in the same sphere to claim an injunction in an action for passing off. In the case at hand, both the plaintiff and the defendant are operating in the same field by and large and the distinction carved out by the counsel for the defendant is inconsequential and immaterial as even if they operate in different fields it would not be a yardstick in an action of passing off. 16. Now coming to the meat of the matter, whether there is deceptive similarity or the likelihood of confusion in action for passing off in the present case. Here it would be relevant to refer to the judgment of the Apex Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 PTC 300 (SC) where the Court held that in a passing off action for deciding the question of deceptive similarity the following facts had to be taken into consideration: a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works. b) The degree of resemblance between the marks, phonetically similar and hence similar in idea. c) The nature of the goods in respect of which they are used as trade marks. d) The similarity in the nature, character and performance of the goods of the rival traders. e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. f) The mode of purchasing the goods or placing orders for the goods, and g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Determining the instant case on the anvil of above criteria, the two marks are identical in words, phonetically as well. The parties operate in the same field and the target consumers of the both the parties are same and thus there remains not a scintilla of doubt that the marks are identical and prima facie the tort of passing off is established. 17. The Hon’ble Supreme Court in the case of M/s. S.M. Dyechem Ltd. Vs. M/s. Cadbury India Ltd. 2000(4)SCALE713 had noted that in patent and trade mark litigation it is necessary for the plaintiff to not merely make out a better case than the defendant, but rather, a strong preponderate case in its favour. The plaintiff in the case at hand placed on record the magazines and brochures in which it has advertised and has been considerably commented upon, some of which like Frame, Conde Next and wallpaper having its circulation in India, demonstrates the global presence of the plaintiff in the field of architecture and design. The argument of the plaintiff it’s also worth its salt when he submitted that the outstanding project of the plaintiff is the terminal at the John F.Kennedy Airport of USA which is visited by many Indians and with them they carry the reputation of the plaintiff to India. It cannot be consigned to oblivion that in the present day age of advancement in communications and technology, the world has become flat. Anybody who is interested in engaging the services of a particular industry can with a click of a mouse know the small and big fish that exist in the market. It cannot be consigned to oblivion that in the present day age of advancement in communications and technology, the world has become flat. Anybody who is interested in engaging the services of a particular industry can with a click of a mouse know the small and big fish that exist in the market. The circulation of tangible forms of magazines has been considerably overshadowed with people reading the morning newspaper on internet to ordering the smallest of products online. In such a scenario of transcending boundaries, the establishing goodwill and reputation in another country is based on awareness quotient of the consumer public which in the case of India cannot be underestimated. Thus, in my considered view, in the present case, the plaintiff has been able to establish that it has considerable reputation and trans border reputation in India. The parties are undeniably in the same business and the attempt of the counsel for the defendant to differentiate the two or the target market has lamentably failed. It is enough for the grant of temporary injunction in favour of the plaintiff that the two marks when viewed and when the question of similarity is posed on a mental recollection, if there exists a likelihood of deception or confusion between the two, the plaintiff would be successful in establishing its case. 18. This court is irked by the submission of the counsel for the defendant that the name of the plaintiff and the defendant being identical is just a mere coincidence, as being in the same business how can the defendant be ignorant about the presence of the plaintiff, who has a world wide reputation. In my considered view, the defendant is feigning ignorance about the presence of the plaintiff in the world market and this lack of knowledge on the part of the defendant is hard to believe by this court. The counsel for the defendant with all his verve emphasized that the plaintiff has not registered its trade mark in India and it is only in the year 2011 that they have filed for its registration. What cannot be lost sight of, is the fact in the present circumstances that the defendant though claiming to have a high profile list of clientele with 17 projects running currently has still not applied for the registration of its trade mark. 19. What cannot be lost sight of, is the fact in the present circumstances that the defendant though claiming to have a high profile list of clientele with 17 projects running currently has still not applied for the registration of its trade mark. 19. The counsel for the defendant lent much support from the judgment of this court in the case of Sakalain Meghjee Vs. B.M. House (India) Ltd., 2002 (24) PTC 207 (Delhi)to impress upon this court that it was necessary for the plaintiff to establish prima facie reputation and goodwill in India by virtue of its actual work or sale. However, with due respect, in this case, the learned Single Judge did not take into account the judgment of the Supreme Court in the case of N.R. Dongre (Supra),wherein it has been categorically held that there is no need for actual work or sale but only goodwill and reputation in another country which would suffice in an action for passing off. The plaintiff in the present case has placed on record sufficient material to show its reputation in the field of architecture and design world wide and also the interest of the Indian entities in hiring its services for various projects in the metropolitan cities of Mumbai, Hyderabad and Bangalore. Also, in the face of the subsequent judgment of the Apex Court in the case of Milment Oftho (Supra)after the judgment of Sakalain(Supra),I need not dwell upon the distinguishing features of the said judgment to the facts of the case at hand as the said judgment of Milment has laid all the controversy at rest as to what is required to be proved by the plaintiff in an action for passing off. 20. Now testing the case of the plaintiff on the tripartite test for grant of ad interim injunction, i.e., prima facie case, balance of convenience and irreparable loss and injury, this court is of the considerable view that the plaintiff has been able to satisfy this court on the said three parameters and hence he is entitled to the grant of ad interim injunction. Accordingly, the defendant, its directors/proprietor/partners, employees, agents, distributors, franchisees, representatives and assigns are restrained from using the impugned trade mark/trade name ICRAVE or any other mark/name as may be confusingly or deceptively similar to the plaintiff’s trade mark/trade name ICRAVE in respect of goods, of their manufacture and sale and services provided by it amounting to passing off their goods with the goods services and businesses of the plaintiff or in any manner whatsoever, using or incorporating the plaintiff’s trade mark/trade name or any other trade mark/trade name and from taking benefit of the reputation and goodwill of the plaintiff in any manner whatsoever.