1. By this order I propose to dispose of plaintiff application being IA 3812/2003 under Order 39 Rules 1 and 2 CPC and defendants application being IA 4665/2003 under Order 39 Rule 4 CPC for vacation for ex-parte ad interim injunction granted by this Court 1st April, 2003.

2. This Court on consideration of documents and material on record, granted an ad interim ex-parte injunction restraining the defendants from reproducing, replicating, distributing, manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner in music albums under the trade mark BUDDHA-BAR.

3. The defendant is aggrieved by the said order and hence his application under Order 39 Rule 4 CPC.

4. It is the plaintiffs case that the plaintiff is proprietor of the trademark BUDDHA-BAR being used in relation to music albums in several countries around the world since the year 1999. The mark was registered in many countries in Class 9 and 41. The mark was first adopted and used in the year 1996 by plaintiffs affiliate company George V. Restauration. In the said restaurant music was played by well-known disc-jockeys, which was compiled into CDs. These discs were sold by the plaintiff under the trademark BUDDHA-BAR since 1999 pursuant to agreements entered into between the plaintiff and ChallO Music International granting license to the ChallO Music to produce a double compilation of world music under the brand name BUDDHA-BAR. The trademark BUDDHA-BAR in respect of music albums was registered under number 00/3005110 on 3rd February, 2000 in France and was also registered in all the EEC countries. The plaintiff claims that its reputation generated across the world spilled over to India and the plaintiffs mark became distinctive of the plaintiffs goods and the same were identified as goods of the plaintiffs. Rights were given to Wagram for distribution of the albums, who in turn appointed Worldwide Music in India as sub-distributor for making CD compilation in India under the mark BUDDHA-BAR. Third series of BUDDHA-BAR was released in France in March 2001 and in India on 11th December, 2001. The reputation of the plaintiff spilled over on account of news items in TIME Magazine, New York Times, The Times, Evening Standard, ES Magazine, Detroit News and Free Press, Daily Herald, Las Vegas Review Journal. Several Indian newspapers and magazines in India also wrote in their columns of the reputation and goodwill generated by the mark BUDDHA-BAR in relation to music albums. Indian celebrities and the media also publicized the popularity of mark BUDDHA-BAR in relation to music albums. Television coverage received on satellite channels beamed into India in June-July, 2001 of the fashion show of the designer Ritu Beri brought awareness of the mark BUDDHA-BAR in India. The plaintiff contends that the adoption of the identical trademark by the defendants is patently dishonest and is likely to create confusion and deception in the minds of the public causing the defendants goods to be associated or identified as the goods of the plaintiff.

5. Reliance was placed on the decisions reported as Chennamsetty Rama Murthy Vs. Gattu Venkateswarlu and Another 2001 (2) CCC 439 (A.P.), The Fleischmann Distilling Corporation Vs. Maier Brewing Company 136 USPQ 508, M/S Midas Hygiene Industries P. Ltd. Vs. Sudhir Bhatia CA No.107, 2002 order of the Supreme Court dated 22.1.2004, Balram Prasad Agarwal Vs. State of Bihar, AIR 1997 SC 1830 [LQ/SC/1996/2159] , Haw Par Bros. International Ltd. Vs. Tiger Balm Co. (P) Ltd. and Ors (DB) and Indian Shaving Products Vs. Gift Pack, 77 (1999) DLT 137 [LQ/DelHC/1999/835] = 1998 TC (18) 698.

6. The defendant contends that plaintiff is not entitled to continuation of ad interim injunction as he has failed to establish proprietary rights in the mark BUDDHA-BAR because restaurant business was owned by its affiliate company, who is not a party in the present suit. The plaintiff failed to prove user for the years 1999 and 2000 since such user is by Claude Challe of ChallO Music. The plaintiff has failed to establish user rights in India and the first invoice on record is of 21st February, 2002 and this is after releasing of defendants album in January, 2002. Reliance placed on newspaper reports and magazines etc. do not further the case of the plaintiff as the material relied upon by the plaintiff is not admissible in evidence and is hearsay evidence. BUDDHA-BAR has been used by third party both in relation to the restaurant and music business. The plaintiff is not entitled to the discretionary remedy of injunction as there is a delay in instituting the suit in as much as 14 months. It is further contended that CDs of the plaintiff do not bear the plaintiffs name for the earlier albums BUDDHA-BAR and BUDDHA-BAR II, therefore, consumers are unable to associate the product with the plaintiff. The mark cannot be distinctive of the plaintiff. The plaintiff has failed to establish that adoption and use is prior to mark of the defendant. Trade activity of restaurant business is completely different from business of music albums. There is no trade connections between two trading activities. The first album was released by ChallO Music in 1999 and 2000 not by the plaintiff. The plaintiff has failed to produce any evidence showing the use of the mark in the country of its origin, internationally or in India. Newspaper reports cannot be relied upon. The most of the documents filed by the plaintiff are of no assistance to the plaintiff.

7. I have heard learned counsel for the parties and perused the documents on record.

8. It is settled law that passing off is an action of deceit where the defendant attempts to pass of his goods as those of the plaintiffs. In Advocates case Lord Diplock laid down the characteristics for a valid cause of action in passing off namely there must be a mis-representation made in the course of trade to prospective customers of his or ultimate consumers of goods or services supplied by him which is calculated to injure the business or goodwill of another trader and which causes actual damage of the business or goodwill of the trader by whom the action is brought.

9. In order to succeed the plaintiff must establish prior adoption and use of the mark and on account of use the mark has acquired a reputation and goodwill and become and distinctive of the plaintiffs goods in the country of origin. The mark on account of use has acquired the status of well-known/famous trade mark internationally and the reputation spilled over to India prior to the adoption of the mark by the defendant. The plaintiff must show a connection in the course of trade between the goods and the plaintiff and that use of identical or deceptively similar mark by the defendant is calculated to deceive or cause confusion leading the purchaser to buy the goods of the defendant considering them to those of the plaintiff.

10. The reputation claimed by the plaintiff is on account of news items in several international newspapers such as Time Magazine, New York Times, The Times, Evening Standard, ES Magazine, Detroit News and Fees Press, Daily Heralds, Las Vegas Review Journal, who devoted their column to BUDDHA-BAR restaurant and BUDDHA-BAR music albums and both were linked to high fashion and to celebrities. These publications have wide circulation abroad and in India and moreover the circulation of these news items were prior to February, 2002. Several Indian Newspapers and magazines such as Times of India, Mid-Day, The Hindustan Times, Indian Express, The Hindu etc. spoke of the international renown of mark BUDDHA-BAR In connection with the restaurant and music albums and praised their high quality of music linking it with well-known celebrities. The Indian Press/Media coverage of the mark BUDDHA-BAR and the music associated therewith suggest spill-over trans-border reputation into India. The contribution by Indian artist of renown like Anaida to BUDDHA-BAR albums prior to February, 2002 as well as interviews of these artists in local newspapers extolling the virtue of the opportunity to participate in the BUDDHA-BAR experience and music and the television coverage received on satellite television channels such as FTV, beamed into Indian in June-July, 2001 of the fashion show held by designer Ritu Beri in the BUDDHA-BAR restaurant in Paris, which brought awareness of the mark BUDDHA-BAR In India as well as in relation to music albums. The plaintiff placed on record a large number of documents by way of articles, pictures, interviews and write up to establish spill over reputation extending right up to the date of the suit. It does not make any difference in case the said items are downloaded from the internet when actual excerpts of news items appeared in original publications. The plaintiffs case is that in an action for passing off and trans-border reputation, it is not necessary for the plaintiff to show that he was trading within the country. The admission of the reputation of the owner of the brand names in its advertisements amounts to user of the same. The plaintiff has been selling CDs since 1999 in abroad and these music albums are in demand abroad. Circulation of the music albums is internationally recognised as would be evidence from the various articles in the journals and newspapers, magazines copies whereof have been placed on record. There is spate of Indian publications and foreign publications on record where the mark BUDDHA-BAR and music albums recognising the reputation and goodwill of the plaintiff in the mark BUDDHA-BAR and music albums and its popularity in foreign country, which spilled over into India. The music albums have also been sold through internet.

11. What is sought to be contended by the defendant is that the plaintiff has failed to establish proprietary rights over the trademark BUDDHA-BAR as the restaurant business is own by its affiliate, who is not party to the present suit and therefore user of 1996 cannot be taken into account. The plaintiff has not produced sufficient evidence from the year 1999-2000 as the said user is not of the plaintiff but by Claude Challe of ChallO Music. The plaintiff is violating the provisions of Section 52 (a) of the Copyright Act by not disclosing the name, address of manufacture, copyright owners and year of publication. The plaintiff has produced first invoice dated 21st February, 2002, which is after the defendants release of album in January, 2002. The documents filed by the plaintiff being in the nature of newspaper reports are not admissible in evidence and cannot therefore be relied upon. The present suit has been filed after 14 months of delay and as such the plaintiff is not entitled for discretionary

relief of injunction.

12. The contention of the defendant that the plaintiff has not established proprietary rights to the mark BUDDHA-BAR as the restaurant business was owned by its affiliate, who was not a party to the suit is without force. There is sufficient evidence produced on record to show that the plaintiff was the user of the mark BUDDHA-BAR in relation to music albums. The mark BUDDHA-BAR in relation to music albums was registered under number 00/3005110 on 3rd February, 2000 in France. It is not disputed that the music album business is owned by the affiliate or the sister companies. The plaintiff and its sister concern constitute one economic entities and it a well known international practice for companies trading in multiple jurisdictions to work with affiliate organisation, which have been treated as one economic entity for purposes of proprietary rights by Courts. The decisions in the matter of Revlon V. Cripps and Lee reported in 1980 FSR 85 and Food Distributors V. London Borough of Tower Hamlets reported (1976) All ER 462 supports the case of the plaintiff wherein the Court held as under:

there is evidence of general tendency to ignore the separate tendency to ignore the separate legal entities of the various companies within a group, and to look instead at the economic entity of the whole group

13. Thus, the plaintiffs proprietary rights in the mark BUDDHA-BAR stand prima facie established from the reading of the plaint and documents inasmuch as there is a pleading to the effect that plaintiff company is a affiliate of restaurant business of George V. Restauration and the mark was registered in favour of the plaintiff in 2000 in Paris. The restaurant business and the plaintiff constitute one economic entity for the purpose of proprietary rights.

14. The next contention of the defendant that plaintiff has failed to produce sufficient evidence from the year 1999-2000 as the said user is not the plaintiff but by clause Challe of ChallO Music does not inspire confidence in light of the trademark licensing agreement dated 13th June, 2000 executed between the plaintiff and ChallO Music International, which also carried on business involving musical production, to produce a double compilation of world music under the brand name BUDDHA-BAR. Translated copy of the agreement is on record. The original document was brought in Court at the time of hearing. It is apparent from the reading of the agreement that license was earlier granted to the ChallO Music by George V. Record for production of first double compilation of music under the trademark BUDDHA-BAR free of cost. Article 7 of the agreement provides that any proceedings pertaining to infringement of trademark against any third party will be instituted by the Licensor i.e. the plaintiff in its name and at its own expenses with the technical help of the Licensee. The licensee acknowledges the proprietary rights of the plaintiff over the mark. The music album under the mark BUDDHA BAR was first released in 1999 and thereafter in 2000 by the Claude Challe/ChallO music on the force of the aforesaid trademark license agreement. The user of the mark in relation to music albums stand established from 1999-2000. So far as the contention of the defendant that plaintiff are violating the provisions of Copyright Act is concerned, the same shall be considered at the time of trial. The further contention of the defendant that in order to succeed in an action of passing off, the plaintiff has produced first invoice dated 21st February, 2002, which is after the defendants release of its album in January, 2002 is without force. The matter is at the interlocutory stage. The plaintiff can filed the documents/additional documents prior to settlement of issues. This Court at this stage has to see whether the plaintiff is the prior adopter and user of the mark and whether the mark has acquired a reputation and goodwill and become distinctive of the plaintiffs goods in the country of origin and whether such reputation has spilled over into India.

15. The next contention of the defendant that the documents filed by the plaintiff in the nature of newspaper reports are not admissible in evidence and cannot be relied upon cannot be considered at this stage. This can be, if at all, considered at a later stage as it may require evidence to be led by the parties to determine this contention. The Court at this stage is to see whether a prima facie case is made out to grant an interim relief to the plaintiff at the interlocutory stage. The Privy Council in the case of Subramaniam v. Public Prosecution, 1 WLR 965 observed:

Evidence of a statement made to a witness who is not himself called as a witness may or may not be hearsay. It is hearsay and inadmissible when the object of the evidence is to establish the truth of what is contained in the statement. It is not hearsay and is admissible when it is proposed to establish by the evidence, not the truth of the statement but the fact that it was made. The fact that it was made quite part from its truth, is frequently relevant in considering the mental state and conduct thereafter of the witness or some other persons in whose presence these statements are made

A Division Bench of the Madras High Court in the matter of Haw Par Bros. International Ltd. Vs. Tiger Balm Co. (P) Ltd and Ors. Reported in 1996 PTC (16) (DB) 311 inter-alia observed that There is nothing on record at present to reject the correctness of the reports found in standard newspapers which have a reputation of correct reporting.....

16. Reliance placed by the defendant on M/s Smithkline Beecham Plc. and Ors. Vs. M/s Hindustan Lever Limited and Ors 2000 PTC 83, Clutte Peabody and Co. Inc. Vs. Arrow Apparals 1998 PTC (18) 156, Veerumal Praveen Kumar Vs. Needle Industries (India) Ltd. and Anr. 93 (2001) DLT 600 (DB) = 2001 PTC 889 (Del.) (DB), Balram Prasad Agarwal Vs. State of Bihar, AIR 1997 SC 1830 [LQ/SC/1996/2159] , State of Haryana and Others Vs. Ch. Bhajan Lal and another AIR 1993 SC 1348 [LQ/SC/1992/913] , Ravinder Kumar Sharma Vs. State of Assam and Others VIII (1999) SLT 90 = AIR 1999 SC 3571 [LQ/SC/1999/857] , Samant N. Balakrishna etc. Vs. George Fernandez and others etc. AIR 1969 SC 1201 [LQ/SC/1969/63] , Laxmi Ram Shetty and another Vs. State of Tamil Nadu AIR 1988 SC 1274 [LQ/SC/1988/257] are of no help to the defendant in the present case. They are distinguishable on facts. In some of the decisions referred to there were no write up or publication which went out to the public like in the present case wherein large amount of publicity material in local and overseas publication have been produced on record. Reliance on 1998 PTC (18) 156 is also misplaced. In that case, the Court did not grant injunction on account of long delay coupled with the fact that during the relevant period the magazine was banned in India.

17. The next contention of the defendant the trademark BUDDHA-BAR has been used by third party in relation to the restaurant and music business, which are not parties of the present suit is without force. In light of the aforesaid discussion it is prima facie established that the restaurant business is owned by the affiliate or the sister companies. The plaintiff and its sister concern constitute one economic entities and it is well known international practice for companies trading in multiple jurisdictions to work with affiliate organisation, which have been treated as one economic entity for the purpose of proprietary rights by the Courts. The mark BUDDHA-BAR was used by the Claude Challe on the strength of the trademark license agreement between the plaintiff and Claude Challe. Claude Challe acknowledged the plaintiff to be the proprietor of the mark BUDDHA-BAR in relation to music business.

18. The last contention of the defendant that the plaintiff is not entitled to discretionary relief of injunction is also without force in light of the decision of the Supreme Court in the matter of M/s. Midas Hygiene Industries P. Ltd. and Anr. Vs. Sudhir Bhatia and Ors. (C.A. No.107/2002) dated 22nd January, 2004 The Supreme Court inter-alia observed as under:

........ In case of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.

19. The defendant failed to give any satisfactory explanation/justification in relation to adoption and use of the mark BUDDHA-BAR. It appears that name was picked up from the spill over reputation of the said mark in India by the plaintiff and the defendants must be aware at the time of user. The adoption of the mark by the defendant cannot prima facie be recorded as honest.

20. It is well settled law that in action of passing off and trans-border reputation, it is not necessary to insist that the plaintiff must be trading within the country. The admission of the reputation of the owner of the brand names in its advertisements amounts to user of the same.

21. The Calcutta High Court in the matter of J.N. Nicholas (Vimto) Vs. Rose and Thistle and Anr. AIR 1994 Cal. 43 [LQ/CalHC/1993/416] held:

The user of the mark does not postulate actual sale of the goods bearing such mark, use can be in any form or way and does not necessarily mean and imply actual physical sale and even mere advertisement without having even the existence of the goods can be said to be an user of the mark

22. In the matter of Goldstar Co. Ltd. Vs. Goldstar Industries reported in 1995 PTC 18 the court observed as under:

It has been the case of the plaintiff herein that he had been advertising goods under the trademark GOLD STAR in journals and in newspapers which are being circulated in India. This shows that the plaintiff had been advertising the goods, which according to the observation of the Calcutta High Court would amount to use. If that be so, then prima facie, it cannot be said that there was not users of the trademark for the long period.

23. In 2001 PTC 353 the Court held as under:

Thus a product and its trademark transcends the physical boundaries of a geographical region and acquires a trans-border or overseas or extraterritorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of the foreign trader and its trademark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial.

24. This Court in the matter of N.R. Dongre Vs. Whirlpool Corp. AIR 1995 Delhi 300 observed as under:

Having regard to the above discussion, the following position emerges. The courts do not approve of any attempt by one trader to appropriate the mark of the another trader, even though that trader may be a foreign trader and mostly uses his mark in respect of the goods available abroad i.e. outside the country where the appropriation of the mark has taken place. As mentioned earlier, awareness and knowledge of the mark in the latter counter may be because of the small trickle of the goods in that country or through advertisement. The manner and method by which the knowledge of the mark is acquired by the public is of no consequence and will not matter

25. In light of the aforesaid, it is prima facie established that plaintiff is the prior adopter and user of the mark BUDDHA-BAR in abroad. The plaintiff prima facie established proprietary rights for the mark BUDDHA BAR in relation to music albums. The mark enjoys reputation and goodwill in the country of its origin and several other countries by way of advertisements/news reports in reputed newspapers and reputed magazines and spill over the same to India, which is also evident from the newspaper reports and magazines, amounts to user of the trademark in relation to the music albums. In the case of goods, which have acquired a name and reputation either through publicity in journals or newspapers, such publicity itself creates a demand for the product and it is necessary to protect the person, who is owner of the mark/goods to prevent another person from taking benefit of his goodwill and reputation with reference to the same goods. The adoption and use of the name BUDDHA-BAR by the defendant appears to be dishonest as the same is without any explanation and justification and moreover the spill over reputation in India appears to have motivated the defendant to manufacture and market the music albums under the mark BUDDHA-BAR with the intention to encash the goodwill and reputation of plaintiff. The two marks in dispute are almost similar. The defendant failed to explain as to how the said name is hit upon it. There is also possibility of confusion between the plaintiffs goods and defendants goods and there is likelihood of confusion in the minds of the purchasing the defendants goods, which are deceptively similar and identical to the goods, which are manufactured and marketed by the plaintiff. The purchaser public identifies the music album as those of the plaintiff and any attempt on the part of the defendant to pass over their goods as those of the plaintiff would determine passing of their goods as those of the plaintiff. The matter is only at an interlocutory stage for confirmation/vacation of the injunction. Trial has yet to take place. The objections raised by the defendant shall be considered at the time of trial as they may require evidence to be led by the parties to determine the objections. The plaintiff cannot be declined interim protection at this stage.

26. It is not possible to say how long a mark should be used to establish goodwill and reputation. It depends on the facts and circumstances of each case. In a given case, six weeks was held sufficient to establish reputation and goodwill. It depends on the nature of the goods or business, quantum of sales of the product, extent of advertisement and publicity launched, the area over which user of the mark is made and so on. In the present case, the user of the mark in Paris and other countries is prima facie established since 1999. The music albums under the mark BUDDHA-BAR were and are in demand abroad. The Indian publications and foreign publications on record acknowledged the reputation and goodwill of the mark BUDDHA Bar and music albums and its popularity in foreign country, which spilled over into India. The albums have also been sold through internet. The mark BUDDHA-BAR is distinctive of the music albums. Singularity and exclusiveness of the album would be eroded by the use of the word BUDDHA BAR on the albums by defendants.

27. Grant of an injunction is a discretionary relief. Three guiding factors have to be kept in mind while refusing or allowing the relief of ad interim injunction namely whether there exists a prima facie case; balance of convenience between the parties and if injunction is not granted, it will cause irreparable loss to the plaintiff. In the present case the plaintiff is the owner of the trademark/name BUDDHA-BAR. He is prior adopter and user of the same. Prima facie case is made out in favour of the plaintiff. Balance of convenience is clearly in favour of the plaintiff from the facts found from the pleadings and documents. There can be no dispute with regard to proposition of law. It is indeed a sad reality that the trial of the case does not reach hearing for several years. Therefore, at the interim stage itself if the court is prima facie satisfied that the plaintiff is the prior adopter/user and registered proprietor of the trademark and the defendants adoption is dishonest, not granting an injunction would amount to encouraging the tainted and dishonest to seek benefit of the delay in the disposal of the suit. Refusal of injunction shall result in irreparable injury to the plaintiff as already observed that the defendants adoption of the trademark is not honest. Plaintiff in these circumstances would be entitled to injunction.

28. In view of the aforesaid discussion, I am satisfied that there is sufficient material on record to prima facie establish the reputation, goodwill and distinctiveness of the plaintiff in relation to the music albums under the mark BUDDHA-BAR internationally and spill over of the reputation into India. The plaintiff must succeed in the present application. The plaintiffs application under Order 39 Rule 1 and 2 CPC is allowed. The injunction is confirmed. The application of the defendant under Order 39 Rule 4 CPC is dismissed. No order as to costs.

The observations made by me herein are only for the dealing with this interim application and would in no way affect the final determination of the controversy after the trial of the suit.