V. Ramasubramanian, J.

( 1. ) Claiming to be the Registered Proprietor of the Trade Mark as well as the device "Health and Glow" and also claiming to be the Proprietor of the copyright in the style and manner in which the trade name and mark are artistically written and used, the present suit has been filed by the Health and Glow Retailing Private Limited, praying for the following reliefs viz.,:- (a) for a permanent injunction restraining the defendants from using the words "Health and Glow" or any other mark identical with or deceptively similar to the trade name and device "Health and Glow" of which, the plaintiff is the registered proprietor; (b) for a permanent injunction restraining the defendants from using as a domain name/website address, marketing, selling or directly and indirectly dealing in any goods using the words "Health and Glow" or any other mark identical with or similar to the trade name, mark and device of the plaintiff; (c) for a permanent injunction restraining the defendants from reproducing, using as signage, printing, publishing or distributing any label, packaging or etc., which is a colourable imitation of the plaintiffs label "Health and Glow", thereby infringing upon the plaintiffs copyright; (d) for a direction for delivery of all packaging materials, labels, blocks, dyes etc., of the defendants bearing the words "Health and Glow", for destruction; (e) for a direction to the defendants to render accounts of the profits made through the use of the words "Health and Glow"; (f) for a direction to the defendants to pay damages to the tune of Rs. 25 lakhs.

( 2. ) The case of the plaintiff, as made out in the plaint is as follows:- (a) that the plaintiff is a Private Limited Company, having its Registered Office at Chennai and is carrying on business as Retail Service Provider in beauty and health care merchandise, eversince 1997; (b) that in the course of trade, the plaintiff adopted and have been using the trade mark and the trade device known as HEALTH AND GLOW", written in a stylised manner with the image of a dancing doll inside the letter G ever since 1997; (c) that the device and the trade name and mark have been registered under the Trade Marks Act, in respect of goods under Classes 3 and 5 bearing Registration Nos. 802306, 1315016 and 1315017; (d) that two more applications for registration bearing Nos. 1420632 and 804746 in respect of services and goods under Classes 42 and 3 are pending before the Registrar of Trade Marks; (e) that the plaintiff has 43 retail outlets in Chennai, Bangalore, Hyderabad and Mumbai and has earned a great reputation and built up enormous goodwill for the chain of retail stores run by them; (f) that the retail outlets of the plaintiff offer for sale, a wide range of Colour Cosmetics, Skin Care, Hair Care, Herbal Products, Fragrances and Beauty Accessories, Aromatherapy Products, Mens Cosmetics, Baby Care, Personal Care Items and Toiletries and Pharmaceutical Products; (g) that as a result of the enormous advertisement cost, over the years, the total annual turnover of the plaintiff rose from Rs. 7.25 crores in 1998-99 to Rs. 52.83 crores in 2005-2006; (h) that one of the shareholders of the plaintiff company maintains a website www.dairyfarmgroup.com providing information about the goods and services offered by the plaintiff; (i) that in May 2006, the plaintiff came across an advertisement in the Trade Marks Journal dated 15.9.2005 showing that the first defendant had filed an application for registration of a Trade Mark containing the words "Health and Glow" in respect of goods and services under Class 5; (j) that the plaintiff immediately filed a notice of opposition before the Registrar and the proceedings are pending before the Registrar; (k) that the plaintiff came to know in March 2007 that the defendants run a cosmetic Homeopathy Health Clinic and that they also have a website www.healthandglowclinic.com; and (l) that therefore the plaintiff was constrained to file the suit, for infringement of their registered trade mark, for passing off the products and services of the defendants as those of the plaintiff and for infringement of the copyright.

( 3. ) Along with the suit, the plaintiff filed two applications in O.A. Nos. 310 and 311 of 2007 praying for (i) an interim injunction restraining the defendants from using the words "Health and Glow" or any other name or mark identical with or deceptively similar to the registered trade mark and device or from passing off their goods and services as those of the plaintiff and (ii) an interim injunction restraining the defendants from reproducing, using as signage, printing or publishing any matter which is a colourable imitation or substantial reproduction of the plaintiffs device "Health and Glow", amounting to infringement of the copy right of the plaintiff. On 23.3.2007, an interim order of injunction was granted in both O.A. Nos. 310 and 311 of 2007.

( 4. ) After service of notice, the defendants have come up with three applications viz., Application No. 2941 of 2007, to vacate the interim order of injunction in O.A. No. 311 of 2007, Application No. 2942 of 2007, to vacate the interim order of injunction granted in O.A. No. 310 of 2007 and Application No. 2943 of 2007, to reject the plaint under Order 7 Rule 11 C.P.C.

( 5. ) On the same date on which the defendants came up with the vacate injunction applications viz., 10.4.2007, the plaintiff has filed two applications in Application Nos. 2918 and 2919 of 2007 praying for punishing the respondents under Order 39 Rule 2A C.P.C., for disobedience of the orders passed in O.A. Nos. 310 and 311 of 2007 respectively. Therefore, all these applications were taken up together for hearing.

( 6. ) I heard Mr. R. Gandhi, learned Senior Counsel appearing for the plaintiff, who is the applicant in O.A. Nos. 310 and 311 of 2007 and applicant in Application Nos. 2918 and 2919 of 2007 and Mr. T.R. Rajagopalan, learned Senior Counsel appearing for the defendants, who are applicants in Application Nos. 2941 to 2943 of 2007.

( 7. ) In view of the fact that some of these applications have been taken out by the plaintiff and the others, taken out by the defendants, I shall refer to the parties only as plaintiff and defendants and not as applicant and respondents in this order. Preliminary Objection:-

( 8. ) At the outset, a preliminary objection as to the entitlement of the defendants to be heard, was raised by Mr. R. Gandhi, learned Senior Counsel for the plaintiff on the ground that the defendants shall, at first, purge the contempt before attempting to argue the vacate injunction applications. The defendants have not chosen to comply with the interim orders of injunction granted on 23.3.2007, forcing the plaintiff to come up with the applications under Order 39 Rule 2A C.P.C. It is pertinent to point out that the applications for punishing the defendants were filed by the plaintiff on 10.4.2007 and the defendants filed their vacate injunction applications only on the same date. Therefore, Mr. R. Gandhi, learned Senior Counsel for the plaintiff contended that the defendants have no rights to be heard without first obeying the order of injunction. In support of the said contention, the learned Senior Counsel relied upon the following decisions:- 1. Gobinda v. Chakradhara (AIR 1971 ORISSA 10). 2. Tayabbhai M. Bagasarwalla v. Hind Rubber Industries Pvt. Ltd. (AIR 1997 SC 1240 [LQ/SC/1997/315] ). 3. Samee Khan v. Bindhu Khan (AIR 1998 SC 2765 [LQ/SC/1998/875] ). 4. Prithawi Nath Ram v. State of Jharkhand and Others ((2004) 7 SCC 261 [LQ/SC/2004/923 ;] ">((2004) 7 SCC 261 [LQ/SC/2004/923 ;] [LQ/SC/2004/923 ;] ).

( 9. ) Per contra, Mr. T.R. Rajagopalan, learned Senior Counsel for the defendants contended that the defendants had come to Court at the earliest point of time, and that therefore before taking up the contempt petition, the Court is obliged to decide the injunction and vacate injunction applications. In support of his said contention, the learned Senior Counsel relied upon the following decisions:- 1. State of Jammu and Kashmir v. Mohd. Yaqoob Khan and Others (1992 (4) SCC 167 [LQ/SC/1992/553] ). 2. Modern Food Products v. Ushodaya Enterprises Limited (1994 (2) L.W. 510) 3. M. Shamsundar v. Madras Fertilizers Limited (1995 (2) CTC 471 [LQ/MadHC/1994/508] ). 4. Puniben Bhojabhai v. Legal Heirs of Datiyabhai Bava (2000 AIHC 2180) . 5. Anil Ratan Sarkar v. Hirak Gosh (2002 Crl. L.J. 1814).

( 10. ) First, let me take up the decisions cited by Mr. R. Gandhi, learned Senior Counsel for the plaintiff. In Tayabbhai M. Bagasarwalla v. Hind Rubber Industries Pvt. Ltd. (AIR 1997 SC 1240 [LQ/SC/1997/315] ), the Supreme Court, in para-16, held as follows:-

"The plaintiff asked for temporary injunction. An ad interim injunction was granted. Then the defendants came forward objecting to the grant of injunction and also raising an objection to the jurisdiction of the Court. The Court overruled the objection as to jurisdiction and made the interim injunction absolute. The defendants filed an appeal against the decision on the question of jurisdiction. While that appeal was pending, several other interim orders were passed both by the Civil Court as well as by the High Court. Ultimately, no doubt, High Court has found that the Civil Court had no jurisdiction to entertain the suit but all this took about six years. Can it be said that orders passed by the Civil Court and the High Court during this period of six years were all non est and that it is open to the defendants to flout them merely, without fear of any consequence. Admittedly, this could not be done until the High Courts decision on the question of jurisdiction. The question is whether the said decision of the High Court means that no person can be punished for flouting or disobeying the interim/interlocutory orders while they were in force, i.e., for violations and disobedience committed prior to the decision of the High Court on the question of jurisdiction. Holding that by virtue of the said decision of the High Court (on the question of jurisdiction), no one can be punished thereafter for disobedience or violation of the interim orders committed prior to the said decision of the High Court, would indeed be subversive of rule of law and would seriously erode the dignity and the authority of the Courts. We must repeat that this is not even a case where a suit was filed in wrong Court knowingly or only with a view to snatch an interim order. As pointed out hereinabove, the suit was filed in the Civil Court bona fide. We are of the opinion that in such a case the defendants cannot escape the consequences of their disobedience and violation of the interim injunction committed by them prior to the High Courts decision on the question of jurisdiction."

( 11. ) But this decision of the Supreme Court in Tayabbhai M. Bagasarwalla v. Hind Rubber Industries Pvt. Ltd. (AIR 1997 SC 1240 [LQ/SC/1997/315] ) arose out of a case where the ex parte interim order of injunction originally granted, was subsequently made absolute, overruling the objections of the defendants to the jurisdiction of the Court. Even during the pendency of the appeal, certain interim orders were passed and those interim orders were in force for a full period of six years, before the High Court ruled that the Civil Court had no jurisdiction to entertain the suit. Therefore, the Supreme Court took the view that the defendants were still liable to be punished for wilful disobedience of the interim orders. In other words, the liability for punishment for contempt in the said case, arose not out of ex parte interim orders, but out of interim orders which were made absolute by the trial Court after hearing both parties and which were also confirmed by the appellate Court. Therefore, the said case may not be of help to the plaintiff.

( 12. ) In Samee Khan v. Bindhu Khan (AIR 1998 SC 2765 [LQ/SC/1998/875] ), the decision relied upon by the learned Senior Counsel for the plaintiff, the Supreme Court, held in para-12 as follows:- "The position under Rule 2-A of Order 39 is different. Even if the injunction order was subsequently set aside the disobedience does not get erased. It may be a different matter that the rigour of such disobedience may be toned down if the order is subsequently set aside."

( 13. ) But in this case, the Supreme Court was concerned with the question as to whether a contumacious party could be detained in prison under Order 39 Rule 2A, without first ordering his property to be attached. The question as to whether a contumacious party can be allowed to argue his vacate injunction application without first purging the contempt, did not fall for consideration in the said case. Moreover, it is seen from paragraph-2 of the said Judgment that the trial Court in the said case actually made the ex parte ad interim order absolute, only after an action under Order 39 Rule 2A C.P.C., was initiated. Therefore, the said decision is also of no help to the plaintiff.

( 14. ) In Prithawi Nath Ram v. State of Jharkhand and Others ((2004) 7 SCC 261 [LQ/SC/2004/923 ;] ">((2004) 7 SCC 261 [LQ/SC/2004/923 ;] [LQ/SC/2004/923 ;] ), the Supreme Court, in para-8, held as follows:-

"Rightness or wrongness of the order cannot be urged in contempt proceedings. Right or wrong, the order has to be obeyed. Flouting an order of the Court would render the party liable for contempt. While dealing with an application for contempt the Court cannot traverse beyond the order, non-compliance with which is alleged. In other words, it cannot say what should not have been done or what should have been done. It cannot traverse beyond the order. It cannot test correctness or otherwise of the order or give additional direction or delete any direction. That would be exercising review jurisdiction while dealing with an application for initiation of contempt proceedings."

( 15. ) But this decision relates to a case which arose out of an application under Sections 11 and 15 of the Contempt of Courts Act, 1971 read with Article 215 of the Constitution. A learned Judge of the Patna High Court, while dealing with the contempt petition, actually held that the directions originally issued in the writ petition, ought not to have been issued. The said approach was found fault with by the Supreme Court in the said decision. In other words, the directions issued in the original proceedings were allowed to reach finality and yet there was no compliance with the order originally passed. When contempt was filed, the learned Judge of the Patna High Court hearing the contempt petition, felt that the original order itself ought not to have been passed. The Supreme Court found such an approach to be vitiated. Therefore, the said decision also may not go to rescue of the plaintiff.

( 16. ) Now coming to the decision cited by Mr. T.R. Rajagopalan, the learned Senior Counsel appearing for the defendants, it is seen that in State of Jammu and Kashmir v. Mohd. Yaqoob Khan and Others (1992 (4) SCC 167 [LQ/SC/1992/553] ), the Supreme Court, held in para-7 as follows:-

"7. We, therefore, hold that the High Court should have first taken up the stay matter without any threat to the respondents in the writ case of being punished for contempt. Only after disposing it of, the other case should have been taken up." .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. "The High Court should first take up the stay matter in the writ case, and dispose it of by an appropriate order. Only thereafter it shall proceed to consider whether the State and its authorities could be accused of being guilty of having committed contempt of Court."

( 17. ) Though the aforesaid decision of the Supreme Court in State of Jammu and Kashmir v. Mohd. Yaqoob Khan and Others (1992 (4) SCC 167 [LQ/SC/1992/553] ), also arose out of the proceedings under the Contempt of Courts Act, 1971, the said decision has been followed by His Lordship Mr. Justice R. Jayasimha Babu, as he then was, in Modern Food Products v. Ushodaya Enterprises Limited (1994 (2) L.W. 510). The said case arose out of an action for infringement of trade mark and as seen from the relevant portions of paragraphs-6, 7 and 8 of the said Judgment the same issue, which is now raised by Mr. R. Gandhi, learned Senior Counsel for the plaintiff, was answered in the negative, by the learned Judge.

( 18. ) Paragraphs-6, 7 and 8 of the aforesaid decision of His Lordship Mr. Justice R. Jayasimha Babu, are extracted as follows:-

"6. Learned counsel for the plaintiff submitted that the Court will not permit the cotemnor to address the Court unless the contemnor purges itself of the contempt."

"7. It is not necessary to discuss the rulings cited by the counsel for the plaintiff, in view of the law laid down by the Supreme Court in the case of State of Jammu and Kashmir v. Mohamed Yaqoob Khan (1992 (4) SCC 167 [LQ/SC/1992/553] )"

"8. An allegation of contempt cannot therefore be used as a weapon by a plaintiff to prevent the defendant from urging his defence to the main or interim relief claimed by the plaintiff. The law regarding contempt of Court, is not intended to confer any such unjust benefit or advantage to the party who alleges contempt by the other party to the proceedings. It is always open to the Court to take action against the contemnor when the contempt alleged is established. The preliminary objection raised by the plaintiff is rejected."

( 19. ) In M. Shamsundar v. Madras Fertilizers Limited and 4 others (1995 (II) CTC 471), another learned Judge of this Court followed the decision of the Supreme Court in State of Jammu and Kashmir v. Mohd. Yaqood Khan and Others (1992 (4) SCC 167 [LQ/SC/1992/553] ), and rejected a preliminary objection regarding the right of a contemnor to be heard in the vacate stay petition.

( 20. ) In Puniben Bhojabhai v. Legal Heirs of Datiyabhai Bava (2000 AIHC 2180) [LQ/GujHC/1999/760] , the Gujarat High Court, in para-5, held as follows:-

"It is not in dispute that ex parte injunction has been granted by the trial Court, i.e. without notice and opportunity of hearing to the respondent. The respondents are claiming themselves to be in possession. What the petitioner is attempting to say is that the respondents committed contempt of the Courts order and they may be punished. In such matter where ex parte interim injunction is granted the contempt proceedings are initiated and same are decided first then it will amount to penalising the party without hearing him on merits of his claim".

( 21. ) The decision of the Supreme Court in Anil Ratan Sarkar v. Hirak Gosh (2002 Crl. L.J. 1814) is not on the point at issue, but is on the question as to what constitutes Civil Contempt. Therefore, it is not relevant for deciding the issue on hand.

( 22. ) On a careful consideration of the aforesaid decisions cited on either side, I find that a party who suffers an ex parte interim order, cannot be shut out from advancing arguments on the merits of his case, on the ground that he has no right of audience till he purges himself of the contempt. But at the same time, I am of the considered view that a note of caution is to be added in order to prevent miscarriage of justice. The note of caution could be summarised as follows:- (a) A proceeding under Order 39 Rule 2A of the Code of Civil Procedure for punishing a person for disobedience of an order of injunction, cannot be equated to the proceedings under the Contempt of Courts Act, 1971, read with Article 215 of the Constitution. (b) Predominantly, a Civil litigation being one between private parties and writ proceedings being against State or instrumentalities of State, the degree of culpability with regard to the disobedience varies. In other words, any interim order granted in a Civil proceeding is normally against a juristic person whose identity may not under go a change to a large extent, except when it happens to be a body corporate. But in a writ proceeding, while the orders are passed primarily against the State or other instrumentalities, the enforcement as well as the complaint of disobedience are invariably made as against their representatives. These representatives are named only at the stage of contempt proceedings, since they may not even stay in Office for a long duration of time. In other words, the person holding office at the time when the office suffers an order may not be there when it is sought to be enforced. Again, the person holding office at the time when enforcement is sought, may not be there, when contempt proceedings are initiated. Thus in effect, orders in writ proceedings are normally sought to be executed or enforced against a fluctuating body of private individuals, who represent or hold an office. But it is not so in civil proceedings. (c) Since orders passed in writ proceedings are normally against State and its instrumentalities (or any other person who owes a public duty), restitution is comparatively easy if something is done in violation of the interim orders, when the interim order is eventually made absolute. But in Civil Cases, such restitution, is not quite easy and it invariably leads to another round of litigation, sometimes making a mockery of the whole system, with the person benefited by an order in his favour, having no more use for it than that of a wall hanging. (d) To take an example, if an ex parte interim order of injunction restraining a person from putting up any construction is issued, but the person against whom the order was passed files an application to vacate the interim order and simultaneously, proceeds with the construction in violation of the interim order, taking the same defence as the defendants in this case have done, the plaintiff is invariably left with very little option even if the interim injunction is eventually made absolute. As a matter of fact, the Courts are constrained to dismiss the applications for injunction in those cases, as having become infructuous, without even going into the merits of the cases. In rare cases where interim orders of injunction are made absolute, despite such construction, it is not known in how many cases, the Courts have ordered and also carried out demolition of such construction and the restitution of the plaintiff to his original state.

( 23. ) Therefore, in my considered view, the approach to be adopted while dealing with an application under Order 39 Rule 2A of the Code of Civil Procedure, where the lis is between two private parties, should be a rigid approach, though the Court may adopt a liberal approach in cases arising under the Contempt of Courts Act, 1971. In Civil Cases, the power conferred under Order 39 Rule 2A C.P.C., is not merely for the purpose of upholding the dignity and majesty of the Court, but also to protect the interest of a person in whose favour an interim order is granted or to keep the subject matter of the litigation well preserved or maintained, during the pendency of proceedings.

( 24. ) However, insofar as the present case is concerned, despite expressing my view on the legal issue raised, I have permitted the counsel on either side to advance arguments on the merits of the case. Therefore I am closing the applications filed under Order 39, Rule 2-A, C.P.C., namely A. Nos. 2918 and 2919 of 2007 for the present. Question of Jurisdiction (Application No. 2943 of 2007):

( 25. ) The defendants have raised an objection questioning the territorial jurisdiction of this Court to entertain the suit, on the ground that the plaintiff is carrying on operations admittedly in Chennai and Bangalore but the defendants are running their Clinics only in and around Kolkatta and that therefore under Section 134 (1) (c) read with Section 134 (2) of the Trade Marks Act, 1999, the suit cannot be instituted on the file of this Court. It is the contention of Mr. T.R. Rajagopalan, learned Senior Counsel for the defendants that the registration of the plaintiffs trade mark is only in respect of goods coming under Classes 3 and 5, while the use of the trade mark Health and Glow by the defendant is in respect of services (homeopathic treatment) covered by Class 42. Therefore, the grievance of the plaintiff cannot come under the category of infringement, but can come only under the category of passing off. It is only an action for infringement which is covered by Section 134 (2) which enables the plaintiff to institute the suit on the file of this Court. A mere action for passing off falls under Section 134 (1) (c) and hence it has to be instituted only in the Court within whose jurisdiction the defendant resides or carries on business or where the cause of action arose.

( 26. ) The plaintiff has produced as Document No. 3, the Registration Certificate issued on 30.3.2006 by Registrar of Trade Marks for Trade Mark No. 1315016 in respect of goods under Classes 3 and 5. A similar Certificate of Registration bearing Trade Mark No. 1315017 has been filed by the plaintiff as Document No. 4. While Document No. 3 is a word mark containing the words "Health and Glow", Document No. 4 is a device mark in respect of the words "Health and Glow", which are written in a particular style and manner and containing a device, with the image of a dancing doll drawn encased within the letter G. Thus, it is clear that the suit is primarily one for infringement of a registered Trade Mark and infringement of a copyright that the plaintiff claims to have, in the artistic work contained in the mark and device. Though the defendants have raised a plea that the words "Health and Glow" are used by them in respect of services rendered by them viz., homeopathic treatment, which is classified under Class 42 of the Fourth Schedule to the Act, it is a mixed question of fact and law, which cannot be decided in an application under Order 7 Rule 11 CPC. In order to invoke the power under Order 7 Rule 11 CPC, on the ground of want of jurisdiction, the defendants should establish that even as per the pleadings contained in the plaint, this Court has no jurisdiction to entertain the suit.

( 27. ) Thus, from the averments contained in the plaint, it is seen that the plaintiff has complained of (i) infringement of registered trade mark; (ii) passing off of the goods and services of the defendants as those of the plaintiff, and (iii) infringement of the copy right in respect of the style and manner in which the trade mark and device are written. Section 134 (2) of the Trade Marks Act, 1999 confers jurisdiction upon a Court if the person instituting the suit for infringement actually and voluntarily resides or carries on business or personally works for gain. But it makes a distinction between (i) cases of infringement and violation of any right relating to a registered mark on the one hand, and (ii) cases of passing off relating to unregistered marks. Section 134 reads as follows:-

"134. Suit for infringement, etc., to be instituted before District Court. -- (1) No suit-- (a) for the infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered, shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit. (2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain."

Explanation. -- For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user." It is pertinent to note that Section 134 (2) of the Trade Marks Act, 1999 is in pari materia with Section 62 (2) of the Copyright Act, which reads as follows:-

"62 (2) For the purpose of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908, or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such person, any of them actually and voluntarily resides or carries on business or personally works for gain."

( 28. ) As stated above, there is a distinction between cases falling under Section 134 (1) (a) and (b) on the one hand and cases falling under Section 134 (1)(c) on the other hand. While an action for infringement or any other right relating to a registered trade mark is covered by Section 134 (1)(a) and (b), an action for passing off is covered only by Section 134 (1) (c). The distinction between an action for infringement and an action for passing off, is maintained by the provisions of sub- section (2) of Section 134, by mandating that the term "District Court having jurisdiction" appearing in sub-section (1) of Section 134 would include for the purposes of clauses (a) and (b) of Section 134 (1), a District Court within whose jurisdiction the plaintiff resides or voluntarily carries on business. Thus, Section 134 (2) provides a deviation from the normal rule relating to jurisdiction that could be traced to the Code of Civil Procedure. Since it is an exception to the general rule, it is confined in its application only to an action for infringement under Section 134 (1) (a) and (b) and the inclusive definition of the term "District Court having jurisdiction" spelt out in Section 134 (2) is not extended to an action for passing off, covered by Section 134 (1) (c).

( 29. ) But unfortunately for the defendants, the present suit is not an action exclusively for passing off. The plaintiff is the registered proprietor of the same trade mark, though in respect of goods falling under Classes 3 and 5. By virtue of Section 29 (4), the registered proprietor of a trade mark is protected against infringement, not only in respect of the same and similar goods or services but also in respect of dissimilar goods or services. Moreover, the present suit is also one for infringement of the copyright of the plaintiff. Section 62 (2) of the Copyrights Act does not make a distinction as found in Section 134 (2) of the Trade Marks Act, 1999. Therefore, I have no hesitation to come to the conclusion that this Court has jurisdiction to entertain the suit and the application filed by the defendants for rejecting the plaint for want of jurisdiction under Order 7 Rule 11 C.P.C., is liable to be dismissed. Accordingly, A. No. 2943 of 2007 seeking rejection of the plaint is dismissed. Merits of the case:-

( 30. ) As pointed out earlier, the claim of the plaintiff is three fold viz., (a) the infringement of his registered mark "Health and Glow" bearing No. 1315016 in respect of goods under Classes 3 and 5, which is a word mark; (b) the infringement of his registered trade mark bearing No. 1315017 in respect of goods falling under Classes 3 and 5 with the words "Health and Glow" registered as a device mark written in a particular style with the image of a dancing doll found artistically drawn and encased within the letter G; and (c) the infringement of their copyright over the manner and style in which the word and the device are written, amounting to an artistic work.

( 31. ) The Certificates of Registration of Trade Marks have been filed by the plaintiff as Document Nos. 3 and 4. The Certificates of Registration bears the dates 30.03.2006 and 15.6.2006 and the registrations have been granted with reference to the applications dated 13.10.2004. The goods in respect of which these registrations have been granted are found in the annexure to the Certificates and they read as follows:-

"Bleaching preparations and other substances for Laundry use, Cleaning, Polishing, Scouring and abrasive preparations, Sopas, Perfumery, Essential Oils, Pharmaceutical, Veterinary and Sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental, disinfectants, preparations for destroying vermin fungicides, Herbicides."

( 32. ) The Certificates of Registration of the word mark and device mark have been granted in favour of RPG Guardian Pvt. Ltd., describing them as "Manufacturers and Merchants". The said Company RPG Guardian Pvt. Ltd., was incorporated under The Companies Act, 1956 on 12.12.1996 with Registration No. 18-37112 of 1996, as seen from the Certificate of Incorporation filed as Document No. 1. The name of the Company was changed from RPG Guardian Pvt. Ltd to "Health and Glow Retailing Pvt Ltd", in terms of Section 21 of The Companies Act, 1956 and after the Central Government accorded approval for such change of name, a notification had been issued in the Gazette and a Certificate was issued under Section 23 (1) of The Companies Act, 1956. The said Certificate dated 2.3.2007, has been filed as Document No. 2. Thus, the plaintiff has established through Document Nos. 1 to 4 that they are the proprietors of the registered word mark "Health and Glow" and the proprietor of the registered device mark "Health and Glow" written artistically with the image of a dancing doll, as well as the proprietors of the copyright over the artistic manner in which the words". Health and Glow" are written.

( 33. ) These Document Nos. 1 to 4 also show that the plaintiff was originally established in the year 1996 as a Private Limited Company and that the plaintiff had applied for the registration of the trade mark on 13.10.2004. But the plaintiff claims to have adopted the trade mark "Health the Glow" eversince 1997. In order to substantiate their user of the trade mark from 1997, the plaintiff has filed a sale and purchase agreement dated 16.10.1998 entered into between Spencer and Company Ltd., and the plaintiff, as Document No. 6. This Document No. 6 shows that Spencer and Company, agreed to sell its Pharmacy business to the plaintiff, in pursuance of the decision taken by Spencer Company to exit from the business. In the preamble of the said agreement, it is recited that the plaintiff is engaged in the sale of drugs, medicines, pharmaceutical preparations, cosmetics and healthcare products and that the plaintiff was operating a chain of retail stores under the trade name "Health and Glow". Therefore, the averment of the plaintiff that they adopted the trade mark even prior to their date of application for registration stands established by Document No. 6 dated 16.10.1998. The plaintiff has also filed a series of rental agreements dated 14.7.2000, 27.6.2003, 25.7.2003, 12.3.2004, 14.6.2004, 11.10.2004, 19.9.2005, 15.10.2005, 1.4.2006, 7.6.2006, 23.8.2006, 19.9.2006 and 19.10.2006, as Document Nos. 7 to 19. All these rental agreements are in respect of the places taken on rent by the plaintiff at Chennai. Similar agreements in respect of their stores in Hyderabad, Secunderabad and Bagalore, have been filed by the plaintiff as Document Nos. 20 to 25. While Document Nos. 23 and 24 are of the year 1998, the other documents are of the year 1999, 2000, 2003 and 2005. The plaintiff has also filed the licenses issued by the local bodies at Hyderabad and Bangalore, as Document Nos. 26 to 30 and the licenses issued by the local body at Chennai, as Document Nos. 50 to 54. The Annual Reports of the plaintiff Company for the years 1997, 1998, 2001, 2002, 2003, 2004, 2005 and 2006 have been filed as Document Nos. 31 to 38. The news items published in some of the English and Vernacular news papers about the opening of stores by the plaintiff, have also been filed as Document Nos. 39 to 45. Thus, the plaintiffs adoption of the trade mark "Health and Glow" stands proved prima facie, at least from the year 1998 and the plaintiff has also obtained registration of the same, both as a word mark and as a device mark.

( 34. ) In contrast, the defendants have filed a set of eight documents. Document No. 1 filed by the defendants, is an application dated 25.11.2003 made by one Sri Abhijit Paul, seeking license from Bidhan Nagar Municipality, Kolkatta, for running a homeopathic clinic in the name and style of "Health and Glow Clinic". Document No. 2 is the Certificate of Incorporation issued on 15.6.2006 to the second defendant by the Registrar of Companies, West Bengal, certifying that Dr. P.Bs Health and Glow Clinic Pvt. Ltd., was incorporated under the Companies Act, 1956 on the said date viz., 15.6.2006. Thus, Document Nos. 1 and 2 filed by the defendants show that the homeopathic clinic was started only in November 2003 and the second defendant was registered as a Company only in June 2006. The defendants have not filed any document to show the adoption of the trade mark "Health and Glow" prior to 2004. As a matter of fact, the defendants have filed the advertisement published in the Trade Marks Journal dated 15.9.2005 as Document No. 7. The same advertisement has also been filed by the plaintiff as Document No. 5. In the said advertisement, the defendants have claimed user of the trade mark only from 31.1.2004. The applications, licenses and the permissions sought for by the defendants from various statutory authorities and the licenses issued by them, have been filed as Document No. 3 series by the defendants. But all the documents forming part of Document No. 3 series are of the year 2006 only. Document No. 5 is a letter of appreciation which is dated 2.4.2007 and Document No. 6 filed by the defendants contains a series of advertisements published in various Dailies in Kolkatta. All these advertisements are also of the year 2006 only. The media reports filed by the defendants as Document No. 8 series about the services rendered by the defendants are also of the year 2006 only.

( 35. ) Thus, two inevitable conclusions could be reached on a scrutiny of the entire set of documents filed by the plaintiff as well as the defendants. They are as follows:- (a) that the adoption of the trade mark "Health and Glow" by the plaintiff is from the year 1998 (if not from 1997), while the very birth of the defendants was only in 2003 and they claim user of the same trade mark only from 2004; and (b) that while the plaintiff has obtained registration of the trade mark both as a word mark and as a device mark, the defendants have only applied for registration and the plaintiff has filed its notice of opposition to the application of the defendants for registration.

( 36. ) Apart from the above two inevitable conclusions, another irresistible conclusion could also be reached from the notice published in the Trade Marks Journal on 15.9.2005 filed as defendants Document No. 7 (also the plaintiffs Document No. 5). This notice in the Trade Marks Journal containing the mark sought to be registered by the defendants under Class 42, shows that the defendants have made nothing but a shameful imitation of the same word mark and device mark in respect of which, the plaintiff has obtained registration. The defendants mark contains the same words "Health and Glow" as that of the plaintiffs word mark. Moreover, the defendants mark also contains the device of the image of a dancing doll with a striking resemblance to the device adopted by the plaintiff. The defendants have not even come up with a plea that there is a honest concurrent use of the same word mark and device mark by them. The adoption of the same word mark and device mark does not prima facie appear to be a honest concurrent use, but appears to be a dishonest subsequent use. Therefore, the plaintiff, by producing his Registration Certificates in respect of the word mark and device mark and also by producting the Trade Marks Journal containing the mark used by the defendants, has discharged the burden cast upon him to prove infringement, prima facie. Consequently, the onus has now shifted on the defendants to explain as to how and why they chose to adopt the same two words arbitrarily chosen from the dictionary by the plaintiff, apart from keeping the same device of the image of a dancing doll.

( 37. ) Interestingly. in view of the above scenario that emerges from the pleadings and the documents filed on either side, the question as to whether the defendants mark is similar to the trade mark of the plaintiff or not, was not canvassed by the defendants, perhaps, realising the futility of such an exercise. However, Mr. T.R. Rajagopalan, learned Senior Counsel appearing for the defendants, sought to justify the adoption of the same trade mark "Health and Glow" by the defendants on the following grounds viz.,:- (a) that there is no distinctiveness about the words "Health and Glow" and that the same was not registerable at all in view of the prohibition contained under Section 9 (1)(a) and (b) of the Act; (b) that in any case, the plaintiff is a mere retail trader, selling various types of goods such as pharmaceutical products, cosmetics, sanitary preparations etc., which are not even manufactured by him, but are manufactured and marketed by other Companies with different brand names and trade marks and hence the plaintiff is not entitled to seek an injunction against the defendants, who are not selling any product of the nature trade by the plaintiff but only rendering services of homeopathic treatment; (c) that in view of the dissimilarity between the goods and services, traded by the plaintiff and the services rendered by the defendants, the plaintiff is not entitled to invoke Section 29 (4) of the Act; and (d) that since the second defendant is actually using its own name, as registered under the Companies Act, 1956, the defendants are entitled to protection under the saving provision contained in Section 35 of the Act.

( 38. ) Taking up the first contention of the learned Senior Counsel for the defendants regarding the lack of distinctiveness in the trade mark adopted by the plaintiff, it is seen that the said contention is actually based upon the provisions of Sections 9(1) (a) and 9(1)(b) of the Act. Section 9(1)(a) prohibits the registration of a trade mark which is devoid of any distinctive character or which is not capable of distinguishing the goods and services of one person from those of another person. Section 9(1)(b) prohibits the registration of a trade mark which consists exclusively of something that may serve in the trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of services or other characteristics of the goods or services. Section 9(1)(c) prohibits the registration of a trade mark which consists exclusively of something that has become customary in the current language or in the bona fide and established practices of the trade. The contention of the learned Senior Counsel for the defendants is that the words "Health and Glow" are common words found in the English dictionary, which cannot be appropriated to himself by anyone. The words "Health and Glow" would not amount to an invented word since it is only a combination of two English words. In order to drive home the said point, the learned Senior Counsel for the defendants relied upon a Judgment of the Division Bench of the Calcutta High Court in E. Griffiths Hughes Ltd v. Vick Chemical Co. (AIR 1959 Calcutta 654). The Calcutta High Court, in paragraph-15 of the said Judgment, held as follows:-

"The argument of the respondent that the word "Vapo Rub" is an invented word can be disposed of at the very outset by pointing out that it is not an invented word. It is plain that the word "Vapo Rub" suggests the combination of two ordinary English words "Vapour" and "Rub" with a slight distortion of the word "Vapour". It has been now authoritatively established that the combination of two English words is not an invented word even though the combination may not have been in use before; nor is a mere variation of the orthography or termination of a word sufficient to constitute an invented word if to the eye or ear the same idea would be conveyed as by the word in its ordinary form. It is no doubt true that by the dropping of "U" and "R" the word "Vapo" ceases to be an ordinary English word and some element of novelty is introduced into it, which gives it the appearance of a coined word, but still it does not attain the status of an invented word which is a word not to be found in the existing vocabulary."

But the said decision of the Division Bench of the Calcutta High Court arose out of an order passed by the Deputy Registrar of Trade Marks on the application for registration of the trade mark "Vapo Rub", after considering the notice of opposition filed by the opponent. Therefore, the objection raised by the learned Senior Counsel for the defendants could have been well founded if it was made at the stage of considering the application of the plaintiff for registration of the trade mark. But unfortunately for the defendants, we have crossed that stage. Once that stage of registration has been crossed, this kind of an objection cannot be permitted in view of the protection granted under Sections 31(2) and 32 of the Act. The case before the Division Bench of the Calcutta High Court arose prior to the grant of registration and hence the protection under Sections 31 and 32 were not available to the parties in the said case.

( 39. ) The learned Senior Counsel for the defendants, then relied upon a decision of the Bombay High Court in Carew Phipson Limited v. Deejay Distilleries Pvt Limited (AIR 1994 Bombay 231). In paragraph-4 of the said Judgment, it was held that purely descriptive terms are totally unregisterable and that such terms do not distinguish the goods of one manufacturer from those of another. The following extract from paragraph-4 of the said Judgment is of significance:-

"If the mark is not an invented word but has a direct reference to the character and quality of the goods concerned, then it cannot be said to be descriptive. For example, it was held that "Kwik Kopy" cannot be registered as a mark because it had a direct reference to the character or quality of the goods in respect of which registration was sought. The mark was held to be not distinctive, being the phonetic equivalent of "quick copy". "It was however clarified that in exceptional circumstances the rule may however be inapplicable, namely, where the common word has lost its primary meaning by long user of the word by a trader in relation to his goods and has become identified with the particular goods of that trader."

( 40. ) But unfortunately for the defendants, the said Judgment arose out of an action for passing off. The trade mark of the plaintiff in that case before the Bombay High Court was an unregistered trade mark. Therefore, the plaintiff in that case did not have the kind of rights guaranteed under Sections 28(1) or 29(4) of the Act.

( 41. ) The learned Senior Counsel for the defendants next relied upon the decision of Mr. Justice B. Akbar Basha Khadiri (as he then was), in Parle Products Limited v. Bakemans Industries Limited (1998 PTC (18) 662), wherein it was held that no one was entitled to appropriate a word in English to himself. The relevant portion of the said Judgment relied upon by the learned Senior Counsel for the defendants, found in paragraph-12 is as follows:-

"I accept the contention of the learned counsel for the respondent and hold that GLUCO is a generic word descriptive of use of Glucose in the product. The applicants action, in the language of Fry, Lord Justice in the case In Re : Dunn (1888) 6 RPC 379), is a struggle to enclose and to appropriate as private property certain little strips of the great open common of the English Language."

But the said Judgment did not arise out of use of the "same mark". It arose only out of use of a

"similar mark". This was made clear by the learned Judge in paragraph- 18 of the said Judgment, which reads as follows:-

"In the instant case, neither the applicant nor the respondent is using the mark "GLUCO" on a stand alone basis to apply the same mark yardstick. The applicant is using the mark with a prefix - Parle-G Gluco-and the respondent with a suffix - Glucogold-. Therefore, the yardstick for "similar mark" has to be applied. Both the products are packed with wrappers. Therefore, the colour, get-up and lettering ought to be compared to find out similarities or the dissimilarities."

Thus, the decision in the said case arose out of the application of the "similar mark" yardstick and not out of the application of "same mark" yardstick. But the present case, arises out of the use of the same mark and hence the aforesaid decision cannot go to the rescue of the defendants.

( 42. ) The learned Senior Counsel for the defendants next relied upon the Judgment of the Gujarat High Court in Regency Sanitary Ware Pvt Ltd v. Madhusudan Industries Ltd (2001 PTC 422 (Guj)), in paragraph-8 of the said Judgment, the Gujarat High Court held as follows:-

"CERA is the derivative of a common word ceramic which is casually used for many ceramic products and cannot, be a monopoly of any one manufacturer." But in paragraph-7 of the said Judgment, the Gujarat High Court gave elaborate reasons, other than the one stated in paragraph-8 for refusing an order of injunction. More particularly, the Gujarat High Court noted in paragraph-7 (c) and (d) as follows:- "(c) In answer to the summons issued by the trial Court, the appellant has promptly agreed not to use the trade name CERA in the distinctive encasement adopted by it and instead adopted the trademark Re Cera VITREOUS without any encasing and with a distinctive font; (d) the trade mark Re Cera VITREOUS now adopted by the appellant is visually distinct from the trade mark CERA owned by the plain tiffs."

Therefore, I am unable to follow the said Judgment especially in the light of the facts of the present case which stands on different footing.

( 43. ) In M/s. Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises and Others (AIR 1999 Punjab and Haryana 231, the Punjab High Court was concerned with the trade mark "Heat Pillar". Holding it to be a generic word, the Punjab High Court held in paragraph-19 as follows:-

"The expression "HEAT PILLAR" must be taken to be a generic word. All those room heaters which are so designed like a pillar are using the word Heat Pillar. It cannot be confined to the respondents. They cannot have the exclusive right to use the word Heat Pillar."

But that was also a case of passing off and not a case of infringement arising out of a registered trade mark. Therefore, the plaintiff in the case before the Punjab High Court, unlike the plaintiff herein, was not entitled to the rights conferred by Sections 28 and 29 (4) of the Act.

( 44. ) The next case relied upon by the learned Senior Counsel for the defendants is the one is Stadmed Private Limited, Calcutta v. Hind Chemicals, Kanpur (AIR 1965 Punjab 17). The learned Senior Counsel invited my attention to the head notes c and d to support his contention that the plaintiff cannot claim exclusive right over the words "Health and Glow". Head notes c and d read as follows:-

"It is not open to take some letters out of a word and by somewhat circuitous process arrive at the conclusion that it is not an invented word and that it does describe the character and quality of the goods. The more fact that an invented word contains a covert and skilful allusion to the character or quality of the goods is no objection to the registration of the word as an invented word. Therefore, though the letters Ento in the word "Entozine mean within and may be suggestive of something for the intestines and thus become descriptive of the character of the pharmaceutical preparation put in the market for treatment of bacilary and amoebic dysenteries, the invented word Entozine cannot be refused registr ation."

"The words Entrozyme and Entozine have no phonetic similarity. In Entro the letter r is not silent and in zyme the letter m is not silent. Moreover, the goods sold under the names Entozine and Entrozyme cause no confusion, particularly when the goods can only be obtained on doctors prescription."

But this Judgment is also of no assistance to the defendants, since it arose out of an order passed by the Assistant Registrar of Trade Marks, allowing the application for registration and rejecting the notice of opposition. Therefore, the Division Bench of the Punjab High Court "at Delhi" went into the correctness of the order of the Assistant Registrar in the light of the provisions of Section 9 (1) (c) and (d) of the Act.

( 45. ) In Nestles Products (India) Ltd v. P. Thankaraja and Another (AIR 1978 Madras 336), a learned Judge of this Court considered the question as to whether the word "instea" was an invented word or not. After holding that the expression "instea" did not satisfy the test of an invented word and that it was only a combination of two ordinary words viz., "instant" and "tea" whose connotations, are unmistakable both in the market place and in the kitchen, the learned Judge held that the mark did not satisfy the test of an invented word under Section 9(1) (c) of the Act. Thus, the said Judgment is on the question as to whether a particular word was registerable as a trade mark in view of the provisions of Section 9 (1) (c) or not. As a matter of fact, the said case arose out of a decision of the Assistant Registrar of Trade Marks, permitting the registration of the word "instea" as a trade mark. But in the case on hand, the plaintiff has already obtained registration of their word mark and device mark. Therefore, the said Judgment is of no assistance to the defendants in view of the protection granted by the provisions of Sections 31 and 32 of the Act to the plaintiff herein. In other words, as an objection at the stage of registration, the present contention of the defendants may hold water. But after registration of the trade mark in favour of the plaintiff, the defendants are not entitled to fall back upon the provisions of Section 9 (1), in view of the protection granted under Sections 31 and 32 of the Act.

( 46. ) In Competition Review (P) Ltd v. N.N. Ohja (1996 PTC (16) 124), a learned Judge of the Delhi High Court held that the plaintiff in the said case cannot claim exclusive right to use an English word. The relevant portion of the said Judgment, in paragraph-6, is as follows:-

"The word Competition is an English word. Therefore, the plaintiff cannot claim exclusive right on the basis of registration under the Copyright Act. It is clear from the records that a number of persons are running journals under the word competition and the claim of the plaintiff that it came to known about the defendants journal in September 1995 is put forth for the purpose of this case. Under similar circumstances, Honble Mr. Justice S.K. Mahajan had occasioned to consider the question in Rupee Gains Tele-Times (P) Ltd v. Rupee Times (DRJ (35) Page 30). The learned Judge has observed that no person can claim any exclusive right in the word Rupee. The learned Judge has also held that there is no scope for any description in the use of word Rupee. I respectfully agree with the reasoning given the learned Judge and I hold that the plaintiff cannot claim any exclusive of the word and I do not find any similarity in the colour scheme adopted by the defendant without prejudice to the rights and contentions of the parties at the time of trial of the case."

Again this is also a case of passing off and hence cannot be compared with the one on hand. It is pertinent to point out that in the said case, the learned Judge also found that the Colour Scheme adopted by the defendant was not similar to the one adopted by the plaintiff. In the present case, as seen from the advertisement published in the Trade Mark Journal containing the mark used by the defendants, the defendants have not only used the words "Health and Glow" in the same style and manner in which the plaintiff is using the mark, but had also adopted the device of the image of a dancing doll. Therefore, the defendants cannot take refuge under a decision rendered in an action for passing off.

( 47. ) In essence, the first contention of the learned Senior Counsel for the defendants that there is no distinctiveness about the word mark adopted by the plaintiff and that the plaintiff cannot seek to appropriate to themselves, two words found in the English Dictionary, as if they constitute an invented word, cannot be countenanced. All the decisions cited by the learned Senior Counsel for the defendants, in support of this contention - (a) either arose out of an action for passing off; (b) or arose out of orders passed by the Registrar of Trade Marks on an application for registration, with reference to the provisions of Section 9(1) of the Act; (c) or arose out of the trade marks adopted out of generic words with prefixes and/or suffixes. The case on hand does not fall under any of the aforesaid three categories, since -- (a) it arises out of the infringement of a registered trade mark, (b) the provisions of Section 9 (1), cannot be applied in view of the protection granted under Sections 31 and 32 of the Act, and (c) this is not a case relating to the adoption of a generic word with a prefix or suffix.

( 48. ) The objection that the trade mark of the plaintiff was not an invented word and hence not entitled to protection, could have been raised only at a pre-registration stage. But after registration, a person is entitled to raise such an objection only by taking recourse to the remedies available under the Act (such as rectification of the Register) and not by committing an infringement. Otherwise, the Proprietor of a registered mark would have no more protection than the Proprietor of an unregistered mark. Therefore, the first contention of the learned Senior Counsel for the defendants is rejected.

( 49. ) The second contention of Mr. T.R. Rajagopalan, learned Senior Counsel appearing for the defendants, is that when the same trade mark is used by the defendants in respect of a completely different set of products or services, the protection under the Act may not be available to the plaintiff. In support of his said contention, the learned Senior Counsel relied upon the decision of the Bombay High Court in Sony Kabushiki Kaisha v. Shamrao Maskar and Others (AIR 1985 Bombay 327). The headnote in the said decision of the Bombay High Court, reads as follows:-

"The electronic goods and nail polish are items poles apart, looking to the nature and purpose of their user. The nail polish is an item of cosmetics and the price being within the reach of common man, is sold on a large scale. The item is sold all over the town, in shops small and large. On the other hand, electronic goods are not easily available due to import restrictions. Further, the trade channel for sale of the two items are entirely different. The electronic goods and nail-polish are not sold under one roof and there will not be any confusion in the mind of customer that both the items come from the petitioners house in Japan. There is also no common field of activity in course of trade of the two items, and the classes of customers who would purchase the two items are distinct and different."

But the said Judgment also arose out of an order passed by the Assistant Registrar of Trade Marks, allowing an application for registration filed by the defendant in that case in respect of a different set of products viz., nail-polish. Therefore, the case on hand cannot be compared to the one before the Bombay High Court.

( 50. ) The learned Senior Counsel for the defendants also relied upon a Division Bench Judgment of this Court in First Computers v. A. Guruprasad (1996 PTC (16) 27), for the preposition that when the parties are doing business entirely different from each others, there cannot be any confusion in the mind of the public. Since the plaintiff in this case is running a retail store, selling various products of other manufacturers, in contradistinction to the services rendered by the defendants in homeopathic treatment, there was no likelihood of any confusion, in the mind of the public, according to the learned Senior Counsel. But the said decision of the Division Bench of this Court arose out of an action for passing off. Even at the outset, the Division Bench pointed out in the said Judgment, that the business name First Computers was not even registered before any Statutory Authority. The relevant portion of the said Judgment in paragraphs-20 and 21 read as follows:-

"20. In this connection, it is admitted in the plaint itself that the business name First Computers/1st Computers is not registered before any statutory authority. It is also admitted that the plaintiff is not a manufacturer. He only sells already manufactured computers. The manufacturers of those computers will have their own trade mark or goodwill. It is also admitted in the plaint itself that the appellant is neither a manufacturer nor a seller of computers. The defendant is only training people in the use of computers."

"21. If the plaintiff has not registered his business name before any Statutory Authority, the plaintiff can come to Court only with an action for passing-off. In this case, that is also not possible, for, the defendant/appellant is not dealing with any goods, and is only training people in the use of computers. The learned Judge also found that the business of the appellant and the respondent are different and the possibility of there being any confusion in the mind of the public is remote. Then, the only other question that remains for our consideration is, whether the plaintiff has acquired copyright by which he can prevent the defendant from making use of the words First Computers. It is admitted in the plaint that the words First and Computer are common property of all, and the plaintiff claims that because of the combination of the words First Computers, the same has identified his business in computers. This, according to the respondent (plaintiff), amounts to distinctiveness. On the basis of the available documents, a finding cannot be entered at this stage whether the combination of the two words First and Computers has served the purpose of identifying and distinguishing the plaintiffs business in computers. For, the plaintiff will have to prove that he has earned a reputation in that name."

Thus the said decision arose out of an unregistered mark and a name which was not even registered with any statutory authority. Therefore, the said decision is of no assistance to the defendants.

( 51. ) The second contention of the learned counsel for the defendants actually goes against the tenor of the provisions of Section 29 of the Trade Marks Act, 1999 Section 29 deals with infringement of Trade Marks and it specifies the various acts which constitute infringement. While sub-section (1) of Section 29 states the general proposition of law as to when a registered trade mark is infringed, sub-section (2) of Section 29 deals with a combination of "identity with and similarity to", the registered trade mark and the goods and services respectively, of the person committing the infringement, vis-a-vis, Proprietor of the registered trade mark. Sub-Section (4) of Section 29, which is of relevance, reads as follows:-

"(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-- (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark."

( 52. ) As seen from the language employed in sub-section (4) of Section 29, it seeks to lay down that a registered mark is infringed by a person, if he uses a mark, which is identical with or similar to the registered trade mark, but on goods or services, which are not similar, provided the registered trade mark has a reputation in India and the use of the mark without due cause would take unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. In other words, infringement would arise even by the usage of a trade mark in relation to dissimilar goods or services, if three conditions are satisfied, namely:- (i) that the mark is identical with or similar to the registered mark (Section 29 (4) (a)); (ii) that the registered mark has a reputation in India; and (iii) that the use of the mark without due cause, takes unfair advantage of or is detrimental to the distinctive character or repute of the registered mark (Section 29(4)(c)).

( 53. ) If the above three pre-conditions are applied to the case on hand, it is seen-- (a) that the defendants have adopted a trade mark which is not merely identical with or similar to the registered trade mark of the plaintiff, but adopted the same trade mark, with the same words "Health and Glow" and the same device; (b) that the plaintiff has attained a reputation in India with 43 retail outlets in Chennai, Bangalore, Hyderabad and Mumbai, as evidenced by rental agreements of their outlets filed as Document Nos. 7 to 25, the licenses issued by the Local Bodies in these places, filed as Document Nos. 26 to 54 and the Audited Annual Reports of plaintiff from the year 1997 upto 2006 (except the years 1999 and 2000), filed as Document Nos. 31 to 38; and (c) that the use of the same mark by the defendants is not only without due cause but also detrimental to the reputation of the registered mark of the plaintiff.

( 54. ) I am compelled to come to the above conclusion, prima facie, that all the above three pre-requisites of Section 29 (4) are satisfied in this case, on account of the fact that the annual turnover of the plaintiff rose from Rs. 7.25 crores in the year 1998- 1999, to Rs. 52.83 crores in 2005-2006, and also in view of the fact that there is an overlapping of the goods mentioned in Classes 3 and 5 and the goods and services mentioned in Class-42 of the Fourth Schedule to the Trade Marks Act. Class 3 of the Fourth Schedule is as follows:-

"3. Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices." Class 5 of the Fourth Schedule is as follows:- "5. Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides herbicides." Class 42 of the Fourth Schedule is as follows:- "42. Providing of food and drink; temporary accommodation, medical, hygienic and beauty care; veterinary and agricultural services, legal services, scientific and industrial research, computer programming; services that cannot be classified in other classes."

Admittedly, the defendants are providing medical, hygiene and beauty care services. The plaintiff is selling cosmetics and items relating to hair care and beauty care and the defendants are also providing treatment for hair care as seen from their advertisements. The advertisements published by the defendants in various newspapers in West Bengal, filed as Document No. 6 series and compiled from pages 22 to 112 of the typed set of papers, show that they offer skin treatment, hair growth therapy and weight loss management. The plaintiff is also selling products relating to hair care and treatment. Therefore, at least, prima facie, I am satisfied that the defendants are attempting to take unfair advantage of the reputation of the registered trade mark of the plaintiff. Since the defendants seek to do it without any explanation as to how they also arrived at the combination of the same two words and of the same device, I am convinced that the defendants have done this without due cause. Hence, it is clear, at least prima facie, that the pre-requisites of Section 29(4) are satisfied and that therefore, the defendants cannot escape through the gate way of usage of the trade mark on dissimilar products and services.

( 55. ) When a similar question arose as to the right of a person to use the word "Benz" in relation to undergarments, infringing the trade mark and copyright that the Company manufacturing "Benz" cars had over the same mark and device, a learned Judge of the Delhi High Court held, in Daimler Benz Aktiegesellschaft and Another v. Hybo Hindustan (AIR 1994 Delhi 239), that infringement was made out. Applying the "Doctrine of Dilution", the learned Judge held that the rights conferred upon the owner of the registered mark, cannot be diluted by other persons, who adopt the same mark, but try to escape through the gate way that they have adopted the mark for dissimilar products and services.

( 56. ) The question again came up for consideration, before the Delhi High Court in Honda Motors Co. Ltd. v. Charanjit Singh (2003 (26) PTC 1 (Del) [LQ/DelHC/2002/2245] , as to whether an action for passing off could be maintained in respect of a totally different kind of goods and services, other than the one in which the registered user was dealing with. The plaintiff in that case was using the trade mark HONDA in respect of automobiles and power equipments. The defendant in that case was using the same trade mark for pressure cookers and the same defence as taken in the present case by the defendants, was taken in that case before the Delhi High Court also. A detailed consideration of this issue was made by the learned Judge of the Delhi Court from paragraph-26 of the said Judgment, which is extracted hereunder:-

"Learned counsel for the plaintiff to support the proposition that in passing off action it is not material if the plaintiff and the defendant trade in the same field or trade in different products, has relied upon the following Judgments: Daimler Benz Aktiegesellschaft and Another v. Hybo Hindustan, AIR 1994 Del. 239 [LQ/DelHC/1993/734] :1994 PTC 287 (Del); Ciba-Geigy Ltd. and Another v. Surinder Singh and Others, 1998 PTC (18) 545; Sunder Parmanand Lalwani and Others v. Caltex (India) Ltd. AIR 1969 Bombay 24 (V 56 C 5); Lego System Aktieselskab and Another v. Lego M. Lemelstrich Ltd., Fleet Street Reports (1983); The Dunlop Pneumatic Tyre Co. Ltd v. The Dunlop Lubrican Co., 1899 (16) RPC 12; Surjit Singh v. M/s. Alembic Glass Industries Ltd., AIR 1987 Delhi 319:1987 PTC 250; Essel Packaging Ltd. and Others v. Essel Tea Exports Ltd., 1999 PTC (19) 521; M/s. Banga Watch Company v. M/s. N.V. Philips and Another, AIR 1983 Punjab and Haryana 418; Bata India Ltd v. M/s. Pyare Lal and Co. and Others, AIR 1985 Allahabad 242:PTC (Suppl) (1) 116 (All); C.A. Shimer (M.) SDN BHD, 2000 RPC 484; Harrods Ltd v. R. Harrod Ltd., (1924) 41 RPC 74. In all the aforesaid decisions relied upon by the plaintiff, injunction was granted in favour of the plaintiff on the basis of an action of passing off even though the plaintiff and defendant were trading in altogether different products. I would deal with some of the afore-noted decisions. In Daimler Benzs case (supra), the plaintiff was using the trade mark MERCEDES BENZ in relation to vehicles, whereas the defendant had started using the trade mark BENZ in respect of undergarments. The Court granted injunction restraining the defendant from using the trade mark BENZ as well as "three pointed human being in a ring". The Judgment was upheld by the Supreme Court. The following observations made in this Judgment are worth-noting: "There are marks which are different from other marks. There are names which are different from other names. There are names and marks which have become household words. "Benz" as name of a Car would be known to every family that has ever used a quality car. The name "Benz" as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the cars/automobiles, who would not organize the name "Benz" used in connection with cars. Nobody can plead in India, where "mercedes Benz" cars are seen on roads, where "Mercedes" have collaborated with TATAs, where there are Mercedes Benz- Tata trucks have been on roads in every large number, (known as Mercedes Benz Trucks, so long as the collaboration was there), who can plead that he is unaware of the word "Benz" as used with reference to car or trucks." In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody elses reputation with reference to goods, especially so when the reputation extends world wide. In Ciba Geigy Ltds case (supra), the plaintiff was using the mark CIBA, CIBACA in relation to goods different than those of the defendants. The defendant was using the trade mark CIBACA in relation to filters for motor vehicles. The case of the defendant was that the goods in question were entirely different and as such there was no question of any deception being cause in the minds of the public, when trade mark CIBACA was used in relation to altogether different goods. While coming to the conclusion that the defendant and adopted the mark CIBACA deliberately with the intention of creating confusion in the minds of the public so as to pass off its goods as those of the plaintiff, the Court granted injunction restraining the defendants from using the plaintiffs trade mark by the defendants for altogether different goods, as the use of the trade mark CIBACA by the defendant was held not to be honest. Again in Sunder Parmanand Lalwari v. Caltex India Ltds case (supra) the goods were totally different having no trade connection between them. The matter was in appeal before the High Court from the orders of the Registrar, Trade Marks. The dispute related to mark CALTEX used by the applicant for watches for which he had applied for registration, whereas the defendant, Caltex India Ltd., who used it for their products like lubricants, grease, oils, etc. filed opposition before the Registrar Trade Mark. The Registrar dismissed the opposition holding the applicant to be the proprietor of the trade mark. Though the competing marks were held to be identical but the application was rejected on the ground that the competing goods were entirely different. Caltex (India) Ltd., appealed to the High Court, which was allowed. One of the points for decision before the High Court was as to whether the use of the mark was likely to deceive or cause confusion, i.e., whether there was any tangible danger of deception or confusion being caused by the word/mark "CALTEX" in the minds of the purchaser. The High Court after considering the respective pleas of the parties held as under: "In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956, exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on advertisements. The goods in respect of which they use the trade mark "Caltex" are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches, the class of goods in respect of which the applicant seeks registration is wider than watches and watches can be both costly and cheap."

In Legos case (supra) the plaintiff was using the trade mark Lego in respect of toys, whereas defendant started using the trade mark LEGO in relation to irrigation equipment. Even though the trade mark LEGO was being used for different products, the Court granted injunction against the defendant holding that the plaintiff had established high reputation for the mark Lego which extended beyond the field of toys and construction kits and the mark Lego had acquired distinctiveness as the products of the plaintiff. It had become a house-hold word. It was also observed that in the law of passing off, there was no limitation in respect of parties filed of activity. In Dunlopscase (supra), the plaintiff was using the trade mark DUNLOP in respect of tyres whereas the defendant was using the same in respect of Oil and lubricants. On a suit for passing off action filed by the plaintiff, defendant was restrained from using the mark DUNLOP for its products and for its business name. In Alembic Glass Industries Ltds case (supra), the respondent used the trade mark YERA in respect of glassware including jars and bottles, whereas the appellant Surjit Singh started using the same in respect of perfumery and cosmetics. The appellant lost before the Registrar of Trade Marks and filed an appeal before the High Court. While dismissing the appeal it was held as under: "Held, the word YERA was being copied by the petitioner in order to take advantage of the reputation acquired by the trade mark. Perfumery and cosmetics manufactured by the petitioner are sold in bottles and glass containers and if the trade mark "YERA" appears on these bottles and glass containers, there is likelihood that a common man who would go to buy these perfumery and cosmetics would be led to believe that these goods were manufactured by the opponent company. The petitioner was, therefore, not entitled to registration under Section 11(a). Case law discussed." In Essel Packaging Ltd v. Essel Tea Exports Ltds case (supra), the High Court of Bombay after considering Kirloskar Diesel Recon Pvt Ltd v. Kirloskar Proprietory Ltd. and Bajaj Electricals Pvt Ltd v. Metals and Allied Projects, AIR 1988 Bombay 157: 1997 PTC 469 (Bom) held, that common field of activity is not conclusive for deciding whether there can be passing off action, although at one point of time the requirement of common field of activity in a passing off action has undergone a radical change and as such there was no requirement for a common field of activity to found a claim on passing off action, because the real question in each of such cases is, whether there is, as a result of mis-representation, a legal likelihood of confusion or deception of the public and consequent damage to the plaintiff is likely to be caused and if that is taken to be the test then the focus is shifted from the external objective test of making comparison of activities of the parties, to the state of mind of public, in deciding whether it will be confused. Applying these principles the injunction in favour of the plaintiff was granted. In M/s. Banga Watch Co. v. M/s. N.V. Philliphs case (supra), the plaintiff M/s. N.V. Philliphs was using the trade mark PHILLIPHS, which had become a household mark and had acquired enviable reputation in India and through out the world dealing in electrical and electronics goods. The defendant was using the trade mark PHILLIPHS in respect of watches and clocks. In Bata India Ltds case (supra), the plaintiff was using the trade mark in respect of canvas, rubber leather shoes, rubber footwear, etc. Whereas the defendant started using the trade mark Bata and Batafoam in relation to mattresses. The Court after discussing in detail the law on passing off action granted injunction in favour of the plaintiff despite the fact that the same trade mark was being used for different goods. In the light of the above pronouncements, the proposition pleaded by the defendants that since they are dealing in entirely different products, there is no likelihood of any confusion or deception in the minds of the consumers, is rejected." I am in respectful agreement with the view taken by the Delhi High Court, rejecting the contention that no action for infringement would lie in respect of adoption of a registered trade mark for dissimilar goods and services. Hence the second contention of the learned Senior Counsel for the defendants is also rejected.

( 57. ) At last, Mr. T.R. Rajagopalan, learned Senior Counsel for the defendants raised another interesting question on the basis of the provisions of Section 35 of the Act. Section 35 reads as follows:-

"35. Saving for use of name, address or description of goods or services. -- Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character of quality of his goods or services."

Admittedly, the second defendant is a Private Limited Company registered under the Companies Act, 1956, with the name Dr. P.Bs Health and Glow Clinic Pvt. Ltd. The Certificate of Incorporation dated 15.6.2006 is also filed as Document No. 2.

( 58. ) Therefore, it is contended that the use of its own registered Corporate name, by the defendants, is saved by the provisions of Section 35. But in order to claim such a protection under Section 35, the defendants will have to satisfy either of the two pre- conditions viz., (a) that it was a bona fide use by a person of his own name or place of business or the name or place of business of any of his predecessors in business or (b) that it was a bona fide description of the character or quality of his goods or services. If the defendants seek protection under the first part of Section 35, they must establish that it was a "bona fide use". If they seek protection under the later part of Section 35, they must establish that it was a "bona fide description".

( 59. ) The same question came up for consideration before a Division Bench of the Delhi High Court in Montari Overseas Ltd. v. Montari Industries Ltd. (1996 PTC (16) 142). In paragraph-13 of the said Judgment, the Division Bench of the Delhi High Court held as follows:-

"13. It is well settled that an individual can trade under his own name as he is doing no more than making a truthful statement of the fact which he has a legitimate interest in making. But while adopting his name as the trade name for his business he is required to act honestly and bonafidely and not with a view to cash upon the goodwill and reputation of another. An individual has the latitude of trading under his own name is in recognition of the fact that he does not have choice of name which is given to him. However, in the case of a Corporation the position is different. Unlike an individual who has no say in the matter of his name, a company can give itself a name. Normally a company can not adopt a name which is being used by another previously established company, as such a name would be undesirable in view of the confusion which it may cause or is likely to cause in the minds of the public. Use of a name by a company can be prohibited if it has adopted the name of another company. It is well settled that no company is entitled to carry on business in a manner so as to generate a belief that it is connected with the business of another company, firm or an individual. The same principle of law which applies to an action for passing off of a trade mark will apply more strongly to the passing off of a trade or corporate name of one for the other. Likelihood of deception of an unwary and ordinary person in the street is the real test and the matter must be considered from the point of view of that person. Copying of a trade name amounts to making a false representation to the public from which they have to be protected. Besides the name of the company acquires reputation and goodwill, and the company has a right too to protect the same. A competitor cannot usurp the goodwill and reputation of another. One of the pernicious effects of adopting the corporate name of another is that it can injure the reputation and business of that person."

( 60. ) Though in this case, the corporate name of the plaintiff was RPG Guardian Pvt. Ltd., incorporated on 12.12.1996, the name was changed as "Health and Glow Retailing Pvt. Limited" and a fresh Certificate of Incorporation was issued on 2.3.2007. But by then, the defendants had obtained a Certificate of Incorporation on 15.6.2006, as "Dr. P.Bs Health and Glow Clinic Pvt. Ltd". However, by the time the defendants obtained a registration of their Company under the said name in June 2006, the plaintiff had already established a chain of retail stores with the trade mark "Health and Glow" and also got the same registered. Therefore, it is doubtful as to whether the defendants incorporated the Company with the said name, "honestly and bonafidely", as pointed out in the Judgment of the Division Bench of the Delhi High Court. Bona fide use of ones own name or bona fide description of the character or quality of ones own goods, is a sine quo non for claiming protection under Section 35 of the Act. It is to be pointed out that Section 35 is not intended to save every infringer of a trade mark. Today, it is quite common as well as easy to change a persons name by issuing a Gazette Notification. Therefore, any person, who wishes to ride on the reputation and goodwill created by another person, can easily change his name with a Gazette Notification and claim protection under Section 35 of the Act. It is only with a view to avoid such a contingency that Section 35 saves only bona fide uses and bona fide users.

( 61. ) Section 35 of the Trade Marks Act, 1999, corresponds to Section 34 of the old Act, the Trade and Merchandise Marks Act, 1958. In Poddar Tyres Ltd v. Bedrock Sales Corporation Ltd and Another (AIR 1993 Bombay 237), His Lordship Mr. Justice B.N. Srikrishna (as he then was) considered the scope of Section 34 of the old Act. In paragraph-37 of his Judgment reported in AIR 1993 Bombay 237, the learned Judge held as follows:-

"It is true that, as stated herein earlier, Section 34 of the Trade and Merchandise Marks Act, is an exception to the general rule in Section 28. But, before giving the benefit of this exception to a defendant, the Court must be sure that the defendant had adopted the offending name bona fide and honestly. The Appeal Courts Judgment in Baumes case emphasises this aspect of the matter and says:- "Danckwerts, J., said that he understood that "bona fide" normally "means the honest use by the person of his own name, without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader"; and in that sense he acquitted the Defendants of any want of bona fides in the present case. We agree with the learned Judges definition of the term "bona fide" and we see no reason to attribute a different or special meaning to the phrase in its content in Section 8."

( 62. ) In this case, I am unable to convince myself that there is either a bona fide use of its own name by the defendants or a bona fide description of their services. As noted in the first part of this order, there is evidence to show that the plaintiff adopted and have been using the trade name "Health and Glow" at least from the year 1998. Even as per their own admission, the defendants started using the same name only from 2004. Even if I with to grant some element of a benefit of doubt to the defendants, that the defendants could have stumbled, by chance, upon such an arbitrary combination of two words from the English Dictionary, it gets completely wiped out, by the fact that the defendants also adopted the same device of the image of the dancing doll, as seen from their application for registration, published in the Trade Marks Journal in September 2005. Therefore, the adoption of the mark by the defendants, as part of their name, does not appear to be bona fide nor is there a bona fide description of their goods and service. Hence, I hold that the defendants are not entitled to the protection under Section 35 of the Act.

( 63. ) As a matter of fact, the Trade Marks Act, 1999, while making a deviation from the Trade and Merchandise Marks Act, 1958, in several aspects, has actually taken care of such a contingency as has now arisen. Sub-section (5) of Section 29 of the Trade Marks Act, 1999, makes it clear that a registered trade mark is infringed even by a person, who uses such registered mark as his trade name or part of his trade name or name of his business concern. Section 29(5) reads as follows:-

"A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name of his business concern dealing in goods or services in respect of which the trade mark is registered."

( 64. ) Therefore, apart from providing a safety value in Section 35 itself, by using the expressions "bona fide use" and "bona fide description", one more safeguard is provided under Section 29 (5) of the Act, against infringers, who seek to take advantage of the saving provision. As stated earlier, the trade marks of the plaintiff are registered marks. The Certificates of Registration dated 30.3.2006 and 15.6.2006, are with effect from the dates of their application viz., 13.10.2004. The plaintiff has adopted and started using the mark at least from the year 1998 and the second defendant got his Company incorporated with the same word mark "Health and Glow" as part of their corporate name, only on 15.6.2006. The incorporation of the second defendant as a Private Limited Company, was actually subsequent to the date of registration of the trade mark of the plaintiff. Therefore, by virtue of sub- section (5) of Section 29, the registered trade mark of the plaintiff has been infringed by the use of the same registered trade mark, by the defendants, as part of the name of their business concern. Consequently, the defendants are not entitled to protection under the saving provision of Section 35 of the Act, in the light of Section 29 (5) of the Act.

( 65. ) In fine, the plaintiff has established a prima facie case, by documents, that they adopted the trade mark and device in the year 1998 itself and that they have been using the word mark and device mark for the past 9 years. The plaintiff has also established that both the word mark and device mark have been registered under the Trade Marks Act, 1999. The defendants, who claim to have started their business in the year 2003, had applied for registration of the same trade mark and device mark, claiming user only from 2004. The second defendant Company itself was incorporated only in 2006. This is not a case of similar mark, but a case of adoption of the same mark. The defence that the mark is sought to be adopted in respect of dissimilar services and the defence that the defendants are entitled to protection under Section 35 of the Act, are not tenable, for the reasons stated in the previous paragraphs. Therefore, I hold that the plaintiff has made out a prima facie case.

( 66. ) Coming to the aspects relating to balance of convenience and irreparable loss, it is seen that the balance of convenience is certainly in favour of the Proprietor of a registered trade mark. A Proprietor of a registered trade mark, cannot be deprived of a protective order of injunction, when the statute confers an exclusive right to the use of the trade mark under Section 28 (1) of the Act. As held by the Supreme Court in Midas Hygiene Industries Pvt Ltds case (2004 (28) PTC 121 [LQ/SC/2004/103] ), "in cases of infringement either of trade mark or of copyright, normally an injunction must follow" and "the grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark itself was dishonest". The plaintiff would definitely suffer an irreparable loss and injury, if the defendants are allowed to continue to infringe the registered trade marks of the plaintiff. It is not something which can easily be compensated in terms of money, since such infringement is prohibited by the Act, not merely to protect the interest of the Proprietor of a registered mark, but also to protect the interest of the consuming public. Therefore, all the three tests for the grant of an interim order are satisfied in this case.

( 67. ) Under the above circumstances, I am of the considered view that the rights of the plaintiff are to be protected by making the interim orders of injunction absolute. Therefore, O.A. Nos. 310 and 311 of 2007 are allowed and the interim orders of injunction granted on 23.3.2007, are made absolute. The applications for vacating the injunction A. Nos. 2941 and 2942 of 2007 are dismissed.