S. Venkataraman, J:

1. This M.F.A. is filed under Order 43, Rule 1(r) of CPC against the order dated 29.3.96 passed in O.S. 5426/95 on the file of the XVI Addl. City Civil Judge, Bangalore, dismissing I.A.III filed u/o. 39, Rule 4 of CPC for vacating T.I. and allowing I.A.I filed u/o. 39 Rules 1 & 2 for T.I.

This appeal having been reserved for judgment, the Court delivered the following:

The second defendant is aggrieved by the order passed by the Additional City Civil Judge, Bangalore, rejecting their application for vacating the ex-parte order of temporary injunction and allowing the plaintiffs application I.A.I and granting an injunction re-straining them from using in relation to any balm or any other medicinal product manufactured by them, the impugned trade mark `Flying Tiger Balm, the device of Flying Tiger in English and Chinese characters, the device of leaping tiger with wings, wrappers containing 64 circles each enclosing the device of leaping tiger and the hexoganal shape of bottle or container which are deceptively similar to the plaintiffs trade mark Tiger Balm so as to pass off the second defendants product as and for the product of the plaintiffs pending disposal of the suit.

2. For purposes of convenience the second defendant, who is the contesting defendant, will be referred to as the defendant and the respondents 1 to 3 will be referred to as the plaintiffs.

The plaintiff have filed the suit for perpetual injunction restraining the defendant from using in relation to any Balm or any other medicinal product the impugned trade mark `Flying Tiger Balm or Flying Tiger or Flying Tiger in English and Chinese character, the device of leaping tiger with wings as well as the impugned labels, wrappers, cartons and hexagonal shaped bottle/container or any other trade marks, labels or cartons or device which are deceptively similar in any manner whatsoever to the plaintiffs trade mark Tiger Balm, `Tiger in English and Chinese characters, the device of leaping tiger and labels, wrappers, cartons and hexagonal shaped bottle/container produced as Annx-B and C, so as to pass off or enable others to pass off the defendants goods as and for the goods of the plaintiffs. The plaintiffs have also sought a sum of Rs. 1 lakh tentatively as damages. The plaintiffs also sought for an order of temporary injunction. The plaintiffs case in brief is as hereunder:

One Aw Chu Kin a Chinese herbalist prepared a medicinal ointment in 1890 in Rangoon and in or about 1900 his two sons by names Aw Boon Haw and Aw Boon Par decided to manufacture and market the medicinal ointment and they adopted a trade mark consisting of the device of a leaping tiger and the word "Tiger". The device of a leaping tiger is derived from the word "Par" forming part of the younger brothers name which means the animal `Leopard. The word "Tiger" was derived from the word "Haw" forming part of the elder brothers name which means the animal Tiger. The said trade mark and labels acquired tremendous reputation and goodwill in Rangoon as well as in India. In or about 1932 the two brothers incorporated a private limited company known as Haw Par Brothers Private Limited in Singapore and that company took over the business of those two brothers and continued that business in Singapore and various other countries including India till the world war-II. The plaintiffs goods continued to be available in India by virtue of being brought and also sold by persons of India origin travelling abroad and returning to India. The plaintiffs goods bearing the trade mark Tiger and words `Tiger Balm and the device of leaping tiger had tremendous reputation in India. The plaintiffs trade marks were registered in various countries and their applications for registration are pending in other countries. In 1969 the first plaintiff took over the business of the said Haw Par Brothers Pvt.Ltd. in respect of the Balm and other products with all rights in all the trade marks of the said company. The first plaintiff thus became the proprietor of the trade mark and they gave licence to the second plaintiff to manufacture and market the said balm and other medicinal products under its supervision and control. By another agreement dated 9.8.84 the third plaintiff has been appointed as the licensee in India to manufacture and market the said medicinal products.

The plaintiffs goods bearing the trade marks Tiger Balm, the word "Tiger" written in English and Chinese character and the device of leaping tiger are sold globally with the help of a wide network of subsidiaries, associates, licensees, dealers, etc. The said trade marks of the plaintiff have acquired trans-national and transborder reputation and good-will all over the world including India and they are internationally well known and reputed brands. Advertisements and articles relating to the plaintiffs products have appeared from time to time in newspapers and magazines having exposure and circulation in India. The predecessors of the first plaintiff had made an application for registration of a label mark inter alia containing the words Tiger Balm, tiger in English and Chinese characters and the device of leaping tiger in respect of medicinal ointment, but the same could not be proceeded further. The first plaintiff made applications for registration of this trade mark in India and as the second defendant filed opposition to those applications on the ground that it was the proprietor of the similar trade marks registered in India, the plaintiffs applications were not granted. The plaintiffs have now filed appeals before the High Court of Calcutta and the same are pending.

The first plaintiff is also the proprietor of hexagonal shaped bottle which has been used as a container for several decades in relation to the Balm and the ointment and the same as become distinctive of the plaintiffs goods and has come to be associated with plaintiffs goods alone in the course of the trade.

The defendant claims to be the registered proprietor of trade mark being the device of a leaping tiger with preminent wings and the Chinese characters bounded in a circle in respect of a medicinal balm and ointment for sale in the State of Gujarat and another mark consisting of 3 labels inter alia containing the device of a leaping tiger with wings and the words `Flying Tiger Balm and `Flying Tiger to be used collectively in relation to the medicinal balm excluding the states of Tamil Nadu, Andhra Pradesh, Kerala, Mysore (now known as Karnataka) and Union Territory of Pondichery. The second defendant also claims to be the owner of copy right under No. A-32395/81 in respect of the aforesaid 3 lables. The plaintiff has filed applications for rectification of the entries relating to the above registered trade marks and for removal of the said entries from the registration of trade marks on the ground that the said registrations were obtained by fraud and that the marks are causing confusion and deception. Those proceedings are pending.

The second defendant has fraudulently and by making false claim of originality has obtained registration of copy right in respect of artistic work contained in the 3 labels. The very artistic work, colour scheme, design, layout, getup and peculiar scheme of arrangements were contained in the labels, wrappers and cartons which were originally adopted by the plaintiffs predecessors many decades earlier. All the impugned labels, wrappers and cartons contained identical or deceptive design, colour scheme, layout and getup and peculiar scheme of arrangement as that of the plaintiffs labels, cartons and wrappers. The defendant with the full knowledge of the world-wide existence of plaintiffs trade mark has fraudulently and dishonestly obtained registration of 3 labels which are identical or deceptively similar to the plaintiffs labels. By using the impugned trade mark, labels and cartons the defendants are passing off their medicinal balm, oil and other products as those of the plaintiffs. This is bound to cause confusion and deception. The intention of the defendant is to trade upon the reputation acquired by the plaintiffs in respect of their trade mark Tiger Balm, Tiger, the device of leaping tiger and the word `Tiger written in Chinese characters and the distinctive labels, cartons and wrappers. In these circumstances the plaintiffs seek an injunction.

3. The defendant in their objections have pleaded that their company is an old established company engaged in the business of manufacturing and marketing balms and ointments, that its predecessor in interest and itself have been carrying on the said business since 1965 at Surat, that their trade mark containing the device of winged tiger and the words `Flying Tiger Balm has been registered and renewed that another trade mark with regard to the labels has also been registered and their products have been popularised by wide advertisements and that on account of the long and large user their product as well as their trade marks and lables with their distinctive features and get-up and design have got associated with their company. They have also pleaded that they have filed a suit against the plaintiff and other concerns for infringement and passing off in the district Court of Surat. With regard to the plaintiffs claim, the defendant has asserted that the plaintiff has no base in India and that they admitted after to get two trade marks registered in India, which were opposed by the defendant and the opposition has been allowed. The defendant has pleaded ignorance about the plaintiffs company and has contended that the averments about plaintiffs business in other countries are not relevant and have denied the allegations about the plaintiffs product being sold in India or having a reputation in India. According to the defendant the plaintiffs have no sales of their products in India and their products do not have any goodwill or reputation here and as such the suit for passing off was not at all maintainable. Another contention taken is that the plaintiff had full knowledge about the defendants products being sold for over 30 years in Indian market and having kept quite all these years the plaintiffs cannot now seek any relief as they are estopped by reason of acquiescence, laches and delay. The defendant has contended that in view of the long user of its trade mark by the defendant the plaintiffs have no prima facie case for grant of temporary injunction.

4. The facts that the plaintiffs have been using the trade mark `Tiger Balm with the device of a leaping tiger as well as the word `Tiger written in Chinese and English characters for their medicinal preparations in the form of ointment or balm and that the defendant has been using the trade mark Flying Tiger Balm with the device of a leaping tiger and the word `Tiger in English and Chinese characters are not disputed. It is also not disputed that trade marks of the plaintiffs and the defendant are deceptively similar and are likely to cause confusion. While the plaintiff has alleged that the defendant has copied their mark and the defendant is passing off their goods as plaintiffs goods, the defendant has filed a suit against the plaintiff alleging that the plaintiffs have been passing off their goods as defendants goods. In view of this, one fact is clear that the two marks used by the plaintiff and defendant are deceptively similar to each other and that they are likely to cause confusion. Even the learned City Civil Judge has referred to the deceptive similarities in the two marks.

5. The learned City Civil Judge after hearing both sides and considering the material on record has held that the plaintiff had adopted the mark prior to the adoption of the trade mark by defendant, that the plaintiffs products have worldwide sales, that their turnover is substantial and that plaintiffs products have tremendous reputation and goodwill in various countries, that plaintiffs products had been advertised in several magazines which have large circulation in India and that as directions regarding use of the Balm had been printed even in Tamil language, which is an Indian language, plaintiffs product must have been popular even in India. He has also prima facie found that the plaintiffs product by the distinctiveness of its mark has acquired reputation and goodwill world wide including India and that its products have been made available in India through official and non-official sources. The learned City Civil Judge has also opined relying on certain authorities that in respect of products having transborder reputation passing off action can be brought even though the product has not actually been sold in this country. The Court has also found prima facie that the defendant being aware of the plaintiffs mark has adopted the deceptively similar mark with a fraudulent intention. The defendants plea of acquiescence, laches and delay to disentitle the plaintiff to the relief of injunction has not been accepted.

6. The plaintiffs case that they adopted the trade mark Tiger Balm with the device of a leaping tiger and the word `Tiger in English and Chinese characters much earlier to the defendant cannot be seriously doubted at this stage. The documents produced by the plaintiff prima facie show that the plaintiffs trade mark was registered as early, as 1931 in Thailand and that mark had been registered in about 23 countries prior to 1967 when the defendants mark was registered. The plaintiff has explained the circumstances under which the mark Tiger Balm and the device of a leaping tiger came to be adopted for the medicinal preparations. The plaintiff has also produced material which would prima facie show that this product was being sold in several countries. The defendant claims to have adopted the mark in 1965 and significantly it is not explained as to why this particular mark was adopted by them for a similar medicinal preparation. One significant circumstance is that the defendant has used Chinese characters alongwith English characters in the label and in about the same position in which the similar characters are found in the plaintiffs mark. The lower Court has found it difficult to accept the explanation of the defendant that because there is considerable Chinese population they have used the Chinese characters. The defendant has also adopted the same device of showing the leaping tiger in 64 circles with the top two rows and the bottom two rows being small and the middle two rows being larger in size just as we find in the plaintiffs labels. It is not necessary to go further to arrive at a prima facie finding that the defendant has device their trade mark on the basis of the plaintiffs trade mark with slight variation. Instead of calling the Balm as Tiger Balm they have called it as Flying Tiger Balm and in the device of the leaping tiger they have shown 2 small wings to the tiger. In the absence of any explanation by the defendant regarding the reason for adopting this mark it would be reasonable at this stage to infer that the defendant has substantially adopted the plaintiffs mark. It is also pointed out by the learned counsel for the plaintiff that when the plaintiff started using hexagonal containers the defendant has also adopted similar container for their product.

7. The learned counsel for the defendant Sri Anand did not seek to contend that the mark adopted by the defendant is an original invention of the defendant. The main contentions urged by him are that right to trade mark is restricted to territory where the business is carried on, that the plaintiff had not placed any material to show that their product was being sold in India prior to 1965 and that merely because the plaintiffs product had reputation in other countries they cannot start passing off action against the defendant, without first making out that their product was being used in India and that it had built up a reputation here. According to him in 1965 when the defendant started using the mark there was no question of the defendant passing off their goods as the goods of the plaintiff, as the plaintiffs goods were not at all known in India. In effect his contention is that even if it can be said that the defendant had adopted the plaintiffs mark, the defendant cannot be said to have passed off their goods as the plaintiffs goods. He commented upon the lower Courts order with regard to the use of plaintiffs goods in India even prior to 1965, stating that the learned City Civil Judge has arrived at that conclusion even though there was no material to support that finding and on the basis of the judgment of the Madras High Court, to which plaintiff is a party but defendant is not a party. He further submitted that it is the plaintiffs case that their predecessor had given an application to the Registrar of Trade Marks in India earlier and they have produced a letter stated to have been written by the second defendant on 28.2.1968, which would show that at that time the plaintiffs predecessor had indicated that the mark was `proposed to be used and that this clearly shows that the plaintiffs mark was still not in use in India when the defendant adopted the impugned mark. It was also contended by him that even if it can be said that to bring an action for passing off, it is not necessary for the plaintiff to establish that at the relevant time their goods were actually openly sold in India and that transborder reputation would be sufficient, still the plaintiff atleast had to prima facie establish that in or about 1965 when the defendant started using the impugned mark, the plaintiff enjoyed reputation in respect of their trade mark in India and that in this case no material is placed on record even to show prima facie that the plaintiff enjoyed a reputation in this country at that time. According to him the learned City Civil Judge has without properly verifying the records has held that the plaintiffs product by distinctiveness of its mark had acquired reputation and goodwill worldwide including India and that plaintiffs product had been made available in India through official and non-official sources. He also submitted that the finding of the lower Court that the plaintiffs product had been published in Financial Times, Readers Digest, Travel Guide and other magazines, which had large circulation in India, is not correct and that the lower Court had failed to bear in mind that the plaintiff had been to prima facie show that their product enjoyed a reputation in India in or about 1965 and that the magazines produced by the plaintiff were of much later date. In the circumstances he pleaded that the Court could not have at this stage and on the material on record come to a prima facie conclusion that the plaintiffs product enjoyed reputation in India af the relevant point of time and that at any rate that was a question which had to be decided after trial.

8. Another contention urged by him is that the defendant started production of their goods using the impugned mark nearly 30 years back, that during these three decades the defendant had developed their business and the statement of sales and expenses towards promotion filed by the defendant shows that their business is worth crores of rupees and they have spent huge amount towards publicity, that the plaintiff who must have become aware of the defendants mark atleast by 1975, if not much earlier, has kept quite for 20 years without taking any action to prevent the user of the mark by the defendant and that this conduct of the plaintiff amounts to acquiescence and at any rate on account of the enormous delay amounting to laches the plaintiff was not entitled to the discretionary relief of temporary injunction. He further submitted that in a case of this type where serious questions of fact and law were involved and where the action had been brought after such a long lapse of time, the Court had to take into consideration the balance of convenience, that this is not a case where the defendant had either started using the mark for their product recently or that they were about to use it, in which event the discretionary relief of temporary injunction could be granted and that the lower Court in granting temporary injunction on the facts and circumstances of the case has not followed the well established legal principles governing grant of such discretionary relief. He cited several authorities in support of his contentions.

9. Sri K.G.Raghaven, appearing for the plaintiff supporting the findings of the lower Court, contended that the plaintiffs mark is internationally recognised trade mark, that this mark has been registered in 135 countries and is pending registration in other countries and that this mark has international reputation. He also submitted that there is material to show that this product Tiger Balm used to be available in India previously, that prior to world war-II many Indians were living in Rangoon and there used to be free trade, that the plaintiffs have produced some literature to show that non-resident Indians used to bring the plaintiffs product Tiger Balm on their return to India and that the very advertisement issued by the defendant in Gujarathi language shows that the plaintiffs product enjoyed reputation in India. He further contended that the view taken by the English Courts that in order to maintain the passing off action the plaintiff must show that their product was being sold in the territory of the country where the action is brought, is not followed by other countries and that even Indian High Courts have differed from that view and have held that if a trade mark has transborder reputation then an action can be maintained for passing off even though the plaintiffs product was not actually sold in that country. According to him the plaintiffs product had been advertised in several magazines and publications having circulation in India and plaintiffs product has worldwide reputation and as such it was not necessary for the plaintiff to prove that their product was being sold in India in 1965. He pointed out that material has been placed on record to show that some sales have been effected in India.

10. With regard to the plea of acquiescence and delay Sri Raghavan submitted that the plaintiff has been questioning the defendants right to the mark from 1975 and these disputes have been going on before the Registrar of Trade Mark and subsequently before Courts and as such the question of acquiescence by the plaintiff merely on account of delay in filing the suit would not arise. He further submitted that as in this case prima facie there is material to show that the defendants conduct in adopting the plaintiffs mark is fraudulent, the injunction could not have been refused on the ground of delay. he submitted that the lower Court has exercised its discretion in granting the temporary injunction after taking into consideration the legal principles and the material placed on record and that this Court should not in exercise of its powers under Order 43 CPC interfere with that order, even it is possible to take another opinion. He also relied on several authorities in support of his contentions.

11. Before considering the rival contentions urged, it may be useful to refer to some facts which are prima facie made out. The defendant has produced material to show that they started using the impugned mark for their Balm from about 1966 and their sales have continued till 1994. The defendant has produced a statement showing the details of sales, export sales, central excise duty, sales tax and income tax in respect of Flying Tiger Balm and other products. This statement is certified by a chartered accountant. The statement gives the annual figures from 31.3.1966. The sales which was in the region of thousands in 1966 have gone upto Rs. 3,23,06,060.85ps. by the year ending 31.3.1994. The advertisement expenses have gone up from Rs. 707.85ps. in 1966 to Rs. 4,12,306.50ps. in 1994. The defendant has also produced annual periodical return of excisable goods manufactured and issued by them in respect of Flying Tiger Balm for the years 1968,69 and 71 as well as gate passes issued for removal of excisable goods as well as invoices showing sales from 1966 onwards. It is also not disputed that the defendant got their trade mark registered on 20.10.1967 and that Number is 244978. Though this is restricted to Surat, the defendant has obtained another registration bearing No. 263300 which is not restricted to Surat. The copy right to the defendants trade mark labels has also been registered in 1981.

12. The plaintiff applied for registration of their mark on 1.7.1975 and when it was advertised in Trade Mark Journal in 1983 the defendant filed opposition and the Deputy Registrar of Trade Marks refused registration holding that the defendant has established use of their mark from 1965-66 and that the plaintiff had not proved the user of their mark in India prior to 1965. This order is now challenged before Calcutta High Court by the plaintiff. In rectification proceedings the Registrar of the Trade Mark has removed the defendants trade mark on the ground that the assignment of the trade mark had not been validly done and that order has been challenged by the defendant before the High Court and a stay has been granted and the matter is now pending in the High Court.

13. The point that arises for consideration is whether there is a prima facie case on which plaintiff could be held entitled to restrain defendant from manufacturing and marketing goods under the impugned trade mark and whether on consideration of balance of convenience and comparative hardship the temporary injunction should issue.

14. Though the plaintiff claims that their product has worldwide sales and has filed a statement showing worldwide figures of sales, the statement is neither signed by anyone nor certified by any auditor. Those figures do not indicate the sales effected in different countries and it does not also give any indication about the sale in India. Above all the figures are given only for the period from 1976 onwards. No material is placed on record at this stage to show that plaintiffs product was being sold in India at any time prior to 1965-66. What has to be found out is whether the defendant when they started marketing their products under the impugned trade mark in 1965-66 the plaintiffs mark had acquired reputation in India. As such the material on record placed will have to be assessed with reference to 1965-66. With regard to the sales in India the plaintiff has produced 2 invoices dated 7.4.1975 in the name of a firm at Bombay and another invoice dated 10.4.75 in favour of the same firm. Three invoices dated 26.4.88 raised in the name of India Tourist Development Corporation, Delhi, Bombay and Calcutta have also been produced. For all practical purposes there is no material to prima facie show that the plaintiffs product was sold or available in India market prior to 1965-66. It is in this background the question whether prima facie the defendant can be held to have passed off his goods as plaintiffs goods will have to be considered.

15. The very essence of passing off action is the deception played by a trader on the purchers by passing off his goods as the goods of another. This necessarily means that the customers must associate a mark with the plaintiffs product and purchase the defendants product on account of the deception practiced by the similarity of the marks, thinking it to be the plaintiffs product. If the customers are not at all aware of the plaintiffs mark, then the question of defendant passing off his goods as plaintiffs goods would not arise, even though the defendant might have deliberately adopted the plaintiffs mark. In Printers (Mysore) Private Ltd. v. Pthan Joseph (1960(3) SCR 713) it has been held as hereunder:

"...An infringement action is available where there is violation of specific property right acquired under and recognised by the statute. In a passing off action, however, the plaintiffs right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing off involves a misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader....."

In a passing off action the plaintiff must first establish that its mark has acquired a reputation in the area concerned and people generally associate that with plaintiffs mark.

16. The English Courts have taken up the view that in a passing off action it must be proved that the plaintiffs product is sold in the territory where the action is brought and that it has acquired goodwill in that area. In Kerlys Law of Trade Marks, 12th Edition 1986, the law in England is referred to as hereunder:

" The plaintiff in an action founded on passing-off in the United Kingdom must of course prove that the acts complained of amount to a misrepresentation: which will normally involve proof that he has a reputation in this country-that the disputed badge, trade mark or trade name, is in this country distinctive of his goods or business. But he must do more: since an essential ingredient of passing-off is damage (or prospective damage) to goodwill, he must show that he had, at the date when the defendants started up, in this country not merely a reputation but also a goodwill capable of being damaged. Goodwill, however, is local, it is situated where the business is. Thus a foreign plaintiff may have a reputation in this country-from travellers on the one hand, or periodicals of international circulation, for instance, on the other-yet still fail in an action for passing-off because he has here no business and so no goodwill. Such cases have been not uncommon in recent years, and have caused considerable difficulty. Where there is a substantial reputation here, our courts will often accept minimal evidence that a business exists here; but there has to be some. Recent decisions on this point are not all easy to reconcile, and there is not much prospect of the position being clarified: these cases are normally decided on interlocutory motion, where the plaintiff needs only show an arguable case, so that once the cases present some difficulty, as they do here, the point of law itself becomes arguable either way and so not fit to be decided on motion."

In Star Industrial Company Ltd. v. Yap Kwee Kor (1976) F.S.R.256) at page 269 Lord Diplock has laid down the law on the point as hereunder:

"....A passing-off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing-off one persons goods as the goods of another. Goodwill, as the subject of the proprietary rights, is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. it is local in character and divisible: if the business is carried on in several countries a separate goodwill attaches to it in each. So when the business is abandoned in one country in which it has acquired a goodwill, the goodwill in that country perishes with it although the business may continue to be carried on in other countries."

17. The rigid view adopted by the English Courts is not followed by the Courts in other countries as well as by some Indian Courts. The first case where this question arose for consideration was in Kamal Trading Co., Bombay v. Gillette U.K. Ltd. (1988 PTC 1). In that case the plaintiff had exhaustively sold 7 O clock blades in India till import restrictions were imposed in or about 1958. Though they could not sell their blades till about 1984, the Court found that the reputation and goodwill of the plaintiff subsisted. In 1984 the plaintiff entered into an agreement with an Indian company to manufacture 7 O clock blades in India. The registration of their mark 7 O clock for blades, safety razors, etc. was subsisting when the suit was filed in 1986. The defendants had claimed user from 1982 but however they did not produce any invoices. A contention was raised on the basis of the English decision that once the plaintiff ceased to sell their products in India, their goodwill perished and that because the plaintiffs goods were not available in India the plaintiff cannot maintain passing-off action against the defendant. The Division Bench of the Bombay High Court has held as hereunder:

" We must express our dissent with the view taken in this case. In our judgment, it is not possible to conclude that the goodwill or the reputation stands extinguished merely because the goods are not available in the country for some duration. It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers, periodicals, magazines and in other medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires vide reputation. Take for example, the televisions, and video casette recorders manufactured by National, Sony or other well known Japanese concerns. These televisions and V.C. Rs. are not imported in India and sold in open market because of trade restrictions, but is it possible even to suggest that the word `National or `Sony has not acquired reputation in this Country In our judgment, the goodwill or reputation of goods or marks does not depend upon its availability in a particular country. It is possible that the manufacturer may suspend their business activities in a country for short duration but that fact would not destroy the reputation or goodwill acquired by the manufacturers."

In the above case the plaintiff had developed reputation in India by sale of its products from a long time and only the sale had been stopped between 1958-1984.

18. In Apple Computers v. Apple Leasing (1993) IPLR 63) the plaintiff which was an American company had sold their product Apple computers in India from 1977. Their goods had also been advertised under the mark Apple in India prior to 1989. The defendant who had started concern `Apple Leading and Computers Ltd. changed the name to Apple Leasing and Industries Ltd. on receipt of a notice from the plaintiff. However in 1988 the defendant started offering services under the name Apple Computer Education. Disagreeing with the English view the Delhi High Court has held as hereunder:

"...In passing-off action what is consequential is unauthorised use of a name of a business, or a successful product. The requirement to actually carry on business, in India would be unfair and ought not to be applied to the case of passing-off. One must remember that in the case of passing off what one producer of goods or service is trying to do is to stop another trader from usurping his name and reputation as attached to the goods, or as attached to the service which are rendered by him. There is no such thing in the matters dealing with the revenue. In matters of revenue it is assumed that business is actually being carried on. However, in the case of goods which are produced in another jurisdiction, which have acquired a name and reputation either through publicity in journals or newspapers, such publicity itself may create a demand for the product, especially when coupled with information gathered from various sources by a prospective purchaser as to how a particular article performs, how durable it is, and how particular services are more satisfactory compared to others. As such, requirement of carrying on trade, in a particular jurisdiction, has not been accepted as since qua non for a passing off action in jurisdictions other than England. In England, there is continued insistence on actual business being carried on, and unless actual business is carried on, an injunction in passing off cases is not granted.

In road of the principle of actually carrying on business has been made in India also by saying that there is a residual goodwill in cases of articles which were at one time, available in the market in India, and no more available owing to the import control restrictions. (See Kamal Trading Co.s cases)."

19. In N.R. Dogre v. Whirlpool Corporation (AIR 1995 Del 300 [LQ/DelHC/1995/385] ) the plaintiffs had registered their trade mark Whirlpool in respect of washing machines, but however that registration lapsed in 1956. In 1988 they applied for fresh registration of their trade mark for various goods including washing machine. In 1987 they entered into a collaboration with an Indian company to manufacture their goods in India. The Indian collaborator was giving publicity to the plaintiffs mark Whirlpool and was also selling washing machines manufactured in India under that name. The plaintiff however had not made out a case of actual sales by them of Whirlpool products including washing machines in India prior to collaboration. The Court found that the reputation of the plaintiff was worldwide and it was travelling transborder to India through commercial publicity made in magazines which are available in India. Those magazines were found to have a circulation in the higher and upper middle strata of Indian society. The defendants had not adduced any documentary evidence on their having marketed their washing machines enabling a finding on the length of time and the extent to which they had marketed it, if at all, their products. Though the defendant had succeeded in the proceedings for registration of Whirlpool trade mark, the plaintiff had preferred an appeal which was pending. The Division Bench dealing with the question of extra territorial reputation and the necessity of the sale of products to acquire reputation has held as hereunder:

" The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been marketed. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinema, etc., even though there may not be availability of the product in those countries because of import restrictions or other factors. In todays world it cannot be said a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit and disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market."

20. The above decision of the Delhi High Court has been affirmed by the Supreme Court in N.R. Dongre -Vs- Whirlpool Corporation (1996 PTC(16) 583). The Supreme Court has held that in view of the prior user of the mark by the plaintiff and its transborder reputation extending to India the trade mark Whirlpool gives an indication of the origin of the goods as emanating from or relating to the Whirlpool Corporation plaintiff No. 1.

21. In Calvin Klein Inc.v. International Apparel Syndicate (1995 IPLR 83) the Calcutta High Court has held as hereunder:

"....In a passing off action it is not necessary for a plaintiff from abroad to carry on business in India provided the plaintiff prove that he had established a reputation or goodwill in India by other means such as large scale advertisement in papers and magazines published in other countries and circulated in India or large number of Indians going abroad, purchasing the plaintiffs goods there and subsequently importing them into India."

22. A Division Bench of the Madras High Court in O.S.As.55, 56, 59 and 60 of 1995 clubbed with O.S.As. 179 and 180 of 1995 was considering an appeal filed by the present plaintiff against an order of Single Judge declining to grant an order of temporary injunction. The plaintiff in that suit had sought for an injunction restraining the defendants from using the trade mark Tiger Balm, `Tiger in English and Chinese characters and the device of a leaping tiger and the cartons, labels, etc. or any other mark, device or labels similar to those marks which were their trade marks. The defendants therein had approached the plaintiff to have a joint venture to manufacture the product under the plaintiffs trade mark between 1991 and 1993. Though the fourth defendant therein had got the product mark `Tiger Balm registered in 1961 the bills, invoices and other documents produced in the case indicated ____ sales from 1968 to 1979. The fourth defendant was not carrying on any business after 1984 and no record also was produced to show the conduct of business after 1984. The defendants-1 and 2 having failed in their negotiations to commence a joint venture with the plaintiff, started marking their goods as if they are of the plaintiffs. The Court found that defendants-1 to 3 came on the scene only after June 1994 and their business commenced only in August 1994. The plaintiff filed a suit on 3.10.94. The Court on the material on record found that the plaintiffs goods were available in this country through official and non-official sources and that the plaintiff had acquired reputation all over the world including India. Dealing with the question of transborder reputation the Madras High Court agreed with the view taken by the Bombay and Delhi High Courts.

23. Thus it is seen that the view taken by the English Courts that to claim goodwill it is necessary that the plaintiff should establish business in respect of his goods within the territory where the passing off action is initiated, is not followed by the High Courts in this country, and even the Supreme Court has concurred with the view taken by the Division Bench in Whirlpools case. As such even if the plaintiff has not at all prima facie made out that their product was being sold or made available in Indian market in or about 1965-66, on that ground alone it cannot be said that the plaintiff cannot maintain passing-off action against the defendant in view of the development of law in this regard. However in order to make out a prima facie case for interim injunction the plaintiff must place naterial on record to show that their product had reputation of its own in Indian market in 1965-66. All the above decisions, where transborder reputation has been accepted without there being actual sale of the product the Courts have found as a fact that the reputation of the plaintiffs product had travelled to India through various news magazines and other media containing publicity of the plaintiffs product. In Whirlpool Corporations case the Division Bench of the Delhi High Court has enumerated the various magazines wherein the plaintiffs product had been advertised and which magazines had circulation in India. In that case the defendant had applied for registration in 1986 and the magazines and other material containing the advertisement related mostly to the period prior to 1986. So far as the case before the Madras High Court is concerned though the same plaintiff is a party to that suit, the defendant is not a party and the findings of fact recorded in that case cannot be taken note of in this case. That apart, in the case before the Madras High Court the defendants-1 to 3 had started marketing their product only in 1994 by which time the plaintiff had started marketing their products and it is with reference to the material placed in that case and having regard to the date from which the defendants started marketing their products the Madras High Court has held that the plaintiff had acquired a reputation for their goods in India.

24. The point that has to be considered is whether the plaintiff has placed material on record at this stage to prima facie show that their product `Tiger Balm which is a pain killer had earned a reputation in Indian market in about 1965-66. Though of late the medium of communation has enlarged due to the advent of television and satellite channels, we have to take into consideration the situation prevailing in 1965 when the communication system had not developed this much. Another aspect that has to be borne in mind is that the product in question is not a sophisticated product, the reputation of which is generally taken note of by upper middle class and upper class people who are used to subscribing to international magazines having circulation in India. The product is a pain killer commonly used by all people. Though the plaintiff has asserted that their product is known worldwide and it has been advertised in international magazines having circulation in India, no such magazine having circulation in India and published during the period prior to 1965 has been produced by the plaintiff. The Trade Mark Gazette published in Singapore in 1940 and some hand bills of 1934 and of 1939 have been produced. There is nothing to indicate that where these hand bills were published or to indicate that they had circulation in India. Some Chinese advertisements have also been produced and obviously they must have been published in Singapore. The only newspapers containing some advertisement or articles about the plaintiffs products which have been produced by the plaintiff are Sunday Times of 1978, R & C of 1978, Telegraph dated November 1978, a Travel Publication of 1979, Gibralter Chronical dated 6.11.1979, `International dated 24.11.1984, Times dated 24.10.88, etc. Even if 2 or 3 of these newspapers may have circulation in India they are all of a period much later than 1965. One Readers Digest of November 93 which appears to be in German language is also produced. Even the learned counsel for the plaintiff has not brought to my notice any newspaper or magazine containing advertisement about the plaintiffs product and having circulation in India prior to 1965 among the documents produced by the plaintiff.

25. The plaintiff has no doubt produced some material to show that in Singapore the plaintiffs predecessor Haw Par Brothers have named their building as Tiger Medical Hall, that Travellers Guide mentions about the Tiger Balm Garden and visit to Haw Par Villa. This material may no doubt show that he first plaintiffs predecessor is well-known in Singapore. The plaintiff has also produced a few pages purporting to be of the book "Tiger Balm King" published by Times Book International and reliance is placed on a portion where it is stated that the Indian civil servants take the ointment i.e., tiger balm for their use as well as for profit, to show that the plaintiffs product was being brought to India and it had a reputation here. Though from the pages produced in the case it cannot be made out as to when this book was published, the judgment of the Madras High Court shows that it was published in 1992. it is not known as to who is the author of this book. Much prior to 1992 the litigation between plaintiff and defendant had started and the defendant was contending that they were the first users of the mark in India. The above article does not clearly indicate with reference to which period the observation about India civil servants taking the ointment to India is made and it cannot be treated at this stage as prima facie evidence of the availability of the product in India during 1965-66.

26. The plaintiff has also relied on an article Khaleej Times of Singapore dated 19.8.1982 wherein it is stated that many holiday bound non-resident Indians from the Gulf and their counter-parts of Pakistan, Bangladesh and Sri Lanka origin carry as part of their personal baggage atleast half a dozen bottles of Tiger Balm to this day, that such is the popularity the balm has gained in the sub-continent as a reliable pain and ache reliever that has stood the test of time. Here again the name of the author of this article is not given and it cannot also be made out whether it is actually an article written by someone or an advertisement. As even this material has come into existence in 1992, it cannot be of much help to indicate that plaintiffs product enjoyed reputation In India in 1965.

27. It is admitted by plaintiff in the plaint that their predecessor had made an application for a registration of label mark inter alia containing the words `Tiger Balm, `Tiger in English and Chinese character and the device of a leaping tiger in respect of medicinal ointment, that however the same could not be pursued further. The plaintiff has produced copy of the reply dated 28.2.1968 sent by the defendant, when the Registrar of Trade Marks sought for clarification with reference to the earlier mark in respect of which the plaintiffs predecessor had sought for registration. This reply is produced by the plaintiff to show that the defendant knew about the plaintiffs mark in 1968 itself. In that letter the defendant has pointed out the difference between that mark and their mark. The defendant has further pointed out in that reply that the goods of the plaintiff whose marks are given in the application have not even been manufactured and even their goods were not even sold in the market under that mark, whereas the defendants have been using their mark from 1965. This reply indicates that the plaintiffs predecessor had not claimed that their mark was already in use in India and that they must have only proposed to use the mark. If really the plaintiffs products were already in the market in India and the plaintiffs predecessor had claimed prior user of the mark in India the plaintiff would have produced the copy of the application. Significantly the plaintiff who has produced a copy of the reply given by the defendant has not chosen to produce the copy of the application given by their predecessor. It is reasonable to infer that in their application the plaintiffs predecessor must have claimed that the mark was proposed to be used in India.

28. The plaintiffs have sought to rely on a pamphlet in Gujarathi language stated to have been produced by the defendant alongwith their reply dated 28.2.1968 to the Registrar of Trade Marks. The English translation of that pamplet given by the plaintiff would indicate that the pamphlet is to the following effect:

"Arrived in India in original packing. Well known Rangoon Tiger Balm. Available at all Chemists."

Sri Raghavan contended that the pamphlet admits the fact that the Tiger Balm had a reputation in India and that by making reference to original packings the defendant has tried to make it appear that plaintiffs product had arrived in India. He also contended that the fact that the defendant adopted a mark deceptively similar to the plaintiffs mark without any specific reason would itself indicate that the plaintiffs mark had a reputation in India. It is stated that the second defendants predecessor had come from Rangoon. They started the business in India under the name Rangoon Chemical Works. It is not uncommon in trade for a trader to exaggerate the reputation of their product and make it appear that it is a well known product while advertising the product. The learned counsel for the defendant contended that this pamphlet is a disputed document and it is not known as to how or who produced this pamphlet and it cannot be relied upon at this stage. In the absence of any other material at this stage to indicate that plaintiffs product was being sold or available in India or that it had acquired transborder reputation through advertisements and publicity in India in about 1965, it would not be safe to infer transborder reputation for plaintiffs product in India at the relevant time only on the basis of the above pamphlet.

29. The learned City Civil Judge has failed to note that the plaintiff had to prima facie show the use of their mark in India by sale of their product or at least show that mark had acquired transborder reputation in India in 1965-66, when the defendant adopted the impugned mark. He has not examined the material on record with reference to the period when the defendant started marketing their product. While referring to the contention by the defendants Advocate that in the proceedings where the second defendant opposed the registration of plaintiffs trade mark, the plaintiffs have claimed user in India from the year 1975, the learned Civil Judge has observed that circumstance is not of any significant relevance as the plaint itself shows that the product could not be exported to India after the outbreak of second world war. He failed to note that may have relevance in considering whether plaintiffs products were sold or available in India when the defendant started using the trade mark. After referring to the sales in India during 1975 and 1988 the sales effected in other countries from 1973 to 1992 the learned City Civil Judge has held that the plaintiffs have world wide sales and that it can be held that the plaintiffs product has tremendous reputation and goodwill in various countries and the plaintiffs have flourishing markets for their products (in various countries). After referring to the advertisements and some literature which have been referred to earlier by me, the learned City Civil Judge has concluded that the plaintiffs products are published in Financial Times, Readers Digest, Travel Guide and other magazines which have large circulation in India. Firstly he failed to note that these magazines and newspapers were not of the relevant period. He has also failed to note that Readers Digest produced is not at all in English language. He has also referred to the display of the plaintiffs products in several international pharmaceuticals fairs. The material produced by the plaintiff in this regard is all for the period from 1990 onwards. This circumstance has not been noted by the learned City Civil Judge.

30. The learned City Civil Judge has pointed out that in the book `Tiger Balm King at pages 137 and 138 there is a reference in directions in the leaflet wrapped around the container and that leaflet contains directions in Tamil language also. He has therefore drawn an inference that this product must have been popular in India. Here again he has failed to note that this book has been published in 1992 by which time the plaintiff had entered India market. That apart he has also failed to note that the product is manufactured in Singapore and it has been sold in Malaysia and that there is large population of Tamils in both those countries. The use of Tamil language therefore does not necessarily indicate that the product was being used in India. In fact even plaintiffs have not stated that Tamil language is used in the leaflet because its customers are from Tamil Nadu.

31. The learned City Civil Judge has strongly relied on the eh circumstance that in the case before the Madras High Court the correspondence between the defendants therein and the plaintiffs gave, an impression that the defendants therein had held the plaintiffs product in high esteem, that they have acknowledged the international reputation acquired by the plaintiffs products in all the countries including India and they have requested the plaintiff for joint collaboration to manufacture and launch plaintiffs product in India and on the basis of this he has held that if the plaintiffs product had not acquired any goodwill or reputation in this country there was no reason for the defendants in that suit to repeatedly request the plaintiffs for a joint collaboration or for grant of licence.

32. The judgment of the Madras High Court in the suit filed by the plaintiff could be used only with reference to the legal principles enunciated therein. The defendant is not a party to that case and the conclusions of the Madras High Court on the basis of the facts of that case and the material produced therein cannot be made use of against the defendant. Above all the learned City Civil Judge seriously erred in relying on the circumstance that the defendants therein requested the plaintiff to collaborate with them in manufacturing the product in India to draw an inference in this case that the plaintiffs product must have acquired reputation in India.

33. Though the circumstance that the defendant has tried to copy the plaintiffs mark for their product may be a circumstance which could be taken into account alongwith other material to determine the question whether plaintiffs mark enjoyed a reputation in India even in 1965 even though that product was not actually being sold here, I am afraid that only on that circumstance in the absence of any positive material to prima facie show that the plaintiffs product was either available in India or that it had been published in this country, it would not be proper at this stage to hold that plaintiffs mark had transborder reputation in India in 1965 so as to entitle the plaintiff to seek an interim injunction restraining the defendant after a lapse of three decades to stop using their mark. In a passing off action only on the basis of transborder reputation without business taking place in this country, it is essential for the plaintiff at least to positively make out the existence of such a reputation at the relevant point of time.

34. Assuming that the plaintiffs mark enjoyed reputation in India market in 1965, that circumstance by itself would not entitle the plaintiff automatically to an order of temporary injunction. The defendants have contended that from the circumstance that plaintiffs have slept over for nearly three decades and allowed the defendant to develop their business spending huge amount, prima facie the plaintiff must be deemed to have acquiesced in the defendants action. Though the plaintiffs predecessor is alleged to have applied for registration of their trade mark earlier and though the defendant got their mark registered after making out that there were distinguishing features between the two marks, the plaintiffs predecessor who must have been aware of the registration of the defendants mark has not pursued that application. It is not explained as to why that application was not pursued. The registration of the defendants mark was also not challenged. When the plaintiff made an application for registration of their mark in 1975 the defendant opposed it and in 1988 the Deputy Registrar allowed the opposition. Still the plaintiff did not take any action to prevent the defendant from suiting the impugned mark and it is only in 1995 this suit is filed. At this stage even if the plea of acquiescence set-up by the defendant is not accepted in view of the fact that the plaintiff was disputing defendants right to the mark in question in other forums, the unexplained delay on the part of the plaintiff in initiating this action cannot be totally ignored while considering the grant of temporary injunction.

35. Sri Reghavan contended that where the defendant is guilty of fraud, dely cannot the a ground to refuse temporary injunction. He submitted that when the adoption of the mark is tainted at the inception itself, the delay on the part of the plaintiff in initiating action would not purify the defendants action. In this regard he relied on some authorities. In M/s. Hindustan Pencils Pvt.ltd. v. M/s. India Stationery Products Co. (AIR 1990 Delhi 19) it has been held that delay by itself is not a sufficient defence to action for interim injunction, but delay coupled with prejudice caused to the defendant would amount to laches. In para 31 the learned Judge has held as hereunder:

" Even though there may be some doubt as to whether laches or acquiescence can deny the relief a permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiffs rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. The defence of laches or inordinate delay is a defence in equity. In equity both the parties must come to the Court with clean hands. An equitable defence can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody elses right cannot claim the continued misuse of the usurped right."

In the above case the Court as a matter of fact found that there was no inordinate delay in initiating action.

36. In Brooke Bond India Ltd. v. Royal Products (1981(2) Kar.L.J.92) this Court has held that in a case where the Court is satisfied that the defendant was indulging in a fraudulent or unconscionable transaction, laches would not come in the way of Court in issuing injunction. That is also a case where there was only a delay of few months. Sri Raghavan also relied on the following observations of the learned Single Judge in Apple Computers case (1993 IPLR 63) at page 124:

"...It is needed to recapitulate the observations of Romer, LJ, which have been set out above, that the circumstances which attend to the adoption of a trade mark in the first instance, are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted, it would be difficult in most of the cases to purify it subsequently. The fact that the defendant have built up a goodwill, and have a large turn-over will not eliminate the taint with which they started.

In the above case though the defendant started using the mark of the plaintiff in 1985 they had amended it when plaintiff objected in 1986 and again plaintiff came to know about the defendant using the mark in September 1988 and after issuing notice suit was filed on 9.1.1989. Actually plaintiff there had taken prompt action and even if there was a delay it was of delay of two and odd years during which period the plaintiff had once issued notice which had produced some result.

37. In this case though prima face defendant appears to have adopted the plaintiffs mark, whether his intention can be said to be fraudulent would depend on the establishment of the fact that plaintiffs mark had a reputation in Indian market in 1965. That is a question which will have to be gone into at the time of trial and at this stage as already pointed out clear material is not available in that regard. As such it would be hazardous to describe the defendants action as fraudulent. The delay involved in this case is not of a couple of months or years. Here is a case of delay of decades.

38. In Wander Ltd. v. Antox India (P) Ltd. (1991 PTC 1 Vol.XI) the Supreme Court has indicated the object of granting an interlocutory injunction and the factors to be taken into consideration as hereunder:

"Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The Court at this stage acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutry injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainity were resolved in his favour as the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his legal right for which he could not be adequately compensated. The court must weigh one need against another determine where the balance of conveniences lie. The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The Court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to case where the defendant is yet to commence his enterprise, are attracted."

In Power Control Appliances Co. v. Suneet Machines Pvt. Ltd.(1994 IPLR 117) the Supreme Court dealing with the question of delay has observed as hereunder:

"Delay simplicitor may be no defence to a suit for infringement of a trade mark, but the decisions to which I have referred to clearly indicate that where a trader allows a rival trader to expend money over a considerable period in the building up of a business with the aid of a mark similar to his own he will not be allowed to stop his rivals business. If he were permitted to do so great loss would be caused not only to the rival trader but to those who depend on his business for their livelihood. A village may develop into a large town as the result of the building up of a business and most of the inhabitants may be dependent on the business. No hard and first rule can be laid down for deciding when a person has, as the result of inaction, lost the right of stopping another using his mark. As printed in (1897) 14 RPC 37 at p.43, Rowland v. Michell, each case must depend on its own circumstances but obviously a person cannot be allowed to stand by indefinitely without suffering the consequence."

In the above decision the Supreme Court has referred to the decision to K.E.Mohammed Aboobacker v. Manikram Maherchand and another 1957 (II) Malras Law Journal 573 and extracted the following quotation regarding the principles that should govern the Court in granting or withholding a temporary injunction:

" The principles which should govern the Court in granting or withholding a temporary injunction in trade-mark infringement actions are well-settled: See recent decision Henry Hemmings Ltd. vs. George Hemmings Ltd (1951) 68 R.P.C.47. As a temporary injunction is merely of a provisional nature and does not conclude the rights of the parties in any way, the Court will exercise its discretion in favour of the applicant only in strong cases. The plaintiff must make out a prima facie case in support of his application for the ad interim injunction and must satisfy the Court that his legal right has been infringed and in all probability he will succeed ultimately in the action. This does not mean, however, that the Court should examine in detail the facts of the case and anticipate or prejudice the verdict which might be pronounced after the hearing of the suit or that the plaintiff should make out a case which would entitled him at all events to relief at the hearing. Colman v. Farrow & Co. (1898) 15 R.P.C. 198. Hoover. Ltd. v. Air-way Ltd. (1936) 53 R.P.C. 399. The Upper Assam Tea Company v. Herbert and Co. (1890) 7 R.P.C. 183. Star Cycle Company Ltd.. v. Frankenbargs (1906) 23 R.P.C. 337. In fact the Court will not ordinarily grant an interlocutory injunction if a large amount of evidence is necessary to support the plaintiffs case. The proper course in such a case is to ask for the trial of the action. The injury must be actual or imminent. Pinel & Cie v. Maison Pinet Ltd. (1895) 14 R.P.C. 933. Where the defendant disputes the plaintiffs title to the mark or contends that the plaintiff is not entitled to a relief by a reason of the acquiescence or delay or other estoppel or of the defendants concurrent rights, the Court will be guided by the balance of inconvenience which may arise from granting or withholding the injunction as well as the justice of the cause after considering all the circumstances in the suit. In other words, where the plaintiffs title is disputed or the fact of infringement or mis-representation amounting to a bar to the action or some other defence is plausibly alleged upon the interlocutory motion, the Court in granting or refusing the interim injunction is guided principally by the balance of convenience that is by the relative amount of damage which seems likely to result if the injunction is granted and plaintiff ultimately fails or if it is refused and he ultimately succeeds."

The Supreme Court has also referred to the following observation in American Cyanamid Co.s Decision At Page 134:

" Where other factors appear to be evenly balanced it is a counsel of prudence to take such measures as are calculated to preserve the status quo. If the defendant is enjoined temporarily from doing something that he has not done before, the only effect of the interlocutory injunction in the event of his succeeding at the trial is to postpone the date at which he is able to embark on a course of action which he has not previously found it necessary to undertake; whereas to interrupt him in the conduct of an established enterprise would cause much greater inconvenience to him since he would have to start again to establish it in the event of his succeeding at the trial."

39. In this case there is no tenable explanation for the inordinate delay of at least 20 years in the plaintiff filing the suit. When the defendants product has been in the market for nearly 30 years and their sales have gone to crores of rupees the plaintiff at this stage cannot seek the equitable relief of temporary injunction to stop the defendant using the impugned mark. The learned City Civil Judge has himself noted that the sales of defendants product is much more than the sale of plaintiffs product in India. If the defendant continues to use this mark till the matter is finally decided, the plaintiff who has waited all these years cannot complain that he would be put to irreparable injury. On the other grant of temporary injunction would prevent the defendant from carrying on their business which has been developed during the past 3 decades at considerable expense. If the defendants are asked to adopt a new mark even before the rights are finally determined, for their mark, it would cause serious hardship to them. As observed by the Supreme Court one of the factors which will have to be taken into account while granting temporary injunction is whether the defendants are yet to start the business or whether they have started the business recently. Taking into consideration the facts and circumstances of this case it has to be held that the balance of convenience lies not in favour of granting temporary injunction. While refusing the temporary injunction the defendant could be put on some terms to ensure that the plaintiff would not be seriously prejudiced, if ultimately they succeed in the suit.

40. I am aware that in an appeal against the discretionary order of temporary injunction the Appellate Court should not interfere with the order of the trial Court unless the order is arbitrary, capricious, unreasonable or the Court has either not taken into consideration the material facts available on record or has not applied proper legal principles. In the present case I have pointed out aside to how the lower Court has misdirected itself while dealing with the question as to whether the plaintiff has prima facie made out transborder reputation at or about the time when the defendant started using the impugned mark. I have also pointed out that the lower Court has relied on the material which should not have been relied upon and drawn inferences not borne out by the material on record. Even on the question of balance of convenience the lower Court has not applied the well-known legal principles referred to above. In these circumstances I think that this is a fit case where this Court should interfere with the order of the lower Court.

41. For the above reasons this appeal is allowed and the impugned order is set aside. The respondents-plaintiffs application for temporary injunction-is rejected subject to the following terms and conditions:

(a) The appellant-defendant shall publicise in four national newspapers including newspapers containing business matters, making it clear that their product "Flying Tiger Balm" is not the same as the "Tiger Balm" manufactured by the plaintiff.

(b) The defendant-appellant shall display the word "Flying" in their device and labels as prominently as the words "Tiger Balm" are displayed.

(c) The defendant-appellant shall ensure that the wings of the leaping tiger in their device are prominently displayed.

(d) The defendant-appellant shall submit to the Court once every six months an accurate account of the sales of their medicinal product adopting the impugned mark.