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ROLAND CORPORATION  Vs MR. SANDEEP JAIN

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CS(COMM) 565/2018 & CC No.6/2018 Page 1 of 26
* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Date of decision: 6th January, 2021.

+ CS(COMM) 565/2018 & CC (COMM) NO.6/2018

ROLAND CORPORATION ….. Plai ntiff
Through: Mr. Pravin Anand, Mr. Shrawan
Chopra, Mr. Vibhav Mithal, Mr.
Bobby Jain and Mr. Souradeep
Mukhopadhyay, Advs.

Versus
SANDEEP JAIN & ORS. ….. Defendants
Through: Mr. Neel Mason, Mr. Vihan Dang
and Mr. Shivang Sharma, Advs.
CORAM:
HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1. The plaintiff, in the year 2007, instituted this suit, to restrain (a)
Sandeep Jain, Proprietor Hi Tone Electronics; (b) H i Tone Electronics; and,
(c) Janata Electronics, by way of permanent injunct ion, from passing off
their goods as that of the plaintiffs by using the trade mark BOSS or Hi
Tone BOSS and for ancillary reliefs.
2. It is the case of the plaintiff, (i) that the pl aintiff is a company
incorporated in Japan in the year 1972, engaged in manufacturing,
marketing and exporting electronic musical instrume nts, electronic
equipment and software and is a world leader in des ign, manufacture and
distribution of electronic musical instruments incl uding keyboards and
synthesizers, guitar products, electronic percussio n kits, digital recording
equipment, amplifiers and audio processing devices; (ii) the plaintiff is the
registered proprietor of various trade marks includ ing BOSS, RODGERS,
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CS(COMM) 565/2018 & CC No.6/2018 Page 2 of 26
RSS, EDIROL and ROLAND, in respect of electronic eq uipments; (iii) the
trade mark BOSS is used in respect of compact effec t pedals, twin effect
pedals, multi effect pedals, acoustic processors, m etronomes, tuners, rhythm
machines, sound recording equipment and also access ories and is recognized
across the world as a hallmark in musical equipment ; (iv) the BOSS mark
was first used in June, 1976, in respect of Chorus Ensemble products in
Japan, and was adopted to connote “lead role”; (v) the trade mark BOSS has
been registered in favour of the plaintiff in India , in Classes 9 and 15, with
effect from 2 nd July, 2004; (vi) Rivera Digitec (India) Pvt. Ltd. was
established in Mumbai as exclusive distributor of p roducts of the plaintiff, to
serve the Indian music industry, by making availabl e to them the musical
instruments under the brands Roland, BOSS and Ediro l; (vii) the plaintiffs,
through their distributor, have been importing prod ucts bearing the mark
BOSS in India since 1993 and have acquired an excel lent reputation by
continuous import and sale of BOSS products; (viii) the sales in India of
goods bearing the mark BOSS have risen from Rs.68,6 8,330/- in 2002-2003
to Rs.96,79,190/- in 2006-2007; (ix) the defendant no.2 Hi Tone Electronics,
of which defendant no.1 Sandeep Jain is the proprie tor and defendant no.3
Janata Electronics is retailer, is engaged in the b usiness of manufacturing
and marketing musical instruments such as amplifier s, microphones,
speakers, stereos, mixers and cassette players unde r the trade mark BOSS
and also exporting products under the mark Hi Tone BOSS; (x) the
defendant no.2, on its website www.hitoneelectronic s.com, advertises
products under the trade mark BOSS; (xi) the defend ants have also
registered the trade mark BOSS in India in Class 9; (xii) the manner of use
and of the trade mark BOSS by the defendant is the same as that of the trade
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mark of the plaintiff; (xiii) the defendants have d ishonestly adopted the trade
mark and trade dress of the plaintiff; and, (xiv) a t the time when the
defendants registered the trade mark, the plaintiff ’s products were already
well-known under the said trade mark.
3. The suit, accompanied with an application for ex parte ad interim
relief, came up first before this Court on 23 rd April, 2007, when though
summons of the suit and notice of the application w ere ordered to be issued,
no ex parte relief claimed, granted.
4. The defendant no.2 has contested the suit by fil ing written statement
and also filed a Counter-Claim, pleading that (i) t he defendant no.2, a
partnership concern, adopted the trade mark BOSS in relation to public
address amplifiers, echo and reverb amplifiers, mic rophones, speakers, disco
lights and sound invertors and other similar produc ts, way-back on 15 th
January, 1979 and have been using the trade mark BO SS continuously and
extensively since then; (ii) the trade mark BOSS wa s adopted since the
defendant no.2 was the first entity in India to sta rt manufacturing echo,
reverb amplifiers, disco lights, sound invertors; ( iii) the defendant no.2
commissioned an artist Mr. Kedar Nath of Lalit Kala Kuteer, for designing
and stylizing the representation of the trade mark BOSS; (iv) that the
alphabet ‘B’ in the word BOSS was stylized to look like a chair of the boss;
(v) the defendant no.2, in the year 1999 participat ed in India Tech 1999
Exhibition in Nigeria and has also exported its pro ducts to Syria,
Bangladesh, Dubai, Sri Lanka, Yemen, Ethiopia, Ugan da and Kenya; (vi)
the sales of the defendant have multiplied, from Rs .19,786.78 paise as on
31 st March, 1979 to Rs.2,61,31,241/- as on 31 st March, 2007; (vii) the
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defendant no.2, on 14 th August, 1985 applied for registration of the trad e
mark BOSS in Class 9 in respect of public address a mplifiers, echo
amplifiers, reverb amplifiers microphones, speakers , disco lights and sound
invertors; the said registration was granted on 29 th November, 1991 and is
existing till date; (viii) the said registration ha s not been challenged by any
person; (ix) the plaintiff has acquiesced the use b y the defendant, by not
opposing the registration; (x) the registration cla imed by the plaintiff is of a
word mark, and not of a logo; (xi) the plaintiff di d not have any reputation in
India on 15 th January, 1979 when the trade mark BOSS was adopted by the
defendant and according to the plaintiff also, the goods of the plaintiff
became available in India, first in the year 1993 o nly; (xii) the plaintiff must
have been aware of use of the trade mark BOSS by th e defendant for long;
(xiii) that the plaintiff’s claim of having adopted the mark BOSS in 1976 is
denied; (xiv) BOSS is a common dictionary word and used by several
entities; and, (xv) the bona fides of the defendant are evident from the use of
the trade mark BOSS by the defendant in conjunction with Hi Tone, in the
manner of “Hi Tone BOSS”, making it clear that the defendant is not
attempting to ride on the goodwill of the plaintiff or any other person.
5. On the said pleas, the defendant no.2 in its Cou nter-Claim against the
plaintiff, seeks permanent injunction restraining t he plaintiff from using the
trade mark BOSS in relation to electronic musical e quipment and ancillary
reliefs.
6. Vide order dated 27 th August, 2018, the name of the defendant no.1
Sandeep Jain was ordered to be deleted from the arr ay of defendants.
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7. No written statement is found to have been filed by the defendant no.3
Janata Electronics and there is no order recording service of summons of the
suit on the defendant no.3 Janata Electronics and n o order proceeding ex
parte against the defendant no.3, the defendant no.3 Jan ata Electronics is
now deleted from array of defendants, leaving Hi To ne Electronics as the
sole defendant to the suit.
8. Though the plaintiff filed replication to the wr itten statement of
defendant no.2 and written statement to the Counter -Claim of the defendant
no.2 Hi Tone Electronics and defendants filed repli cation thereto but the
need to refer thereto is not felt.
9. On the pleadings in the suit and the counter-cla im, the following
issues were framed on 16 th January, 2009:-
“1. Whether the suit has been signed, verified and instituted
by a duly authorized person on behalf of plaintiff? OPP
2. Whether the plaintiff is the proprietor of the B OSS
trademark? OPP
3. Whether the plaintiff is guilty of delay, latche s and
acquiescence? OPD
4. Whether the defendant is the prior user of the t rademark in
India? OPD
5. Whether the suit is barred in terms of statutory
acquiescence in terms of Section 33 of the Trade Ma rks Act, 1999?
OPD
6. Whether the defendants have passed off their pro ducts as
those originating from the plaintiff? OPP
7. Whether the adoption of the BOSS trademark by th e
Defendants is dishonest? OPP
8. Whether the defendants’ adoption of the BOSS tra demark
is honest and concurrent? OPD
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CS(COMM) 565/2018 & CC No.6/2018 Page 6 of 26
9. Whether the plaintiff had a reputation in India at the time
of adoption of the defendants adoption of the trade mark? OPP
10. Relief.”
AND
“1. Whether the counter claimant is the proprietor of the
trademark BOSS in India? OPCC
2. Whether the counterclaim is liable to be rejecte d under the
provisions of Order VII Rule 11(d) of the Code of C ivil Procedure
in view of Section 28(3) of t he Trade Marks Act, 1 999? OPD
3. Whether the counter claimant has a reputation in relation
to the BOSS trademark? OPCC
4. Whether the use of the trademark BOSS by the cou nter
claimant will amount to passing off? OPD
5. Whether the defendant is the prior user of the t rademark
BOSS? OPD
6. Whether the adoption of the trademark BOSS and t he logo
by the counter claimant is dishonest? OPD
7. Whether the counter claimant is the owner of cop yright in
the stylized manner of representation of HiTone? OP CC
8. Whether the manner of adoption by the counter cl aimant
amounts to infringement of copyright in the stylize d manner of
representation? OPD
9. Relief.”
and the parties relegated to evidence.
10. No order is found to have been made on the appl ication of the
plaintiff for interim relief.
11. On 24 th November, 2015, the counsels for the parties infor med that
recording of evidence stood concluded. The suit an d the Counter-Claim
were accordingly directed to be listed in the categ ory of ‘Finals’. The
plaintiff applied under Order XV-A of the CPC read with Commercial
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Courts Act, 2015 and the suit and the Counter-Claim , vide order dated 25 th
April, 2017 were ordered to be listed for final hea ring in the category of
‘After Notice Miscellaneous Matters’.
12. Vide order dated 15 th January, 2019 on the application of the plaintiff
under Order XV-A, the time for making arguments in the suit was limited.
13. On 12 th September, 2019, inter alia, the following order was passed:-
“3. The counsel for the plaintiff has sought to dem onstrate
similarity between the products of the plaintiff an d the defendants.
At this stage, the counsel for the defendants are i nterrupted and
stated that the defendants are now no longer using the said mark
for Guitar Pedal Effects as was being done earlier and are now
using the mark only with respect to Public Address Systems and
have no intention to use the mark for any other goo ds.
4. On enquiry as to what all falls in Public Addres s System,
the counsel for the defendants has shown its catalo gue and has
handed over a copy thereof to the counsel for the p laintiff and states
that the defendants will in future also use the sub ject mark only with
respect to the goods as shown in the said catalogue and not for
other goods.
5. On enquiry, it is stated that though the Guitar Pedal Effects
may fall in Class 9 itself in which Public Address System fall but the
musical instruments with respect whereto the plaint iff is also using
the mark, fall in Class 15.
6. The counsel for the plaintiff states that he wil l study the
catalogue handed over today in the Court, to verify whether the
plaintiff has any objection to use by the defendant s of the subject
mark with respect to the goods as shown in the said catalogue.
7. The counsel for the defendants has also stated t hat the
defendants are willing to make a statement that the defendants will
use the prefix ‘Hi-Tone’ along with the mark ‘BOSS’ , in the manner
as shown in the catalogue and will obtain instructi ons whether the
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defendants are open to change the font of the alpha bet “B” in the
word ‘BOSS’.
8. The counsel for the defendants to inform the cou nsel for the
plaintiff in this respect within one week and if wo rkable, also share
the font in which the alphabet ‘B’ is intended to b e used in the word
‘BOSS’, in future.
9. It is made clear that the aforesaid is only for the purpose of
injunction and the aforesaid will not affect the cl aim if any of the
plaintiff for damages for use by the defendants of the subject mark
for other goods as the defendants were earlier usin g.
10. List on 11 th October, 2019.”

14. However, no settlement was arrived at between t he parties and the
counsels were heard further, on 11 th October, 2019 and 14 th October, 2019.
Though the order/judgment was expected to be dictat ed in Chamber, on the
same day and was indeed dictated but the draft of t he order/judgment
remained in the files for correction and went on th e back-burner. The
counsel for the plaintiff mentioned the matter to t he Court Master before the
Winter-Break of the year 2020 and now this judgment , after making
corrections, is being listed for pronouncement.
15. The counsel for the plaintiff has referred to:
(i) Neon Laboratories Ltd. Vs. Medical Technologies Ltd . (2016)
2 SCC 672, holding that it would not be unfair or f anciful to favour
the view that the defendant-appellant’s delayed use was to exploit the
niche already created and built-up by the plaintiff – respondent and
that the ‘first in the market’ test has always enjo yed pre-eminence;
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(ii) Milmet Oftho Industries Vs. Allergan Inc. (2004) 12 SCC 624,
holding, in the context of trade mark with respect to medicines, that if
a mark in respect of a drug is associated with the plaintiff worldwide,
it would lead to an anomalous situation if an ident ical mark in respect
of a similar drug is allowed to be sold in India an d that the mere fact
that the plaintiff-respondent had not been using th e mark in India
would be irrelevant if they were the first in the w orld market;
(iii) Staples Incorporation Vs. Staples Paper Converters Pvt. Ltd.
2014 SCC OnLine Del 2092, where I have held that th ough injunction
in N.R. Dongre Vs. Whirlpool Corporation (1996) 5 SCC 714 may
have been granted on the premise of trans-border re putation in India
but the injunction in Milmet Oftho Industries supra was de hors the
same and merely on the test of who is first in the world market, and
granting interim injunction on the said premise alo ne;
(iv) Prius Auto Industries Ltd. Vs. Toyota Jidosha Kabus hiki
Kaisha (2017) 236 DLT 343 (DB) holding that post the inte rnet era,
the law of trans-border reputation has expanded bec ause the internet
virtually broke the domestic walls in areas of trad e and business and
that on the internet, through search-engines, one c an access
information put up on the website, be it by the man ufacturer of the
goods or in e-journals and e-magazines.
(v) Suzuki Motor Vs. Suzuki (India) Ltd. 2019 (79) PTC 227 (Del),
holding, (a) that it is natural for the parties who have copied the trade
mark of another, to try and explain their conduct a nd derivation of
words so adopted/copied; (b) that if the trade mark has element of
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prior continuous use and has been copied, no amount of explanation,
even if it is plausible, is capable of defending in fringement of the
trade mark; and, (c) that mere concurrent user is n ot sufficient in law
– it must be honest. In that case, injunction was granted in spite of
use by the defendant therein since 1982, finding di shonesty in
adoption.
(vi) William Grant & Sons Ltd. Vs. McDowell & Company Lt d.
1994 (30) DRJ 105 where finding the defendant to ha ve taken all the
features of the label of the plaintiff it was held to be deliberate and it
was further held that what is deliberate copying ca nnot but be
dishonest.
16. The counsel for the plaintiff has contended tha t the DW-1 Arun Jain
examined by the plaintiff has not been able to prov e that the font and style
of the mark BOSS used by the defendant was designed by him. It is
contended that the plaintiff having proved its prio r use of the mark, there is
no possibility of the plaintiff having copied from the defendant and that the
explanation put forth by the defendant of the defen dant’s marks being of the
same font and style as the plaintiff’s, is improbab le. It is further argued that
the defendant, being in the same trade since 1950, is bound to have had
knowledge of mark of the plaintiff. Attention is i nvited to registrations in
favour of the plaintiff, of the mark BOSS and logo in respect of
electronic musical instruments and parts and fittin gs therefor, granted on 9 th
April, 1976, in Australia. It is further contended that the mark used by the
defendant is an exact copy of the logo of the plain tiff. It is also stated that
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the dimensions of the mark of the defendant are ide ntical to that of the
plaintiff.
17. Per contra, the counsel for the defendant has a rgued that in an action
for passing off, the plaintiff is required to prove goodwill and reputation in
the relevant territory. It is contended that it is the pleaded case of the
plaintiff that the plaintiff started business in In dia for the first time in the
year 1993 and thus the question of the mark of the plaintiff having goodwill
and reputation in India prior thereto does not aris e and the defendant has
been able to prove use of the mark in India, since the year 1979. Reliance is
placed on Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Indu stries
Limited (2018) 2 SCC 1 and Vishnudas Trading as Vishnudas Kishendas
Vs. Vazir Sultan Tobacco Co. Ltd. Hyderabad (1997) 4 SCC 201. It was
clarified, that the injunction claimed by the defen dant in the counter-claim is
only with respect to use of the mark BOSS in respec t of the same goods as
manufactured and sold by the defendant.
18. Attention is also drawn by the counsel for the defendant/counter
claimant, to cross-examination by the defendant of PW-1 Mr. Paul
Youngblood, President of BOSS US, whose 100% subsid iary the plaintiff
claims to be, to the effect that the area of busine ss of the plaintiff is
electronic musical instruments and computer periphe rals and that the
plaintiff does not manufacture public address mega phones or cassette
players with public address amplifiers. It is argu ed, that the plaintiff learnt
of the defendant when the examination report pursua nt to an application for
registration by the plaintiff disclosed the defenda nt and inspite of which the
plaintiff did not respond thereto. Attention is al so invited to the affidavit by
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way of examination-in-chief of PW-3 Yasuji Shirai, an employee of the
plaintiff, to the effect that in 2004, though the e xamination report disclosed
the defendant but in the absence of any information of use by the defendant
of the mark on any specific product mentioned in th eir trade mark
application under the BOSS mark, the plaintiff beli eved that the conflict was
adequately addressed by the plaintiff, by pursuing their trade mark
application for the BOSS mark. It is thus stated t hat there is a delay, from
1986 till 2007 when the suit was filed and that the plaintiff is not entitled to
any reliefs on the cause of action for passing off, on the said ground alone.
Attention is also invited to the communication of t he year 2004, Ex.PW-3/1,
of the plaintiff to its agent G.L. Sanghi in India, asking the agent to enquire
about the popularity of the products of the defenda nt under the subject mark
BOSS. It is stated that thus, on 2 nd September, 2004, the plaintiff knew of
the website of the defendant but did not sue, becau se the plaintiff then did
not have registration.
19. The counsel for the defendant has contended, th at the products of the
defendants are different from that of plaintiff’s a nd no ground for injuncting
the defendant, which is having large volumes of sal es, is made out. It was
also informed, that the defendant is primarily sell ing to Africa and to Middle
East. Attention was invited to Section 12 of the T rademarks Act, 1999 with
respect to honest concurrent user and it is contend ed that if it is possible for
both trademarks to exist, no injunction will be gra nted.
20. The counsel for the plaintiff, in rejoinder arg ued (i) that the defendant,
in its written statement has admitted possibility o f confusion; (ii) that the
defendant has an alternative mark; attention is inv ited to Ex.DW-2/B, where
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the defendant is using the mark ; it is
contended thus that the defendant will thus not suf fer any prejudice, even if
injuncted; (iii) the explanation given by DW-4 Keda r Nath, who designed
the logo of BOSS, sitting on a chair, is unbelievab le; and, (iv) in Prius Auto
Industries Ltd. Supra, the explanation of the defendant therein wa s believed
by the High Court and Supreme Court did not go into the question and
injunction was denied because the defendant had not copied the logo or the
model numbers.
21. The counsel for the defendant added, that in a claim on the ground of
passing of, it is essential to establish reputation and goodwill and it is
contended that it was for the plaintiff to establis h possibility of confusion
and which the plaintiff has failed to do and the th at counter-claim of the
defendant cannot be the basis of confusion, especia lly when PW-1 has
admitted that the plaintiff is not manufacturing th e same products as the
defendant. It is contended that in 1979, when the defendant adopted the
mark, there was no internet and access could only b e through magazines and
the plaintiff has not proved any magazines containi ng the advertisements of
the plaintiff, having circulation in India. It is further argued that use by the
defendant of the mark with the words “Hi Tone” dist inguishes the mark of
the defendant from that of the plaintiff and had th e defendant been
dishonest, the defendant would not have used the ma rk “BOSS” along with
“Hi Tone”. With respect to the mark “Hi Tone BOSS” , attention is drawn to
IA No.17065/2018 filed by the defendant, where the defendant has pleaded
that the partnership firm which comprised of Arun J ain and Sushila Jain as
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its partners, had been reconstituted on 1 st April, 2018, with Sushila Jain
retiring and Sunny Jain replacing Sushila Jain as p artner in the defendant. It
is stated that it is the outgoing partner Sushila J ain who is using the mark
“Hi Tune BASS”. It is further argued that there is no presumption of
dishonesty. The delay on the part of the plaintiff , from 1979 till 2007 in
instituting the suit, is reiterated.
22. The counsel for the plaintiff, during the heari ng, handed over the
opinion of Ahuja Radios with respect to the catalog ue handed over to the
counsel for the plaintiff in the Court on 12 th September, 2019 and as
recorded in the order dated 12 th September, 2019 in this suit reproduced
above, to the effect that the goods being marketed by the defendant under
the subject mark are the same as those marketed by the plaintiff under the
mark. It is reminded that the plaintiff, besides i njunction, is also entitled to
damages.
23. It was also informed during the hearing that re ctification applications
filed by both, plaintiff and the defendant, are pen ding consideration.
24. As would be obvious from the above, the plainti ff has pegged its case
merely on the principle of being the first adopter of the mark in the world,
even if not in India, and being entitled to restrai n the defendant, even
without proving any goodwill or reputation in India at the time when the
defendant adopted the mark. The other leg of the a rgument of the plaintiff
is, that since the manner and style adopted by the defendant in respect of the
mark is identical to that of the plaintiff, copying by the defendant is writ
large.
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25. As would also be obvious from the above, the de fendant contests by
taking the defense of honest and concurrent user, d ifference in goods and
delay.
26. As far as the plea noticed above of the defenda nt of concurrent user
and there being no possibility of confusion and of the mark BOSS being
generic and a dictionary word, are concerned, the s ame are belied, from the
defendant making a counter-claim against the plaint iff and also seeking
rectification before the authorities concerned, of the registration in favour of
the plaintiff. The defendant, in the counter-claim and in the Rectification
Petition, has admitted inherent confusion owing to similarity of the two
marks and the defendant cannot, as an after-thought , now argue that there is
no possibility of confusion. Similarly, defendant who has itself obtained
registration of the same mark, is not permitted to take the plea of the same
being generic. Reference in this regard may be made to Ozone Spa Vs.
Ozone Club MANU/DE/0151/2010 and Mind Gym Ltd. Vs. Mind Gym
Kids Library 2014 SCC OnLine Del 1240.
27. The first question to be adjudicated is, the te st to be applied to
determine passing off i.e. whether the appropriate test is that of first in the
market, wheresoever in the world, as contended by t he counsel for the
plaintiff, relying primarily on Neon Laboratories Ltd. supra and Milmet
Oftho Industries supra, or of first in the market in India and/or ev en if not
first in the market in India, having goodwill and r eputation in India, as
contended by the defendant/counter claimant, relyin g on Toyota Jidosha
Kabushiki Kaisha supra.
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28. All the three judgments are of Benches of two H on’ble Judges of the
Supreme Court. Having examined all the three judgm ents minutely, in my
view, in the facts of the present case, the law as laid down in Toyota
Jidosha Kabushiki Kaisha supra would apply and not the law laid down in
Neon Laboratories Ltd. supra and Milmet Oftho Industries supra. Though
Milmet Oftho Industries supra unequivocally lays down that the mere fact
that the mark had not been used in India would be i rrelevant if the mark was
first used in the world market but holds so in the context of drugs and
medicinal products, and after holding (i) that nowa days the field of medicine
is of an international character; (ii) that doctors , particularly eminent
doctors, medical practitioners and persons or compa nies connected with
medical field, keep abreast of latest developments in medicine and
preparations worldwide; (iii) that medical literatu re is freely available in this
country; (iv) that doctors, medical practitioners a nd persons connected with
the medical field regularly attend medical conferen ces, symposiums,
lectures etc; and, (v) that nowadays goods are wide ly advertised in
newspapers, periodicals, magazines and other media which is available in
the country, leading to a product acquiring a world wide reputation and all of
which increase the possibility of likelihood of dec eption or confusion and
the possibility, that with the passage of time, som e conflict may occur
between the use of the mark by the Indian company a nd the use of the mark
by the overseas company and the Court must ensure t hat public interest is in
no way imperiled. The Supreme Court, after holding so, also cautioned that
multinational corporations which have no intention of coming to India or
introducing their product in India, may not attempt to throttle Indian
companies by not permitting it to sell a product in India, if the Indian
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company has genuinely adopted the mark and develope d the product and is
first in the market. I am afraid, the said reasoni ng cannot be extrapolated to
apply with respect to musical instruments and publi c address system and
their parts. Moreover, Supreme Court in Milmet Oftho Industries supra
was concerned with an application for interim injun ction. The stage at
which the Supreme Court was approached in Neon Laboratories Ltd. supra
was also at the stage of application for interim re lief. Though the said
judgment also holds that the “‘first in the market’ test has always enjoyed
pre-eminence” but again has observed so in the cont ext of manufacture and
marketing of pharmaceutical products and medicinal preparations and after
finding, (a) that though the defendant-appellant th erein had applied for
registration on 19 th October, 1992 and was granted registration on 14 th
September, 2001 but commenced use of the mark only from 16 th October,
2004 onwards and that the mark had remained dormant for 12 years; and, (b)
that by the time, the defendant-appellant therein c ommenced use of the
mark, the plaintiff-respondent therein was already in the market and was
thus first in the market with the subject trademark . Again, this
distinguishing fact is enough for what is laid down in the said judgment not
to be blindly followed. DW-1 Arun Jain, partner of the defendant, in his
affidavit by way of examination-in-chief unequivoca lly deposed use of the
mark since 1979. Though he was cross-examined at l ength but a dissection
thereof does not show the plaintiff to have challen ged the use of the mark by
the defendant since 1979, as deposed by DW-1 Arun J ain in examination-in-
chief. The plaintiff, in its written arguments, ha s contended that there is no
documentary evidence on record of use of the mark b y the defendant, in
1979. Plaintiff, in its written arguments has furt her contended that evidence
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of first use of the mark by the defendant is of the year 1996. However, in
the face of no challenge in cross-examination to th e deposition of DW-1
Arun Jain, of use since 1979, the plaintiff is foun d to have admitted the
same. The emphasis of the plaintiff, even otherwis e has been on
establishing that some international registrations of the mark in favour of the
plaintiff are of prior to 1979, when the defendant claims first use of the mark
in India. I may notice, that in Neon Laboratories Ltd. supra relied upon by
the counsel for the plaintiff herein, the plaintiff Neon Laboratories Ltd . was
the first user of the mark in the Indian market, de spite earlier registration in
favour of the defendant therein who was ultimately injuncted from using the
mark subject matter of that case. Here, the defend ant/counter claimant is the
first user of the mark in the Indian market.
29. Supreme Court, in Toyota Jidosha Kabushiki Kaisha supra was
concerned with a final decree in a suit for permane nt injunction restraining
passing off. The plaintiff therein claimed to be t he first worldwide user of
the mark ‘PRIUS’. However, the defendants therein w ere the first user of the
mark in India. The Single Judge of this Court, rel ying on Milmet Oftho
Industries supra, granted a decree for injunction in favour of the plaintiff
therein, restraining the defendants from use of the mark ‘PRIUS’. In appeal,
the Division Bench of this Court reversed the decre e, holding (i) that the
first use by the plaintiff outside India, of the ma rk, though widely reported
and advertised, did not have much reportage in Indi a; (ii) that the
Territoriality Doctrine (a trade mark being recogni zed as having a separate
existence in each sovereign state and hence the rig hts in the trade mark do
not extend beyond the territory of the sovereign st ate which has granted the
rights) holds the field; (iii) that prior use of th e trade mark in one jurisdiction
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would not ipso facto entitle its owner or user to claim exclusive right s to the
said mark in another dominion; (iv) that it is nece ssary for the plaintiff to
establish that its reputation had spilled over to I ndian market prior to
commencement of the use of the mark by defendant in India; (v) that
internet penetration in India in 1997 was lean and it could not be said that
prior to April 2001, the plaintiff had established its goodwill and reputation
in the Indian market, which the defendants had take n advantage of; and, (vi)
that the test of possibility / likelihood of confus ion would be valid at the
stage of quia timet action and not at the stage of final adjudication of the
suit, particularly when the defendants had used the impugned mark for a
long period—the test would be one of actual confusi on and no evidence with
respect whereto was led by the plaintiff in that ca se. The Supreme Court,
while affirming the order of the Division Bench of this Court, further held
that, (a) to prove and establish an action of pass ing off, three ingredients are
required to be proved by the plaintiff, i.e., his g oodwill, misrepresentation
by the defendant and damage; (b) the test, of wheth er a foreign claimant
may succeed in a passing-off action, is whether his business has a goodwill
in a particular jurisdiction, which criterion is br oader than the “obsolete test”
of whether a claimant has a business/place of busin ess in that jurisdiction; if
there are customers for the plaintiff’s products in that jurisdiction, then the
plaintiff stands in the same position as a domestic trader; (c) the
overwhelming judicial and academic opinion all over the globe, therefore,
seems to be in favour of the territoriality princip le which should apply to
this country also; (d) to give effect to the territ oriality principle, the Courts
must necessarily have to determine if there has bee n a spillover of the
reputation and goodwill of the mark used by the cla imant who has brought
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the passing off action; and, (e) if goodwill or rep utation in the particular
jurisdiction i.e. in India is not established by th e plaintiff, no other issue
really would need any further examination to determ ine the extent of the
plaintiff’s right in the action of passing off.
30. In my view, in the light of the aforesaid judgm ent, in an action for
passing off, as the present suit is, the factum of the plaintiff being first in the
world is irrelevant, without the plaintiff establis hing goodwill and reputation
in India and which the plaintiff has failed to prov e. Though the plaintiff has
claimed having an exclusive distributor in India si nce 1993 but the same
also remained to be proved. Thus, as far as India is concerned, defendants
are the first user and that being the position, the action for passing off has to
fail.
31. I may mention another interesting facet of the present case. Though
the registrations of the plaintiff outside India ar e of , the
registration in favour of the plaintiff in India is not the same and is of the
word mark ‘BOSS’ (and not of a logo or a device) wi th the alphabet ‘B’
depicted only in commonly used font and not in the stylized logo found in in
the registrations outside India. Else, the use by the plaintiff of the mark is as
and by the defendants is as . It would
thus be seen that while the registration in favour of the plaintiff is of the
word mark ‘BOSS’, with the alphabet ‘B’ therein bei ng not in the style as in
the logo registrations of plaintiff abroad, the reg istration in favour of the
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defendant is of a device, with the word ‘BOSS’, wit h alphabet ‘B’ in the
same style as used by the plaintiff in its internat ional registrations as under:

32. In the light of the aforesaid discussion, I now proceed to return issue-
wise findings.
Issues in the suit:
1. Whether the suit has been signed, verified and i nstituted by a duly
authorized person on behalf of plaintiff? OPP
2. Whether the plaintiff is the proprietor of the B OSS trademark?
OPP
Issue in the Counter-Claim:
1. Whether the counter claimant is the proprietor o f the trademark
BOSS in India? OPCC

33. No arguments were addressed by the counsels on these issues, though
of course in the written arguments, the said issues have been referred to. On
perusal of the evidence, these issues are found to have been proved. It is
thus held, (a) that the suit has been signed, verif ied and instituted by a duly
authorised person on behalf of the plaintiff; (b) t hat the plaintiff is the
proprietor of word mark ‘BOSS’; and, (c) that the d efendants/counter-
claimants are the proprietor of device mark ‘Hi Ton e BOSS’.
Issues in the suit:
4. Whether the defendant is the prior user of the t rademark in
India? OPD
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6. Whether the defendants have passed off their pro ducts as those
originating from the plaintiff? OPP
9. Whether the plaintiff had a reputation in India at the time of
adoption of the defendants adoption of the trademar k? OPP
Issues in the Counter-Claim:
3. Whether the counter claimant has a reputation in relation to the
BOSS trademark? OPCC
4. Whether the use of the trademark BOSS by the cou nter claimant
will amount to passing off? OPD
5. Whether the defendant is the prior user of the t rademark BOSS?
OPD
8. Whether the manner of adoption by the counter cl aimant
amounts to infringement of copyright in the stylize d manner of
representation? OPD

34. I have already hereinabove held that the plaint iff has failed to prove
that marks had reputation and goodwill in India pri or to commencement of
use of the mark in India by the defendants and the plaintiff is thus not
entitled to any relief in an action for passing off . Resultantly, it is held (a)
that the defendants are the prior user of the trade mark in India; (b) that the
defendants have not passed off their products as th ose originating from the
plaintiff; (c) that the plaintiff did not have a re putation in India at the time of
adoption of the mark by the defendant; (d) that the defendants, by use, had a
reputation in relation to the ‘BOSS’ trade mark; (e ) that the use by the
defendants will not amount to passing off; and, (f) that the defendants are the
prior user in India of the trade mark.
Issues in the suit:
7. Whether the adoption of the BOSS trademark by th e Defendants
is dishonest? OPP
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Issues in the Counter-Claim:
6. Whether the adoption of the trademark BOSS and t he logo by the
counter claimant is dishonest? OPD
7. Whether the counter claimant is the owner of cop yright in the
stylized manner of representation of HiTone? OPCC
8. Whether the manner of adoption by the counter cl aimant
amounts to infringement of copyright in the stylize d manner of
representation? OPD

35. Adoption by the defendant of the mark ‘BOSS’ wi th alphabet ‘B’
thereof in the same style as in the first use of th e mark by the plaintiff,
though not in India but outside India appears to be more than a coincidence.
It is highly unlikely that the defendant, carrying on business in allied, even if
not same goods, would conceive the same mark as the plaintiff’s, would
style the alphabet ‘B’ thereof identically to that in the mark of the plaintiff
launched a few years earlier, though not in India b ut outside India. The
defendant, on this aspect has examined the son of t he artist who is claimed to
have designed the device mark of the defendant and who deposed that his
father who has since died, had designed the mark fo r the defendant but the
same is not sufficient to dispel the doubt in this regard. Though there is no
definite evidence in this context but the smell, on delving deep into the
evidence, is of the probability of the defendant be ing aware while adopting
its device mark, being aware of the mark conceived by the plaintiff outside
India in relation to allied if not similar goods. The evidence, of the
defendant having styled the alphabet ‘B’ of its mar k on the basis of the chair
of a boss in an office, is also unbelievable. Howe ver, inspite of the
aforesaid, I am unable to, on the existing evidence , return a finding of
dishonesty against the defendant. Merit is found i n the contention of the
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counsel for the defendant that the use by the defen dant of the mark ‘Hi Tone
BOSS’ and not ‘BOSS’ alone, dispels any notion of d ishonesty. It is
significant that the plaintiff has failed to prove use or registration in India at
that time and had the defendant being dishonest, th e defendant would have
blatantly copied the mark of the plaintiff. The aw areness of the defendant of
the goods and marks of the plaintiff can thus only be said to have led to the
idea behind the mark of the defendant. Accordingly , I hold (a) the adoption
of the mark by the defendant is not dishonest; (b) the defendants’ adoption
of the mark is honest; (c) that the adoption of the mark and logo by the
defendant is not dishonest; and, (d) the defendant is the owner of copyright
in the stylized manner of representation of Hi-Tone .
Issue in the suit:
3. Whether the plaintiff is guilty of delay, latche s and acquiescence?
OPD

36. It has come on record that the plaintiff, at th e time of applying and
obtaining registration in India, was made aware of the prior registration in
favour of the defendant. The plaintiff has not pro ved the enquires made by it
at that time, on the basis of which, it is claimed that the existence of the
mark of the defendant and/or use thereof did not af fect the plaintiff. The suit
has undoubtedly been filed long thereafter. Though it is the case of the
plaintiff that the plaintiff instituted the suit wh en found the defendant was
passing off its goods as those of the plaintiff, bu t again there is no evidence
of actual passing off of its goods by the defendant or of any confusion in the
market or of any complaints having been made to the plaintiff by anyone
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who may have dealt with the defendant, believing th at the dealing was with
the plaintiff. I thus hold the plaintiff to be guil ty of laches and acquiescence.
Issue in the suit:
10. Relief.
Issue in the Counter-Claim:
9. Relief.
37. As a result of the findings above, the plaintif f is not entitled to any
injunction or ancillary relief against the defendan t. As far as the Counter-
Claim is concerned, the defendant made the same onl y as a counter-blast to
the suit brought by the plaintiff and the defendant even now, as recorded in
the order dated 12 th September, 2019 reproduced above, has offered to
restrict the use of the mark. In any case, the cla im of the defendant is of the
goods of the defendant being different from that of the plaintiff. In these
circumstances, the defendant cannot succeed on its Counter-Claim.
38. However, actions for infringement of trade mark and passing off also
have a public interest element of protecting the cu stomers at large from
possibility of confusion and of being misled into b uying goods of one
assuming them to be of another. In the said light, it is deemed apposite to,
notwithstanding the above, bind the defendant to it s statement as recorded in
the order dated 12th September, 2019 reproduced above, of confining the use
of the mark to the goods, catalogue whereof was han ded over to the counsel
for the plaintiff on 12th September, 2019 and to not use the mark ‘BOSS’
without using the prefix Hi-Tone, as is presently b eing done and in the
manner as shown in the said catalogue and to not ex pand their business in
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the goods under the said mark beyond the jurisdicti ons where the same is
presently being carried on.
39. Accordingly, the suit of the plaintiff is dispo sed of by passing a
decree, in favour of the plaintiff and against the defendant, restraining the
defendant from using the subject mark in contravent ion of its statement as
recorded in the order dated 12 th September, 2019 and binding the defendant
to the said statement; and, the Counter-Claim of th e defendant is disposed of
by passing a decree of dismissal thereof.
40. The parties are left to bear their own costs.
Decree sheets be drawn up.

RAJIV SAHAI ENDLAW, J.
JANUARY 6, 2021
‘ak/bs’
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