R.C. Jain, J.@mdashThe above named plaintiff has filed this suit for permanent injunction, passing of, rendition of accounts of profit and delivery
up etc. against the defendants with the averments and allegations that it is a company incorporated under the Companies Act 1909-1917 (U.K.),
having its registered office at 30, Duke Street, St. James''s, London, SW1Y 6DL, United Kingdom, and Mr.Jenny Hatton, who has signed and
verified the plaint and instituted the suit is duly constituted attorney of the plaintiff. It is averred that the plaintiff is highly reputed company engaged
in the business inter alia, of manufacturing and selling in different countries, a diversified range of goods including, men''s clothing, silk scarves and
ties, watches, gift items like wallets, small jewelry and leather goods, leather desk sets, ladies handbags, writing instruments and stationery,
grooming products like fragrances, umbrellas, toilrtries, travel accessories, liquor, baggage, ceramics, glassware and a host of other products,
under the trade mark DUNHILL. The plaintiff''s trade mark DUNHILL has a glorious history of development, expansion and growth. The plaintiff
has a virtual business empire. The range of customers and products of the plaintiff company are wide and varied and the plaintiff holds trade mark
registration in India trading back to the year 1945 for various range of goods including personal accessories, scientific apparatus fully detailed in the
plaint. It is stated that the plaintiff had a record of protecting its trade mark, diligently dealing and safeguarding its propriety interest in various
countries where violation of said right has taken place and in one such action taken by the plaintiff in the USA, the use of the trade mark
DUNHILL for Scotch Whiskey was restrained on the ground that the trade mark DUNHILL had high character and fame has to be accorded a
very high degree of protection even in relation to totally unconnected goods.
2. It is alleged that towards March 1997 the plaintiff received a communication from an investigator that a company with a name of Dunhill
Securities Ltd. was carrying on the the business of an investment company at Mumbai, India and it was reported that they were using the trade
mark DUNHILL as a part of their corporate name and trading style. Inasmuch as the said trade mark appears on their visiting cards, invoices,
banners and swatches. The adoption of such trade mark by the defendants is with a view to mis-represent that their business either originated from
the plaintiff or are endorsed or approved by them. The use of highly distinctive and well known trade mark DUNHILL in relation to defendant''s
business is bound and lead to immense confusion and deception in defendants business to that of the plaintiff. As a result the plaintiff is likely to
suffer inter alias loss of reputation and image and loss of customers. Accordingly the plaintiff has prayed the following reliefs:
(i)An order for permanent injunction restraining the defendants, their officers, servants, agents and representatives from manufacturing, selling,
offering for sale, advertising, directly or indirectly dealing in or in any other manner using the trade mark DUNHILL or any other mark identical
with or deceptively similar to the plaintiff''s trade mark DUNHILL in relation to business or as a part of the trade name or corporate name, thereby
amounting to passing off of the defendant''s goods as those of the plaintiff.
(ii) An order for rendition of accounts of profits illegally earned by the defendant''s on account of the use of the impugned mark/name and a decree
be passed in favor of the plaintiff in terms of the amount so ascertained;
(iii) An order for delivery-up of all stationary items, such as letterheads, visiting cards, invoices, delivery note, booking forms, etc.; and other
infringing material bearing the impugned mark for the purposes of destruction/erasure by the plaintiff of the same;
(iv)An order for costs in the proceedings;
(v)Any further orders as this Hon''ble Court may deem fit and proper in the facts and circumstances of the case.
3. On an application moved by the plaintiff under Order 39 Rule 1 and 2 CPC dated 26.3.98, this Court passed an injunction order restraining the
defendant, their officers, servants, agents and representatives from advertising, directly or indirectly dealing in or in any other manner using the
trade mark DUNHILL or any other mark identical with or deceptively similar to the plaintiff''s trade mark DUNHILL in relation to business or as a
part of the trade name or corporate name, thereby amounting to passing off of the defendant''s goods as those of the plaintiff.
4. Defendants failed to put in appearance despite due service and, therefore ,vide order dated 5.10.98 they were ordered to be proceeded with ex
parte against. The plaintiff thereafter led its ex parte evidence by filing certain documents and affidavit of one Shri Jennifer Ann Hatton, Constituted
Attorney thereby fully substantiating the case of the plaintiff. He has proved the original power of attorney authorising him to act on behalf of the
plaintiff as Exhibit P-1.; catalogue of vide range of products being marketing by the plaintiff under the name of DUNHILL as Exhibit P-2; another
catalogue of various other products as Exhibit P-3, book entitled as 100 years and more of the DUNHILL motor fans as Exhibit P-4; the detailed
description of the plaintiff products as Exhibit P-5; and Article Association of Company as Exhibit P-6; some of the advertisements published by
the plaintiff collectively as Exhibit P-7; list of subsidiary companies of the plaintiff in the Asian region as Exhibit P-8; the statement of plaintiff''s
company product worldwide including in India as Exhibit P-9, detailed statement of applications and registrations and certificates collectively as
Exhibit P-10; certificate copies of certain orders passed by this Court in some foreign courts and this Court as Exhibit P-11; photographs of the
Articles of Association and Memorandum of Association of defendant No.3 as Exhibit P-12; and the letter/notices dated 24th April, 1997 asking
the defendants to desist from using the said trade mark of the plaintiff as Exhibit P-13.
5. The above testimony of the plaintiff''s witness has gone unchallenged and unrebutted on record. The material brought on record would leave no
doubt that the plaintiff company had for many years carried on the business in the United Kingdom and through various subsidiary and associated
companies worldwide including in India. In regard to the manufacture and sale of vide range of luxuries goods cigars etc. the plaintiff has a trans
border reputation and name and fame in regard to this trade mark. The use of such trade mark by the defendants even for the purpose of their
financial services/investments is not only likely but bound to create impression to the customers dealing with this company that either the company
belongs to the plaintiff or associated with the plaintiff''s company in one or other way. The petitioner has, Therefore, established its case at least for
the grant of permanent injunction.
6. It may be stated here that during the course of the hearing Mr.Praveen Anand counsel of the plaintiff made a statement thereby giving up the
reliefs of rendition of account for profit and delivery up as contained in Clauses (ii) and (iii) of para 28 of the plaint and has confined the present suit
only to the grant of permanent injunction as claimed in Clause (i) of para 28. Accordingly the plaintiff''s suit is liable to the decreed for the said relief
and is hereby decreed. The defendant, their officers, servants, agents and representatives are restrained from manufacturing, selling, offering for
sale, advertising, directly or indirectly dealing in or in any other manner using the trade mark DUNHILL or any other mark identical with or
deceptively similar to the plaintiff''s trade mark DUNHILL in relation to business or as a part of the trade name or corporate name, thereby
amounting to passing off of the defendant''s goods as those of the plaintiff.
7. The plaintiff shall also be entitled to the cost of the suit.
