Mahinder Narain, J.
1. By this order, I propose to deal with an application bearing I.A. No. 7678 of 1989, for interim injunction, filed by the plaintiff in Suit No. 2751 of 1989.
2. The plaintiff/applicant is staled to be a company organized under the laws of California, United States of America, and has its principal office at 2-525 Mariani Avenue, Cupertino, California 95014, United States of America. It is asserted by the applicant company that it, and its subsidiary companies are internationally well known manufacturers of well known manufacturers of computers, computer peripherals and computer software that the applicant company had grown from a backyard garage enterprise in California's Silicon Valley to a U.S. $ 4.07 billion corporation embracing an organisation network that spans all five continents-all in just about 12 years.
3. The applicant says that the first Apple Computer (Apple I) was a "kit" designed for enthusiasts and hobbyists, (kit being unassembled component parts supplied in a container which are to be put together by a person capable of doing so by following instructions given alone with the kit). This Apple I (marketed in 1976) the applicant says, was followed by Apple II, which was the first personal computer that went beyond the hobbyists market, and its success created an industry.
4. According to the assertions of the applicant, it had targeted the "personal computers" both to the business and the education markets from the inception. In the year 1979, the Apple Education Foundation was established with its goal to grant complete Apple Systems to schools to enable them to develop new classroom software and integrate computers into their curriculum. By 1982, the Apple Education Foundation had contributed more than $ 1 million worth of personal computers to schools. It began to expand into Europe and established a plant in Cork, Ireland and a European Support Center in Zeist, the Netherlands. The applicant contends that it had a successful public issue in 1980, where after it announced "Appleseed" a computer literacy programme that would provide elementary and high schools with computer course materials. The applicant also asserts that in the year 1983 it made donations to 10,000 public and private schools to have complete computer system. The applicant also asserts that it launched a personal computer which it called "Macintosh", and a numerous colleges and universities are alleged to have taken major development programmes with the Macintosh computers.
5. The applicant asserts that whereas Apple II computer was the mainstay of the primary and secondary education, the Macintosh catered to corporate business, public sector and higher education. It is asserted that the applicant also sparked off the Desk Top publishing (DTP) revolution in 1985.
6. The applicant also asserts that 33% of the applicant's revenues come from outside the United States and that its turn over increased from 47.9 million to 4071.4 million U.S. $ in 1988.
7. The applicant asserts that it has, in the course of the business, used, inter alia, the word mark "APPLE" and "APPLE logo" to denote its products and has secured registration of the trade make "APPLE" and "APPLE logo" in more than 80 countries around the world.
8. According to the applicant, it had been exporting its products to India since 1977, and during the period October 1984 to September 1985 it had exported to India goods worth 0.15 crores of rupees. This amount had increased in course of time, and during the period October 1988 to August 1989, it had exported the goods worth 11.2 crores of rupees to India, and amongst the customers in India were various departments of Government of India, Department of Computer Science, University of Delhi, Indian Institute of Technology Kanpur, National Council for Educational Research and Training, New Delhi, National Institute of Design, Ahmdabad, Nippon Denro Ispat Ltd., Calcutta, Andhra Pradesh Technology Services Ltd., Hyderabad, Kunguman Publications Pvt. Ltd., Madras, Centre of Artificial Intelligence and Robotics, Bangalore, Vikram Sarabhai Space Centre, Trivandrum, Department of Economic Affairs, Ministry of Finance, Joint Cipher Bureau, Ministry of defense and National Informatics, Centre, Electronics Commission.
9. The applicant assets that "Apple Computers", have been imported into India to be used as part of Allied Linotype Machines used for photo-typesetting and for photo spectrometry--such machines are used extensively by publishing houses and science laboratories.
10. The applicant asserts that prior to 1984-85 it had as many as 5 distributors in India. However, in 1985 the applicant appointed Raba Contel Pvt. Ltd., New Delhi as its sole distributor for distribution and sale of its products in India.
11. The applicant asserts that five applications have been made by it for registration of its internationally famous trade mark under the Trade and Merchandise Marks Act between 1982 and 1988. It is note worthy that the applicant does not states as to whether any of the applications for registration have so far been granted, or what their present status is. The applications were for the word APPLE, APPLE LOGO, (in colour), and APPLE CENTRE.
12. The applicant also states the global advertising, marketing, distribution and sales promotion plans, the applicant and its subsidiary companies have incurred substantial moneys, which in the year 1984 was 392.866 million Dollars, which increased to 952.577 million Dollars in 1988, and that it advertised in various magazines and newspapers, like Fortune, Byte, PC World, Info World, Popular Electronics and Time, which circulate in India, and also in Indian newspapers and magazines, and that in all its advertisements, the word mark "APPLE" and "APPLE logo" have been very extensively used in relation to the applicant's products and services.
13. The applicant also asserts that in exhibitions held in 1985 at Taj Mahal Hotel, Bombay, which was visited by 7,000 people, Raba Contel Pvt. Ltd. its agent, received orders for purchase of "APPLE Computers" amounting to Rs. 30 lacs. The applicant, therefore, asserts that it has become well known all over the world and in India as one of the leading manufacturers of computers marketed under the trade marks "APPLE" and "APPLE logo". The trade mark "APPLE" also forms a prominent feature of the applicant's corporate name and trading style. The applicant asserts that by reasons of extensive use of the said trade marks and the superior quality of the products sold there under, the aforesaid trade marks are distinctive of and exclusively identified with the applicant. "Apple Computers" have acquired immense reputation and valuable goodwill among the trade and public in India. Any use of the words "Apple Computers" in relation to business of computers will inevitably lead the people to believer that such business is of the applicant or is in some way connected with the applicant.
14. The applicant states that it came to be aware in January 1986 that the respondent was adopting the word "Apple Leasing and Computers Limited" as its corporate name, and issued advertisements regarding its proposed public issue. The applicant asserts that by adoption of Apple" as part of its corporate name and/or trading style, the respondent was trying to show that it was in some way connected with the applicant. The applicant sent a cease and desist notice dated 17.1.1986 through its attorneys to the respondent, calling upon the respondent to cease and desist from using "Apple" as part of its corporate name and/or representing that it was associated or connected with the applicant in any manner. Reply to the said notice was received in January 1986, which led to further meetings and correspondence, which resulted in statement.
15. The applicant stales that the respondent, however, on its own, on September 1, 1986 changed its corporate name from "Apple Leasing and Computes Limited" to Apple Leasing and Industries Limited". The applicant contends that by substitution of the word "Computers" for "Industries" the respondent clearly indicated awareness of the applicant's rights and appeared to have been action to avoid violating them. The applicant asserts that as the possibility of the respondent passing oft" its business as "Apple Computer" business appeared to be receding, the applicant refrained from taking any legal action. The applicant contends that two years later in 1988, despite change of name, the respondent adopted dubious device of conveying the impression that it did emanate from the applicant or was associated with the applicant in some way by saying that the respondent was offering services under the legend "APPLE COMPUTER EDUCATION".
16. The applicant contends that in its advertisement, the respondent adopted an objectionable style of advertising wherein it had referred liberally to "Apple Computer" and "Apple" in a manner which was calculated to deceive the trade and public into believing that it was using the applicant's products and/or was associated with the applicant and its business. The applicant states that again a cease and desist notice was got issued on 13.9.1988 through M/s. Remfry & Sou, New Delhi, calling upon the respondent to case and desist from selling its business of computer education as "Apple Computer Education". This notice was replied to by letter dated 21.10.1988, wherein, inter alia, the respondent asserted that it had exclusive right in India to use the word "Apple" as a part of its trading style and also as a trade mark in India.
17. The applicant also asserts that in an advertisement in the Times of India dated 3.1.1989, the respondent advertised "Apple Computer Education" by prominently featuring a figure of a partly bitten apple a symbol which is associated with the applicant worldwide.
18. The applicant states that its attorneys M/s. Remfry & Son, clarified in their letter dated 9.1.1989 that the applicant had no objections to the respondent's corporate name--"Apple Leasing & Industries Limited", but was complaining about the objectionable style of advertising and selling of its business of computer education by using the words "Apple Computer"--two words in conjunction. The applicant's complaint was that the underlying motive, doubtless, being to cash in on the applicant's worldwide reputation and thereby deceive the trade and, public into thinking that the respondent was associated with the applicant in some way. Reply to this notice was given by the respondent's attorneys by their letter of 3.3.1989, wherein the respondent claimed exclusive right to the use of the world "Apple". The applicant asserts that the use of the word "Apple Computer Education" and deceptive advertisements thereof viz. reference to "Apple Computer" is nothing but a dishonest attempt to pass off its business as applicant's business.
19. The applicant contends that in view of the extensive use of the applicant's trade marks worldwide and in India, and the goodwill enjoyed by the applicant's business, the respondent's actions are brazen acts of dishonesty and motivated purely by mala fide intention to trade upon and benefit from the international reputation and goodwill enjoyed by the applicant and its products, and thereby perpetrated fraud and deception on the unwary customers by passing off its business as and for the business of the applicant.
20. The applicant, therefore, contends that in the aforesaid facts and circumstances, there is a definite chance for the applicant to succeed in its challenge, and in obtaining necessary reliefs from this court, as the respondent had been infringing the applicant' trading style and passing off its business as and for that of the applicant, and on account of continuing deception of the public in India, the applicant is entitled to a perpetual injunction and account of the profits made by the respondent by virtue of misuse of the word "Apple Computer" in relation to its business of computer education. The applicant, therefore, prays that :
(i) Ad interim injunction pending disposal of the suit be issued to restrain the respondent, its directors, partners, distributors, representatives, servants and agents from using the words "APPLE", "APPLE COMPUTER" or any other words similar thereto as trading style or as part thereof.
(ii) Ad interim injunction pending disposal of the suit be issued to restrain the respondent, its directors, partners, distributors, representatives, servants and agents from passing off its business as and for that of the Applicant by use of the ''APPLE", "APPLE COMPUTER" or any other words deceptively similar thereto as a part of the legend "APPLE COMPUTER EDUCATION" in relation to the business of computer education, or otherwise in the course of trade ;
(iii) Ad interim injunction pending disposal of the suit be issued to restrain the respondent, its directors, partners, distributors, representatives, servants and agents from passing off its business/products as and for that of the applicant by use of the "Apple logo" or any device deceptively similar there to as a trade mark, or as part of trading style or otherwise in course of trade ;
(iv) An order for an account of profits made by the respondent since the time the respondent adopted the legend "APPLE Computer Education" in its purported business of computer education.
(v) Costs of this application be awarded.
21. When the matter had come up before the court for admission, and orders on the interlocutory application on 16.10.1989, as caveat had been lodged by the defendant, summons were ordered to be issued to the defendant for 5.12.1989. On 5.12.1989 more time was sought to file the written statement and reply, which was granted. Replication and rejoinder were ordered to be filed before the next date of hearing, and the case was fixed for 14.12.1989.
22. On pleadings of the parties being completed, the parties were directed to admit and/or deny the documents before the Deputy Registrar. Admission and denial was completed on 28.2.1990, and arguments commenced on this application on 17.7.1990.
23. On behalf of the plaintiff Mr. R.K.P. Shankardas has taken me through the plaint and the documents that have been filed by the plaintiff for the purposes of showing that the name "Apple Computers" has become associated in the mind of the public in America, internationally, and even in India, with the computers which have been made by the plaintiff company. Mr. Shankardas states "Apple 1 Computer" was sold in a kit form. "Apple II Computers" were made as personal computers. Both the com-popularity of the personal were well received by the public, with the computers, even the largest of the companies, started manufacturing personal computers. Information regarding "Apple Computers" is stated to have come to India as a result of exports of "Apple Computer" products to India since the year 1977. Five distributors were appointed for "Apple Computers" in India prior to 1984-85, and a sole distributor in 1985, namely, Raba Contel Pvt. Ltd. In addition, global advertising for "Apple Computer" is stated to have been done in international magazines, newspapers and in Indian newspapers and magazines. "Apple Computers" also participated in an exhibition at Bombay. The Indian magazines in which "Apple Computers" appeared, are mentioned as "Data Quest", and foreign magazines like "Times", "Newsweek" etc. Copies of these have been filed along with the plaint. In view of the aforesaid publicity, Mr. Shankardas says that the plaintiff's corporate name and trading style "Apple Computers" had become well known.
24. Mr. Shankardas states that the word "Apple" and the word "Computer" are the words of ordinary English language, which the plaintiff was first to string together, and use the combination in its corporate name, and being the first one to use the two words "Apple" and "Computer" together, owing to the publicity by advertisement, by word of mouth, in the magazines and newspapers to persons interested in computers, the word combination "Apple Computers" came to be associated solely with the plaintiff. He referred to a judgment of a single judge, (Computervision Corporation v. Computer Vision Ltd.), Rep. as 1975 RPC
171. In this case Justice plowman held that two words "Computer" and "Vision" were common words, but they had never been used together, either as a name of a company, or to describe a produce prior to the adoption of the said two words by the plaintiff, i.e., "Computervision Corporation", like the present one, an American Corporation.
25. It is to be noted that the said case reputed in 1975 RPC 171 was a "quia timet" action. In other words, the defendant had not started production or sale of its goods. The plaintiff therein, had sought an injunction to restrain the defendant from using the words "Computer Vision Limited", as their corporate name, and from selling the goods as goods of "Computervision". In that case Justice Plowman referred the concept of common field of activity of the plaintiff and the defendant. He came to the conclusion that keeping in view the activity which was being done by the plaintiff, and the activity which was proposed by the defendant, there was sufficient over-lap in the field of activity which is likely to cause confusion. Justice Plowman also found that the name of the defendant Vision Ltd." was not "Computer sufficiently differentiated from the words "Computervision Corporation", inasmuch as there was no difference to the ear, though he expressed the view that there may be a possible difference. He, therefore, came to the conclusion that the plaintiff had made out a case for injunction, which they sought, and granted the injunction restraining the defendant from selling their goods as goods of "Computer Vision", although the function to be performed by the electronic goods of the plaintiff and the electronic goods of the defendant was different. As the parties had agreed that the interlocutory matter be treated as trial of the action, perpetual injunction was ordered by the court.
26. The next case referred to by Mr. R.K.P. Shankardas is reported as Metric Resources Corporation v. Leasemetrix. Ltd. and Anr., (1979) FSR
571. The plaintiff in that matter (which was heard and decided by the Vice-Chancellor Megarry), was an American Corporation and was carrying on business in the United States of America and Canada in the hire of electronic equipment. They claimed that they had extensively advertised in the United States journals which were also circulated in the United Kingdom, and also had dealings with the companies in England, (as it turned out that they dealt with only one English company). The second defendant in the case was the person who did not begin business till March, 1979. Defendant No. 2 admitted that when he chose the name "Leasemetrix Ltd.", he was aware of the existence of the plaintiff, and of the name "Leasemetrix".
The suit was filed when defendant No. 2 refused to change the name of defendant No. 1. The suit was filed for passing off, and interlocutory relief was sought. The plaintiff had stated that they intended to enter the market in the United Kingdom. The Vice-Chancellor Megarry examined the affidavit of the defendant as to why he had chosen the name "Leasemetrix Ltd." in 1977, despite being aware that the name "Leasametric" was being used by the plaintiff. He expressed the view that "Leasametric" and "Lease metrix" are confusingly similar, but he observed that he need not say much about the explanation regarding choice of name, as there would be oral testimony and comment thereon at the trial. The contention of the defendants was that where a trader carries, on no business in England, anyone in England was at liberty to setup a rival business, because action of passing off protects the goodwill which cannot subsistly by itself, but only as an asset of business or part of that business, and because, and because goodwill can exist in a country where no business is carried on, was not accepted, as Vice-Chancellor Megarry was unable to get any satisfactory explanation as to why there must be a separate goodwill for each country. He referred to a large number of judgments, in which despite the fact that no business was carried on in the country in which the suit was filed, yet injunction was granted by court. Specifically these case were : Panhard-Levassor's case (1901) 18 RPC 405, Poiret v. Jules Poiret Ltd (1920) 37 RPC 177, Sheraton Corporation, (1964) RPC 202, C & A Modes case (1978) FSR 126, Globe Elegance case, (1974) RPC 603, and on the basis of these cases, came to the conclusion that reputation was sufficient to warrant issue of an injunction. In other words, if the reputation of a trader, trading or carrying on business in another country, had travelled to a country where he carried on no business, this reputation having been acquired On the basis of extensive advertisements and publicity, then another trader could be injuncted to protect the reputation of the trader who was not trading in the country. Vice-Chancellor Megarry, after referring to the case of A.G. Spalding and Brothers v. A.W. Gamage Ltd (1915) 32 RPC 273, expressed the view that, "I do not at present see why the filching of a reputation acquired in England should not be regarded as an injury, to a business carried on in Prance, and in France alone." On the consideration of prima facie case of the plaintiff, and the balance of convenience, the Vice-Chancellor Megarry ordered injunction to issue (which was suspended for a period of eight weeks), and directed that the 1st defendant is restrained until judgment or further order from carrying on the business of instrument hire under or by reference to the name and trading style "Leasemetrix Limited" or any other name or title which is confusingly similar to the plaintiff's business name and trading style "Leasametric".
27. The facts and circumstances of the above said case establish that it is open to court in a suitable case, taking into account the prima facie case, the strength of the plaintiff's case, the strength of the plaintiff's case, chance of its success at the trial, and the balance of convenience, to grant an injunction at an interlocutory stage despite the fact that the plaintiff is not carrying on business by adopting a name or trading style, which has been adopted by the plaintiff in another country.
28. Mr. R.K.P. Shankardas next cited a case decided by the Bombay High Court, reported as Kama Trading Co. and Ors. v. Gillette U.K. Limited, in which case Division Bench of the Bombay High Court came to the conclusion that an English company was entitled to(1988) 1 PL Rep. 135 restrain an Indian grader from using the registered mark "7 O'CLOCK" (registered with respect to safety razors, safety razor blades, shaving cream and shaving brushes) when the Indian trader was using the same mark "7 O'CLOCK" upon tooth brushes, despite the fact that the English company was not carrying on any business in India at the time the injunction was sought. The Division Bench of the Bombay High Court had noted that the English Company had, upon using the trade mark ''7 O'CLOCK" in relation to their goods since the year 1913, and had acquired extensive reputation of the said trade mark, and had obtained registration in India with respect to various goods falling in classes 21, 8 and 3, and further that the plaintiff company had entered into a license arrangement with the Indian Company for the purpose of manufacturing and selling safety razor blades in India under the trade mark "7 O'CLOCK" with the addition of the word "EJTEK". The plaintiff became aware in November, 1985 that tooth brushes, not being manufactured by the plaintiff, were being sold under the trade mark "7 O'CLOCK. As neither the tooth brushes not the container in which they were sold, bore the name or address of the manufacturer, the plaintiff filed a complaint with the police, discovered that the manufacturer was the defendant, Kamal Trading Company (appellant before the Division Bench. When despite the cease and desist notice to the defendant/appellant, they did not stop the use of the trade mark "7 O'CLOCK" with respect to tooth brushes, the plaintiff Gillette U.K. Limited, filed a suit in the Bombay High Court.
29. The defendant/appellant contended that since the year 1958 the plaintiff had not sold the goods under the trade mark "7 O'CLOCK" and, therefore, whatever goodwill or reputation they had, stood extinguished, and as the defendant had been carrying of business since 1982, they acquired goodwill with respect to the trade mark "7 O'CLOCK", and were entitled to carry on the business of sale of tooth brush under the trade mark "7 O'CLOCK". The single Judge granted interim injunction to the plaintiff. The defendant preferred the appeal to the Division Bench. The Division Bench dismissed the appeal. The Division Bench accepted the contention of the respondent/plaintiff that the trade mark "7 O'CLOCK" had acquired a world wide reputation, and they customer purchasing goods with that mark, would immediately connect the goods to the plaintiff who were the registered owners of the trade mark. The Division Bench also repelled the contention of the appellant that the reputation and the goodwill of the trade mark stood extinguished due to the restrictions on import of plaintiff's goods in India. The Division Bench expressed its dissent from the judgment referred to by the counsel for the appellant in support of the said proposition, known as Budweiser's case, Rep. as 1984 TSR 413. The Division Bench observed that:
"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 form 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 wide reputation."
30. The Division Bench gave example of names like "NATIONAL" "SONY" with reference to I.Vs., and observed that these are well known Japanese names, and that these I.Vs. and V.C.Rs. are not imported into India, and not sold in open market because of trade registrations, but it is not possible to suggest that the words "NATIONAL" OR "SONY" had not acquired a reputation in India. The Division Bench held that the goodwill or reputation of goods or marks does not depend upon its availability in a particular country. It is possible that a manufacturer may suspend its business activity in a country for a short duration, but that fact would not destroy the reputation or goodwill acquired by the manufacturer. After making the aforesaid observations, refused to follow the view in the Budweiser case, and dismissed the appeal filed by the defendant/appellant.
31. At this stage I may note that the Budweiser case has also been strongly relied upon before me by the defendant. That case seems to be very peculiar case, inasmuch as despite the fact that it was admitted that during the year 1962-73 on an average annually more than 5 million cans of beer were imported for use and sale in the U.S. Military and Diplomatic establishments the Court of Appeal came to the conclusion that such sale was not sale in England (confined as it was sale to U.S. Military and Diplomatic establishments), despite the fact that a large number of U.K. citizens partook the Budweiser beer at the U.S. Military and Diplomatic establishments, and despite the fact that large number of magazines circulated in England which had carried advertisement of Budweiser Beer made by the American Company. In the Budweiser's case, Mr. Justice Whitford regarded the aforesaid sales as sporadic and occasional sales, and observed, "I am quite unable to treat these sporadic and occasional sales as constituting in any real sense the carrying on by the plaintiffs of a business in this country". Speaking for myself, I have difficulty in asserting that sale of 5 million cans of beer is "sporadic sale". In respectful agreement with the Hon'ble Judges of the Bombay High Court, I would say that sale of that magnitude every year would be sufficient to establish a reputation.
32. The next case sited by Mr. R.K.P. Shankardas in support of the plaintiff's case is an unreported judgment of this court in Blue Cross and Blue Shield Association v. Blue Cross Health Clinic and Ors., Suit No. 2458 of 1988 Dated 5.9.1989 (Delhi).
33. The plaintiff in that case had contended that it was an American Corporation, engaged in health care field, and had used the words "Blue Cross", and a design of "Blue Cross" in the United States since December, 1934. The plaintiff had also contended that the said design and the words were registered in many countries in South America, Europe, Far Eastp2 and North America, and had also made an application in India for registration of the words "Blue Cross" and mark in India. . This Court (J.D. Jain, J.) held that the Blue Cross mark and the words "Blue Cross" were internationally famous in the health care field, and identifiable with the plaintiff, and that doctors and businessmen are familiar with the said trade mark due to their travels in the United States of America and participation in the American Medical Association. It was found that the defendant No. 2 Dr. Kusum Aggarwal had opened the Blue Cross Clinic in 1986. It was contended by the plaintiff that the Blue Cross trade mark had been adopted along with the identical logo script, in which the words "Blue Cross" were written. It was also contended that the defendants were thus making a misrepresentation to confuse and deceive the consumers into believing that the defendants were in some way connected with the plaintiff, and that they were passing off their business as that of the plaintiff. Injunction was sought by the plaintiff to restrain the defendants from carrying on any business activity under the trade mark/trade name "Blue Cross", or from using an identical or deceptively similar logo script to that of "Blue Cross", or using the device of a blue cross in relation to its business, or doing any thing else that might lead to passing off its business as that of Blue Cross. Rendition of accounts and delivery up for destruction of all the impugned material, was also sought.
34. This court found that the plaintiff had acquired ownership of the trade mark "Blue Cross" in India, that the defendants were involved in a similar field of activity as "Blue Cross", and that the defendants were passing off their business as that of "Blue Cross" and decree was granted ex parte.
35. Relying upon the aforesaid judgment Mr. R.K.P. Shankardas contends that Apple Computers are internationally known ; manufacture of computers, and its sale, and educating the people to use the Apple Computers is an activity which is undertaken by the plaintiff in the sense that every person who buys an Apple Computer, has to learn how to use it by educating/training himself to use it. That the defendants are carrying of business of Apple Computer Education, and therefore, the field of activity of the plaintiff, and the field of activity of the defendants in so far as they relate to educating people how to use Apple Computers, are the same. That the defendants have extensively advertised that they will educate people about using Apple Computers, and defendants are thereby representing that they are in some way connected with the plaintiff.
36. It is further contended by Mr. Shankardas that not only the text of these advertisement indicate a connection during course, of trade with the plaintiff, but the defendants have also adopted a device of a half bitten apple in some of their advertisements, which half bitten apple is used as a logo by the plaintiff's in connection with their trade.
37. Mr. Shankardas contends that half bitten apple is deceptively similar to the half bitten apple used as a logo by the plaintiff. It is not his case that the said logo is identical. He contends that the principles applicable in the case of Blue Cross are equally applicable to the instant case, inasmuch as the Apple Computers have international reputation, they have world wide sales including sales in India, and Mr. Shankardas, therefore, contends that the plaintiff is entitled to the injunction sought, restraining the defendants from using the word "Apple" or the words "Apple Computers" or "Apple Computer Education" in connection with the business of the defendants, as it has tendency to pass off the business of the defendants as business of the plaintiff. In any case it conveys to the public at large who come across the advertisements of the defendants, that the defendant are connected in the course of trade in some manner with the plaintiff.
38. Mr. Shankardas also refers to, and relies upon the judgment of the Supreme Court of Ireland in C. & A. MODES and Anr. v. C. & A (Waterford) Ltd. and Ors.12. In this case, the facts were that the plaintiff was a company incorporated in United Kingdom in the year 1953, and the second plaintiff was its Irish subsidiary. The first plaintiff had owned and operated numerous retail drapery shops in the United Kingdom, and had a considerable trade in that field. It had also operated a large branch shop dealing in the same business in Belfast, whether large numbers of citizens of the Irish Republic travelled to purchase the first plaintiff's goods from the shop in Belfast, and the first plaintiff had become known to the citizens of the residents of the Ireland by virtue of sales at the outlets of the plaintiff, and by virtue of the fact that the first plaintiff had marked the words and symbol "C & A" on its goods and its advertisements. That the plaintiff had advertised its goods extensively in the Republic of Ireland through newspapers, magazines and on T.V. channels which were available to viewers in the Irish Republic.
39. It was the case of the plaintiffs that they did not otherwise trade or conduct business in the Irish Republic.
40. The defendants had incorporated in the Republic of Ireland in 1972. Evidence was led by the defendants to show that they had started a small drapery business in Ireland, and used large motor van with the letter "C & A" printed on its sides and these letters formed part of the trading name of the first defendant.
41. It is note worthy that the defendants did not give any explanation, stating why and how these two words "C & A" were chosen by them for their trading style. Injunction was sought by the plaintiffs restraining the defendants from using the said words/letters "C & A" as part of their trading style, so as to prevent confusion of the business of the plaintiffs as business of the defendants.
42. The plaintiffs succeeded before the trial court. The appeal of the defendants was dismissed. It was held that the plaintiffs had a protectable reputation within the Irish Republic. Justice Henchy stated that the goodwill did not necessarily stop at a frontier ; that the defendants' motive in using the name and style "C & A" was to create a false impression of some association or connection with the plaintiffs, and thereby gain a commercial advantage from the resulting confusion in the mind of the public. The trial court observed as under :
"That no explanation of any description to explain why two persons called Michael Vincent O'Toole and Samuel McClure should adopt the name "C. & A." informing a company for the purpose of carrying on business in Waterford ; nor was any explanation of that afforded to me at any time during the trial."
43. The case was heard in the Supreme Court of Ireland by O'Higgins, C.J. Henchy and Kenny, JJ. The Chief Justice agreed with the judgment given by Henchy, J. Henchy, J. observed, "the name and symbol "C & A" were not chosen through any bona fide coincidence or mischance. They were plainly chosen with the intention that members of the public would be confused into thinking that the goods or business of the defendant companies emanated from the C & A ambience". Henchy, J. rejected the contention raised by the defendants that the plaintiffs cannot succeed unless they show that their goodwill is at least imperilled by the conduct of the defendants. It was contended that there was no reach of the plaintiff's goodwill which could be affected by the defendants' conduct. The plaintiffs have no shop or place of trading within the State (Irish Republic), and it is urged that the evidence tell short of showing that the orbit of their trading activities outside the State was capable of carrying with it a public awareness within the State of the import of "C & A" as a business name or symbol, and that, consequently, the defendants' conduct was incapable of invading their goodwill. Henchy, J. rejected this contention of the defendants, observing "it would be remarkable, considering the movement of people between this State (Irish Republic) and the United Kingdom, if there were not a significant number of at least intermittent C & A customers in this State. The evidence also showed that there has been massive advertising of C & A goods on television and in some of the most widely read British newspapers and magazines circulating in the Republic of Ireland, as well as in Northern Ireland newspapers. The Belfast shop draws a not inconsiderable number of its customers from the Republic. The C & A organisation recruits staff from the Republic. In 1975, one factory in Cork manufactured 8,50,000 items which were sold in the C & A shops." Henchy, J. further observed ; "Can it be said in these circumstances that, because the plaintiffs have no direct retailing outlet in the Republic, they have no protectable goodwill in the Republic ? In my opinion, the answer is "No.', Goodwill does not necessarily stop at a frontier. Whether in a particular area a plaintiff has a goodwill which is liable to be damaged by the unlawful competition resulting from passing off is a question of fact and of degree. What has to be established for the success of a plaintiff's claim in an action such as this is that by his business activities--be they by direct selling within the State or otherwise he has generated within the State a property right in a goodwill which will be violated by the passing off. It is true that there is authority for the proposition that a plaintiff's reputation which owes nothing to user in this State is not sufficient to support a passing off action (Alain Bernardin et Cie v. Pavilion Properties Ltd.13, but, as is stated in Kerly's Law of Trade Mark and Trade Names (10th ed., p. 386), it difficult to see any rational basis for the distinction. If there are in this State sufficient customers of a plaintiff's business to justify his claim to have a vested right the retain and expand that custom, then there is ample authority in principle and in the decided cases, for the conclusion that, no matter where the plaintiff's business in based, he is entitled to be protected against its being taken away or dissipated by some one whose deceptive conduct is calculated to create a confusion of identity in the minds of existing or potential customers."
44. Kenny, J. agreed with the trial judge's conclusions. In a separate judgment he stated, "The defendants urged that this principle should be limited to cases where the well-known company had acquired some of its goodwill in the Republic by user or trading in this country. I do not see any reason why this limitation on the general principle should be imposed today when extensive advertising can be carried out by television, radio and newspapers--all of which go into almost every home in this State. Programmes broadcast by B.B.C. 1, B.B.C. 2 and U.T.V. are regularly looked at on television sets in this State. I suspect that the idea that some of the goodwill must be acquired by user or trading in the country where it is sought to protect it comes from the days when television and radio where unknown and when international trade in domestic goods was not as extensive as it is today. It is not an appropriate rule for this age and as no authority binds me to accept it, I refuse to do so".
45. Another case cited by Mr. R.K.P. Shankardas in support of plaintiff's case is an unreported judgment of the Division Bench of Bombay High Court in (Centron Industrial Alliance Ltd. and Anr. v. Gillette U.K. Ltd.14 . The facts of this case were that Gillette U.K. Ltd. had filed a suit against Centron Industrial Alliance Ltd. and Everkeen Blade Co., who had infringed the plaintiffs' trade mark "7 O'CLOCK" with respect to safety razor blades. It was the contention of Gillette U.K. Ltd. that prior to the year 1958, they had extensively used their trade mark in India, and had spent substantial amount and expenditure in connection with advertising of the said goods. Owing to the restrictions imposed by the Government of India after 1958, the plaintiffs were not able to use the mark upon the goods, where after sale and shipment of the goods to India was on a very restricted scale. It was the case of the plaintiff that after 1982 they had entered into a collaboration arrangement with the Indian company, and made slight alterations in their mark "7 O'CLOCK" by addition of the word "Ejtek". It was the plaintiffs' case that they became aware in November, 1985 that the first defendant company had started selling safety razor blades in wrappers and tucks, having figure and word "7-Up" together with a device of a clock face with the clock hands at "7". The Court found the similarity in the way in which the plaintiff used to mark their goods "7 O'CLOCK", and the way in which the words "7-Up" were written by the appellant/defendant. The Court noted that the substantial argument on behalf of the appellant/defendant was that the plaintiffs' mark was not used in India on and after 1958, and whatever reputation and goodwill existed with respect to the trade marks "7 O'CLOCK" blades "must be deemed to have been lost by the time the defendant's blades were put in the market".
46. While dealing with this contention, the Court noted that the trade mark related to a consumer article--such as safety razor blades--and had noted that publicity does not take place merely by advertisements in India. The Court noted that such items are advertised in foreign newspapers and magazines, and these newspapers and magazines are circulated in India, and are freely imported and presumably read. Apart from this, the court took judicial note of the fact that large number of Indians go out temporarily to other countries, mainly to the Middle-East countries. Who, therefore, had the opportunity to use the plaintiffs' blades. These persons do not permanently settle down abroad and return to India after their two-year or three-year stay. Even if extra legal channels by which such items are circulated in several large cities, particularly coastal ones, or cities having air-ports, are to be ignored, the court was of the view that it would not be proper to hold that after 1958, the plaintiffs lost their reputation and goodwill in the name or trade mark, and that the plaintiffs' name or trade mark could not be violated by the defendants, by their adopting the names, devices, get-ups and colour combination which were similar to the ones which were being used by the plaintiffs in connection with the packing of their goods.
47. The Division Bench referred to Alian House Bernardin Et Co. v. Pavilion Properties Limited Cerazy Horse's case, (1967) R..P.C. 581 and held that keeping in view the nature of the establishment which was an eating and drinking place--Section--, and the nature of the goods involved in the case before the Division Bench--Safety Razor Blades--the court was not inclined to adopt the statement of law which was adopted in the Crazy Horse's case, to the case like the one before the Division Bench.
48. The Division Bench also referred to the "Advocaat" case, "Advocaat" was a drink.
49. This case is reported as Erven Warnink B.V. and Anr. v. J. Townend & Sons (Hull) Ltd. and Anr., (1980) R.P.C. 31 and the passage in Star Industrial Co. Ltd. v. Yap Kwee Kor, (1976) FSR 250 page 269. Specific reference was made to the observations of Lord Diplock in Star Industrial & Co. case, which reads as under :
"Whatever doubts there may have previously been as to the legal nature of the rights which were entitled to protection by an action for passing off in courts of law or equity, these were laid to rest more than 60 years ago by the speech of Lord Parker of Weddington in A.C. Spalding & Bros. v. A.W. Gamage Ltd. with which the other members of the House of Lords agreed. 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 person's goods as the goods of another. Goodwill as the subject of proprietary right 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.."
50. The Division Bench of the Bombay High Court did not accept the above decision of the Privy Council. The Division Bench held; "It is not possible for us at this stage at least to accept the submission that there was no user at all in India or not sufficient user as to amount to destruction or abandonment of the plaintiffs' goodwill and reputation. It is now equally not possible to accept the submission that the goods of the plaintiffs had lost their distinctiveness and had ceased to be associated in the minds of possible consumers with the goods of the plaintiffs on account of the policies of the Government of India as a result whereof the commercial user in India had become restricted. It is needless to refer to some other cases to which our attention was drawn at the Bar on this point since we have already held that each case will depend upon individual facts and the type of product (in the wider sense) in respect of which relief is claimed".
51. The Bombay High Court in the 7 O'CLOCK case took note of the fact that the defendants are recent entrants, and held that the plaintiffs were entitled to injunctions which were sought by them. On the question of delay the Division Bench stated that the plaintiffs had become aware of the infringement in November, 1985, filing of the suit in February, 1986 and taking the notice of motion in March, 1986 was not delay as would amount to "substantial delay" or "laches", which would preclude the court from granting the relief of injunction to the plaintiffs.
52. From the cases cited and referred to in the judgments referred to above, it appears that most of the Judges in England have continued to abide by the meaning of the word "goodwill" which was given by Lord Macnaghten in the case of Commissioners of Inland Revenue v. Muller & Co.'s Margarine Ltd.18 to the effect that goodwill is "the attractive force that brings in custom". The use of the word "custom" appears to have further extended the requirement of injury to goodwill in passing off action to make it essential in England for trader to carry on business in England. It continues to be the view of the courts in England that unless a trade is carried on within England, within the jurisdiction of the courts, the court shall not hold that there is goodwill in England.
53. As has already been noted by the Division Bench of the Bombay High Court, and the Irish Supreme Court, it is time to reconsider, that definition of goodwill given by Lord Macnaghten, in so far as the same is applicable to passing off actions. I venture to suggest that in passing off action goodwill should be considered to be reputation of a manufacturer/trader which induces the acquisition of the article manufactured by a potential customer. In case of passing off of services, it would be the reputation of the person who provides services which induces availing of such services, reputation thus attaching itself to an article or service provided.
54. Mr. Shankardas contends that the people in India are aware of the Apple Computers that the reputation of the plaintiff has travelled in by diverse ways--by sale of computers, by advertisements in magazines available in India, by word of mouth publicity--to India. Besides this he says that M/s Raba Contel were the agent of the plaintiff in India. It is contended by the plaintiff that computer being an article of commerce which finds wide use and has various applications, as a number of manufacturers of personal computers which are known to the traders are limited, reputation of Appl(sic) personal computer manufacturer has travelled beyond frontier of Ameri(sic) to other places and that the apple computer, a product and the manufacturer, are both known in India.
55. It is contended by Mr. Shankardas that the words "Apple" and "Computer" arc common English language words. Apple is a fruit, and computer is also a common English word meaning an article which is capable of computing. He is correct in slating that whereas no person can claim exclusive monopoly over the word common language word of English like "Apple" and "Computer". The two words in combination as "Apple Computer", by virtue of manufacture of Apple Computers by the plaintiff, and the large sale and publicity, it is contended, have acquired a meaning which is distinctive of the goods of the plaintiff. He contends that the two words combination of Apple and Computer that is Apple Computer has no meaning in the English language apart from representing an article which is manufactured by the plaintiff. He therefore, contends that the words Apple Computer because of long use over the period of time and publicity, and public association, has acquired secondary significance, and this word combination is distinctive and means the article manufactured by the plaintiff. To make good his contentions, Mr. Shankardas points out some judgment which makes a distinction between the mark based upon words which are ordinary language word, and marks which are termed as fancy words.
56. I also had occasion to deal with this distinction in a judgment delivered by me and reported as Globe Super Parts v. Blue Super Flame Industries AIR 1986 Delhi 245. (An appeal against this judgment R.F.A. (OS) 11 of 1986 was dismissed on 20.2.1986 by Kapur & Goswami, JJ. ; and the Supreme Court of India dismissed a Special Leave Petition against the order dismissing the said appeal). In that case two words which were ordinary words of English language, by virtue of being converted as a combination into a single word, were held to have become a fancy word combination of the two words put together acquired distinctiveness as representing the goods manufactured by the plaintiff.
57. The two ordinary English words in question in 1986 Delhi 245 were SUPER and FLAME, I held that their conversion into a single word SUPERFLAME was a fancy word. I held that this two words combination, which in their origin were common English words, had come to be identified with the product of the plaintiff in that case.
58. Mr. Shankardas also referred McCain International Limited v. Country Fair Foods Limited and Anr., (1981) RPC 69. This case related to frozen potatoes chips. (In India these potatoes chips are called finger chips. Potato wafers are, however, known as potato chips in India). The plaintiff in the said case assorted that they had started marketing "Oven Chips" which did not need to be fried in heated oil. They were to be cooked in oven, and could also be grilled. They claimed that oven chips represented their goods alone, and that the word combination of two nouns made the goods distinctive in such a way that only their goods could be known as "oven chips" as they were the first to produce and market their oven chips.
59. The court of Appeal which heard the matter came to the conclusion that notwithstanding the fact that the two word combination "Oven Chips" comprises of two nouns, could not be combined grammatically in English language, the word combination was a distinctive, being descriptive. The plaintiff having chosen to add on their own name to the said two words by marketing the said goods as "McCain oven chips", the distinctive chips got identified as "McCain Oven Chips" by the addition of the plaintiff's name thereto. And as such the addition of the words "Country Fair" to the word oven chips, by the defendant and word "Birds Eye" to the word "Oven Chips" identified different manufacturers of the same goods namely, "oven chips".
60. The word "Oven Chips", it was held, has not been exclusively used for such long duration as to have acquired a secondary meaning sufficient for exclusive appropriation by the plaintiff. The Court further held that the fact that the plaintiff chose to add their own name to "McCain" to chips it indicated that the words "oven chips" were something descriptive and being descriptive they were not capable of exclusive appropriation. It appears to me that the result and the conclusion of the court would have been different if the word "McCain" had not been added to "Oven Chips".
61. The Court of Appeal distinguished the case Spalding and Bros. v. Carnage Limited, (1951) 32 RPC 273. The words "Orb football" was distinctive inasmuch as nobody would associate the word "Orb" with football and as the word "Orb" could not be associated with football to call a football "Orb football" was to call a football by a fancy name which had become distinctive of the plaintiffs goods.
62. The Court of Appeal (Templeman, J.) pointed out that distinctive name does not indicate the source of the goods, but the nature of the goods. Fancy words indicate the source of the goods, just like ordinary words, which had acquired secondary significane, indicate source of the goods.
63. Mr. Shankar Das thereafter has also referred to a judgment of this court (Sapra, J.) Sarabhai International Ltd. v. Sara Exports Inter national, AIR 1988 Delhi 134. As far this case is concerned it must be noted that the word SARA was registered mark and the suit filed by the plaintiff was for infringement of trade mark. It was held that passing off action arose because the defendant had adopted the word SARA as a part of trading stayle, not with respect to goods. The explanation of the defendant was that he adopted the word SARA because his daughter's name was SARA, was not accepted and permanent injunction was granted.
64. In the instant case, the plaintiffs say that Apple Computers are well known world wide including India. Use of the words "Apple Computers" in the trading style is passing off. It is also said that use of the words "Apple Computers" in advertisements, advertising Apple Computer education as a service is also passing off.
65. It is contended by Mr. R.K.P. Shankardas that in view of the fact that the words "Apple Computers" are associated world wide with the plaintiffs, the said words ought not to be permitted to be used by any person including the defendants in connection with the computers or allied products and services, including advertising and computer education. It is further submitted by Mr. Shankardas that the Apple Computers are so inter-twined with the training or education to enable a person to use computers that it cannot be said that the field of activity in connection with giving training for use of computers--calling it "Apple Computer Education" and use of the word "Apple" upon computers and the manufacturer of computers are different. He says that Apple Computers as an article, and education or training for using Apple Computers is part of one and the same field as without training or education nobody can make use of Apple Computers at all. In this view of the matter, as the defendants are using the words "Apple Computer Education" in connection with advertising of their services and inextricable link is established with the Apple Computers in the mind of persons who seek to train themselves into using computers. The defendants arc, therefore, passing off, and holding out that the connection exists between their education and the plaintiffs' Apple Computers. I agree.
66. It is submitted by Mr. Shankardas that injunction ought to issue against the defendants ; that the plaintiffs have made out a prima facie, and that the balance of convenience is also not in favor of the defendants for the reason that the defendants started their operations only about five years ago, they continue to get their customers as a result of the advertisements which are published, and it simple enough matter to so compose their advertising material so that there is no reference to Apple Computer Education therein. He also says that it has to be borne in mind that the defendants do not carry out any industrial activities of manufacture or production of computers, but of leasing and education only. He, therefore, says that since the activities of the defendants in so far as they relate to computers, changes can be made without causing any inconvenience or harm or injury to the defendants.
67. Mr. Shankardas also submits that one has to take into account the conduct of the parties. He asserts that originally the defendants had indicated by publication of advertisements, which came to the notice of the plaintiffs, that they intend to carry on business in India as Apple Industries and Computers. Upon receipt of information that such a Co. was proposed to be incorporated, the plaintiffs lost no time to notify the defendants that adopting such a trading style would impinge upon the rights of the plaintiffs, and a notice dated. 17.1.1986 was sent to the defendants to cease and desist from using "Apple" as a part of its corporate "name and/or representing that it was associated or connected with the plaintiffs in any mariner. In the reply to counsel's notice, counsel for the defendants by his letter dated 18.1.1986 raised a host of 'innocent questions', and challenged the exclusivity claimed by the plaintiffs in the use of the word "Apple" in computer business. Thereafter meetings were held between the plaintiffs' and defendants' attorneys, and correspondence was exchanged. Without prejudice, offers were made, but all negotiations ended in stalemate.
68. However, the defendants on their own changed its corporate name from "Apple Leasing and Computers Ltd." to "Apple Leasing and Industries Ltd.". The word "Computers" was eliminated from the corporate name, and substituted by the word "Industries".
69. It appeals that the word "Apple" and the word "Computer" was not put together, next to each other in the name in which the defendants had incorporated themselves only with a view to ensure that there is no obvious association of the defendants with the plaintiffs. Had such a course of putting the words "Apple" and "Computer" immediately next to each been adopted by having the corporate name of the plaintiffs as "Apple Computers and Leasing Ltd.", been adopted the case of the plaintiffs regarding passing off would have been obvious. It appears that, with a view to could the issue somewhat, the word "Apple" was separated by the words "Leasing and" in their corporate name when they called themselves "Apple Leasing and Computers Ltd.".
70. It is not in dispute that it is only after the notices were exchanged between the parties, and meetings held, which, as stated above, resulted in a stalemate, that the name of the defendant was changed to ' Apple Leasing and Industries Ltd.", eliminating the use of the word "Computers". It is noteworthy that although the defendants have to date not manufactured a single computer, manufacture of computers is one of their aims and objects in the Articles of Association.
71. In this context, it has to be remembered that all the parties to the Articles and Memorandum of Association of the defendants are Indians, that English is not the mother tongue of any one of them, although all of them must be familiar with it, being a foreign language, and in view of the fact that Apple Computers pre-existed because of the notices, at least the existence of Apple Computers--plaintiffs, was within the knowledge of the defendants. They had to explain why they were adopting a foreign language word "Apple" as a part of their corporate name. Computers being what they are, have become a part of languages other than English or American also.
72. In India a person who is conversant with English language, would be able to identify in his mind what the article is, when the English word "Apple" is used. It is a fruit. Like in all matters relating to trading style, and alleged passing of actions, it is necessary for the defendant to explain why they have word "Apple" in their trading style, and why they have used the word in their advertisements for computer education. In the pleadings there is no explanation as to why the defendants chose the word "Apple" in their trading style when they intended to manufacture computers and when they intended to impart computer education. It appears that they used the word "Apple" in connection with their trading style, in the first instance, by giving a suggestion of connection between "Apple Computers" and their education, and when notices were received, requiring them to cease and desist they on their own, changed to "Apple Leasing and Industries Ltd." continuing to intend to carry on computer education, and use the words "Apple Computer Education" in their advertising material.
73. In these circumstances, it is stated that the user of the word "Apple" in the trading style and "Apple Computer Education" in their advertising materials is not bona fide, it is not honest and concurrent user, it would be appropriate to issue injunction against the defendants, restraining them from using the words "Apple Computers" in their advertising material, and using the word "Apple" in their trading style.
74. Mr. Iqbal Chagla who has very succinctly put forth the case of the defendants, states that the plaintiffs arc not entitled to the relief of injunction which has been sought, and a number of contentions have been raised by him.
75. He states that in the first instance the plaintiffs have to make out a prima facie case for the grant of injunction, and the plaintiffs have failed to make out a prima facie case and, therefore, they are not entitled to the injunction which they seek.
76. He also states that laches and delay of the plaintiffs in filing this action is fatal to the plaintiffs' action as in this case there is a delay of three or four years between the time when the objection first raised, and the act of filing of the suit.
77. He also states that the balance of convenience is not in favor of the plaintiffs, and the balance of convenience is in favor of the defendants.
78. As regards the prima facie case, Mr. Iqbal Chagla points out that the instant action is a passing off action and not infringement of any registered trade mark, for the reasons that the words "Apple Computers" are not registered in India. Infringement action is instituted for protection of registered marks only.
79. Mr. Iqbal Chagla contends that the sine qua non of a passing off action is a protectable goodwill.
80. He contends that reputation of a particular manufacturer, or of a particular product by itself is irrelevant. He contends that reputation with respect to a manufacturer or an article in vacuum, is not protectable by a passing off action only goodwill supported by business is. Thus it is only when business is carried on in India, that protectable goodwill, can be said to exist. As will be seen later, Mr. Iqbal Chagla strongly relies upon the judgments of the Court of Appeal in the Budweises's case (supra) the judgment of the Privy Counsel in Star Industrial Company Ltd. v. Yap Kwee Kor, 1976 F.S.R. 256 and "Advocaat" case (supra).
81. It is the contention of Mr. Iqbal Chagla that the plaintiffs have conceded that the word "Apple" can be used in the corporate name of the defendant. This, he says, is borne out by the correspondence which was exchanged between the parties. The counsel for the defendant has taken me through the notices, and their replies which was exchanged between the counsel for the plaintiffs, and the counsel for the defendants, and it is the contention of Mr. Chagla that the plaintiffs in the plaint, do not object to the use of the word "Apple" by itself in their corporate name. What their objection is that if the defendants manufacture computers, then they should not use the word "Apple" in their corporate name. For this purpose, reference was made to the notice dated 7.9.1988, sent by M/s. Remfry & Son to the defendants. This notice in terms, states that without prejudice to the rights of Apple Computer Inc., the defendants were asked to cease and desist from using the words "Apple Computers" or "Apple" or any word deceptively similar thereto, in any manner, whatsoever, in relation to or purported business of their "Computer Education". Mr. Chagla says that in the notice dated 17.1.1986, sent on behalf of the plaintiffs by M/s. Mulla & Mulla & Craigie Blunt & Caroe, Solicitors, objections have been taken to the use of the word "Apple" in the corporate name. This notice was replied to by M/s. Firdosh & Co. by their reply dated 18.1.1986. In that reply, some information was sought by the defendants' solicitors with regard to the application for registration of the word "Apple" in India, place of the business of the plaintiffs, permission by Reserve Bank of India to carry on business in India, registration of the plaintiffs in India under Section 592 of the Companies Act, volume of sales effected in India during the past 5 years, value of the products imported in India bearing the trade mark ''Apple" which was purchased by the persons in India, name and particular of each products sold in India by the plaintiffs. It was also stated in this reply that the defendants do have never claimed, nor intend to claim that they are, in any manner, associated with the plaintiff company. It was also denied that the word "Apple" used by the defendants, was in any manner, calculated to pass off the defendants as in some way associated with the plaintiffs. It was also denied that the use of the word in "Apple" by the defendants would damage or cause loss to the reputation and goodwill of the plaintiffs. It was stated in this reply that the name of the defendant company "Apple Leasing and Computer Ltd." was adopted after the Registrar of Companies had said that the raid name was available for being adopted. After the reply of M/s. Firdosh & Co. dated 18.1.1986, there were some meetings between the counsel for the parties at Bombay, where after counsel for the plaintiff at Bombay informed by letter dated 1.2.1986 that upon instructions received from the plaintiffs that the plaintiffs were not agreeable to the defendants' continuing to use the word "Apple" as part of their corporate name, while at the same time dealing in the business of computers. The solicitors for the plaintiffs at Bombay, required the defendants to delete the word "Apple from their corporate name, and if they desire, to retain the word "Apple" in their corporate name, they should not carry on the business of dealing in computer or allied products as it was likely to cause confusion.
82. By their letter dated 7.3.1986, M/s. Firdosh & Co., solicitors of the defendants, informed the solicitors of the plaintiffs that the defendants could substitute the word "Computer" in their corporate name with the word "Industries" or "Enterprises". It was stated on behalf of the defendants that they would not delete the word "Apple" from their corporate name, nor would they agree not to carry on the business of dealing in computers. This was represented by the solicitors for the defendants by their letter dated 7.3.1986. By their letter dated 7.3.1986, the defendants gave 15 day's time to the plaintiffs to agree to the proposals. To this, the solicitors for the plaintiffs responded by saying that 15 days' time was too little and that they have sent both the letters of 7.3.1986 to their clients for obtaining instructions. By their letter of 31.5.1986, the plaintiffs insisted again that the word "Apple" should be dropped from the corporate name, and if the defendants wanted to retain the word "Apple" in their corporate name, they should not carry on business of dealing in computers or allied products. It was notified by the solicitors of the plaintiffs that if they did not comply, then action shall be taken after waiting for a fortnight.
83. In their letter 19.7.1986 to the solicitors for the plaintiffs, the solicitors for the defendants pointed out that the word "Apple" has not been registered as trade mark in India. Nor were the plaintiffs carrying on any business in India. Nor do they sell or have ever sold any products under the trade mark "Apple" in India. The defendants intimated the plaintiffs that in case any legal proceedings where taken against their clients, the same shall be defended by the defendants at the plaintiffs' risk, costs and consequences.
84. It is Mr. Chagla's contention that despite letter dated 19.7.1986, no action was initiated by the plaintiffs till the instant suit was instituted on 15 10.1989. He, therefore, contends that there is a great deal of delay in filing of this suit.
85. It is Mr. Chagla's contention that after the assertions which were made in the letter dated 19.7.1986, as there was no registration of the word 'Apple" in India, there was no exclusive right in the plaintiffs to restrain to use the word "Apple" in India, and to restrain anybody from having the word "Apple" in the corporate name.
86. Mr. Chagla says that after the letter dated 19.7.1986 from July 1986 till September, 1986, the defendants carried on business in the corporate name of "Apple Leasing and Computers", and that unilaterally, in September, 1986, the word "Computers" was dropped from the corporate name of the defendants, and the name was changed to "Apple Leasing & Industries", and thereafter the defendants continued to carry on business of leasing and computer education. (As an aside, on query being made, Mr. Chagla informed me that the leasing business comprises of approximately 55% of the revenues of the defendants, and 45% of the revenue of the defendants comes from the computer education. As far as the computer education business is concerned, the defendants, according to Mr. Chagla, give courses of 6 months, 12 months, 15 months and charges for six-month course is Rs. 4,900, 12 month-course is Rs. 11,900 and 15 month-course is Rs. 14,900 ; that the defendants have got 11 centres where computer education is imported, and the total number of students are about 7442).
87. It is the contention of Mr. Chagla that owing to the non-response, after the notice dated 19.7.1986, the defendants continued to carry on business of importing computer education, and with the passage of time, there was acquiescence in carrying on of computer education business, and owing to laches in not taking action waiver of the rights, if any, of the plaintiffs.
88. It is the contention of Mr. Chagla that even in 1986 the plaintiffs should have known that the computer classes of the defendants will be known as "Apple Computer Classes" in view of the fact that the corporate name of the plaintiffs was "Apple Leasing & Industries" which name was subsequently changed to "Apple Leasing & Industries". It is Mr. Chagla's contention that the computer classes have been conducted by the defendants since 1985, advertisements were published with regard to the classes, yet no objection was taken to the use of the words "Apple Computers" with respect to the classes of the defendants, 1986, and, therefore, it is not open to the plaintiffs to object to the same in the instant suit.
89. Another contention of Mr. Chagla is that in order to succeed in the suit it is necessary for the plaintiffs to show that there is common field of activity keeping in view the activity of the plaintiffs and the activity of the defendants. It is his contention that making and selling of computers is one field of activity, which is quite distinct from holding classes, imparting education with regard to computers.
90. It is his contention that no adverse inference against the defendants can be drawn from the change of name from "Apple Leasing and Computers" to "Apple Leasing & Industries". He states that in 1986, the plaintiffs made no claim to restrain carrying on of computer education business, but the plaintiffs do say so in the suit filed in the year 1989, when notices were sent by M/s. Remfry & Son on 7.9.1988 and 9.1.1989. He further says that there was no complaint made by the the plaintiffs regarding the letter "A" in the advertisements regarding computer education of the defendants. It was not complained that the letter. "A" in the said advertisement represents half of an apple, whereas a complaint, that the said letter representing half-apple is being made now in the suit.
91. It is contended by Mr. Chagla that since 1986, the plaintiffs have permitted the defendants to develop their business, and it is not open to the plaintiffs by the instant suit to now protest.
92. It is contended by Mr. Chagla that in order that there be protectable goodwill, it is essential that there be sales in India, and mere information or knowledge that a particular product exists elsewhere other than India, would give no cause of action to any person in India. Thus he says that the plaintiffs cannot restrain the defendants from using the words "Apple Computers" in connection with their computer education advertisements. He refers to and relies upon what is stated by Lord Diplock in the Advocaat's case (Erven Warnink B.V. and Anr. v. J. Townend & Sons, [Hull] Ltd. and Anr., (1980) RPC
31. That case was decided by House of Lords, and the judgment begins at page 89. Lord Diplock in his judgment noted that the case or Spalding v. Gamage (1915) 32 RPC 273, 284, and the latter cases make it possible to identify five characteristics, which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in quia timet action) will probably do so.
93. Mr. Chagla says whereas, in the instant suggests (1), (2) and (3), may be covered, but tests (4) and (5) are not, inasmuch as the defendants are not in the same field of activity, and inasmuch as the plaintiffs are no carrying on any business in India.
94. It is contended by Mr. Chagla that it has been conceded by the plaintiffs that the defendants can use the word "Apple" in their trading name and style, and for this purpose he invites my attention to paragraph 17 of the plaint. Paragraph 17 of the plaint reads as under :
17. Remfry & Son responded to the Defendant's Attorney's letter vide its letter dated January 9, 1989. Remfry & Son clarified that the Plaintiff now had no objection to the Defendant's corporate name--'Apple Leasing and Industries Ltd.' but was complaining about the objectionable style of advertising and selling of its business of computer education by using the words "Apple Computer"--two words in conjuntion. The underlying motive, doubtless, being to cash in on the Plaintiff's worldwide reputation and thereby deceive the trade and public into thinking that the Defendant was associated with the Plaintiff in some way.
95. The defendant's Attorney's responded vide their letter March 3, 1989 again falsely asserting the Defendant's exclusive rights to the word "Apple".
96. Mr. Chagla says that prayer (a) in the plaint which reads as under :
(a) The defendant, its partners, directors, representatives and agents restrained by a decree of permanent injunction from using the words "APPLE COMPUTER" or any other words similar thereto as their trading style or as part thereof.
is somewhat contradictory with each other ; whereas paragraph 17 refers to the word "Apple" only, prayer (a) talks of "Apple Computer" in the trading style of the defendant. It is his contention that prayer (a) enlarges what is stated in paragraph 17.
97. Mr. Chagla clarifies that since 30.8.1989, the name of the defendant is "Apple Industries" whereas the suit which was filed in October, 1989, makes out that the defendant's name is continuing to be ''Apple Leasing and Industries Ltd.". Mr. Chagla says that the name of the defendant company was "Apple Leasing and Computers till 30.8.1986, when on 1.9.1986 the name of the company was changed to Apple Leasing and Industries". The name of the company was changed from "Apple Leasing and Industries" to "Apple Industries Ltd." on 30.8.1989.
98. Prayer (b) of the suit seeks to restrain the use of the words "Apple Computer", or any other words deceptively similar thereto, as a part of the legend APPLE COMPUTER EDUCATION in relation to the defendant's business of computer education, or otherwise in the course of trade.
99. Mr. Chagla says that the prayers made in the plaint and the prayers made in the interim application are different. The prayers made in I.A. No. 7678 of 1989 by the plaintiff, seek to restrain the respondent, its directors partners, distributors, representatives, servants and agents from using the words "Apple". "Apple Computer" or any other words similar thereto as trading style or as part thereof. This relief in prayer (i) of the application is wider than the relief which is sought in the plaint.
100. Being a relief which is wider in the plaint, Mr. Chagla says that in view of (Cotton Corporation of India v. United Industrial Bank Ltd. and Ors. (1983) 4 SC 635 such enlargement of relief is not permissible.
101. It is contended by Mr. Chagla that passing off action is an action in deceit ; that an action in deceit makes the user in India a necessary pre-condition ; that goodwill will came into existence after there is user, and not otherwise ; and the reputation will come into being as a result of carrying on business activity cither with respect to an article or with respect to rendering of service. Passing off suit is not based upon a statutory mark. The suit is based upon non statutory reputation, and is a common law remedy. He contends that in the instant case, the plaintiffs are objecting to a form of advertisement. They are not objecting to the word "Apple", nor to the trade name "Apple". As regards to the nature of the passing off action, Mr. Chagla refers to the observations made in (1980) R.P.C. by "Lord Diplock at page 91. Lord Diplock noted that Warnink was granted an injunction, restraining Keeling from selling or distributing under the name or description "Advocaat" any product which does not basically consists of eggs, and spirit without any admixture of wine. The above findings accepted by the Court of Appeal, were questioned before the House of Lords. Lord Diplock stated that :
"They seem to me to disclose the case of unfair, not to say dishonest, trading of a kind for which a rational system of law ought to provide a remedy to other traders whose business or goodwill is injured by it.
Unfair trading as a wrong actionable at the suit of other traders who thereby suffer loss of business or goodwill may take a variety of forms, to some of which separate labels have become attached in English law. Conspiracy to injure a person in his trade or business is one, slander of goods another, but most protean is that which is generally and nowadays perhaps misleadingly, described as "passing off". The forms that unfair trading takes will alter with the ways in which trade is carried on and business reputation and goodwill acquired Emerson' maker of the better mousetrap, if secluded in his house built in the woods, would today be unlikely to find a path beater to his door in the absence of a costly advertising campaign to acquaint the public with the excellence of his wares.
The action for what has become known as "passing off" arose in the nineteenth century out of the use in connection with his own goods by one trader of the trade name or trade mark of a rival trader so as to include in potential purchasers the belief that his goods were those of the rival trader. Although the cases up to the end of the century had been confined to the deceptive use of trade names, marks, letters or other indicia, the principle had been stated by Lord Langdale M.R. as early as 1842 as being : "A man is not to sell his own goods under the pretence that they are the goods of another man" : Perry v. Truefitt, 6 Beav. 66. At the close of the, century in Reddaway v. Banham, (1896) A,C, 199 it was said by Lord Herschell that what was protected by an action for passing off was not the proprietary right of the trader in the mark, name or get-up improperly used. Thus the door was opened to passing-off actions in which the misrepresentation took some other form than the deceptive use of trade names, marks, letters or other indicia ; but as none of their Lordships committed themselves to identifying the legal nature of the right that was protected by a passing-off action it remained an action sui generis which lay for damage sustained or threatened in consequence of a misrepresentation of a particular kind."
102. Mr. Chagla, therefore, contends that a mere name has no meaning, The name has to be accompanied by carrying on of business or trading. It is the contention of Mr. Chagla that principle laid down by Lord Diplock in 1980 R.P.C. 31 at page 91, has been approved by a Division Bench of the Bombay High Court in a case (Kamal Trading Co. and Ors. v. Gillette U.K. Limited). (supra) He states that in the case of 7 O'clock blades, there was actual business being carried on in India till 1958. In 1958, owing to stoppage of import, there was no regular business being carried on. However, owing to small quantities of 7 O'clock filtering in through various persons who had travelled abroad, and come back to India, the 7 o'clock blades manufacturers had retained a "residual reputation" and, therefore, the Division Bench of the Bombay High Court granted the injunction. In England, it is asserted by Mr. Chagla, relying upon the Budweiser's case (supra), it is necessary that actual business be carried on before it can be said that a protectable goodwill exists. Besides actually carrying on the business, the field of activity of the plaintiff and that of the defendant must be shown to be the same before an injunction can be issued in the matters of passing off, and when the fields of activity of the plaintiff and the defendant are different there can be no finding that there is passing off.
103. Mr. Chagla seeks support for his propositions also from the Star Industrial Co.'s case, decided Privy Council reported as  F.S.R.
256. This case had begun in Singapore and ended as an appeal in the Privy Council. The case was of a passing off action with regard to tooth brushes. Star Industrial Company had filed a suit against Yap Kwee Kor, trading as New Star Industrial Company in Singapore. The plaintiff asserted that it had manufactured tooth brushes in Hong Kong, and sold the same under "ACE BRAND". These tooth brushes were for many years prior to 1965, brought into Singapore from where they were re-exported to Malaysia and Indonesia. The plaintiff did not have registration with respect to the said "ACE BRAND" tooth brushes in Singapore. However, they were imported into Singapore with a characteristic get-up to which the prominent features were the words "ACE BRAND", and a letter device. In the year 1965, the Singapore government imposed import duly on tooth brushes, and the plaintiff stopped marketing and selling in Singapore.
104. The defendant firm, a company with the name similar to that of the plaintiff, started to market tooth brushes in a get-up indistinguishable from that of the plaintiff except that the word "ACE" was substituted by the word "AGE", and registered the trade mark "ACE" in Singapore for tooth brushes. When the suit was filed, the plaintiff company was not carrying on any business in Singapore. The plaintiff had formed a subsidiary company in Singapore in the year 1968, and assigned its residual goodwill with respect to tooth brushes in Singapore with right to user of the mark "ACE" on an exclusive basis. The Singapore company was not made a partly to the action.
105. The mark "ACE" not being registered in Singapore, the action which was brought by the plaintiff company, was of a passing off action. The trial court dismissed the action with costs. On appeal, the order of dismissal was confirmed. The plaintiff thereafter appealed to the Privy Council.
106. The Privy Council stated that the law relating to the legal nature of the rights in the passing off action were settled by the speech of Lord Parker of Waddington in A.G. Spalding and Brothers v. A.W. Gamage Limited (1915) 32 RPC 273 with which the other members of the House of Lords and agreed. It was stated therein, "that a passing off action is a remedy of invasion of 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 person's goods as the goods of another. Goodwill, as the subject of 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 the 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." The Privy Council, therefore, said that, once the Hong Kong company had abandoned that part of its former business that considered in manufacturing tooth brushes for export to and sale in Singapore it ceasen to have any proprietary right in Singapore which was entitled to protection in any action for passing off brought in the courts of that country.
107. The Privy Council did not express any view regarding the assignment of the residuary goodwill of the Hong Kong company which bad been formed by the Hong Kong company, as the Singapore company was not a party to the proceedings. The Privy Council did not accept the argument that in view of the practices, in international trade, having been changed since the Gamage case was decided in 1915 by Lord Parker, the views expressed therein should be developed differently. The Privy Council rejected this contention as there were no changes effected in the United Kingdom Trade Marks Act, and the existing Trade Mark Act of Singapore and preferred to follow what was stated to be the intention of Parliament, according to which the Gamage case had been decided.
108. The next case cited by Mr. Chagla is Amway Corporation and Anr. v. Eurwa International Limited and Ors., (1974) RPC p. 82 This matter had come up before Justice Brightman in the Chancery Division. An American Corporation which was having a prosperous business of direct selling of cleaning materials to the American public under the name AMWAY sought to restrain the defendants who had started a business of direct trading under the name EURWAY, by a passing of action. In this case a number of contentions were raised, and what seems to have been emphasised, was breach of confidentially, use of copy righted matter, know-how and lastly passing off. Defendants No. 2 and 3, James J. Carson and William bee Carson, wanted to venture into direct selling which was being done in America. With that object, William Lee Carson had gone to U.S.A. to team direct selling technique, and had registered as distributor of the American Company, and obtained literature from them. After return to England, he look the steps to start the business of the defendant company. The court did not accept the contention of the plaintiff regarding breach of confidentiality at the interlocutory stage, to which that judgment related. As regards passing off, the court relied upon the judgment in the Crazy Horse's case. Alain Bernardin et Cie v.. Pavilion Properties, (1967) RPC 581 and stated that the plaintiffs must have a business reputation in this country. The court on fact, came to the conclusion that there was no world-wide business activities of the plaintiff company in England, which the plaintiffs were entitled to product by interlocutory injunction. The court thus followed the requirement of actual carrying on the business in England before any plaintiff was entitled to get relief of passing off.
109. As stated, Mr. Chagla contends that before any relief can be granted to the plaintiff, there must be common field of activity between the plaintiff and the defendant.
110. He further contends that likelihood of deception or confusion is further reduced when goods in question are of a special nature, that is to say it will be different when the goods arc sold over the counter or everyday articles, like blades, tooth brushes, and perhaps meaning thereby low value items, and the consideration would, be different for high Value items, like computers, which according to him are not bought and sold over the counter.
111. Mr. Chagla commenting upon the case of the Supreme Court of Ireland in C. & A. Modes and Anr. C. & A. (Waterford) Ltd. and Ors.1978 FSR 126 says that while the Irish Supreme Court has held that the English principles of the goodwill stopping at frontiers, laid down in Gamage's case, would no more be applicable, and that in these days of international trade, the goodwill could possibly stroll over the international boundariys, the Irish Supreme Court also was of the view that it would be necessary to have a goodwill. According to Mr. Chagla, that case is peculiar one which involved movement of people from a republic of Ireland to parts other than Ireland, where C & A Modes carried on business in selling its goods which were brought back into the Irish republic by the persons who had "strolled over".
112. In my view this contention of Mr. Chagla is not bone from what is stated in the judgment of the Irish Supreme Court. The Irish Supreme Court had clearly departed from the English principle of necessity of having business in the place where passing off is sought to be restrained, and the view that goodwill is local in character, and the view that no inter-national manufacturer or trader who sells his goods all over the world can succeed in a passing off action, at a place where he has no place of business.
113. Mr. Chagla next referred to the judgment reported as (Metric-Resources Corporation v. Leasemetrix Ltd. and Anr., 1979 F.S.R. 571). This case has been cited by Mr. R.K.P. Shankardas in his arguments, and Mr. Chagla attempted to say that the judgment in that case was not applicable to the case of the plaintiff. In Metric Resources Corporation's case, the plaintiff carried on throughout United State of America and Canada business the name Leasemetric. The business was for hiring of electronic equipments. They carried on extensive advertisements in U.S. Journals which circulated also in U.K., and dealings with "Leasemetric Company" in U.K. The second defendant who had carried on business in the field of electronics, admitted that he was aware of the business of the plaintiff at the time he chose to commence the business as Leasemetric Ltd. The plaintiff came to be aware in the end of March, 1979 that the defendant was carrying on business in England. In April the plaintiff complained about the use of the trading style "Leasemetrix Ltd." by the defendant. The defendant refused to change the name, and a passing off action was commenced. The injunction that was sought by the plaintiff, was granted. It was observed by court that the question whether a trader who carries on no business in U.K. is entitled to succeed in an action for passing off against a rival business which is set up in U.K. under the same or confusing similar name, is a difficult question of law, which calls for detailed arguments and consideration, and should not be decided merely on motion. The injunction was granted by Vice Chancellor Meggary. He considered the judgments (La Societe Anonyme des Anciens Etablissements Pcnhard et Levassor v. Panhard-Levassor Motor Co. Ltd., Rep. as (1901) 18 RPC 405) ; (Poiret v. Jules Poiret Ltd. (1920) 37 RPC 177) ; (Sheraton Corporation of America v. Sheraton Motels Ltd., (1964) RPC 202) ; (C. & A. Modes v. C. & A. (Waterford) Ltd.), (1978) FSR 16 and (Globe elegance B.V. v. Sarkissian, (1974) RPC 603). By this judgment, it was pronounced on 27.6.1979 that it was in effect held that reputation is sufficient to warrant an injunction. No trading was required in U.K. before goodwill could be said to exist. Vice Chancellor Megarry held that the granting of the injunction would not, in any way, stop the defendant company from trading, but only affect the style under which it trades.
114. Almost exactly the same situation prevails in the instant case. The effect of granting of the injunction would not be to spot the activities of the defendant Corporation, but it would only result in the necessity of the defendant to change to name under which they advertise their Computer Education classes.
115. Mr. Chagle referred to the case of Athletes Food Marketing Associates Inc. v. Cobra Sports Ltd. and Anr., (1983) RPC 343. In this case, the plaintiff corporation was an American Corporation, and was not carrying actually business in England, and had granted franchises to independent stores to carry on the business in supply of footwear for athletes under the name "Athlete's Foot". They had an emblem of a winged foot. They had good and extensive reputation in U.S.A. They had not entered into any franchise arrangement with any person in England on the date of action for passing off instituted by the plaintiff, but had earlier attempted to do so.
116. Injunction sought by the plaintiff was refused, as the plaintiff carried on no business in England, and there had been no sales in the U.K. under the name "Athlete's Foot", and evidence had not been produced that sales had been abroad under the name "Athlete's Foot" to visitors from U.K. Justice Walton who refused the injunction, relied upon the proposition which is well settled in England, that unless there is a goodwill in England which is local and emanates from sale of goods in England, there can be no passing off action. Justice Walton came to the conclusion that in these circumstances", it is not simply possible to say that the plaintiff Company has goodwill in this country, whatsoever, and whatever strength of its mere general reputation may be.
117. Mr. Iqbal Chagla relying upon this judgment, says that the plaintiff must have an arguable case before an injunction could be granted. The concept of goodwill which was relied upon by Justice Walton, was the one enunciated in 1901 Appeal Cases 217 in a case relating to Taxation. It has been accepted in all the cases in England that "goodwill" concept which was enunciated in 1901 Appeal Cases 217, must be the same in the case of goodwill which is required in a passing off action.
118. In other jurisdiction, like Canada, Australia and U.S.A., the concept of goodwill as enunciated in 1901 Appeal Cases 217, has not found acceptance, and some Judges have stated that this concept is a "hard line".
119. In my view, the concept of goodwill as enunciated for the purposes of income-tax should not be bodily lifted and applied to the good-will, which is invoked in passing off action. Whereas in case of income-tax, goodwill has to be assigned a monetary value for the purposes of the revenue laws, there is no such need in the case of passing off actions. Whereas in case of revenue laws question of goodwill would arise only when business is carried on. In cases of taxation, whether upon dissolution of a partnership or purchase of goodwill as a commercial transaction, there is a revenue relevance. 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 of the 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 services 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 sine qua non for a passing off action in Jurisdiction, 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 are not granted.
120. Inroads principle of actually carrying on business, have 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 case).
121. For the proposition that unless trading is done in India, there can be no goodwill, as there can be no reputation Mr. Chagla among others, relies upon judgments reported as (S. Meera Sahid and Bros. v. Hajee M. Abdul Azeez Sahib, 2nd 38 Madras 466). This case related to cloth, which is sold under the name "Twill". The Madras Court held that in the absence of user in India of diamond brand "Twill", "no reputation", be acquired, and that there was no cause of action in favor of the English seller. It was also held that registration of a name could be opposed, as it would lead to confusion.
122. Mr. Chagla also refers to 1974 Madras Law Journal 392, in which case the Madras High Court held that the world wide reputation in the word "SHARP" can never the stated to have come into existence in India, as the goods under the name "SHARP" were not available in Indian market Therefore, there was no goodwill.
123. Mr. Chagla also refers to the judgment reported as (Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 1980). In this case, the Supreme Court clarified the distinction between an action for passing off, and an action for infringement of trade mark. The Supreme Court held, "that an action for passing off is a common law remedy, being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of 'the exclusive right to the use of the trade mark in relation to those goods'. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the since qua non in the case of an action for infringement". This case related to the trade mark "Navratna". The Supreme Court held that the word 'Navratna' cannot be held to be distinctive, and went on to say that "it is incapable of being distinctive by reason of its being merely the Sanskrit word for describing Ayurvedic preparations of a particular composition of a medicine.
124. It is Mr. Chagla's contention that "Apple" is a common English word, and it is not permissible to appropriate common words exclusively. It is further case that it is not shown by the plaintiff that there is no word like APPLE COMUTER EDUCATION in India, and that Computer Education being a field of activity which is district from making of Computers, injunction ought not to issue.
125. I do not think Mr. Chagla is right, inasmuch as all computer need a skill to operate them. That skill is to be imparted, that skill has to be learnt. The only way it can be learnt is that somebody who knows that skill, teaches others how to acquire the skill to operate the computer. Each computer has some specific methods of operations which have to be learnt by each individual. The process of learning may be simple or may be (sic) complicated. The process of learning may be simplified, but it is not possible to operate a computer without knowing how to do so, and anybody who wishes to learn how to operate a computer, needs to acquire that skill. This may be by going to a small leaching "shop", or a large organisation, which has adopted for itself the business of imparting education and skill in operation of computers. In view of the very nature of computers, it is not possible for me to hold that computers and computer education do not go together, just as horse and carriage go together, so must the computer and "computer education". They are complementary to each other, and one is necessary for the existence of the other. In this view of the matter, it cannot be said that the field of activity of computer education, and computers are different. It is, therefore, not possible to accept the contention of the defendant that the plaintiff are only enjoying the reputation in computers and computer peripherals, and not in computer education, and there is no substance in the defendant's contention that there is no "common field of activity", there is no passing off.
126. In (Ruston and Hornby Ltd. v. Zamindara Engineering Co., ), the Supreme Court has stated that, "the action for infringement is a statutory right. It is dependant upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act". With regard to a passing off action, the Supreme Court observed that, "on the other hand the gist of passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of B's goods has became distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception not any actual damage need be proved. At common law the action was not maintainable unless there bad been fraud on A's part. In equity, however, it was immaterial whether defendant had been fraudulent or cot in using the plaintiff's trade mark".
127. It is to be noted that the Supreme Court in that case was dealing with the goods, i.e., diesel internal combustion engines. The appellant was using the work "RUSTON" upon the goods, and the respondents started us in the word "RUSTAM INDIA" upon its goods. The observations of the Supreme Court have to be read in that context, that it was dealing with the goods. It was not dealing the case involving services or trading style, or a name. The observations of the Supreme Court regarding "representation of one's goods as those of the other", would apply equally to case of "services" and "trading style", as if representation of an unauthorised connection between the two which is impermissible,
128. In (Khemraj Shrikrishnadass v. Garg & Co. and Anr., ), Justice B.C. Misra was dealing with a case of an
almanac, that is to say a "Panchang". In this case, it was stated by Justice Misra that what is necessary in case of passing off to establish are : (1) distinctive features ; (2) substantial user and (3) wide reputation. If one takes the assertion as adequate for the purposes of dealing with an interim application for injunction, and assumes that what is stated by the plaintiff in his plaint is true, then it cannot be disputed that inasmuch as the word "Apple" in ordinary English language is a name given to a fruit, calling a computer "Apple" is to adopt a meaning which is not the actual meaning of the English word. As an article, which is designed to make computations, aid in the matter of recalling information fed into it (and for various other purposes), if is distinct from the fruit. The intention appears to have been to give the computer a distinctive identity by calling it "Apple" (although there is no evidence at this stage as to what led to the adoption of the word "Apple" by the plaintiff Company, it may be that one has to go to the old testament the story of Adam and Eve, and that "apple" was responsible for "temptation"). The Apple Computer may have been intended to be represented as an article which makes computation simple, something which tempts persons who need to make computation, and, therefore, the name "Apple". That it tends to tempt those who need to be tempted, to make use of it, to make their work simpler.
129. The defendant which is an Indian Company with Indian share- holders, like the plaintiff, have given no explanation for the use of the word "Apple" in their trading style and name. In case of adoption of a foreign 'language word, explanation is required why it was needed to adopt a foreign word for their trading style, instead of adopting a trading style with an Indian name, or in any regional languages, which would indicate that the education which they were going to impart, related to any article which would aid in computation, and other proposes for which the computers are intended. There is no explanation of the defendant as to why they have chosen the word/name "Apple" as a trading name of their business. Considering that a very few people companies in the world design and manufacture computers and "Apple Computers", it is asserted, one of the first to design a personal computer starting from a hobbyist kit, and altering it to an advanced personal computer in the course of time, it is necessary that adoption of the word as a part of trading name/style be explained in the pleadings.
130. The second test of Justice Misra that there must be substantial, use. Facts of this case have already been stated. The user of the word "Apple" in the trading style by the defendant or in their advertisements, by stating "Apple Computer Education" is a substantial representation to those persons who seek to be educated in computer use, and would amount to a representation of the "Apple Computers"), that there is a connection in the course of trade with the plaintiffs computers.
131. It is stated by Mr. Iqbal Chagla that names by themselves cannot be termed as property.
132. In my view the expression "name by itself" is to use a concept which is designed to misdirect. There is almost nothing which is of value by itself. In order to be of value, anything must be connected with other things. When the connection is made, both the things may become valuable, or the value may be enhanced because of connection. In my view, name becomes protectable, when the name becomes identifiable, when it becomes distinctive it becomes property. Name becomes important and significant and valuable, and can be elevated to a property right, once it is associated with articles which are in the course of time, sought by the consuming public. This is usually brought about by extensive user by the public of a particular article which proves its worth, utility and dependability. It is then that it becomes property, as it is then the article acquires reputation. This reputation of the article then extends itself to the person who manufacturers that article as a part of its business. Good reputation or goodwill relates primarily to the article which is secondary to the business. This is not to say that the process cannot be reversed. It may be that a particular business acquires a reputation for making articles which arc useful, which are durable, which gives value for money, and when a new article is made by business which has acquired such repute, the consuming public assumes that new article is equally going to give value for money. There may be, therefore, an advantage which a reputable business may have with respect to new products which they introduced in the market, but the bottom line must always be that it is the product which must be good ; it is the product which must enjoy reputation. It is this reputation which is protectable by the law relating to passing off. The association of a name with the product is equally property, and name, in the aforesaid circumstances, is also property. It is for this reason that it is stated in the American Jurisprudence, Volume 7 page 709 para 8, that trade name is property, reputation of excellence and a source of profit.
133. The case (The National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd., Rep. as AIR 1948 Mad. 481), related to sewing thread, which was being marketed by the respondents in India under the name "Eagley". Their label and device had a figure of bird. The respondents started using the name "Eagle brand" upon the thread made by them. The Court in that case came to the conclusion that the evidence on behalf of the plaintiff is very meager, and the plaintiff has not succeeded in making put that there is any probability of a purchaser exercising ordinary caution, being confused or deceived into buying the defendant's goods under the impression that they are of the plaintiff. The appeal was allowed, and the suit filed by the respondents was dismissed.
134. also related to the dispute between the parties to the judgment reported as AIR 1948 Madras 481, and the subject matter of this appeal was also regarding the trade mark "Eagley". The Supreme Court noted the failure of the action commenced by James Chad-wick Bros. Ltd., which was reported as AIR 1948 Madras 481. The Supreme Court held that "the considerations relevant in a passing off action are somewhat different than they are on an application made for registration of a mark under the Trade Mark Act, and that being so, the decision of the Madras High Court referred to above, could not be considered as relevant on the question, that the Registrar had to decide under the provisions of the Act". The Supreme Court also observed that, it is quite clear that the onus in a passing off action rests upon the plaintiff to prove whether there is likelihood of defendants' goods being passed off as the goods of the plaintiffs".
135. As far as trading style is concerned, as noted above, the trading style adopted by the defendant has not been explained by the defendant. The plaintiff have, prima facie, established that they have world wide reputation. Their goods have been purchased by the departments of the Government of India, particularly the National Informatics Centre, which is a part of one of the ministries of the Government of India.
136. It is contended by Mr. Chagla that assuming there is necessary trade and goodwill of the plaintiff, what is to be seen whether defendant's activities and the plaintiff's activities cover the same field. In this connection, Mr. Chagla refers to the case (Nestle's Products Ltd. and Ors. v. Milkmade Corporation and Anr., ). In this case, Nestle's Products were making
condensed milk, and the Milkmade made toffees. The Court came to the conclusion that the field of activities was different. The condensed milk and toffees operated in different areas. Same is not a case here. No person can make use of computer as a computing tool without acquiring the skill for making use of it, which is the same thing as saying that no one can make use of a motor vehicle unless he learns to drive that motor vehicle. A person has to learn the skill of driving motor vehicle before it can be used. In the same way skill for using the computer as a computing tool, and for other purposes, has to be acquired. It is for the person imparting the skill, to classify themselves as "provides of education". They are necessarily equipping a person with the skill just like a potential driver of a motor vehicle is equipped with the skill of driving motor vehicle. There can be no activity in connection with a computer, unless somebody learns how to use it. One cannot exist without the other, and in these circumstances, it cannot be said that computer education is field of activity which is distinct from computers.
137. It is next contended by Mr. Chagla that the delay in instituting this action is fatal to the action, and that no relief should be granted to the plaintiff, as they have delayed in coming to this court. It is asserted by Mr. Chagla that defendant have been holding their classes since 1985. The plaintiff took objection to the trading style in 1986, that the action was brought only in 1989. As to the matter of delay, one has to look at what has been stated in the earlier part of this judgment. The defendant are undoubtedly a company, carrying on business in the United States of America. When they came to know about somebody trying to commence business under the name and style "Apple Leasing and Computers", they objected to such trading style. There is no explanation as to why this style was adopted by the defendant, which they ought to have done. Merely saying that they intended to make computer, is not, in my view, a sufficient explanation. It is not a sufficient explanation that one of the objects for which the defendant company was incorporated, was to make computer. Once it makes computers, their computers are bound to be known as "Apple Computers." The plaintiff's "Apple Computers" were undoubtedly prior in point of time. Even today, computers are manufactured by the defendant. The plaintiff's "Apple Computers" have been extensively advertised. They are even known in India. They have been sold in India, exhibited in an exhibition held in India. There is no explanation" from the defendant why did they choose to call their company "Apple Leasing and Computers" in the first instance. This could only be to make an attempt to avoid a direct passing off, and take their chance by calling themselves "Apple Leasing and Computers". From the inception it appears that the plaintiff intended to capitalise on the connection between "Apple" and "Computers", which have been brought to the force by the plaintiff's products. The choice of the words ''Apple" and "Computers" in the trading style appears to be, there- fore, for the purpose of gaining advantage of the plaintiff's reputation in connection with their computers. In a case decided by me and reported as (Hidesign v. Hi-design Creations 1991 (1) Delhi Lawyer 125) I referred to the observations of Romer, J., in J.R. Parkingion and Coy Ltd., 63 RPC 171 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 it's inception was tainted, it would be difficult in most case to purify it subsequently". these observations were also referred to and relied upon by B.N. Kirpal, J. in the matter of Hindustan Pencils Pvt. Ltd. v. India Stationery products Co. and Anr., 1969 PTC 61. It appears to me that the adoption of the trading style by the defendant which incorporated the word "Apple" in their trading style, was tainted from its inception and intended to capitalise on the name and reputation of the plaintiff. As such in these circumstances I do not think that delay in the presentation of the plaint should come in the way of the plaintiff seeking the relief, which they have sought.
138. Mr. Chagla contends that in the instant case, balance of convenience is in favor of the defendant, inasmuch as the plaintiff by delay, have permitted the defendant to build up their business. As notices were exchanged between the parties in 1986, the advertisements containing the matter, which according to the plaintiff, connects or attempts to connect the business of the defendant with that of the plaintiff, were also in 1986, and the plaintiff have not explained the delay. In my view, in view of what has been observed by Justice Romer in the case mentioned above, is fully applicable with respect to the question of delay also.
139. The question of delay would be relevant in the matter of concurrent honest user. In the instant case, it appears that the user by the defendant is not something which is innocent. They have adopted trading style deliberately, with intention of creating a subtle association between the plaintiff's "Apple Computer" and their own activity. They do not explain why the used the word "Apple" particularly when "Apple" represents a fruit in a foreign language. The explanation that the alphabet "A" is the first alphabet, and "A" is for "Apple", and that A for Apple is taught to the children, therefore, it was adopted, without so stating in the written statement, in my view, is not an adequate explanation, and as such the judgments which deal with delay and acquiescence, namely, (Amritdhara Pharmacy v. Satva Deo Gupta, would not be attracted to this case.
140. The argument of Mr. Chagla that there are no computer clauses anywhere in the world by the plaintiff, would not be of any significance, inasmuch as no one can use a computer without being educated or trained in the use of it, that before an "Apple Computer" can be use by any one, he would need some training cannot be disputed.
141. It is contended by Mr. Chagla who referred to Trojan & Co. v. R.M.N.N. Nagappa Chettiar 1953 SC 233) that in case a particular relief has not been asked for in the plaint, it ought not to be given. Being a proposition settled by the Supreme Court, it is to be acted upon by courts. In the instant case the pleadings have to be read as a whole. Not only averments in the plaint have to be seen, also have to be seen, are the prayers in the plaint and averments in the application, and prayers therein. The relief of injunction, which has been sought, on a fair reading of the pleadings and the prayer in the plaint and in the application, is covered by the interim relief sought.
142. In reply to the contentions raised by Mr. Chagla broadly, Mr. R.K.P. Shankardas says that : (1) it is wrong to assert that there is no protectable "goodwill" of the plaintiff in India ; (2) that it is not legally correct to say that the goodwill must be supported by actual trading in India (3) that it is not correct to say that there are laches in the instant case ; and (4) that the balance of convenience is in favor of the plaintiff.
143. With regard to the protectable goodwill, it is stated by Mr. R.K.P. Shankardas that the plaintiff had protectable goodwill in India, inasmuch as it was carrying on legal and legitimate business in India. He particularly refers to parliamentary questions which were raised in connection with "detention" of Apple Computers. In addition, he refers to various vouchers and bills which have been filed by the plaintiff for the purpose of saying that the customers of Apple Computers in India had been Government of India its various department. Particularly he refers to the order placed on the plaintiff by the National Informatics Centre, A.P. Technology Ltd., and also some private business persons. He says that invoices filed clearly indicate that the Appeal Computers have been carrying on business in India.
144. Mr. Shankardas also refers to a number of judgments, in which it has been emphasised that in cases such as the instant one, reputation is itself protectable, and that the reputation may extend across international boundaries, State boundaries. He refers to cases of Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd., 50 Ontario Reports 726; Yale Electric Corporation v. Robertson, 26 FR 2d Series 972 ; Fletcher Challenge Pty. Ltd. and Ors., FSR (1982) 1 ; Esanda Limited and Anr. v. Esanda Finance Limited, FSR  97 ; and Yardley & Co. Ltd. v. Kamal Trading Company and Ors.
145. Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd. et al (hereinafter called "Orkin") is a case which needs to be set out in detail. Orkin, an American Company, which did not carry on business in Canada, instituted a passing off suit against Pestco Co. of Canada Ltd., for restraining Pestco from using in Canada its trade name "Orkin Exterminating Company" and the trade marks "Orkin" and "Orkin" in a logo, and for a judgment for nominal, damages of 1,000 dollars. The logo of "Orkin" comprised of a diamond with the word "Orkin" in capital letters inside it. It is stated in that judgment that "Orkin" is one of the largest pest control company in the world, and was highly regarded by its customers which include Canadian customers, for the "excellent" and dependable service which it provides. "Orkin" expanded considerable amounts in advertising its services, and during the period 1954 to 1980, it amounted to about 68 million dollars. aS regards reputation of "Orkin" in Canada, the court of Appeal had noted that Canadians traveling in the United States are exposed to Orkin's extensive advertising and use of its trade marks in that country. There was evidence adduced that millions*of Canadians travel in the United States, particularly in the southern vacation states, where Orkin's operations are extensive Canadians in Canada are exposed to Orkin's advertising and articles appearing in American publications which circulate in Canada. Examples of publications in which such articles and advertisements have appeared are : Fortune, Newsweek, Business Week. Time, United States News and World Report, Supermarket News and National Geographic.
146. It is also note worthy that the action for passing off started two years after the dispute between the parties to the suit had arisen in connection with the registration under the Trade Marks Act.
147. One Mr. Valder who was the President and Manager of the Canadian Company, admitted that he knew of Orkin, the plaintiff, and of its business in the United States. The court found that Pestco used the Orkia name in the following ways :
"(1) It filed a declaration of intention to carry on business under the name of "Orkin Exterminating Company", apparently under the Partnerships Registration Act, R.S.O. 1980, c. 371.
(2) It obtained an operator's license under the Pesticides Act of Ontario, R.S.O. 1980, c. 376, in order to carry on a pest control business under the name "Orkin Exterminating Company".
(3) It placed a listing in the yellow pages of the telephone directory for the City of toronto for "Orkin Exterminating Company".
(4) It placed a listing in the white pages of the telephone directory for the City of toronto for "Orkin Exterminating Company".
(5) It commenced marking salesmen's forms by means of a rubber stamp with the word "Orkin" for service calls made by employees of Pestco."
148. The Pestco made no public use of the name "Orkin Co." except in the telephone directories, and it did not carry on business under the name of "Orkin Exterminating Company". Apart from using "Orkin Exterminating Company's" name, Pestco also sought to me the trade mark of another international Pest Control Company, an English company, called. "Rentokil Limited'". This led to the trial Judge making following remarks with respect to Mr. Valder's credibility :
"Because of the way he gave his evidence, because of the implausibility of his story, and because he attempted to adopt the name and logo of an English exterminating company to impede that company's coming into Canada, I do not accept Mr. Valder's evidence."
149. The Pestco Company contended that because Orkin had not carried on any business in Canada, it had no protectable goodwill in Canada. This contention was rejected by the trial Judge, for the reason that :
(1) At the time of the commencement of this action the plaintiff had goodwill and customers in Canada ;
(2) It is the present intention of the plaintiff to carry on business in Canada at sometime in the future ;
(3) The defendants acted deliberately to deceive and create confusion to make people believe that there was an association between Pestco and the plaintiff and to attract customers in that way. They also intended to impede the plaintiff from benefiting from its goodwill when it came to Canada ;
(4) During the time it used the name Orkin Exterminating Company, the defendant Pestco did not create any significant amount of goodwill for that name or for the diamond logo.
150. The Court of Appeal reiterated the well known principle in passing off action, by stating that "a fundamental principle upon which the tort of passing off is based, is that nobody has any right to represent his goods (or services) as the goods (or services) of somebody else". A.G. Spalding & Bros. v. A.W. Gamage Ltd. (1915), 32 RFC 273. at 283 (HL). The court went on to observe that, "the statement of this simple principle does not, of course, amount to a statement of all the essential ingredients of the cause of action. As may Be gathered from the issues raised by the appellants, this appeal is concerned not so much with the representation aspect of the claim (in fact there is no challenge raised on this appeal to the trial judge's finding that Pestco acted deliberately to deceive and create confusion) as with the nature of the connection the plaintiff must have with Ontario to obtain relief against Pestco. Pestco submits that Orkin must prove that it has "goodwill" with respect to its business in Pestco's market area in Ontario. It submits that in order to have goodwill in this area Orkin must have carried on business here, or at least, have been involved in some form of business activity here. The Supreme Court of Ontario also noted that the main authorities relied upon by Pestco to support the proposition that Orkin must carry on business in Ontario to have protectable goodwill here, are Star Industrial Co. Ltd.. v. Yap Kwee Kor, (1976) FSR 256 (P.C.) (trading as New Star Industrial Co. Alain Bernardin et de v. Pavilion Properties, Ltd., (1967) RPC 581 and Anheuser-Busch Inc. v. Budejovicky Budvar N.P., (1984) FSR 413 (trading as Budweiser Budvar Brewer).
151. It is to be noted that the very same authorities which were relied upon by Pestco are relied upon by the defendant in the case before me.
151A. The Ontario Court of Appeal further observed that, "Orkin submits that goodwill should not be defined so narrowly as to require that the plaintiff carry on business or have a place of business within a particular locality. It submits that Canadian courts have consistently afforded protection to foreign traders whose trade marks have become known in Canada, even though no business activity has actually been carried on here. The protection is against misrepresentation and deception. Orkin cites in support of this proposition the following decisions which, it may be noted, are all British Columbia decisions : Hilton Hotels Corporation et al. v. Belkin et al., (1955), 24 C.P.R. 100, 17 W.W.R. 86, 15 Fox Pat. C. 130, (B.C.S>C.) Sund et al. v. Beachcombers Restaurant Ltd. et al., (1960), 25 D.L.R. (2d) 54, 34, C.P.R. 225, 20 Fox Pat. C. 163, (B.C.S.C.); Levitz Furniture Corporation et al. v. Levitz Furniture Ltd. et. al., Browning-Ferns Industries Inc. v. Browning-Ferris Industries Ine et al., (1976), 25 C.P.R. (2d) 284 : (1976) 3 W.W.R. 759, (B.C.S.C.) and Seagoing Uniform Corporation v. US Dungaree Seafarers Ltd. et al.
152. The Ontario Court of Appeal agreed with the view of the trial Judge, and observed as follows :
''In my respectful view. Fitzpatrick J. was right in concluding that Orkin was entitled to relief on the basis that it had a reputation (built up in several different ways including having customers) in Ontario and intended to expand its business into Ontario. In saying this I do not intend to indicate that a case such as this could not be decided on more general grounds. This is an evolving field of law and I think it the better course to resolve the competing contentions on relatively narrow grounds which are responsive to the particular facts rather than, unnecessarily, on broader grounds.
I have said that the issue before us is not governed by any binding authority. However, it has been dealt with in the five British Columbia judgments cited by Orkin. None of these requires the plaintiff to be carrying on business in the jurisdiction to succeed in a passing-off action. The fact that these arc Canadian decisions entitles them to favorable consideration in this court, if, for no other reason, than the desirability of uniformity in this country in this branch of the law of trade regulation"
153. The Ontario Supreme Court while deciding the matter which it was required to decide, applied the principle of law of "control over the impact that the trade name" in the jurisdiction of the defendant by use of the plaintiff's trade name, and observed as follows :
"However, a plaintiff docs not have to be in direct competition with the defendant to suffer injury from the use of its trade name by the defendant. If the plaintiff's trade name has a reputation in the defendant's jurisdiction, such that the public associates it with services provided by the plaintiff, then the defendant's use of it means that the plaintiff has lost control over the impact of its trade name in the defendant's jurisdiction. The practical consequence of this is that the plaintiff is then vulnerable to losing the Ontario customers it now has as well as prospective Ontario customers, with respect to services provided in the United States. Also, it can result in Orkin being prevented from using its trade name in Ontario when it expands its business into Ontario."
154. The Ontario Supreme Court also referred to the case of Irish Supreme Court in C. & A. Modes v. C. & A. (Waterford) Ltd. (supra)
155. The Ontario Supreme Court after considering the question of whether or not it was necessary that there should be direct competition between the parties, and holding that it was not required ; observed :
"Bearing in mind that Pestco has a virtually infinite range of names and symbols from which to choose, it is difficult to see the enjoining of it from using the name and logo of a well-established company in the same business as an unreasonable restraint on its freedom to carry on business as it sees fit. The public are entitled to be protected from such deliberate deception and Orkin, which has laboured long and hard and made substantial expenditures to create the reputation which it now has, which reputation has spread to Ontario, is entitled to the protection of its name from misappropriation. The spectre of Orkin having a monopoly in Ontario in its name and distinctive logo, even though it is not now carrying on business here, is considerably less troubling than the deceptive use of its name and symbol by another.
156. These observations apply equally to the case before me, and I agree with these observations.
157. The Supreme Court of Ontario also observed with regard to the difference between the English decisions which seem to require business activity by the foreign plaintiff in its jurisdiction, and the Canadian and U.S. authorities, which do not require carrying on business. The Ontario Supreme Court went on to suggest, "having regard to the travel patterns of the population and mass advertising through television, radio and various publications, the flow of transborder goodwill is almost inevitable in North America. The English cases involve foreign plaintiffs who are separated from England by the Atlantic Ocean or the English Channel and it is possible that this is an underlying factor in the developments of the relatively hard line, which has generally been followed in English cases". The explanation regarding the Atlantic Ocean and English Channel as the causation for the hard line may not be the only reason. The reason may lie elsewhere.
158. Regarding the meaning of the goodwill, the Ontario Supreme Court noted that the meaning of the goodwill, as adopted in the Budweiser's case, (1984) F.S.R. 413, appears to be based on definition assigned to the word in a tax case. Commissioner of Inland Revenue v. Muller & Co.'s Margarine Ltd., (1901) A.C. 217. The Court went on to observe :
"Virtually no words have a single fixed meaning, particularly goodwill, and, with respect. I do not think that the meaning appropriate in the Muller case is necessarily appropriate in a passing-off case which involves issues of remote territorial use. In this kind of case I think that the main consideration should be the likelihood of confusion with consequential injury to the plaintiff. Generally, where there is such confusion there is goodwill deserving of protection."
159. I am in agreement with the view expressed by the Ontario Supreme Court with respect to the need to carry on business in the jurisdiction in a particular territory as also regarding the meaning of goodwill in passing-off matters. In other words, it is not necessary in the context of the present day circumstances, the free exchange of information and through newspapers, magazines, video, television, movies, freedom of travel between various parts of the world to insist that a particular plaintiff must carry on business in a jurisdiction in a jurisdiction before improper use of its name or mark can be restrained by the court. Similarly, I am also in agreement with the view expressed regarding the meaning of goodwill in passing-off cases. In passing-off cases, the main consideration is the likelihood of con- fusion and consequential injury to the plaintiff, and the need to protect the public from deception, deliberate or otherwise. Where such confusion or deception is prima facie shown to exist, protection should be given by courts to the name or mark or goodwill of the plaintiff. The reason why all traders and manufacturers of goods, and providers of services, wish to protect their name and build up their name is that they want their name or market to have an impact upon anyone who has need their goods or services. That impact may take diverse forms, but one of them would certainly be that a name or mark would recall to the mind of a potential consumer or user of such services, the source from where the goods originate, or the person who provides the services. This is the impact of advertising and publicity by whatever means, including word of mouth, and the build-up of reputation. It would not be right for courts to permit the persons who have spent considerable time, effort, money and energy in building up a name, sufficient to have an impact to lose control over such an impact by improper use of the very same or colourably similar name by another unauthorisedly or even dishonestly.
160. It is after adopting what is stated in Orkin's case by the Ontario Supreme Court that Mr. R.K.P. Shankardas rightly contends that the defendant had deliberately exploited the reputation of "Apple". In view of their advertisements, the defendant cannot be permitted to pretend as they; appear to, that they did not know of Apple Computers. In the advertisements of the defendant, they clearly assert that "On hand training will be given on Apple Computers and I.B.M. Computers". It is in the context of their advertisements that, keeping in view of the contents of the advertisements that the use of a half bitten appeal assume significance it is well publicised fact that the logo of the plaintiff is a half bitten apple. The latter use of half an apple to indicate the alphabet "A" appears also to be taken as a kind of a colourable use, which has an appeal to the eye with respect to the apple logo.
161. Mr. R.K.P. Shankardas also refers to the Yale Electric Corporation v. Robertson, (1928), 26 F. 2d 972 which has already been adverted to in the Orkin's case. Therefore, I do not wise to deal with that case again.
162. Mr. R.K.P. Shankardas thereafter referred to the case of Fletcher Challenge Ltd. v. Fletcher Challenge Pty. Ltd. and Ors., F.S.R. (1982) P. 1. In this case, the facts were that the plaintiff company was incorporated in New Zealand, was a holding company for three substantial New Zealand, Companies. These three companies themselves owned a number of trading subsidiaries and some of these companies were registered in New South Wales, Australia, as foreign company, and traded there and were well known in Australia, particularly to persons engaged in the finance and securities industries. Prior to the incorporation of the plaintiff-Fletcher Challenge Ltd., the scheme for corporate reorganisation and amalgamation had to be settled and approved by the appropriate majorities of the shareholders in the three companies. Final agreement on the terms, of the scheme was reached on 22.10.1980 on which date news of the proposed amalgamation was released to the New Zealand and Sydney stock exchanges. The following day there appeared in a number of Australian newspapers and financial journals, leading articles concerning the proposed amalgamation, each of which placed stress upon the fact that the new holding company was "Fletcher Challenge" or some variation of that name.
163. The same day, i.e., 22.10.1980, the two natural defendants in the said case, lodged with the Corporate Affair Commission an application for the reservation of the company name "Fletcher Challenge Pty. Ltd." in which application the nature of the business to be carried on was stated to be "investment in shares and property". On 14.11.1980, the plaintiff's solicitors lodged with the Corporate Affairs Commission an application for reservation of the company name "Fletcher Challenge Ltd." On 9.12.1980, the Commissioner for Corporate Affairs informed the plaintiff's solicitors that this name was not available for reservation as it was likely to be confused with the name previously reserved by the two natural defendants. On 15.12.1980, the first defendant was incorporated having as its directors the two natural defendants.
164. The plaintiff sought undertakings from the natural defendants to change the first defendant's name, and when the undertaking was not given, the plaintiff commenced proceedings on an interlocutory basis to restrain the first defendant from inter alia carrying on business under its corporate name and for ancillary relief.
165. The defendants admitted that the first defendant was a "shelf company", and filed no evidence.
166. It was contended by the defendants that ; (a) there had been no misrepresentation on the first defendant's part, still less a misrepresentation in the course of trade as there had been none, still less a misrepresentation to prospective customers, as there were none ; (b) there had been no misrepresentation intended or calculated to injure the goodwill of the plaintiff since it had neither business nor goodwill in Australia ; and (c) there was no evidence of any damage to the plaintiff.
167. It was held that the tort of passing off was not restricted to situations involving competing traders in the same line of business; it included cases of false suggestion by a defendant that its business was connected with that of the plaintiff ; this would be capable of damaging the plaintiff's goodwill. It was, inter alia, also held that the law of civil conspiracy also afforded the plaintiff a basis upon which to found at appropriate order for interim relief ; it was legitimate to infer that the two natural defendants had acted together so as either to appropriate for their own commercial advantage the commercial reputation of the plaintiff or prevent the plaintiff exploiting its reputation in Australian and that balance of convenience was in favor of granting the relief sought.
168. This Australian case is also a deviation from the "hard line" in he Budweiser case, just as the Orkin case is a deviation from the hard line of Budweiser case.
169. Mr. R.K.P. Shankardas also referred to the case of Esanda Limited and Anr. v. Esanda Finance Limited (supra). The plaintiff was an Australian finance company, incorporated in the year 1955, whose parent bank was the English Scotish and Australian Bank. From the first letters "English" and "Scotish", alphabets S & A were taken and the abbreviation S & A was formed from which the word "Esanda" was formed, and the name of the Australian Company derived. It was wholly owned by the ANZ Banking Group, and had a capital of SA 100 million, and conducted its business through all branches of ANZ Bank in Australia, and had a number of offices in its own name. It was a very big and well known Lance company in the Common Wealth of Australia, and was 34th in the top Australian Companies. It had no direct presence in New Zealand, but had financial involvement with local residents and companies and others activities in New Zealand as well as a reputation in New Zealand.
170. The defendant company was a finance company, set up in New Zealand in early 1983, and registered under the name Esanda Finance Ltd. The plaintiff on learning of this registration, wrote to the defendant requesting that it change its name. The defendant refused this request, and the plaintiff sought interlocutory relief restraining the defendant from passing off its business as being in some way associated with the plaintiff. The matter was tried before the High Court of New Zealand, and interlocutory injunction was granted. It was held that : (1) the first plaintiff's affidavits showed evidence of sufficient market activity in New Zealand to establish a reputation and goodwill entitled to protection against passing off ; (2) the natural assumption from the adoption of the same fancy name was that the two businesses were in some way associated with one another and since the defendant was a newly established company, the plaintiffs might later suffer damage if the defendant's business did not succeed ; (3) the balance of convenience lay in favor of the grant of an injunction. It is stated that, "reputation plus some market activity in the
jurisdiction--although the evidence of it may be weak, is enough to establish a business goodwill entitled to protection". This view is markedly distinct from the view taken by the English Court in Budweiser case, where despite huge sale of more than 5 million beer cans in English territory, though on American bases, and consumption by the British subjects, was not held to be sufficient to establish the goodswill. This indeed is the hard line, and the New Zealand case is a deviation from the hard line, like the Canadian cases.
171. The Indian cases which are also deviation from the hard line of Budweiser case is the case reported as Yardley & Co. v. Kamal Trading Company and Ors., a Division Bench judgment of the High Court of Bombay. This judgment was delivered in Appeal No. 1116 of 1987 by Pendse and Kenia, JJ. on 5.10.1987 Yardley & Co. was an English company who sought an injunction to restrain the defendant Kamal Trading Co. from manufacturing, selling or offering for sale or otherwise dealing in tooth brushes and the like goods bearing the trade mark "Yardley", or any other trade mark deceptively similar thereto, so as to pass off, or as would likely to pass off the defendant's goods. The Single Judge had declined to grant injunction for the reason that the goods of the plaintiff were not available in India after the year 1958 because of the import restrictions, and felt that the decision the Budweiser case (1984) F.S.R. 412 did not permit grant of injunction to the plaintiff. The plaintiff company had contended that it had world wide business in the manufacture and sale of cosmetics, toiletries and perfumery since the last several years, and have been using the trade-mark "Yardley" and had obtained registration of the trade mark "Yardley" in India in the year 1943. The plaintiff asserted that in November, 1985, the plaintiff company became aware that the defendants were selling tooth brushes under the trade mark "Yardley,,. The Division Bench reiterated that in its opinion the view taken in Budweiser case is not the correct one. According to the Division Bench, goodwill and reputation does not extinguish merely because goods are not available in the country for some duration,,. The Division Bench noted that the only explanation which could be given by counsel for Kamal Trading Company, as to how they had struck upon the word "Yardley,, was that it is a well known word having acquired reputation in India. The Division Bench said that, "that is exactly what the plaintiffs are claiming, and that is why they complained that the defendants are passing off the goods by using the plaintiff's reputation, and granted the injunction sought by the plaintiff. I respectfully agree with the views of the High Court of Bombay.
172. Mr. R.K.P. Shankardas also referred to the judgment reported as 1980 DLT 466, and 1920 (2) Ch. 282. 1 do not think that I need to deal with the same, in view of the judgments which have already been dealt with.
173. In concluding his arguments regarding prima facie case and the balance of convenience, Mr. R.K.P. Shankardas says that as far as the prima facie case is concerned, in view of the judgments dealt with above, it is hot necessary to carry on business in India. It is enough in India that the plaintiff has a reputation in India ; it is enough that the people of India will be deceived if somebody other than the plaintiff uses the name or the word in connection with the goods or services, that reliance on the Budweiser's case by the defendant is irrelevant as it has been disapproved of in India, Ireland, Canada, Australia and New Zealand. Alternatively it is contended that business was in fact being carried on by the plaintiff in India, as is evident from some of their bills which have been filed by the plaintiff, showing sales to Government of India, government departments like Andhra Pradesh Technologies, as well as private organisations ; that the defendant had at all times knowledge of the plaintiff's activities, and were conscious of plaintiff's name and reputation. The defendant was admittedly incorporated later in point of time in the year 1985. The contents of the advertisements of the defendant clearly indicate awareness of the plaintiff's products. These advertisements are dated 9.3.1986 onwards. Copies of the advertisements have been annexed to the plaint. In view of the contents of the advertisements, it was not open to the defendant to ask the plaintiff as to who they were, as the defendant already knew who the plaintiff were. The fact that the defendant used "Apple Computers, is sufficient to indicate that they knew "Apple Computers", and, therefore, knew the reputation of "Apple Computers".
174. Mr. R.K.P. Shankardas also refers to Sections 57 and 78 of the Evidence Act, and says that this court can take judicial notice of the proceedings in the Parliament, and refers to question No. 4893 dated 16.4.1990. This question in the Parliament related to Desk Top Publishing Equipment, manufactured by the plaintiff, which had been imported in India. In these circumstances the queries raised by the defendant in their letter dated 18.1.1986 were quite irrelevant.
175. As regards the alleged delay, which according to Mr. Chagla was fatal to the action. Mr. Shankardas states that the defendant company was incorporated in the year 1985. The plaintiff gave cease and desist notice on 17.1.1986. There were negotiations between the parties, and thereafter even proposals show that the defendant were aware that the plaintiff have reputation. According to Mr. Shankardas, as a result of cease and desist notice and negotiations the word "Apple" was dropped from the corporate name of the defendant.
176. Two years later, another notice was given by the plaintiff. This time-lag of two years, Mr. Shankardas says, was nothing. As the plaintiff is a foreign company, very far apart from India, in the United States of America. He asserts that the plaintiff did not get to know about "Apple Computer Education" advertisements till 1988. Mr. Shankardas says that whereas the first complaint was with regard to the corporate name, the second complaint related to "Apple Computer Education". The period of 24 months is not undue delay, as in September, 1986, the word "Apple" was dropped from the corporate name of the defendant, the second notice was in September, 1988 when the plaintiff became aware of the defendant's advertisements regarding "Apple Computer Education". He says it was the advertisement of the defendant in June, 1988, in the magazine India Today at page 86, that resulted in the second notice. He says that in the facts and circumstances of the instant case, the defendant should not be permitted to ignore the prior notice, and assert delay as being fatal to the plaintiff's action.
177. I agree with what is stated by Mr. Shankardas that in the facts and circumstances of this case it cannot be said that the alleged delay in the institution of the action was fatal to the action.
178. As regards the balance of convenience, it is stated by Mr. Shankardas that it has to be kept in view that cease and desist notices have been given by the plaintiff. The defendant should not have continued to advertise its "Apple Computer Education" as it did. The change of name from Apple to any other, in connection with Computer Education, is not likely to cause any damage, as the defendant company is still developing. Not restraining the defendant would mean that the public will be continued to be deceived by a false connection with the well known plaintiff.
179. According to Mr. Shankardas, the balance of convenience is also in favor of the plaintiff, as and injunction would stop the infringement. The same view had been taken in 1990 Arbitration Law Reporter 312, and Kerly on Trade Mark 12th Edition, pages 320 and 321, and seeks restrain order in terms of prayer (2) at page 105.
180. In view of the fact that some additional cases were cited in the reply by Mr. Shankardas, I permitted Mr. Chagla to make additional sub- missions. In his additional submissions Mr. Chagla contends that as far as trading style is concerned, the apple is not being used, and the contention in that regard have become academic as the word "Apple" was dropped from the trading style in September, 1986 by the defendant. As regard the restraint on the use of "Apple" logo, it is asserted by the defendant that they are not using the same logo. In other words, they are not using the identical logo, as used by the plaintiff.
181. In my view, the suggestion given by the logo used by the defendant is the same as that which is used by the plaintiff. The reference is to "Apple", a fruit, which the plaintiff have connected With the "Apple Computer" by their constant use of the apple logo in conjunction with their computers and advertising and publicity.
182. I have already dealt with the contentions of Mr. Chagla the delay is fatal. I do not need to deal with it again. The contention (sic) Mr. Chagla in his additional submissions that it is wiser to follow the English law as our statute based upon English law, does not appeal to the for the reason that, as stated above, the world opinion in regard to passing off seem to be that the English view is not the correct one. The Courts in New Zealand, Australia, Canada and India have deviated from the Budweiser's case, and I am inclined to accept that the view other than the English view is a more appropriate one in the light of current exchange (sic) the information and knowledge which is prevalent between various countries of the world, and also because of exchange of information, and movement of newspapers, magazines, videos, motion pictures and movement of people
183. Mr. Chagla contends that as far as India is concerned, user (sic) important in view of Section 46 of the Trade and Merchandise Marks ACT 1958. It is to be become in mind that action for infringement of (sic) mark is different from a common law action of passing off. Inasmuch as Section 46 of the Act leads to removal of registered mark from the book, and non-user of a registered mark for the period mentioned therein, the provision of that section cannot control the common law remedy of passing off. The Supreme Court in was
concerned with the removal of registered trade mark from the register, and not with a passing of action.
184. I do not accept the reservation which Mr. Chagla had with respect to the Fletcher Challenge's case, Esanda's case and Yard ley's case,
185. In his additional submissions, Mr. Chagla has emphasised (sic) contentions regarding field of activity by contending that the field of activities of the plaintiff, and the field of activity of the defendant are different. The plaintiff manufacture computers, and the defendant is in computer education. As I have said earlier, I do not agree. No one can operate a computer without being told how it shall work. In other words, any person who wishes to use a computer, shall have to be "educated in its use". The computer and education or training with regard thereto, go hand in hand, and one cannot use one without the other. They are as inseparable as milk and water after they have been mixed together.
186. In the facts and circumstances of the case, the contentions of Mr. Chagla that the delay in institution of the suit is fatal, and his reliance upon (Ripley v. Bandey, 14 RPC 591) and (Lombard Banking Ld. v. D.H. Lombard Ld., 1969 RPC 60) would not apply in the peculiar facts and circumstances of the instant case, which have been set out herein. The principles laid down in these two cases, have no bearing upon the instant cese.
187. It is contended by Mr. Chagla that the balance of convenience lies in not granting the injunction, inasmuch as in a period of five years, the plaintiff company has been able to make nine sales of its products vide nine invoices. He says that the value of the sales so effected, is much smaller compared to the turn over of the defendant. Whereas the sales of the plaintiff are in lacs, the sales of the defendant have gone into crores, and the defendant have got a large goodwill in the field of computer education.
188. For the purposes of meeting this argument, it is necessary to bear in mind that the manufacture and sale of computers in India is restricted. Despite that, three have been sales to Government of India, and to government companies, and to some private parties. This could not have been, had Apple Computers not had a name and reputation for the excellence of its products. 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 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, that is to say take advantage of the name "Apple" in connection with "Apple" in connection with the computers, which cannot be separated from computer education.
189. I agree with the contentions of Mr. Shankardas that the basic judgment which has been relied upon by Mr. Chagla in the instant case, is the principles laid down in Budweiser's case, that unless there is business activity in the local jurisdiction in the place where passing off is alleged to be taking place, passing off action cannot be maintained. In the instant case, there is business activity as 'evidence by the invoices which have been shown. The business activity may be low and that is due to the fact that there are restrains on free trade in computers in India, and the plaintiff is a foreign manufacturer. In any case, the view which is current in the Bombay High Court judgment, the Australian Judgment, the New Zealand judgment the judgment of the Irish Supreme Court, the Canadian judgment, all indicate that there is a new trend of protecting reputation. In addition to that, there is a strong trend to prevent deception of the public, whether it is deliberate or innocent, and in India because there is a greater need to catch up with the more advanced countries, all the more necessary that the deception of the public, innocent or deliberate, be avoided by injunction In view of the contentions of the defendant in the written statement, and it view of the negotiations which took place between the parties after notice it 1986, to come to the conclusion that the defendant arc as innocent as they claim to be. In view of the correspondence exchanged between the parties it is not possible to accept the view that the defendant did not know of the existence of the "Apple Computers". It cannot be forgotten that the word "Apple" has an independent existence, the exists as a fruit. The word "computer,, also has an independent existence. It denotes a parties type of equipment. When the two independent words like "apple and "computer" are strung together, it creates and independent identity. The stringing together of words, lead to a descriptive equipment. When the words "apple and "computer were used together, it started to (sic) computers made by particular source, being the plaintiff.
190. I also agree with what is being stated by Mr. Shankardas with regard to balance of convenience. It cannot be doubted that the plaintiff has done some business in India. It may be that value of business done by the defendant is more. that would not be a reason for saying that the defendant should be permitted to continue perpetuate association which is not desired by the plaintiff. It is simple enough matter for the (sic) defendant to advertise, as they continue to do, that the name of (sic) computer education business/service has been altered, and so altered the the word "Apple is removed there from. It is highly unlikely in view (sic) whatever goodwill has been generated by the defendant, that a change their name would affect volume of their business, or affect them (sic) The injunction will only mean that they will have to carry on the business in another name, and rely upon the strength of their own reputation. (sic) defendant have an infinite variety of names to choose, and any of the which does not link them with the plaintiff , would do.
191. As regards laches, Mr. Shankardas says that it must be (sic) in mind, and I agree, that after a cease and desist notice has been given the defendant, in the face of such a cease and desist notice, the defendant have continued to carry on business by a false suggestion of plaintiff association with the defendant. This should be put an end to. (sic) what is being stated by Mr. Chagla, the defendant would be able to stand their own reputation, and they do not need the crutch of the plaintiffs near
192. Besides this, the cease and desist notices which were given, by some partial effect. The defendant dropped the word "Apple" from the business name. Had they not done so, the desire to make connection between the plaintiff and the defendant would have even been more obvious
193. In my view, it is not possible to say after the cease and (sic) notice has been issued, that the plaintiff can be accused of (sic) There has to be actual and knowing encouragement before (sic) can be applied against the plaintiff. In the instant case, the plaintiff separated from India by over 10,000 miles, and one must consider distance between the two places, U.S.A. and India, as one of the relevant factors in prima facie holding that there is no acquiescence, after the (sic) and desist notice.
194. In view of the level of business done by the plaintiff in India, the other publicity material reaching in India, it is not possible to hold that the plaintiff has no reputation at all in India.
195. In the facts and circumstances of the case, in the field of computers, the word "Apple" by itself indicates computer, and computer peripherals, which are made by the plaintiff company.
196. In this view of the matter I think that it is in the interest of justice and the balance of convenience is in favor of the plaintiff in granting injunction, sought by the plaintiff.
197. In the facts and circumstances of the case, I think that the plaintiff have a good prima facie case, and the balance of convenience is also in favor of the plaintiff for restraining the defendants from using the words "Apple" or "Apple Computers", in the course of the trade of computer education which is being organized by the defendant.
198. The defendant, its directors, partners, distributors, representatives, servants and agents are, therefore, restrained for musing the words "Apple", "Apple Computer" or any other words deceptively similar thereto as a part of the legend "Apple Computer Education" in relation to business of computer education, or otherwise in the course of trade. The defendant, its directors, partners, distributors, representatives, servants and agents are also restrained from using the device of a half bitten apple which is deceptively similar to the half bitten apple logo of the plaintiff, as a trade mark, or as part of trade advertisement, or otherwise in course of trade.
199. In the facts and circumstances of the case, the plaintiff shall also be entitled to costs incurred in connection with this application. I must record that the costs which are postulated by the original side rules, in connection with each application, would not do in this case. Directions "regarding the costs of this application shall be given at the time of final disposal of the suit.
200. IA. No. 7678 of 1989 stands disposed of.