The plaintiffs failed to establish a strong prima facie case of infringement or passing off under the Trade and Merchandise Marks Act, 1958.

JUDGMENT - REBELLO F.I., J.:-The plaintiffs have filed the present suit against the defendant for infringement of their trade mark and also action in passing off. The case of the plaintiffs is that the 1st plaintiff No. 1 is an international company having several affiliates, associates and subsidiary companies. The 1st plaintiff has several registered trade marks in its name all over the world including India. The mark "KODAK" a coined word is a distinctive trade mark and one of the most well recognised trade mark in the world. The 1st plaintiff is registered proprietor of the said mark as also the trade mark known as "KODAK" (device). All these are registered under the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959 framed under the Trade Merchandise Marks Act, 1958. The registration of the said trade marks are valid and subsisting. The 2nd plaintiff is a subsidiary of the 1st plaintiff. At the time of filing of the suit 74% of the share holding was held by the UK subsidiary and as of date the 2nd plaintiff has share holding of 96%. It is then averred that the plaintiff No. 2 imports and markets the photographic films manufactured by Kodak Limited U.K. (a subsidiary of the 1st plaintiff in U.K.). These imported films bear the legend "not for re-sale outside India". The averment of plaintiff No. 1 is that the trade marks are applied the Kodak India Limited upon the said films as a licensee of the 1st plaintiff.

It is the case of the plaintiffs that the defendant, a partnership firm appears to be in the film trading business and is also in the business of purchasing photographic film. The defendant, it is contended purchases film bearing the impugned trade marks with the legend "Not for resale outside India" and exports the said films to Hong Kong and/or China. The said export by defendant to Hong Kong and/or China is without the consent of the plaintiffs. It is alleged that the defendant exported Konica Films (in reality Kodak Profoto Films). It is then set out that the notice on the packs, constitutes a positive prohibition upon dealing in the goods under the said trade marks, outside India that runs with the goods. The plaintiffs have not consented to the use of its trade marks in Hong Kong and/or China, and the plaintiffs have, by a clear notice made its absence of consent apparent to any purchaser of "Kodak Professional Profoto" films in India. The defendant's act of exporting "Kodak Professional Profoto: films for re-sale outside India is actionable in India as the use of the said trade mark by the defendant amounts to use of the trade mark in India. The defendant is using the trade mark in the course of trade, in relation to the said goods in such a manner as to render the use of the marks likely to be taken as being used as a trade mark. Reference is made to Exhibit "G" which is letter dated 15th May, 2001 from Eastman Kodak Company, U.K. By the said letter the plaintiff No. 1 has confirmed the understanding under which Eastman Kodak Company through its British Subsidiary Kodak Ltd., sells to Kodak India certain films known as Kodak Professional Profoto film. It is then set out that it has come to their knowledge that the films are specifically for the purpose of sale and distribution in India and for no other purpose and for this reason the cartons are clearly marked "Not for resale outside India". The attention of the plaintiff was drawn to certain persons exporting such film out of India to Hong Kong and that in doing so, the true identity of such film has been hidden or misrepresented as that of another manufacturer. It is also set out that quantities of such film have been found on the mainland of China in cartons with counterfeit Kodak's Chinese language boxes for Kodak Gold film. It is then set out that this activity is illegal and has caused the plaintiff No. 1 substantial damage and injured its reputation of its products in commerce. The plaintiff No. 2 was, therefore, requested to take all ne

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