1. This is an action for passing off and infringement of the plaintiff’s trade-marks and copy rights. The plaintiff has sought a permanent injunction restraining the defendant from using the word “variety” and the flying “V.” logo and/or any other similar or deceptively similar marks, style and/or logo as part of the defendant’s publications, web site, trading style or otherwise so as to infringe the plaintiff’s registered trade mark variety. The plaintiff has also sought a perpetual injunction restraining the defendants from passing off its publications and/or web site as that of the plaintiffs by using the said mark and logo and/or any other mark or logo similar or deceptively similar thereto, a permanent injunction retraining the defendant from infringing its copy right in the original artistic work as shown in Exhibit “A” to the plaint and a mandatory order directing the defendant to forthwith change the name of its publications and/or web site so as to ensure that the word “variety” and the logo do not appear therein.

2. Plaintiff No.1 and Plaintiff No. 2, “Variety Inc” are corporations registered in the United States of America. Plaintiff No.1 is the owner of a domain mark “Variety’ wherein the letter “V” is written in a stylized manner. The second stroke extends over the letters “ARIETY” in the shape of the blade of a cutlass. Plaintiff No.1 is also the owner of various other trade marks wherein the word “Variety” forms a part such as “Daily Variety, “Daily Variety Gotham” and “Variety.com” and stylizations thereof.

3. Plaintiff No.2 carries on business inter alia of publishing newspapers, magazines, directories and online media and marketing services in various countries. Plaintiff No.2 is the licensee of plaintiff No.1 in respect of the variety marks. It has correspondents in several countries including India. The defendant also carries on business of publishing inter alia directories for the cinema industry using the word “Variety” therein namely “Variety Cinema Directory”. The defendant also uses the word “variety” in its web site www.varietydirectory.com.

4. The predecessor of plaintiff No.1 has since the year 1905 used the said trademark “Variety” and the logo extensively. The plaintiffs’ publications provide extensive coverage of media, television and the film industry covering global media and the entertainment business in 84 countries including India. It has published weekly and delivered internationally since 1933, the publications. According to the plaintiffs their publications have been the unchallenged leaders in respect of publications connected with the industry providing even same day coverage thereof. In paragraph 5 of the plaint details are furnished to establish the plaintiffs’ reputation and goodwill.

5. On 21st January 2006 the plaintiff made an application under the Trade Marks Act 1999 for registration of the mark “Variety” under class 16 and class 42. It is important to note that in these applications the plaintiff stated its user to be since February 2002 in respect of the application under class 16 and since February 2001 in respect of the application under class 42.

6. The plaintiffs claim to have come to know about the defendants user of the said mark only in the year 2006. The plaintiffs thereupon through their advocate’s addressed to the defendant a cease and desist notice dated 12th April 2006. The plaintiffs through their advocate addressed another cease and desist notice dated 22nd September 2006. The notices do not state the date from which the plaintiff started using the mark in India.

7. The plaintiffs filed the suit on 28th June 2007. The suit referred to the applications for registration under class 16 and 42 dated 21st January 2006. The plaint thus proceeded on the basis that the use was with effect from February 2001 and February 2002 in respect of classes 42 and 16 respectively. In other words the plaint undoubtedly proceeded on the basis of the plaintiffs having en