The judgment established the importance of the registered proprietor's exclusive rights under the Trade Marks Act, the requirement of continuous prior user for establishing rights, and the principles of passing off in protecting goodwill and reputation.

JUDGMENT :

D.Y. Chandrachud, J.

The present order will dispose of the Plaintiff's Notice of Motion for an injunction in an action for infringement and passing off. On the request of both the learned Counsel appearing for the contesting parties, the Motion has been taken up for final disposal. The bone of contention in the suit is a trade mark, KORES and the device of a lady typist sitting before a typewriter. The case of the Plaintiff is that in or about 1924, a person by the name of W. Koreska, commenced the business of sale and distribution of duplicating stencils in India. The business in India was first commenced in Calcutta and was gradually extended to Bombay and was carried on under the mark KORES. The Plaintiff is a Company by the name of Kores India Pvt. Ltd. which was incorporated in the year 1936. The mark is stated to have been used in India initially by the firm of Mr. Koreska in respect of goods imported into India by a British Company by the name of Kores Manufacturing Co. Ltd. After the formation of the Plaintiff in 1936, the Plaintiff claims to have been appointed as Sole Selling Agent in India. The British Company applied for registration of the mark KORES in India, in Class 16 and Class 3 of the Trade Marks Act, 1940. The case of the Plaintiff is that Koreska assigned the business in India including the trade mark KORES to the Plaintiff. The application for registration of the mark by the British Company is stated to have been amended to the name of the Plaintiff. The registration of the mark was granted with the name of the Plaintiff as Proprietor. The initial registrations are stated to have lapsed. The Plaintiff applied for and obtained registration of the mark KORES (bearing Registration No. 131912) in Class 16. The British Company which held shares in the Plaintiff is alleged to have transferred those shares to an Indian Company by the name of Krishnalal Thirani & Company Limited.

2. The Plaintiff has relied upon the registration of its mark which bears Registration No. 131912 which has last been renewed for a period of 10 years from 13th December 2004. At Exhibit 'C' to the plaint is a list of goods and activities of the Plaintiff. Exhibit 'D' to the plaint contains a list of 69 registered marks of which the Plaintiff is the proprietor. The Plaintiff is also the registered proprietor of a device which consists of a lady typist working on a typewriter. The advertisement expenses incurred by the Plaintiff for the years 2000-2001 to 2005-2006 are as follows:

3. The sales figures of the Plaintiff reflect a revenue of Rs. 165.57 crores for 1997 which has increased to Rs. 222.00 crores for 2006.

4. The Plaintiff has obtained registration of marks in India using the word KORES on an extensive range of stationery and no stationery products, details of which have been furnished in para 6(vi) of the plaint. Seventy one marks are listed out.

5. The foundation of the suit is first, an alleged infringement by the Defendant of the mark of which the Plaintiff claims to be a registered proprietor. The Plaintiff sues for passing off as well. The Plaintiff has claimed that the mark has been extensively used since 1936. During the course of seventy years, the Plaintiff claims to have used the mark Kores and the device of a lady typist sitting in front of a typewriter on an exclusive basis in India. The Second Defendant is a Company incorporated in Austria which has recently commenced exporting selling and distributing products in India through the First Defendant which is an Indian Company. In January 2002, the Second Defendant instituted a suit against the Plaintiff in Germany for