A foreign plaintiff with a reputation in India can maintain an action for passing off, even without carrying on business in the country.

Ruma Pal

1. THE petitioner is a Company incorporated in America. It gets its name from its promoter Calvin Klein. Calvin Klein is a resident of America. He is a fashion designer. Before the petitioner was incorporated Mr. Klein designed and sold men's and women's apparel and accessories under the mark Calvin klein or CK. Mr. klein had started his business of tailoring and designing in 1968 using his name Calvin Klein or CK as his trade label. THE petitioner company now carries on the same and other business as the owner of 'Calvin Klein' and 'CK'. THE range of business includes perfumes, toiletry and optical glasses. Goods bearing the name Calvin Klein or CK have been sold by the petitioner or its predecessor-in-interest throughout the world but not in India. THE products bearing the trade mark Clavin Klein and CK have been advertised in diverse magazines such as Vogue, Cosmopolitan, New York Times particularly with regard to denim wear such as jeans, jackets, shirts, skirts and T. shirts etc. THE petitioner has claimed that the magazines in which the petitioner's products have been and are advertised have extensive circulation in the major cities in India.

2. THE petitioner appears to be the registered owner of the trade mark Calvin Klein and CK in various countries including the United States of America, almost all the European countries and several Asian countries. As far as India is concerned the petitioner is the registered proprietor of in trade marks in Class 24 and has applied for registration in respect of Class 25, 3 and 18 under the Trade and Merchandise Marks Act 1958. The petitioner's grievance is that in September 1993, the petitioner found that the respondents Nos. 1 and 2 were representing to the customers in India that the respondents 1 and 2 were the owners of the mark Calvin Klein and were soliciting business in respect of wearing apparel namely Jeans which were described as Calvin Klein Jeans. The petitioner has produced diverse advertisements made by the respondents Nos. 1 and 2 from which it appears that even the advertisements issued by the respondents Nos. 1 and 2 in respect of their products are visually and in substance virtually identical with those issued by the petitioner in respect of its products. The advertisements of the respondent No. 1 read as follows : "Calvin Klein Jeans will shortly be available at the best stores in town; a product of international Apparel Syndicate (the official brand owner)."

3. THE plaintiff accordingly filed a suit against the respondents inter alia for perpetual injunction restraining the defendants from passing off or attempt to pass off their jeans, t-shirts, shirts or cognate goods as those of the petitioner by use of the mark or label Calvin Klein or CK. THE plaintiff has also claimed a perpetual injunction against the defendants from infringing the petitioner's registered trade mark.

4. AN interlocutory application was moved and an interim order was passed restraining the respondents from passing off their goods including jeans, shirt, t- shirts and other wearing apparels by use or in connection with the mark Calvin Klein or CK. A receiver was also appointed for making an inventory of the jeans, t-shirts and shirts and other wearing apparels manufactured or sold or dealt with by the respondents and also the packing and other materials, which were used by the respondents for printing or embossing the word Calvin Klein or CK. The respondents have contended that they have been carrying on business in manufacturing and marketing Hosiery and ready-made garments and shoes under trade mark Calvin Klein since 1992 and they have been using not only the trade mark Calvin Klein but also CK on the buttons. The respondents have contended that admittedly the petitioner does not carry on business in India and that it was registered only in respect of Class 24 which did not cover the merchandise in respect of which the respondents were using the name or mark Calvin Klein