The judgment established the principle of trans-border reputation and goodwill, and the protection of trade marks and domain names in cases of fraudulent misrepresentation and passing off.

G.S. Sistani, J.

1. Plaintiff has filed the present suit for permanent injunction restraining trade mark and copyright infringement, passing off, dilution, acts of unfair competition, damages/rendition of accounts, freezing of assets, delivery up etc.

2. Summons in the suit and notice in the application under Order XXXIX Rules 1 and 2 were issued on 24.04.2012 when an ex parte ad interim injunction was granted in favour of the plaintiff and against the defendants thereby restraining them from using the trade mark JANE NORMAN in relation to goods which fall in class 14,18, 25 and 35 including clothing, readymade garments, handbags, footwear and other accessories in which the plaintiff is holding registration and also from using the domain name www.janenorman.in and the mark JANE NORMAN as part of their corporate name to pass off their business as that of the plaintiff directly or indirectly.

3. On the next date of hearing, i.e. 22.05.2012, counsel for defendants no. 8 and 9 entered appearance and sought time to file written statement; defendants no. 5 to 7, 10 and 11 were unserved; and since none appeared on behalf of defendants no. 1 to 4 despite service, they were proceeded ex parte. Vide order dated 22.08.2012 written statement on behalf of defendant no. 8 was taken on record and further time was granted to defendant no.9 to file his written statement; and fresh summons were directed to be issued to defendants no. 5 to 7 and 10 and 11. Vide order dated 10.04.2013, on an application made by counsel for the plaintiff to abandon its claim against defendants no. 5 to 7 and 10 and 11, the suit qua defendants no. 5 to 7 and 10 and 11 stood dismissed as withdrawn. Vide order dated 04.07.2013, on a joint application filed by plaintiff and defendant no.8, under Order XXIII Rule 3, which was taken on record, the suit was disposed of qua defendant no. 8 in terms of the settlement arrived at between the plaintiff and defendant no. 8 as set out in paras 1-11 of the application I.A. no. 3779/2013. Similarly, vide order dated 24.01.2014, on an application made by the plaintiff under Order 23 Rule 1, CPC seeking leave to unconditionally withdraw the suit against defendant no. 9, the suit was dismissed qua defendant no.9. Ex parte evidence of plaintiff was completed on 23.04.2014.

4. Plaintiff has filed affidavit by way of evidence of Mr. Sharad Misra, PW-1, the Constituted Attorney for the plaintiff. PW-1 in his affidavit by way of evidence has deposed that the Plaintiff is an internationally renowned manufacturer and seller of women’s clothes, handbags, footwear and other accessories. PW-1 has further deposed that the Plaintiff trades in several countries around the world using the trade name Jane Norman, and the trade marks JANE NORMAN and (the ‘JANE NORMAN Marks’).

5. Mr. Sharad Misra, PW-1 has further deposed that the plaintiff has been using the trade name and trade mark JANE NORMAN continuously since 1952 and that the JANE NORMAN Marks are instantly recognisable to millions of consumers around the world. It has further been deposed that as the Plaintiff operates stores in prominent locations in major global cities, even individuals not very familiar with fashion brands are acquainted with the JANE NORMAN Marks and are aware of their reputation. The Plaintiff has registered the JANE NORMAN Marks in over 50 countries, including the United States of America, all the member-states of the European Union, Switzerland, Russia, China, New Zealand, Kuwait, Saudi Arabia, Oman, Qatar and Turkey. Copies of trademark registration certificates from around the world have been filed and marked as Ex. PW1/3. Further, a list of worldwide registrations of the JANE NORMAN Marks duly attested by a notary public is being filed along with this plaint and marked as Ex. PW1/4. PW1 has also deposed that in India, the Plaintiff’s business predecessor, Jane Norman (Holdings) Limited, applied for the registration of the JANE NORMAN Mark in November 2006 in