JUDGMENT :

1. The plaintiff, in the year 2007, instituted this suit, to restrain (a) Sandeep Jain, Proprietor Hi Tone Electronics; (b) Hi Tone Electronics; and, (c) Janata Electronics, by way of permanent injunction, from passing off their goods as that of the plaintiffs by using the trade mark BOSS or Hi Tone BOSS and for ancillary reliefs.

2. It is the case of the plaintiff, (i) that the plaintiff is a company incorporated in Japan in the year 1972, engaged in manufacturing, marketing and exporting electronic musical instruments, electronic equipment and software and is a world leader in design, manufacture and distribution of electronic musical instruments including keyboards and synthesizers, guitar products, electronic percussion kits, digital recording equipment, amplifiers and audio processing devices; (ii) the plaintiff is the registered proprietor of various trade marks including BOSS, RODGERS, RSS, EDIROL and ROLAND, in respect of electronic equipments; (iii) the trade mark BOSS is used in respect of compact effect pedals, twin effect pedals, multi effect pedals, acoustic processors, metronomes, tuners, rhythm machines, sound recording equipment and also accessories and is recognized across the world as a hallmark in musical equipment; (iv) the BOSS mark was first used in June, 1976, in respect of Chorus Ensemble products in Japan, and was adopted to connote “lead role”; (v) the trade mark BOSS has been registered in favour of the plaintiff in India, in Classes 9 and 15, with effect from 2nd July, 2004; (vi) Rivera Digitec (India) Pvt. Ltd. was established in Mumbai as exclusive distributor of products of the plaintiff, to serve the Indian music industry, by making available to them the musical instruments under the brands Roland, BOSS and Edirol; (vii) the plaintiffs, through their distributor, have been importing products bearing the mark BOSS in India since 1993 and have acquired an excellent reputation by continuous import and sale of BOSS products; (viii) the sales in India of goods bearing the mark BOSS have risen from Rs.68,68,330/- in 2002-2003 to Rs.96,79,190/- in 2006-2007; (ix) the defendant no.2 Hi Tone Electronics, of which defendant no.1 Sandeep Jain is the proprietor and defendant no.3 Janata Electronics is retailer, is engaged in the business of manufacturing and marketing musical instruments such as amplifiers, microphones, speakers, stereos, mixers and cassette players under the trade mark BOSS and also exporting products under the mark Hi Tone BOSS; (x) the defendant no.2, on its website www.hitoneelectronics.com, advertises products under the trade mark BOSS; (xi) the defendants have also registered the trade mark BOSS in India in Class 9; (xii) the manner of use and of the trade mark BOSS by the defendant is the same as that of the trade mark of the plaintiff; (xiii) the defendants have dishonestly adopted the trade mark and trade dress of the plaintiff; and, (xiv) at the time when the defendants registered the trade mark, the plaintiff’s products were already well-known under the said trade mark.

3. The suit, accompanied with an application for ex parte ad interim relief, came up first before this Court on 23rd April, 2007, when though summons of the suit and notice of the application were ordered to be issued, no ex parte relief claimed, granted.

4. The defendant no.2 has contested the suit by filing written statement and also filed a Counter-Claim, pleading that (i) the defendant no.2, a partnership concern, adopted the trade mark BOSS in relation to public address amplifiers, echo and reverb amplifiers, microphones, speakers, disco lights and sound invertors and other similar products, way-back on 15th January, 1979 and have been using the trade mark BOSS continuously and extensively since then; (ii) the trade mark BOSS was adopted since the defendant no.2 was the first entity in India to start manufacturing echo, reverb amplifiers, disco lights, sound invertors; (iii) the defendant no.2 commissi