JUDGMENT

S.N. Kapoor, J.--These two FAOs arise out of a collaboration agreement between predecessor-in-interest respondent No.2 and promoters of the appellant Company for formation of appellant- company in India and revocation of the agreement and withdrawal of implied consent to use Trade Marks by successors of a Swiss partnership firm which entered into the collaboration agreement plaintiff/respondent No.2 and proprietors of unregistered Trade Mark "AO/ASIF" and registered device and the word "Synthes" Trade Marks.

The plaintiff/respondents have filed two suits -- one for "passing off action" and the other for "infringement action".

In I.A. 3420/93 in Suit No. 709/93 for passing off action, learned Single Judge passed an injunction order restraining the appellants from manufacturing, selling, offering for sale and advertising surgical instruments and orthopedic implants one under the unregistered trade mark A.O./ASIF or device mark or any other similar mark as is likely to cause confusion, deception or may amount to passing off the goods of the defendants for those of the plaintiffs.

On I.A. No. 3419/93 in Suit No. 708/93 for infringement action, learned Single Judge passed similar order restraining the appellants from using the registered trade mark "Synthes" or any other similar mark amounting to infringement of the trade mark causing confusion or deception or amounting to passing off.

F.A.O. No. 192/96 has been filed against the injunction order on I.A. No. 3419/93 in Suit No. 709/93 in infringement action, while F.A.O. No. 193/96 relates to I.A. No. 3420/93 in Suit No. 708/93, in passing off action.

UNDISPUTED/UNCHALLENGED FACTS COMMON TO BOTH THE MATTERS.

2.1 In so far as factual matrix is concerned, one Robert Mathys, a Swiss mechanical engineer, is said to be the force in development of surgical instruments and orthopedic implants, etc. made of special steel and formation of the Association of Study of Internal Fixation (AO/ASIF) as well as Synthes A.G. Chur plaintiff/respondent No.1. Robert Mathys along with his son Renauld Mathys founded a partnership firm M/s. Robert Mathys Company in Bettlach Switzerland (the predecessor in interest of responded No.2) in 1946. In 1958 they entered the field of the development and manufacture of machinery and apparatus including surgical instruments and orthopedic implants and similar other components made of special steels. On 15th April, 1978, the firm entered into a collaboration agreement with N.P. Dhawan and R.M. Dhawan, proprietors of the appellant Company. On 20.4.90 M/s. Robert Mathys Company was converted into a corporate body and Mathys Limited Bettlach R.2 came to be incorporated.

2.2. In 1958 the Association of Study of Internal Fixation (ASIF) was founded with the object of studying internal fixation and its bio-mechanical pre-requisites and pitfalls relating to regaining of the complete function of injured limbs by anatomic reduction, stable fixation and early mobilization. These two letters `AO' of the trade mark (unregistered) are the acronyms formed from initial letters of two German words "Arbits genunis schatt" and "osteosynthes" while the word "ASIF" is acronym formed from the English words "Association for study of Internal Fixation" and AO/ASIF is also the name of the Swiss trust which owns almost all the shares in "synthes AG CHUR" plaintiff/respondent No.1. In 1960 the founders of AO and ASIF established AG Chur respondent No. 1 for the manufacturing marketing of a complete surgical armamentarium with the hope that respondent No.1 would eventually provide fund for research etc.

During 1960 to 1963 A.G. Chur R. 1 granted the right of manufacture and sale of surgical instruments and implants exclusively to three firms including M/s.Robert Mathys Company along with two other firms. But in 1963 Respondent No.1 Synthes AG Chur granted exclusive licence in favour of M/s Rob