Double Coin Holdings Ltd. & Another vs. Trans Tyres (India) Pvt. Ltd. & Another

THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment Reserved on: 07.04.2011
Judgment Pronounced on: 20.4.2011

+ I.A. No.548/2011 in CS(OS) No. 89/2011

Double Coin Holdings Ltd. & Another ..…Plaintiffs

- versus -

Trans Tyres (India) Pvt. Ltd. & Another .....Defendants

Advocates who appeared in this case:
For the Plaintiff: Mr. Akhil Sibal, Ms. Seema Sundd,
Mr. Salim Inamdar, Ms. Abhiruchi Mengi,
Mr. Akhil Sachar, Mr. Anirudh Wadhwa,
Ms. Ritika Ahuja and Mr. R.N.
Karanjawala.
For the Defendant:Ms. Pratibha M. Singh, Mr. Kapil
Wadhwa and Ms. Archana Sachdeva

AND

+ I.A. No.550/2011 in CS(OS) No. 90/2011

Satish Kakkad and Another ..…Plaintiffs

- versus -

Zafco Trading LLC and Another .....Defendants


Advocates who appeared in this case:
For the Plaintiff: Ms. Pratibha M. Singh, Mr. Kapil
Wadhwa and Ms. Archana Sachdeva
For the Defendant: Mr. Akhil Sibal, Ms. Seema Sundd,
Mr. Salim Inamdar, Ms. Abhiruchi
Mengi, Mr. Akhil Sachar, Mr. Anirudh
Wadhwa, Ms. Ritika Ahuja and Mr. R.N.
Karanjawala.

CS(OS)Nos. 89/2011 and 90/2011 Page 1 of 73

CORAM:-
HON’BLE MR JUSTICE V.K. JAIN

1. Whether Reporters of local papers may
be allowed to see the judgment? Yes


2. To be referred to the Reporter or not? Yes

3. Whether the judgment should be reported
in Digest? Yes
V.K. JAIN, J
1. CS(OS) No.89/2011 has been filed by Double Coin
Holdings Ltd. and ZAFCO Trading LLC against Trans Tyres
(India) Private Ltd. and Mr. Harish Kakkad whereas CS (OS)
No.90/2011 is the cross suit, the defendants in CS(OS)
No.89/2011 being the plaintiff in the suit and the plaintiffs
in CS(OS) 89/2011 being the defendants in this suit.
Double Coin Holdings Ltd. is a Chinese company which
owns the trademark Double Coin in respect of tyres etc. and
claims that its products are being sold worldwide in as
many as 90 countries and ZAFCO Trading LLC (hereinafter
referred to as „ZAFCO‟) is its authorized agent. Double Coin
Holdings Ltd. claims that the trademark Double Coin was
adopted by it in the year 1930 and it started producing tyres
in the year 1934. It claims to be manufacturing radial tyres
for trucks, buses and automobiles since 1960s. It also
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claims to have manufacturing capacity of more than 6
million units and production of 2.7 million truck and bus
tyres in a year. It is also stated that 40% of the production
of the company is being exported to more than 60 countries
including India. It is claimed by Double Coin Holdings Ltd
that on account of continuous and widespread use of the
trademark Double Coin coupled with large scale
advertisements, the aforesaid mark has come to be
associated exclusively with this company and this mark is
registered in its name in several countries including USA,
China, Dubai, Brazil and various other countries. The
company claims turnover of Rs.22 crores, 25 crores, 30
crores, 34 crores and 38 crores in the year 2005-06, 2006-
07, 2007-08, 2008-09 and 2009-10 respectively in India
alone. It also claims to have incurred advertisement
expenses of Rs.33 lakhs, 37.5 lakhs, 45 lakhs, 51 lakhs and
57 lakhs respectively during the aforesaid years.
2. The case of the plaintiffs in CS(OS) No.89/2011 is
that Double Coin Holdings Ltd has been supplying tyres to
various dealers in India including Trans Tyres (India) Private
Ltd through ZAFCO since the year 2005. ZAFCO also
claims pan world presence covering more than 85 countries
CS(OS)Nos. 89/2011 and 90/2011 Page 3 of 73

with a huge distributorship database. It is alleged that
ZAFCO had appointed Trans Tyres (India) Pvt. Ltd. as its
authorized representative and distributor vide agreement
st th
dated 1 July, 2006, which was valid till 30 June, 2007
but was not renewed thereafter.
3. The trademark Double Coin has been registered in
India in the name of Trans Tyres (India) Pvt. Ltd. in respect
st
of tyres and tubes since 31 October, 2007. The case of the
plaintiffs in Suit No. 89/2010 is that they came to know
about this registration only in January, 2010 when plaintiff
No.2 ZAFCO started its operation in India and established a
branch office at Barakhamba Road, New Delhi for sale and
marketing of Double Coin Tyres being manufactured by
Double Coin Holdings Ltd. The defendants in CS(OS)
No.89/2011 have also applied for registration of trademark
in Class 4, 9 and 12 in respect of all kind of industrial oils,
greases and lubricants, automotive electric batteries and
batteries for electric vehicles, all kinds of vehicle rims (steel
& alloy wheel rims). A cease and desist notice was issued
by the plaintiffs in CS(OS) No.89/2011 to the defendants in
that suit. In their reply, the Trans Tyres (India) Pvt. Ltd.
and Mr. Harish Kakkad claimed that they had obtained
CS(OS)Nos. 89/2011 and 90/2011 Page 4 of 73

registration with the consent of the plaintiff and to its full
knowledge. A petition filed by the plaintiffs in CS(OS)
No.89/2011 for cancellation of the trademark obtained by
Trans Tyres (India) Pvt. Ltd. is stated to be pending before
the Intellectual Property Appellate Board (IPAB). The
plaintiffs in this suit have sought injunction restraining the
defendants in the suit from manufacturing, selling or
advertising any goods or services using the trademark
Double Coin or any other mark identical with or deceptively
similar to the plaintiffs‟ mark and holding themselves out as
owners of the mark Double Coin. They have also sought
rendition of account and delivery up of the infringing goods
and packaging material.
4. In CS(OS) No.90/2011, it has been alleged that the
plaintiffs are the largest tyre and rim trading company in
India having offices and warehouses in all major trucking
centres. They claimed to be extensively involved in trading
of tyres of various brands such as HANKOOK TYRES,
CHAOYANG, GOODRIDE, GT RADIALS, BELLSHINNA,
LINGLONG etc. They also claim to be manufacturing tubes
and selling them under the trademark Double Coin. They
claim turnover of Rs.20.83 crores, 64.33 crores, 52.50
CS(OS)Nos. 89/2011 and 90/2011 Page 5 of 73

crores and 59.50 crores in the years 2006-07, 2007-08,
2008-09 and 2009-10 respectively. It is alleged that the
plaintiffs started importing tyres in India through Trans
India, a proprietorship concern of plaintiff No.1 Satish
Kakkad. Trans India later became a private limited
company in the year 2006. It is also alleged that the
plaintiffs have been importing radial tyres for trucks from
the defendants, who have expended their product range
under the mark Double Coin to include tyres and they
intend to manufacture other products like rims, lubes and
batteries. They have alleged that though in China, Double
Coin Holdings Ltd. owns the trademark Double Coin, they
are the prior user and sole and registered proprietor of the
above said brand in India and have invested heavily in
promoting the brand. They claim that due to continuous
use and promotion of the mark Double Coin, the customers
associate this mark with them and that they have obtained
registration of mark Double Coin for tubes and tyres with
the consent of Double Coin Holdings Ltd. and to the specific
knowledge of their representative Mr. Wilson Ittoop. They
also claim that registration of trademark in India was
necessitated in order to restrain goods, which had infiltrated
CS(OS)Nos. 89/2011 and 90/2011 Page 6 of 73

the market in India through parallel imports. They have
claimed that investment made by them includes
establishing warehouses and branch offices, training
marketing personnel, establishing and maintaining relations
with client and organizing trips to the factory of Double Coin
Holdings Ltd in order to build the confidence of the
customer in the brand Double Coin. They also claim to
have established brand shops in Navi Mumbai, Kota and
Delhi, expansion of the aforesaid brand. They have also
claimed that they have been regularly receiving consignment
of goods for commercial sale of the product under the
trademark Double Coin. They have sought injunction
restraining Double Coin Holdings Ltd. and ZAFCO from
manufacturing and selling any product in India under the
mark Double Coin, besides seeking damages and/or
rendition of accounts.
5. The following facts emerge from the pleadings of
the parties and the documents filed by them:-
(i) It is only Double Coin Holdings Ltd., which
has been manufacturing the tyres bearing
the trade mark Double Coin.
(ii) Double Coin Holdings Ltd. adopted the trade
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mark Double Coin in the year 1930, started
producing tyres in the year 1935 and is
manufacturing radial tyres since 1960s.

(iii) Double Coin Holdings Ltd. is manufacturing
more than 6 million tyres per year, about
40% of which are truck and bus tyres.
(iv) Double Coin Holdings Ltd. is exporting 40%
of its production to more than 60 Countries
including India and the trademark Double
Coin is registered in its name in a number of
Countries including China, USA, Dubai and
Brazil.
(v) Tyres bearing the trademark Double Coin
were being sold to Trans Tyres by ZAFCO
which has presence in more than 85
st
Countries, since 1 July 2006. Prior to that
Mr. Satish Kakkad, who is the promoter of
Trans Tyres India Pvt. Ltd. and was at that
time trading in the name and style of M/s.
Trans India was purchasing these tyres from
ZAFCO since the year 2005.
(vi) ZAFCO had appointed Trans Tyres as its
CS(OS)Nos. 89/2011 and 90/2011 Page 8 of 73

authorized representative and distributor
st
vide memo dated 1 July 2006 for a period of
one year and that agreement was not
renewed though sale of tyres by ZAFCO to
Trans Tyres continued even after expiry of
this agreement.
(vii) About 99% Double Coin tyres sold in India
were imported by Trans Tyres alone.
(viii) Trans Tyres has been advertising the tyres
Double Coin Radial in the magazine
TransTopics which cater mainly to the
transporters and these advertisements had
no reference either to Double Coin Holdings
Ltd. or ZAFCO. No other advertisement of
Double Coin by Trans Tyres has been
brought to the notice of the Court.
(ix) Double Coin Holdings Ltd. has never
advertised its tyres or tubes in India.
(x) Trans Tyres has been trading in tyres of a
number of companies including, DUNLOP
YARTU, U-VA, HANKOOK TYRES,
CHAOYANG, GOODRIDE, GT RADIALS,
CS(OS)Nos. 89/2011 and 90/2011 Page 9 of 73

BELLSHINNA, LINGLONG etc.
(xi) The website of Trans Tyres shows that it is
the largest tyres and rim “trading” company
in India. On opening the link Double Coin
given on the website of Trans Tyres, the user
is connected to the website of Double Coin
Holdings Ltd., which shows that Double Coin
th
Holdings is the 15 largest tyres
manufacturer in the world, its heavy duty
radial tyre factory was established in early
1990s and its output of all-steel radia truck
is 1.3 million units per year.
(xii) Trans Tyres claims advertising expenditure
of Rs.335617/-, Rs.520333/-, Rs.468758/-
and Rs.415004/- in the years 2006-07,
2007-08, 2008-09 and 2009-10, respectively.
About 80% of this expenditure is stated to
have been incurred in respect of Double Coin
products.

(xiii) The trademark Double Coin was registered in
the name of Trans Tyres, in respect of tyres
st
and tubes w.e.f 31 October 2007.
CS(OS)Nos. 89/2011 and 90/2011 Page 10 of 73

(xiv) Though it is alleged by Trans Tyres that
registration of the trademark Double Coin in
its favour was in the knowledge of Double
Coin Holdings, this has been denied by
Double Coin Holdings which claims that it
came to know of its registration only in
January 2010, when ZAFCO started
operations in India and established a branch
office in Delhi for sale and marketing of the
Double Coin products. There is absolutely
no material on record which would indicate
that registration of the trademark Double
Coin in the name of Trans Tyres was in the
knowledge of Double Coin Holdings Ltd. prior
to January 2010.
(xv) An interview with Mr. Wilson Ittoop, General
Manager of ZAFCO describing ZAFCO as sole
agents for Double Coin range of tyres for
India was published in Trans Topics of June
11, 2009. This was an interview running
into three pages and in his interview Mr.
Wilson Ittoop specifically stated that Double
CS(OS)Nos. 89/2011 and 90/2011 Page 11 of 73

Coin was a Chinese product having a
significant market share in China. He also
stated that road conditions as well as load
conditions in India and China are identical
and the products had been very well
accepted in India and that Double Coin had
pledged to penetrate in Indian market. He
also stated that they were looking to market
Double Coin not as a Chinese product, but
as a domestic brand.
In this interview Mr. Wilson Ittoop referred to
Trans Tyres as their distributors in India
having support staff in many locations across
India and also being transporter, which very
well know of the requirements of the
customers. He also stated that their
engineers would be posted at all major
trucking centres in the country and they
would have their offices warehouses and sales
outlets across the country. He further stated
that currently ten leadings logistic companies
in India were using their products and were
CS(OS)Nos. 89/2011 and 90/2011 Page 12 of 73

importing directly from Double Coin.
The very same issue of Trans Topic contains
one full page on background of Double Coin
and it is noted that the first tyre bearing the
Double Coin name was manufactured in
1934 and that Double Coin tyres are
manufactured in China. It is also stated in
this article that Double Coin Holdings Ltd.
which was earlier known as Shanghai Tire &
Rubber Co. Ltd. had in the year 2007
changed its name to Double Coin Holdings
Ltd. to stress the fame and value of Double
Coin brand name. It was also stated in this
article that Double Coin Tyre Research
Institute in Shanghai focuses on research
and development for testing compounds
processes and products as well as providing
technical support for all Double Coin
factories. It is pertinent to note here that the
advertisement of Double Coin inserted by
Trans Tyres was also published in the very
same issue in which this article along with
CS(OS)Nos. 89/2011 and 90/2011 Page 13 of 73

interview of Mr. Wilson Ittoop was published.
(xvi) Double Coin tyres were being sold by ZAFCO
to other importers in India as well as it was
also stated in the interview of Mr. Wilson
Ittoop, though the other importers in India
were rather miniscule, the pre-dominant
importer in India being Trans Tyres.
Double Coin Holdings Ltd. has filed invoices
pertaining to sales of these tyres to Best
Roadways, Okara Roadways and S.K.
International. The invoices of some of the
shipments to these transporters are in the
name of Trans Tyres but some of them are
directly in the name of these transporters.
(xvii) In an article published in October 25, 2007
issue of TransTopics (the only magazine in
which the Trans Tyres had advertised tyre
products), it was stated that Trans Tyres was
a company importing Chinese Radial Tyres
Double Coin, which was considered to be the
best radial tyre in the world.
(xviii) „Made in China‟ as well as the „logo‟ of
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Double Coin Holdings Ltd. has been
embossed on the tyres sold under the brand
name Double Coin, though the words “Made
in China” are quite small in size. The logo of
Double Coin Holdings Ltd. as also some
writing in Chinese language has been printed
on the tubes which Trans Tyres is getting
manufactured locally and selling under the
brand name Double Coin and this was done
on instructions from Trans Tyres,
presumably to give an impression that it was
a Chinese product.
(xix) Vide e-mail sent on October 22, 2010 Mr.
Harish Kakkad alias Tony, who admittedly
controls Trans Tyres wrote to Mr. Jerry Liu of
Double Coin Holdings Ltd. referring to the
discussions they had, Mr. Tony referring to
the registration of the trademark Double
Coin in the name of Trans Tyres, specifically
stated that the brand belongs to company
(Double Coin Holdings Ltd.) and that they
wanted only to help them to stop small
CS(OS)Nos. 89/2011 and 90/2011 Page 15 of 73

manufacturers from making tyres in same
brand and to curb a parallel imports. He
further stated that anytime Double Coin
Holdings Ltd. wanted any papers from them,
they were ready to submit and that Double
Coin was an international brand belonging to
their company. He maintained that they had
no intention to use his brand for any mala
fide interest and would fully indemnify them
(emphasis supplied).

(xx) In its legal notice sent to Trans Tyre, Double
Coin Holdings Ltd. referred to the e-mail
nd
dated 22 October 2010 by Mr. Tony
admitting that the mark Double Coin belongs
exclusively to Double Coin Holdings Ltd. In
the reply sent through its counsel Trans
Tyres claimed that there was nobody named
Tony and no e-mail containing such an
admission was sent. However, in the article
published in TransTopics on October 25,
2007, Mr. Harish Kakkad, plaintiff No.1 in
Suit No.90/2001 has been referred as Tony
CS(OS)Nos. 89/2011 and 90/2011 Page 16 of 73

and is shown with the Chairman of
Hangzhou Zhongce Rubber Co. Ltd. China.
Even during arguments, it was not disputed
that Mr. Harish Kakkad is also known as
„Tony‟. It clearly shows that the plea taken
in the reply sent by Trans Tyres in this
regard is false and was taken with a view to
somehow get out of the e-mail sent by Mr.
nd
Harish Kakkad (Tony) on 22 October 2010,
admitting therein that the trademark Double
Coin belongs to Double Coin Holdings Ltd.
(xxi) Trans Tyres has setup two Double Coin
shops in India and has taken tyre dealers on
business tours though the only evidence
available on record shows that two tours
organized by Trans Tyres, one to the factory
by a Chinese company Hangzhou Zhongce
Rubber Co. Ltd. and the other to the factory
of Double Coin Holdings Ltd.
The photographs showing visit of the Indian
tyre dealers to the factory of Double Coin
Holdings Ltd. in China were published in
CS(OS)Nos. 89/2011 and 90/2011 Page 17 of 73

TransTopics, the very same magazine in
which advertisements were got published by
Trans Tyres. The write up published in
TransTopics shows that the dealers, who
visited the factory of Double Coin Holdings
Ltd. were highly impressed and Mr. Harish
Kakkad alias Tony told them that they
wanted to show to them something which
was at least 10 times bigger in size and
whose production capacity was way beyond
the largest Indian tyre manufacturing
company. He claimed to have been telling
his customers about the size, systems,
quality control etc. of Double Coin Holdings
Ltd. factory, which had a production capacity
of 6 million radial tyres per annum whereas
the largest tyre company in India had
production capacity of 1 million radial tyre
per annum.
As regards quality of the product Double
Coin, Mr. Harish Kakkad stated that though
there could be Chinese companies producing
CS(OS)Nos. 89/2011 and 90/2011 Page 18 of 73

poor quality tyres, the companies with whom
he dealt were producing nothing but the best
and that Chinese radial was a good cost
saving option for Indian transporters. He
further stated that Double Coin was
marketed in India by Trans Tyres and
Michelin was producing the tyres which
Double Coin Holdings Ltd. was producing
from the same factory using same raw-
material and machinery, being sold under
the brand name Warrior.
(xxii) A perusal of the photograph of the company
outlet alleged to be opened by Trans Tyres in
Mumbai would show that the outlet is owned
by franchisee M/s Shree Siddhi Vinayaka
Tyres and not by Trans Tyres. More
importantly, the outlet is selling not only the
Double Coin but Hankook tyres as well, as is
evident from the photograph filed by Trans
Tyres itself. A perusal of the interview of Mr.
Harish Kakkad published in TransTopics
would show that he himself stated that they
CS(OS)Nos. 89/2011 and 90/2011 Page 19 of 73

had opened retail outlet for Double Coin and
Hankook tyres in Navi Mumbai. Thus, this
is not an outlet exclusively for sale of Double
Coin tyres. In fact, Om Shree
Siddhivinayaka Tyres also has directly been
advertising Double Coin in TransTopics and
one such advertisement as Authorized Dealer
of Double Coin, Hankook, Birla tyres and
Chao Yang has been published in special
Diwali issue of TransTopics. Another
important aspect in this regard is that the
retail outlet has no reference to Trans Tyres
by name. It is, therefore, difficult to say that
on seeing this retail outlet the consumer
would identify the trademark Double Coin
with Trans Tyres.
(xxiii) The printout taken from the website of Trans
th
Tyres on 12 October 2010 shows that even
on that date Trans Tyres claimed to be
distributor of Double Coin.
(xxiv) In the reply sent by it through counsel on
th
28 October 2010, Trans Tyres admitted that
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ZAFCO was supplying Double Coin tyres to
other dealers as well though it claimed that it
was done after obtaining its permission. No
material however has been placed on record
to show that any permission from Trans
Tyres was taken by ZAFCO before selling
these products to other dealers in India.
(xxv) Double Coin Holdings Ltd. has continued
supplying tyres and tubes to Trans Tyres
even after registration of the trademark
Double Coin came to the knowledge of
Double Coin Holdings Ltd. though it was
maintained by the learned counsel
representing Double Coin Holdings Ltd. that
only those contracts which had been entered
into before they came to know of registration
in favour of Trans Tyres were honoured and
no fresh supplies were thereafter contracted.
(xxvi) A perusal of the invoices issued by Trans
Tyres to those who purchased Double Coin
tyres from it would show that the goods were
described as New Chinese Radial. The stamp
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affixed on the invoices issued by Trans Tyres
clearly stated that the goods were imported
by Trans Tyres.

(xxvii) Admittedly, the Trans Tyres did not advertise
or promote the trademark Double Coin at
any time prior to July, 2006.
st
(xxviii) Trans Tyres did not claim user prior to 1
July, 2006 though admittedly Double Coin
tyres were being imported and sold in India
since the year 2005.

(xxix) In September, 2006, in the issue of a
magazine Transport Market, Trans Tyres
inserted an advertisement of Double Coin
tyres stating therein that these tyres were
brought by it in India, which clearly indicates
that it was an imported product. Similar
advertisement was given in October 12, 2006
issue of TransTopics in respect of three
brands including Double Coin.

(xxx) Admittedly, the tyres imported by Trans
Tyres in India were sold in the same
packaging in which they were received.
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There is neither any claim nor evidence of
Trans Tyres putting its name anywhere on
the product by way of sticker, stamp,
marking or label etc so as to indicate a
connection with the product or the brand.
nd
(xxxi) In its purchase order dated 2 July, 2008
placed on B.K. Rubber Industries Pvt. Ltd.
for tubes under the mark Double Coin, Trans
Tyres stated that Double Coin was their
registered brand. In fact, by that time, the
brand Double Coin had not been registered
in the name of Trans Tyres though it had
applied for its registration. Thus, a
misrepresentation was made to the
manufacturer of the tubes, while placing the
purchase order.
(xxxii) In the advertisement inserted in TransTopics,
prior to obtaining registration, ® was used by
the Trans Tyres on the brand Double Coin
thereby indicating that it was the registered
proprietor of the aforesaid mark. Section
107 of the Trademarks Act, 1999 provides
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that no person shall make any
representation with respect to a mark, not
being a registered trademark, to the effect
that it is a registered trademark.
Contravention of the aforesaid provision is
punishable with imprisonment for a term
which may extend to three years, or with
fine, or with both. It further provides that
use in India, in relation to a trade mark, of
the word “registered”, or of any other
expression, symbol or sign referring whether
expressly or impliedly to registration, shall
be deemed to import a reference to
registration in the register. Trans Tyres,
therefore, appears to have contravened
Section 107 of the aforesaid Act by using the
symbol ® even before obtaining registration.
6. The ownership of a trademark as a general rule
vests in the person, who puts the mark on the product. If
the manufacturer himself is putting a brand name on the
goods, the ownership or goodwill in the trademark, would
ordinarily belong to him and a distributor or an importer of
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such a product cannot claim ownership or goodwill in the
trademark already put on the product imported and/or
distributed by him. Thus, there is presumption of
proprietorship of trademark in favour of the manufacturer
when he himself is putting the mark on the product
manufactured by him. The relevant consideration in this
regard would be to “who invented the trademark”, “who first
affixed it on the product”, “who maintains the quality of the
product” and “with whom the relevant public identifies the
goods”, “to whom it looks for warranty and redressal of
complaints” and “who possesses the goodwill associated
with the product”. Use of the mark by the
importer/distributor of the product is deemed to be a use by
the manufacturer of the product, who puts his mark on the
product. This ownership and goodwill which the
manufacturer of the product enjoys in respect of the
trademark under which his goods are sold, is not displaced
merely by marketing and promotion of the product by the
distributor/importer, even if he uses the mark while
advertising/promoting the product. Mere use of the
expression “imported by/brought to you by/marketed by”
on the promotion and advertisements carried out by the
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importer/distributor/marketer of the goods is not sufficient
to displace the presumption of ownership and goodwill of
the brand vesting in the manufacturer of the product. A
statement to the customer that the product being
purchased by him is an imported product, produced by a
foreign manufacturer without anything on the product to
connect the brand/work with the
importer/distributor/marketer is an indication to the
customer that the product as well as the trademark affixed
on it belongs to the foreign manufacturer. The presumption
of ownership of trademark vesting in the manufacturer may,
however, in certain circumstances be rebutted by the
importer/distributor of the product. If, for instance, the
distributor/importer orders the manufacture of the good or
controls their production or the goods or the trademark on
the goods is for the first time affixed by an
importer/distributor or before selling the product, the
distributor/importer, uses his own packaging/label so as to
convey a connection between him and the trademark affixed
on the product, and the name of the manufacturer is not
written on the product or otherwise known to the customer,
it may be possible for the importer/distributor to claim
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ownership in the trademark provided he is the first user of
that trademark in the concerned territory. What is essential
in this regard is that the customer should come to identify
the product and the trademark affixed on it with the
distributor/importer and on seeing the product he should
believe that the product being purchased by him was the
product of that particular distributor/importer. While
considering the claim of a distributor/importer, the Court
needs to keep in mind that even a foreign manufacturer can
acquire domestic goodwill in the trademark in addition to
the goodwill which it enjoys in foreign market. If, however,
the importer/distributor is able to establish that the
customer has come to identify the trademark with it rather
than with the manufacturer, it may be able to claim that the
ownership in the trademark in the domestic market belongs
to him despite the fact that the goods were not
manufactured by it. The most important test in this regard
is as to whether customer identifies the trademark with the
manufacturer or with the importer/distributor, the
presumption of law being that the ownership of the
trademark vests in the manufacturer, who puts the mark on
the product, and the onus to displace this legal
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presumption, being on the importer/distributor.
In case, there is a dispute between the
manufacturer and the distributor/importer with respect to
proprietorship of a trademark, the decision of the Court
would depend on peculiar facts of each case, the guiding
factor being that as a general rule, the brand belongs to the
manufacturer and not to the importer/distributor.
7. It is not necessary that the public should be aware
of the actual identity of the source of the good. What is
material is that on seeing a product being sold under a
brand name, the customer on seeing the product should
connect it to a particular source and, therefore, the relevant
consideration would be as to what that source is whether
the manufacturer or the importer/distributor. If, say, the
product has no reference to the foreign manufacturer and is
sold by the importer/distributor in his own packaging and it
is he alone, who is advertising and promoting the product
as well as the brand name, the customer, on seeing the
product is likely to identify importer/distributor as the
source of the good. If, however, the brand name is affixed,
marked or engraved by the manufacturer himself and the
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product is sold in the same condition without any added
packaging by the importer/distributor so as to connect the
product with him, it would be difficult to say that the
customer is likely to identify the importer/distributor as the
source of the good even if the advertisement and
promotional expenditure is incurred by the
distributor/importer alone. Whether, while selling the
product, foreign origin of the product is concealed or not, is
an important factor to be taken into consideration in this
regard.
8. Admittedly, the tyres and tubes, which Trans Tyres
had imported from ZAFCO, had the mark Double Coin and
logo of Double Coin Holdings Ltd. on them during the
process of manufacture. Admittedly, there is an inscription
engraved on the tyres, which would show that it is a
product made in China. Admittedly, these products were
sold in India by Trans Tyres in the same condition in which
they were imported, without concealing the origin of the
product. Not only the trademark Double Coin, which Trans
Tyres got registered in its name, even the logo of Double
Coin Holdings Ltd. in which no right is claimed by the Trans
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Tyres, was visible to the customer, who bought these tyres
and tubes. Though the inscription “Made in China” is
engraved in very small words, that would not be material
since the facts and circumstances indicate that the
customer knew it very well that they were purchasing a
product manufactured in China. The customers purchasing
these tyres, admittedly, are transporters and not casual
customers, who happen to drop in the showrooms of tyre
companies. The invoices issued by the Trans Tyres clearly
stated that these were Chinese radials and were imported in
India. As noted earlier, Trans Tyres has advertised the
product primarily in the trade magazine TransTopics and it
is the transporters, who are stated to be subscribing to this
magazine. As noted earlier, the photograph of the visit of
tyre dealers to the factory of Double Coin Holdings Ltd. in
China along with the interview of Mr. Harish Kakkad,
promoter of Trans Tyres were prominently published in the
very same magazine. Mr. Harish Kakkad took the tyre
dealers to the factory of Double Coin Holdings Ltd. in China
and had all praise for the capacity, infrastructure and
machinery of Double Coin Holdings Ltd. He was clearly
trying to capitalize on the plant, machinery, manufacturing
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capacity and goodwill, which Double Coin Holdings Ltd.
enjoyed in respect of the tyres and tubes manufactured by
it. He emphasized to his customers that the tyres
manufactured by Double Coin Holdings Ltd. were also being
sold by Michelin under the name Warrior and those tyres
were manufactured in the same factory and on the same
plant and machinery on which the tyres being sold under
the brand name Double Coin were being manufactured. He
also tried to impress upon his customers that not only was
the production capacity of Double Coin Holdings Ltd. is 10
times of that of the largest radial tyre manufacturing
company in India, it had very good quality control systems
and its tyres were amongst the best tyres in the world. He
also recommended these Chinese radials as a good cost
saving option for the Indian transporters. Thus, in
organizing trip to China and subjecting to his customers,
Mr. Harish Kakkad was promoting Double Coin as a
Chinese product being manufactured by Double Coin
Holdings Ltd. in its factory in China and not as an Indian
product. Instead of concealing the origin of manufacture,
Trans Tyres thereby actively promoted the name of the
foreign manufacturer as well as the plant and machinery
CS(OS)Nos. 89/2011 and 90/2011 Page 31 of 73

employed by it in manufacturing these goods. Use of the
expression “Brought to you in India by Trans Tyres” in some
of the advertisements got published by Trans Tyres also
identifies someone other than Trans Tyres as the source of
the goods being sold under the brand Double Coin. The
very fact that the link under the name Double Coin on the
website of Trans Tyres takes the user to the website of
Double Coin Holdings Ltd. China as a strong indicator that
Trans Tyres has instead of promoting the Double Coin
Holdings Ltd. at its own brand name seeking to encash on
the worldwide reputation which Double Coin Holdings Ltd.
enjoys in tyres and tubes.
9. Admittedly, Trans Tyres did not put the tyres in its
own packaging before selling them to the customers.
Admittedly, no label or sticker of Trans Tyres was put on the
tyres before selling them in India. There is absolutely no
indication on the product which would connect Trans Tyres
either with the product or with the trademark affixed on it.
It cannot be said that on seeing these tyres and tubes, the
customer would identify Trans Tyres as the source of these
goods. In fact, the customer would identify Double Coin
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Holdings Ltd. as the origin or the source of the goods not
only on account of trademark Double Coin, logo of Double
Coin and engraving of inscription “Made in China” but also
on account of the publicity given by Trans Tyres itself to the
Chinese origin of these goods and the manufacturing
capacity of Double Coin Holdings Ltd. and quality of its
products.
10. As noted earlier, the interview of Mr. Wilson Ittoop,
General Manager of ZAFCO was published in the very same
magazine in which the advertisements were got published
by the Trans Tyres. Thus, those who read the
advertisements got published by the Trans Tyres, would
also have read the interview of Mr. Wilson Ittoop. It came
out very clearly in the interview of Mr. Wilson Ittoop that
Double Coin tyres was a Chinese product, which on account
of identical road conditions was also suitable for India and
had been very well accepted in Indian market. He also
elaborated the expansion plans of Double Coin Holdings
Ltd./ZAFCO in India including posting their engineers in all
major truck centres across the country, opening offices,
warehouses and sale outlets in various parts of the country.
He also stated that as many as 10 leading logistic
CS(OS)Nos. 89/2011 and 90/2011 Page 33 of 73

companies in India were importing directly from them. This
interview of Mr. Wilson Ittoop categorically informed the
readers of the magazine TransTopics that Double Coin was
a Chinese product, which was being imported in India by a
number of companies and which had been very well
received in Indian market. TransTopics is an English
magazine and, therefore, readers of this magazine are
supposed to be educated persons. Hence, they would have
read not only the advertisements got published by Trans
Tyres but also the interviews of Mr. Harish Kakkad and Mr.
Wilson Ittoop, describing Double Coin as a Chinese product
manufactured in a state of art factory using modern plant
and machinery and maintaining strict quality controls.
Such readers, therefore, are not likely to identify Trans
Tyres as the source of the Chinese radials purchased by
them. In these circumstances, it would be difficult to
accept that the customers, who in this case were mainly
transport companies, had come to identify Trans Tyres as
the source of the tyres being purchased by them under the
brand name Double Coin.
11. As regards the two retail outlets alleged to have
been opened by Trans Tyres for sale of Double Coin tyres,
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the photograph filed by Trans Tyres coupled with the
interview given by Mr. Harish Kakkad to TransTopics, shows
that the outlets opened in Navi Mumbai was made for sale
not only of Double Coin but also of Hankook tyres.
Moreover, the sign board on the outlet contains no reference
to Trans Tyres and, therefore, it cannot be said that on visit
to this outlet, the customer would identify Trans Tyres as
the source of the goods being purchased by him from that
outlet. As noted earlier, the sign board contains the name
of only of the franchisee M/s Shree Siddhivinayaka Tyres,
who has also been independently advertising tyres being
sold by it and these include not only the Double Coin but
also tyres of three other makers including Hankook. The
photograph of the other outlet alleged to have been opened
by Trans Tyres has not been filed by Trans Tyres and,
therefore, nothing can be said about the other outlet.
Moreover, merely opening a few retail outlets without
anything more would not give rise to a claim to the
ownership of the trademark. Trans Tyres was purchasing
tyres from ZAFCO on principal to principal basis and
presumably must be making profit on sale of these tyres.
Any increase in the sale of the product was likely to result
CS(OS)Nos. 89/2011 and 90/2011 Page 35 of 73

in higher profit for Trans Tyres and, therefore, mere
advertising the product without anything more would not
give rise to a right in the ownership of the brand and its
goodwill. Advertising, promotion and opening of retail
outlets would, in such circumstances, be only considered as
marketing efforts so as to generate higher profit on account
of higher sale due to higher visibility of the product as a
result account of advertisements and retail outlets.
Trans Tyres claims sale of about Rs.197 crores
between 2006-07 to 2009-10 and 60% of this is stated to be
from sale of Double Coin products meaning thereby that
Trans Tyres sold Double Coin tyres worth Rs.120 crores
during this period. The total advertising expenditure
incurred by Trans Tyres during this period is stated to be
about Rs.17 lakhs out of which 80% is stated to be on
advertisement and promotion of Double Coin, meaning
thereby that Trans Tyres incurred expenditure of about
Rs.13-14 lakhs on sale of about Rs.120 crores. The
advertising expenditure in respect of Double Coin products,
therefore, comes to about 0.1% of the sale figure. It is
difficult to say that it was a substantial expenditure and
sale of Double Coin products in India is attributable solely
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to the promotional efforts taken by Trans Tyres.
12. Goodwill in a brand does not come to be created
only on account of its promotion and advertising. The
primary reason for a trademark acquiring goodwill in the
market is the quality of the product, which is sold under
that name. If a product is of inferior quality, no amount of
advertisement and promotion can build the brand under
which the product is sold. Of course, the brand building
and promotion supplements the efforts of the manufacturer,
who is primarily responsible for maintaining quality of the
product. Hence, it is difficult to say that goodwill in the
brand has come to be vested in Trans Tyres merely on
account of promotional activities undertaken by it. In fact,
Trans Tyres itself had been emphasizing on the quality of
the Chinese product before the tyre dealers while taking
them to a visit to Double Coin factory in China and in the
interview of Mr. Harish Kakkad.
13. Though Trans Tyres has alleged that the warranty
and after sale service is being provided by it, there is
absolutely no material on record to indicate that it was
providing any warranty or after sale service in respect of
Double Coin tyres and tubes imported by it through ZAFCO
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and sold in India. Therefore, it cannot be said that in the
event of any defect being found in the tyres, the customer
would be looking towards Trans Tyres for its replacement or
repair.
14. Section 18 of the Trade Marks Act, 1999, to the
extent it is relevant, provides that any person claiming to be
a proprietor of a trade mark used or proposed to be used by
him, who is desirous of registering it, shall apply to the
Registrar for registration of his trademark. Section 34 of the
Trade Marks Act, 1999, to the extent it is relevant, provides
that nothing in the Act shall entitle the proprietor or a
registered user of registered trade mark to interfere with or
restrain the use by any person of a trade mark identical
with it, in relation to goods or services in relation to which
that person has continuously used that mark from a date
prior to use of the first-mentioned trade mark in relation to
those goods or services by the said proprietor.
In its application for registration, Trans Tyres
st
claim user since 1 July, 2006. Though the case of Trans
Tyres is that its promoter was importing these tyres prior to
st
1 July, 2006, the user, if any, by the director/promoter in
his individual capacity cannot be said to be use by Trans
CS(OS)Nos. 89/2011 and 90/2011 Page 38 of 73

Tyres India Pvt. Ltd. More importantly, no advertisement or
promotional activity in respect of trademark Double Coin
st
was undertaken by Mr. Kakkad prior to 1 July, 2006.
Therefore, there can hardly be any dispute that it was
Double Coin Holdings Ltd., China alone, which was using
st
the trademark Double Coin in India prior to 1 July, 2006.
Trans Tyres, therefore, has no legal right to seek injunction
against use of the trademark Double Coin by Double Coin
Holdings Ltd., China, which had been using this mark in
India on account of sale in India through Mr. Kakkad and
other importers. Moreover, since Trans Tyres was not using
the trademark Double Coin at the time it applied for
registration and it was only Double Coin Holdings Ltd.,
which was using this trademark in India and which owned
the goodwill in the aforesaid mark in India, Trans Tyres had
no legal basis to seek registration of the aforesaid mark in
its favour.
15. Though the case of Trans Tyres is that it had
obtained registration with the consent of Double Coin
Holdings Ltd., there is absolutely no material on record from
which such a consent may be inferred. In his email dated
nd
22 October, 2010 Mr. Harish Kakkad alia Tony, promoter
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of Trans Tyres did not claim that they had obtained
registration with the consent of Double Coin Holdings to the
knowledge of Mr. Wilson Ittoop of ZAFCO. Had there been
any such consent, this would have been the first plea taken
by Mr. Tony alias Mr. Harish Kakkad in his email.
There is no material on record to indicate that
prior to January, 2010, Double Coin Holdings Ltd. was
aware of registration of the trademark in the name of Trans
Tyres. Therefore, Trans Tyres has failed to establish any
case of consent or acquiescence on the part of Double Coin
nd
Holdings Ltd. In fact, email dated 22 October, 2010 itself
rules out any such consent or acquiescence. Vide this
email, Mr. Harish Kakkad alias Tony expressly assured
Double Coin Holdings Ltd. that the brand belongs to them
and was an international brand belonging to Double Coin
Holdings Ltd. He also undertook to indemnify Double Coin
Holdings Ltd. against any mala fide use o the brand and
assured them that the registration was obtained by them
only in order to stop small manufacturers from making
tyres in the same brand and to carry out parallel imports.
This email, which Trans Tyres initially denied in its reply to
the legal notice received from Double Coin Holdings Ltd. but
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had to admit on account of the photograph published in
TransTopics describing Mr. Harish Kakkad as Tony, totally
demolishes the case of Trans Tyres with respect to prior
user and ownership of the trademark Double Coin in India.
In the fact of this email, it is not open to Trans Tyres to say
that it was promoting Double Coin as its own brand in India
and as an Indian brand.
16. During the course of the arguments, the learned
counsel for Trans Tyres referred to “DIEHL” Trade Mark
1970 RPC (15) 435, Adrema Ltd. vs. Adrema-Werke GMBH
1958 RPC (13) 323, Omega Nutrition vs. Spectrum
Marketing 756 F. (Suppl.) 435 (1991) and ITC Limited vs.
Punchgini Inc 2008 U.S. App. LEXIS 5359, whereas the
learned counsel for Double Coin Holdings Ltd. referred to
Dental Manufacturing Company Limited vs. C. De Trey
& Co. (1912) 3 KB 76, Birmingham Vinegar Brewery
Company vs. Powell (1897) AC 710 (HL) and N.R. Doongre
and Ors. vs. Whirlpool Corporation and Anr (1996) 5 SCC
714.

17. In the case of DIEHL (supra) , the applicant Diehl
K.G., a German Company, was engaged in the manufacture
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of various articles, including calculating machines. The
respondent in that case was an English company which
entered into an agreement with the German company. The
respondent-company was incorporated with the express
object of adopting that agreement and carrying it into effect.
The respondent was appointed as the sole representative of
the applicant in England, Scotland and Wales for sale of
calculating machines, manufactured by them. The German
company undertook not to offer or sell, directly or indirectly,
such machines in those territories or to appoint any other
representative there. The respondent undertook not to offer
or sell in the territories any electrically operated keyboard
calculating machines of any other manufacture. The
agreement was to remain in force for one year and thereafter
from year to year. Clause 8 of the agreement provided that
in case of termination of the agreement, the respondent was
to eliminate the name Archimede Diehl from its trade name.
The agreement made no reference to the trademarks. While
the agreement remained in force, the respondent (British
company) bought large number of machines from the
applicant (German company) and promotion of these
machines in these territories was undertaken by the
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respondent alone at its expense. It was the respondent
which guaranteed and services the machines it sold. No one
other than the respondent and its authorized distributors
ever sold or serviced any such machines in England,
Scotland and Wales. From 1956 onwards, the respondent
attached to the back of every machine it sold, a metal plate
which carried its name and address. The name and address
of the respondent appeared on all the advertisement and
promotional material. The name or address of the applicant,
however, did not appear in any such advertisement or
material. The respondent gave to the purchaser a twelve-
month guarantee and offered a service maintenance
agreement of every purchaser and nearly everyone accepted
that agreement. Every machine needed service twice a year.
The respondent trained and employed a large staff of skilled
maintenance engineers. It was claimed by the respondent
that its reputation in the field of calculating machines was
very largely due to their efficient after-sales service. It was
found that the purchaser knew that the respondent was the
sole source of supply in England, Scotland and Wales as
also of spare parts for them. From 1960 onwards, the
respondent used writing paper, bill headings and other
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stationery having the legend “Diehl calculating machines”,
followed by the respondent‟s name, address and telephone
number at their head. In 1956, the respondent applied for
registration of the word DIEHL in the register of trademarks,
but did not succeed since Diehl is a proper name in use in
that country. In April, 1960, the applicant wrote to the
respondent expressing intention to have the name DIEHL
registered in Great Britain as a trademark. In its reply dated
th
08 July, 1960, the respondent informed the applicant that
for many years they had been trying to register DIEHL as a
trade name in connection with calculating machines, but,
the Patent Office Rules prevented them from registering a
proper name. The respondent further informed the
applicant that recently they had file a new application since
London Telephone director showed only two such names
and it would inform the applicant regarding outcome of that
th
application. In the meantime, the respondent on 29 June,
1960, made an application for registration of this trademark
rd
and the registration was granted on 03 March, 1961, as of
th
29 June, 1960. The respondent informed the applicant in
th
this regard vide letter dated 24 December, 1963 and also
sent the copies of registration certificates of the applicant.
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No objection was taken by the applicant then and at any
other time, to this registration nor did the applicant
complained of delay in its being told of registration until
disputes arose between the parties. The applicant never
claimed any interest in the mark. It was in these
circumstances that the claim of the respondent in respect of
the trademark DIEHL was upheld so long as the mark was
used in respect only of machines or parts made by the
applicant. The Court felt that such use of the mark was not
likely to deceive the public. During the course of judgment,
the Court, inter alia, observed as under:-
“It may be that, if the respondent were
to use its registered mark in relation to
goods dealt in by the respondent but
not of the applicant's manufacture,
such use would be held to be likely to
deceive or cause confusion.”

It would thus be seen that facts of DIEHL‟s case
were altogether different from the facts of the present case.
Trans Tyres is not the sole distributor/sole importer/sole
selling agent of Double Coin tyres in India. It has come in
evidence that these tyres were sold to other importers as
well though in rather miniscule quantity. There is no
evidence of Trans Tyres giving any guarantee/warranty for
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the Double Coin Holdings Ltd. sold by it. There is no
evidence of any after sale service being provided by Trans
Tyres in respect of the Double Coin tyres sold by it. As noted
earlier, it is not as if the customers were unaware of these
tyres being a Chinese product, manufactured by Double
Coin Holdings Ltd. Trans Tyres, itself, has been
aggressively promoting these tyres as a Chinese product
and had also taken tyre dealers to the factory of Double
Coin Holdings Ltd. in China. The advertisement released by
Trans Tyres were only in one magazine and the interviews
praising the factory manufacturing process and reputation
of Double Coin Holdings Ltd. were published in the same
magazine and, therefore, were read by the same persons,
who came across these advertisements, got published by the
Trans Tyres. In the case of DIEHL, the respondent was since
1956 putting its name and address on every machine used
by it. Trans Tyres, however, has put no label, stamp, etc.
on the tyres or on their packagings, which would connect
them with the product or with the trademark Double Coin.
The word “Trans Tyres”, admittedly, was not written either
on the tyres or their packagings. More importantly, in the
case of DIEHL, the German company made no protest for
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six years from coming to know of the respondent applying
for registration and three years after receiving the copy of
registration certificate, in favour of the respondent. The
conduct of the German company almost amounted to
acquiescence in these circumstances. On the other hand, in
the case before this Court, there is no material which would
indicate an acquiescence on the part of Double Coin
Holdings Ltd. Rather, it was Mr Harish Kakkad of Trans
Tyres, who wrote to the Chinese company that the brand
belonged to them and not to Trans Tyres and they were
ready to submit any papers the company wanted at any
point of time and they had no intention to use this brand for
any mala fide interest.
18. In the case of Adrema Ltd. (supra) , Adrema-Werke
G.m.b.H., a German company, was engaged in
manufacturing of addressing and listing machines and
equipments, which were sold under the name “Adrema” in
Germany and were exported to many other parts of the
world. The plaintiff-company was incorporated in England
at the instance of the German-company and the whole of
the shares of English company until 1939 were held by the
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German company. The English company was importing the
machines and equipments from the German company and
selling them under the name and trade name “Adrema”. The
name of the German company did not appear on the
machines though the words “Foreign” or “Made in Germany”
was put on them. Another important feature of this case
was that the plaintiff-company also made, in England, with
the acquiescence of the German company, certain type of
machinery similar to those manufactured in Germany and
all the papers, stationery, etc. which were used for what was
known as “Adrema system” in United Kingdom. As a result,
the name “Adrema” and the goodwill associated with that
name became attached to the plaintiff-company in England.
In the year 1933, about one half of the goods comprised in
plaintiff company‟s annual turnover were not made in
Germany and after the formation of the plaintiff-company,
no goods were sold in U.K. by the German company
otherwise than to the plaintiff-company. In the period
before the war, the trade of the plaintiff-company increased
considerably and the machines sold by it were no longer
imported by it and they were all manufactured in United
Kingdom. A perusal of the judgment would show that a
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number of admissions were made on behalf of the German
company which was one of the defendants in the case. It
admitted that the word “Adrema” had at all material time
signified, in the United Kingdom, the plaintiff as the trade
origin of the product so marked. It was further admitted
that the goodwill attached to the “Adrema” in the United
Kingdom had at all material times, belonged exclusively to
the plaintiff. It was also admitted that use of the word
“Adrema” in connection with addressing machines in the
United Kingdom was likely to cause confusion for the
plaintiff‟s goods and business, unless sufficiently
distinguished therefrom. On the basis of these admissions,
the defendants also offered to submit an injunction,
restraining them from carrying on in United Kingdom any
business of making or selling or servicing such machines
and equipment under any name or sale comprising the word
“Adrema” and from otherwise using the word “Adrema” in
connection with any such business. They, however, wanted
that they should not be prevented from trading and
marketing their goods with their own name Adrema-Werke
G.m.b.H, Berlin, provided they sufficiently distinguished
their business and goods from the business and goods of
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the plaintiff-company. This, however, was not accepted by
the plaintiff-company. It was noted by the Court that when
the German company formed the plaintiff-company for the
purpose of their trade in the United Kingdom, they
conferred upon the plaintiff-company the name “Adrema
Ltd.” without any reference to the German company. They
allowed the plaintiff-company to acquire all the goodwill
associated with the word “Adrema” in the United Kingdom.
The Court found that as a result of the trading since 1923,
the plaintiff-company owned the goodwill which had become
associated with the word “Adrema” in the United Kingdom
and, therefore, no one else in the United Kingdom had any
right to use the word “Adrema” so as to represent his goods
as being the goods of the plaintiff-company or his business
as being associated in some way with the plaintiff
company‟s business. It would thus be seen that in this case,
the English company, when incorporated, was practically
owned by the German company which had also allowed user
of its name by the English company. Nothing similar to that
has been done in the case before this Court. Moreover, in
the case of Adrema (supra) more than half of the turnover
of the English company comprised products which were not
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manufactured by the German company. In the case before
this Court, none of the tyres sold by Trans Tyres was
manufactured or got manufactured by Trans Tyres. This is
not the case of Trans Tyres that it has been getting tyres
from some other source and selling them under the mark
“Double Coin”. Most importantly, almost the entire case of
the British company was admitted by the German company
which also offered to suffer an injunction so long as it was
allowed to use the name Adrema-Werke G.m.b.H, Berlin.
There is, however, no admission in the present case that the
word “Double Coin” has come to be associated with Trans
Tyres or that in India, the mark “Double Coin” indicates
Trans Tyres as the source/origin of the goods. There is no
admission that the goodwill in the word “Double Coin”
belongs to Trans Tyres.
19. The decision in the case of Omega (supra) is a
decision of the District Court in California and, therefore,
cannot be cited before this Court. In any case, the facts of
this case are also materially different from the facts of the
case before this Court. In the case of Omega (supra) , a
Canadian corporation, engaged in manufacturing and
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marketing of flax seed oil products, entered into an
agreement with Spectrum, a California Corporation,
whereby Spectrum agreed to become Omega‟s exclusive
distributor in the United States for flax seed oil,
manufactured by Omega Canada I. The labels affixed to the
bottles bore the mark “Veg Omega-3” and identified
Spectrum as the distributor of the product under licence to
“Omega Canada I”. The label also indicated that the oil was
a product of Canada. Another important feature of this case
was that the original and all successive labels indicated that
flax seed oil was distributed using Spectrum‟s brand name
“Spectrum Naturals” which prominently featured on the
label along with Spectrum‟s logo. Spectrum had created,
developed and designed the mark Veg-Omega 3, even before
entering into the distributing agreement with Omega
Canada I. The oral agreement did not specify who owned
the right to the disputed mark. After March, 1988, the
agreement between Spectrum and Omega Canada I was
replaced by a new relationship and Alpha Nutrition Inc.
which was formed in Washington at Omega Canada I‟s
direction. Omega Canada I transferred its rights to the Veg-
Omega 3 mark to Alpha, which replaced Omega Canada I as
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manufacturer of the flax seed oil. The labels which came to
be affixed on the bottles bore the trademark Veg-Omega 3
and identified Specturm as the distributor under licence to
Alpha, and indicated that the flax seed oil was a product of
U.S.A. In the year 1989, Alpha was incorporated in the
State of Washington as Omega USA which succeeded to
Alpha‟s rights to the mark. Omega USA then became the
sole Omega Corporation to manufacture and bottle flax seed
oil in United States and Alpha ceased to exist. The label on
the bottles identified Spectrum as distributor under licence
to Omega USA and indicated that the oil was a product of
U.S.A. In September 1989, the business relationship
between Spectrum and Omega USA was terminated. Omega
USA, thereafter, contended that Spectrum‟s manufacturing
and marketing of flax seed oil bearing Veg-Omega 3
trademark constitutes trademark infringement and other
violations. Spectrum, on the other hand, contended that it
was the rightful owner of the trademark and Omega USA‟s
continued use of trademark constitutes trademark
infringement and unfair competition. Since the Court found
that it was Spectrum which had created, designed and
developed the mark Veg-Omega III even before entering into
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distributorship agreement with Omega Canada I, the Court
held that it was the first user of the trademark. Though
Omega Canada I claimed to have shipped its first
assignment three weeks before Spectrum claimed first use
on October 11, 1987. The Court noted that even if the oil
which was sent to Spectrum on September 18, 1987, it
would have been marketed and distributed by Spectrum,
making use of the mark which it had created, designed and
developed. During the course of the judgment, the Court
observed that distributor‟s use of trademark automatically
inures to the manufacturer of the product only when the
manufacturer is the rightful owner of the trademark and the
licence to distribute the product includes the licence to use
the manufacturer‟s mark. However, in the case before this
Court, Trans Tyres does not claim to have created, designed
or developed the trademark Double Coin and, therefore use
of the aforesaid mark by it in India inured to the
manufacturer of the product, i.e., Double Coin Holdings
Ltd., China. During the course of the judgment, the Court
also observed that in the absence of an agreement between
the parties, the relevant factors besides registration, would
include 1) which party invented and first affixed the mark
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onto the product; 2) which party‟s name appeared with the
trademark; 3) which party maintained the quality and
uniformity of the product and; 4) with which party did the
public identify the product and make complaints. It was
found that it was Spectrum which had created the
trademark and supervised its artistic rendering even before
reaching its distribution agreement with Omega Canada I,
it was Spectrum which was solely using the mark Veg-
Omega 3 in connection with Spectrum‟s name and Omega
Corporations promotional material did not make any
reference to the mark Veg-Omega-3, the explanation sheets
inserted in the boxes stated that the product was of
Spectrum, the labels used during party‟s business
relationship prominently featured Spectrum‟s brand name
and logo directly above the trademark which mentioned
Omega in tiny print in the lower left hand corner and two
current distributors of Omega flax products were not using
the trademark Veg-Omega 3 to designate their products. It
was also found that Spectrum was bearing the
responsibility of maintaining the quality of the product.
None of these features are present in the case before this
Court. The name of Trans Tyres does not appear anywhere
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either on the product or on its packaging, there is no
evidence of Trans Tyres being responsible for the quality of
the product and providing any after sale service. This is also
not the case of Trans Tyres that the brand Double Coin was
not being used by the Chinese company in its promotional
material. Therefore, this judgment, to my mind, cannot be
applied to the facts of the case before this Court.
20. In the case of ITC Ltd . (supra) , there were disputes
with respect to the use of the name „Bukhara‟ in respect of
restaurant services. It was found that the plaintiff had not
used the mark in United States for more than three years.
ITC had sued certain individuals for using the name
Bukhara as also the related trade dress. The case of ITC
was based on its being qualified for protection as a famous
mark based on its international use. However, in the case
before this Court, Trans Tyres did not start using the mark
Double Coin on its own products. It only imported the tyres
and tubes manufactured by Double Coin Holdings Ltd.
China and selling those goods in India under the very same
mark which was affixed on them by Double Coin Holdings
Ltd. during the process of manufacturing the product.
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Therefore, it cannot be said that Double Coin Holdings Ltd.
had not used the mark Double Coin in India. In the facts
and circumstances of the case, use of the trademark Double
Coin in India would be a use by a Double Coin Holdings Ltd.
China and not by Trans Tyres which was only importing
and selling those goods.
21. In Dental Manufacturing Company Ltd. (supra) ,
one person named Clark in America was manufacturing a
special kind of spittoon, intended for use in a dentist‟s
business. He held a patent in USA for spittoons. By an
agreement with Clark, the defendants had been granted
exclusive right and agency to sell and distribute those
spittoons. The defendants appointed the plaintiffs as their
sole distributing agents for the sale of those spittoons in
United Kingdom and under that agreement, the defendants
sold the spittoons supplied to them by Clark to the plaintiffs
who retailed them to the purchasers in the United Kingdom.
In a circular, issued to them, the plaintiffs were described
as general distributors and defendants as sole whole sale
agents for those articles. The case setup by the defendant
was that the “Clark Fountain spittoons” was got up in a
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manner which had become distinctive of that article in the
market and that this get up of his spittoons was associated
with the business of the defendants as sole agents for the
sale thereof so as to indicate spittoons sold by them. The
defendants had always sold the spittoons just as they were
got up by the Clark and had not made use of any get up of
their own (as distinguished from the get up of the spittoons
as manufactured by Clark). On expiry of Clark‟s patent in
USA, the agreement with the defendants under which the
plaintiffs acted as sole distributing agents of the Clark
spittoons in the UK was terminated and the plaintiffs begun
to manufacture and sell the spittoon. The defendants
claimed that this spittoon was so got up as to be an
imitation of their spittoons. Since the Court found nothing
in the get up of the goods to identify them with the
defendant, so as to associate those goods with the
defendant in the United Kingdom, it found no merit in the
counter-claim of the defendant against manufacture or sale
of spittoons by the plaintiff, which after termination of the
agreement had started manufacturing its own spittoons.
The Court was of the view that the mere fact that a person
seeing an article would associate them to be a Clark‟s
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spittoon was not sufficient for the defendant to maintain an
action of passing off. The proposition of law which emerges
from this case is that if the sole distributor was selling the
goods without changing any change in the get up, the
customer would not identify or associate the product with
him. During the course of the decision, it was observed that
plaintiffs‟ goods need not be goods manufactured by him,
they may be goods which he purchases or which he imports
or otherwise acquires and which he sells under some get up
which conveys that they are goods, which, whether imported
or sold by him carry with them the advantage of the
reputation that the plaintiff‟s firm is responsible for the
quality of their character and a person dealing with the
goods of another may have a goodwill in the business of
dealings with them. It was further observed that the
defendant as the sole agent may have a goodwill in respect
of that business and if they had a get up of their own under
which they sold Clark‟s goods, they may succeed in a
passing off action. Since the defendant did not have any get
up/packaging of its own, its claim for passing off was
rejected by the Court. In the case before this Court also
since Trans Tyres has been selling the goods without any
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get up of its own and without indicating any connection
between it and the product or the trademark affixed on it, it
is not entitled to maintain an action for passing off against
the Double Coin Holdings Ltd. which not only manufactures
the product, but also owns the trademark which was put on
the product during the process of manufacturing.
22. In Brimingham Vinegar Brewery Company
(supra), the respondent had for many years made and sold a
sauce by the name “Yorkshire Relish” and before 1894, no
other sauce was sold under that name. In 1894, the
appellants put up in market a sauce very like with the
respondents and they sold it at a cheaper rate as a
“Yorkshire Relish”. The appellants/defendants labels and
wrappers were distinguished from the
respondents/plaintiffs, but there was evidence that
purchasers who asked for “Yorkshire Relish” had been
supplied with appellants/defendants product instead of the
product of the respondent/plaintiff. It was contended on
behalf of the appellant/defendants that there was no
representation by it that its product was the manufacture of
the original inventor because “Yorkshire Relish” had become
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a well-known article and calling it by that name meant it
was that thing. Rejecting the contention, the Court, inter
alia , observed as under:
“I am satisfied that a person who puts
forward this “Yorkshire Relish,” made
as it is by the present defendants, is
representing it as being a particular
manufacture. It may be true that the
customer does not know or care who
the manufacturer is, but it is a
particular manufacture that he
desires. He wants Yorkshire Relish to
which he has been accustomed, and
which it is not denied has been made
exclusively by the plaintiff for a great
number of years. This thing which is
put into the hands of the intended
customer is not Yorkshire Relish in
that sense. It is not the original
manufacture. It is not made by the
person who invented it. Under these
circumstances it is a fraud upon the
person who purchases to give him the
one thing in place of the other. But
then it is said that may give the
purchaser a right to bring an action;
but the present plaintiff has no right to
intervene in the transaction between
the parties. All I can say is that that is
a proposition which probably might
have been established if it were true in
every one of the cases which have been
before the Courts, and I never heard of
such a proposition before. On the
contrary, the rule of law has been that
if you choose to state that which is
false and induce another person to
deal with you by that falsehood, and so
deprive the original maker of the trade
CS(OS)Nos. 89/2011 and 90/2011 Page 61 of 73

which otherwise he would get, that is
an actionable wrong, and gives rise to
the right to an injunction.

Lord Herschell, who wrote the third judgment in
this case, inter alia, observed as under:
“In the present case it seems to me
that “Yorkshire Relish” meant the
manufacture of a particular person. I
do not mean that in the minds of the
public the name of the manufacturer
was identified, but that it meant the
particular manufacture, and that when
a person sold “Yorkshire Relish,” as
the defendants did, by selling it as
“Yorkshire Relish” and calling it
“Yorkshire Relish,” they represented to
the public that it was that
manufacture which was known as and
by the name of “Yorkshire Relish.”

Lord Davey had the following observations to
make:
“The defendants made a sauce which it
is said closely resembles that of the
plaintiff in appearance, in chemical
ingredients, and in flavour, and it is
described by one of the chemical
experts who have given evidence as „a
wonderful match.' But as the
defendants do not know the recipe of
the plaintiff, nor the manner in which
the ingredients are compounded, it is
impossible to say that the two sauces
are the same. The defendants are,
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therefore, selling a different sauce by a
name which, by itself, would be
calculated to induce purchasers to
believe that it is the plaintiff's sauce”

In the case before this Court, the customers have
been purchasing the tyres manufactured by Double Coin
Holdings Ltd. China. It is Trans Tyres own case in the
interview of Mr. Harish Kakkad published in TransTopics
that this is a high quality product manufactured in a state
of the art factory which is ten times bigger than any radial
manufacturing facility in India. A person buying tyre sold
under the brand name Double Coin would, therefore
connect it with the manufacturer which has in the past
being manufacturing the tyres sold under this brand name.
If Trans Tyres is allowed to use the trademark Double Coin
on the tyres which are manufactured by some other
manufacturer, the customer, who purchases those tyres is
likely to be deceived since he would purchase them on the
assumption that these tyres had been manufactured by the
same manufacturer though that would not be factually
correct. It would, therefore, amount to Trans Tyres passing
off its goods as those of the Double Coin Holdings Ltd.
CS(OS)Nos. 89/2011 and 90/2011 Page 63 of 73

China. Moreover, if the quality of the product is not found to
be as good as of the product manufactured by Double Coin
Holdings Ltd. China, that may seriously affect the
reputation and brand value which the trademark Double
Coin enjoys in the market and thereby adversely affect
Double Coin Holdings Ltd. China because the consumer
may in such a case presumes that the Chinese company
has lowered the quality of its product and the tyres
manufactured by it were no more of the same quality which
they used to be in the past.
23. In N.R. Dongre and Ors. vs Whirlpool
Corporation And Anr., (1996) 5 SCC 714, the mark/name
Whirlpool was associated with the plaintiff Whirlpool
Corporation much prior to the defendants application for its
registration in the year 1986. Recognizing trans-border
reputation of the trademark Whirlpool, the Court felt that
the mark gave an indication of the origin of the goods as
emanating from or relating to Whirlpool Corporation and,
therefore, there was likelihood of the persons buying
defendant‟s washing machines being sold under the same
name being confused or misled to believe that these were
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the products of the plaintiff‟s Whirlpool Corporation. The
Court held that in a case of passing off, injunction could be
granted even against the proprietor of a registered
trademark. In the case before this Court, Trans Tyres does
not have any manufacturing capacity, whereas Double Coin
Holdings Ltd. China has already been selling its goods in
India. Therefore, the case of Double Coin Holdings Ltd.
stands on a much stronger footing, as compared to the case
of Whirlpool Corporation.

24. The learned counsel for Trans Tyres has in her
compilation also referred to Alain Bernadin ET Compagnie
vs. Pavillion Properties Ltd. 1967 RPC 581 , Persons Co.
Ltd. vs. Christmas 14 USPQ 2d 1477 , Menendez vs. Holt
128 US (514) 1888, IMAF vs. JC Penney Co. 806 F.
(Suppl.) 449 (1992) , Uniply Industries Vs. Unicorn
Plywood 2001 PTC 513 , Gillette Company vs. A.K.
Stationery 2001 PTC 513 Procter & Gamble vs. Satish
Patel 1996 PTC (16) 646 , Kaviraj Pandit Durga Dutt vs.
Navaratna Pharmaceutical Laboratories 1965 1 SCR 737 ,
Ruston & Hornsby vs. Zamindara Engineering Co. PTC
(Suppl 1) 175 SC, whereas the learned counsel for the
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Double Coin Holdings Ltd. referred to Rob Mathys (Del DB)
(2001) 5 SCC 73 , Koninkilijke Philips Electronics NV Vs.
Smt Kanta Arora and Ors 2005 (30) PTC 589 (Del) , B.K.
Enginnering Co. vs. UBHI Enterprises (Regd.)
AIR 1985
Delhi 210 Shri Virumal Parveen Kumar vs. Gokal Chand
Hari Chand MANU/DE/1639/2002 , Ziff-Davis Inc. Vs. Dr.
D.K. Jain and Ors MANU/DE/0215/1998 , Ziff Davis (DB)
(2006) 56 DRJ 806, Lowenbrau (Del) 157 (2009) DLT 791 ,
Marico Ltd. vs. Agro Tech Foods Limited 174 (2010) DLT
279 (DB) , Marico Ltd. vs. Agro Tech Foods Ltd 169 (2010)
, Jolen INC. Vs. Doctor & Co. ,
DLT 325 80 (2002) DLT 77
Prina Chemical (Del) DB ILR (1974) DEL 545 , Milmet (SC)
(2004) 12 SCC 624, Austin Nichols (Del) 2006 (32) PTC 133
(DEL) , Medivision Scan (Ker) 2004 (2) KLT 772 , M/s
Power Control Applicances & Ors. vs. Sumeet Machines
Pvt Ltd. (1940) 2 SCC 448 , William Edge & Sons vs.
William Niccolls & Sons (1911) AC 693 (HL) and F.
Hoffmann-La Roche & Company A.G. vs. DDSA
Pharmaceuticals Ltd. (1972) RPC 1 (Ch D).
I, however, do not find any such proposition of law
in any of these decisions which would persuade me to take
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a view that the goodwill in the trademark Double Coin in
India belongs to Trans Tyres or that the customers in India
have come to associate this mark with Trans Tyres.
25. For the reasons given in the preceding paragraphs,
I am of the view that prima facie 1) it is Double Coin
Holdings Ltd. and not Trans Tyres (India) Pvt. Ltd. which
first used the trademark Double Coin in India; 2) the
ownership and goodwill in the trademark Double Coin
continues to vest in Double Coin Holdings Ltd. China which
has been putting this mark on the tyres and tubes
manufactured by it and which were also imported and sold
in India by Trans Tyres; 3) the customers in India do not
associate or identify the brand Double Coin with Trans
Tyres. Trans Tyres, therefore, despite having a registration
in its favour, does not have any legal right to use the
trademark Double Coin on any tyre or tube which is not
manufactured by Double Coin Holdings Ltd. China. On the
other hand, being the first user of the trademark Double
Coin and manufacture of the tyres which are being sold in
India under the brand name Double Coin, it is Double Coin
Holdings Ltd. China which has legal right to use that mark
CS(OS)Nos. 89/2011 and 90/2011 Page 67 of 73

in India and, therefore, has a prima facie case against use of
that mark by Trans Tyres on any tyre or tube which is not
manufactured by Double Coin Holdings Ltd. China.
26. As rightly contended by the learned counsel for the
plaintiff, in the facts and circumstances of this case, the
customer, on coming across a tyre/tube being sold under
the name Double Coin, is likely to connect the product to
the Chinese manufacturer and, therefore, if Trans Tyres is
allowed to get tyres and/or tubes manufactured from
another source and sell them under the brand name Double
Coin, it is likely to confuse the customer and in fact may
also deceive him because he would buy the product in the
belief that he was purchasing a Chinese radial of superior
quality manufactured by Double Coin Holdings Ltd, which
has a state of the art manufacturing plant in China, has
capacity to manufacture as many as 6 million radial tyres in
a year, employs the state of art manufacturing process and
maintains stringent quality controls. It is, therefore,
necessary that only those products are sold under the name
Double Coin, which are manufactured by Double Coin
Holdings Ltd., China.
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27. Admittedly, Trans Tyres is neither manufacturing
nor outsourcing the manufacture of tyres. Double Coin
Holdings Ltd., on the other hand, is an established
manufacturer of tyres and tubes and has been selling these
products in India since the year 2005. No substantial harm
is, therefore, likely to be caused to Trans Tyres if it is
restrained from selling tyres under the brand name Double
Coin. Double Coin Holdings Ltd. on the other hand is likely
to suffer irreparable loss if it is not allowed to sell tyres,
which it has been selling in Indian market for the last about
6 years. The balance of convenience, therefore, lies in
favour of Double Coin Holdings and not in favour of Trans
Tyres. As regards tubes also, since Trans Tyres has not
been manufacturing facility of its own and has only
outsourced the supply of tubes while continuing to import
tubes from Double Coin Holdings along with the tyres, no
irreparable loss is likely to be caused to it, if it is restrained
from manufacturing or getting manufactured and selling
tubes in India under the name Double Coin unless they

have been manufactured by Double Coin Holdings, China.
28. Since Trans Tyres has no facility for manufacture
CS(OS)Nos. 89/2011 and 90/2011 Page 69 of 73

of tyre or tubes in India no prejudice will be caused to it if it
is not allowed to use the trademark Double Coin on the
tyres and tubes which are not manufactured by Double
Coin Holdings Ltd. China. The facilities which Trans Tyres
claims to have setup in India can be used for trading of
other tyres which it is selling in India. It may, if so decides,
get the tyres and tubes manufactured from some other
manufacturer and sell them under its own brand name
which it may adopt for this purpose.
On the other hand, if injunction is not granted to
Double Coin Holdings Ltd. against use of the trademark
Double Coin on the tyres or tubes which are not
manufactured by it, that may cause irreparable loss to the
Chinese company since Trans Tyres may introduce in
market products manufactured by other manufacturers and
sell them under the trademark Double Coin. This would,
not only create confusion in the mind of the customer with
respect to the origin/source of the product, it may also
result in deceiving him since while buying tyres and tubes
bearing the trade mark Double Coin, he would be
presuming that these are the same products which he had
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so far been purchasing though, in fact, the products would
be altogether different having been manufactured by some
other company. If the quality of that product is not found to
be as good as of the products being manufactured and sold
by Double Coin Holdings Ltd. China, that may affect the
reputation and credibility of Double Coin Holdings Ltd. and
value of its brand not only in India, but also in other
countries since the customer may assume that this
company is no more a quality manufacturer of tyres and
tubes and that is why the product is no more as good as it
used to be. If this so happens, it may also affect the
reputation which the trademark Double Coin enjoys in a
number of countries.
29. Admittedly, rectification proceedings are already
pending before the Trade Mark Registry. Section 124 of the
Trademarks Act, to the extent it is relevant provides that in
such cases, the Court shall stay the suit pending final
disposal of such proceedings though such stay will not
preclude the Court from making any interlocutory order,
including the order granting an injunction. The final order
made in rectification proceedings shall be binding upon the
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parties and the Court is required to dispose of the suit in
conformity with such order in as far as it relates to the
validity of the registration of the trade mark.
30. For the reasons given in the preceding paragraphs,
further proceedings in the suit are stayed till disposal of the
rectification proceedings pending before IPAB. Trans Tyres
(India) Pvt. Ltd. is hereby restrained, during pendency of the
suit, from selling any tyre or tube bearing the trademark
Double Coin or a mark deceptively similar to the aforesaid
mark unless that product has been manufactured by
Double Coin Holdings Ltd. China. Trans Tyres, however, is
permitted to liquidate those tubes which it has already got
manufactured in India under the trademark Double Coin
subject to its filing an affidavit within three working days,
giving exact number of such tubes and its maintaining a full
and complete account of the tubes which it has so far got
manufactured in India under the trademark Double Coin. It
is made clear that henceforth Trans Tyres will not get any
tyre or tube manufactured under the trademark Double
Coin. Both the applications stand disposed of in terms of
this order. The observations made in this order being
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prima facie and tentative will not affect the decision of the
suits on merits.
CS(OS) Nos. 89/2011 and 90/2011
th
List on 14 July, 2011 for framing of issues.

(V.K. JAIN)
JUDGE
April 20, 2011
vkm/bg
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