In Calvin Klein Inc. USA v. International Apparel Syndicate, Calvin Klein, a United States company with an international reputation for designer clothing, filed a suit for passing off and trademark and copyright infringement to restrain International Apparel Syndicate, an Indian firm, from using the trademarks CALVIN KLEIN and CK in relation to jeans and other casual clothing.

Although Calvin Klein did not sell any clothing in India, they based their action on the reputation acquired by advertisements, articles in international magazines with a circulation in India, as well as through Indians travelling abroad who purchased their products, and on their worldwide trademark registrations in 136 countries. Calvin Klein owned a trademark registration in Class 24 for textiles and textile goods, but only had a pending application in Class 25 for clothing, footwear and headgear in India. International Apparel falsely represented itself as the "official brand owner" and "official brand licensee" of Calvin Klein, advertised its products in leading Indian newspapers and marketed them under the CALVIN KLEIN and CK marks in leading retail clothing stores in India.

The Calcutta High Court granted an ex parte interim injunction restraining International Apparel from using the CALVIN KLEIN and CK marks which was subsequently made permanent. At the Hearing, the trademark infringement action was not pursued, since Calvin Klein's registration only covered goods in Class 24 and their application in Class 25 was still pending. The plaintiff's arguments were limited to passing off, and the court rejected International Apparel's contention that Calvin Klein could not maintain such an action because they did not carry on business in India. It held that the adoption of the disputed marks was deliberately made in a manner calculated to deceive purchasers and for the purpose of trading on the international reputation of Calvin Klein.

We consider this to be a significant decision, since it appears to recognize the concept of "reputation without use" and broadens the scope of passing off in India.