Bombay High Court
Essel Propack Ltd vs Essel Kitchenware Ltd. And Anr on 11 March, 2016
Bench: G.S. Patel
915-NMS370-10-ESSEL.DOC
Shephali
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 370 OF 2010
IN
SUIT NO. 272 OF 2010
ESSEL PROPACK LTD.
A company incorporated under the Companies
Act, 1956, having its registered office at P.O.
Vasind, Taluka Shahapur, District Thane 421 604
and corporate office at 10th Floor, Times Tower,
Kamala City, Senapati Bapat Marg, Lower Parel,
Mumbai 400 013. ...Plaintiff
versus
1. ESSEL KITCHENWARE LTD.
A company incorporated under the
Companies Act, having their address at 4,
Fairlie Place, 5th Floor, Kolkata 700 001
2. M/S VINAY TRADING AGENCIES
At Bhatia Niwas (Morwadi), 50 Babu Genu
Road, Kalbadevi, Mumbai 400 002 ...Defendants
A PPEARANCES
Mr. Ashish Kamat, a/w Mr. Rahul
FOR THE PLAINTIFF
Dhote & Mr. Minesh Andheria,
i/b M/s. Krishna & Saurashtri
Associates.
FOR THE 1ST DEFENDANT Mr. Sandeep Parikh, a/w Mr. Amesh
Gajria & Ms. Deepa Hale, i/b
M/s. Gajria & Co.
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915-NMS370-10-ESSEL.DOC
CORAM : G.S.Patel, J.
DATED : 10th & 11th March
ORAL JUDGMENT:
1. This is a Notice of Motion for a Receiver and injunctions in
an action for trade mark infringement and passing off.
2. The Suit and the Notice of Motion have had something of a
convoluted litigation history. The Suit was filed in 2010. First, the
Plaintiff filed a Petition for leave under Clause XIV of the Letters
Patent to combine the cause of action in passing off with the cause
of action in infringement. That Petition was contested (to the stage,
it seems, of an Affidavit in Rejoinder). Leave was ultimately granted
on a no-finding basis on 23rd March 2010. The Plaint was then
amended. Later, when an application for ad-interim reliefs was
moved, a plea of want of jurisdiction was taken. In consequence, a
preliminary issue under Section 9A of the Code of Civil Procedure,
1908 ("CPC") was framed on 2nd December 2011. The matter
then came up on 15th February 2013. The Plaintiff desired to lead
evidence and, accordingly, documents were allowed to be filed and
were marked. The Plaintiff led evidence. Cross-examination
followed. Ultimately, on 31st August 2015/1st September 2015, I
decided the preliminary issue in favour of the Plaintiff. I am told
that that order has not been carried in Appeal.
3. The 1st Defendant had by then also filed Notice of Motion
No. 1284 of 2010 seeking, first, a rejection of the Plaint on the
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ground that it did not disclose a cause of action; and, second, for a
stay of the suit under Section 10 of the CPC on the ground that the
1st Defendant had previously, in 2004, filed Civil Suit No. 2 of
2004 before the Calcutta High Court seeking an injunction against
the Plaintiff from issuing groundless threats. When Mr. Justice
Menon took up the Notice of Motion on 2nd December 2015, the
first ground was not pressed. The Notice of Motion was argued on
the second ground. Menon J dismissed the 1st Defendant's Notice
of Motion on 2nd December 2015.
4. All this time, the Plaintiff's Notice of Motion No.370 of
2010, filed at the time of the suit, remained pending without any
relief being granted. Mr. Kamat for the Plaintiff is considerably
agitated by the 1st Defendant's attempts to use what he describes as
'every trick in the book' to delay the hearing of this Notice of
Motion. I think he is correct in saying that merely because of the
law's delays, the Court's overburdened systems, and the 1st
Defendant's repeated attempts to dislodge the suit, relief should
not be denied to the Plaintiff if otherwise a sufficient cause is made
out. He points out that in M/s Siyaram Silk Mills Ltd v M/s Shree
Siyaram Fab Pvt. Ltd. & Ors.,1 Mr. Justice Gupte in addressing a
very similar fact situation was moved to hold, inter alia, that these
repeated applications by a defendant and the inevitable delays
cannot be invoked to deny an injunction where sufficient cause is
shown. The principle that a court must endeavour to do complete
and substantial justice cannot be quelled by such applications.
There are indeed statutory provisions in both Section 9A of the
CPC and in Section 124 of the Trade Marks Act 1999 that address
Notice of Motion No.3679 of 2011 decided on 17th March 2015.
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just this and say that applications questioning jurisdiction or for
stay of a suit pending rectification proceedings do not preclude
courts from making a suitable interim order where necessary. I am
of course in complete agreement with Mr. Justice Gupte's decision
(one that in any case binds me). It is another matter, however, that
unfortunately for Mr. Kamat I am not persuaded that in this
particular case the Plaintiff has been able to demonstrate sufficient
cause. Having heard him for the Plaintiff and Mr. Parikh for the 1st
Defendant at some length and, with their very able assistance,
considered the material on record and the applicable law, I have
dismissed this Notice of Motion. My reasons follow.
5. The Plaintiff is part of the Essel Group of companies. It was
incorporated on 22nd December 1982 under the name ESSEL
Packaging Limited. It commenced its business in this name early in
1983. Four years later, a sister concern came to be incorporated.
This was then known as ESSEL Amusement Park (India) Limited.
That name was subsequently changed to ESSEL Infraprojects
Limited.
6. The Plaintiff is a manufacturer of various kinds of packaging
material for use by other manufacturers of retail products. For
example, the Plaintiff manufactures collapsible laminated tubes, co-
extruded seamless tubes and laminates. As Mr. Parikh for the 1st
Defendant points out, these are not products that are sold over the
counter; instead, they are products that are used by other
manufacturers in turn to package their own products. I mention this
at the outset for it is fundamental to one aspect of Mr. Parikh's case
and to which I will revert presently.
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7. The Plaintiff claims that its mark was coined in 1982-1983. It
is said to be derived from the names of Mr. Subhash Chandra, the
Plaintiff's Chairman, and the name of his brother Mr. Laxmi
Narayan Goel, taking the first letter of each of their first names, S
and L, and expressing these phonetically and joining them together:
hence "ESSEL". The Plaintiff says it has used this mark
extensively since then. There has been considerable corporate
expansion since. Several subsidiary and associate companies were
set up using the ESSEL mark. The Plaintiff is the largest or lead
company in this group. As of 31st December 2008, the ESSEL
group had an annual consolidated turn over of Rs. 12,949 million. It
has business interests and manufacturing units in India and
overseas. It is also listed on the two Indian Stock Exchanges. It has
over 30,000 shareholders. The coined ESSEL is a prominent,
striking and leading feature of the Plaintiff's mark.
8. The mark ESSEL is registered in several classes for various
goods under the Trade Marks Act. Copies of these registrations are
set out in Annexures to the Plaint. It is, however, an accepted
position that the Plaintiff does not have registration in Class 21.
The Plaintiff has applied for registration under that Class; that
application is under opposition from the 1st Defendant.
9. Annexed to the Plaint2 is an unsigned and uncertified
statement of business figures from 1999 to 2008. Although in more
recent years, i.e., 2007-2008 the profits before and after tax seem to
have declined sharply and in the last of these years, there is in fact a
loss, this may not be immediately significant to us for the present
Exhibit "J", at page 182
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purposes. Apart from these registrations, the Plaintiff also claims
that it owns several Internet domain names with the word ESSEL.
It has also, of course, the registration of corporate names with the
word ESSEL in them.
10. In paragraph 19 of the Plaint, the Plaintiff claims that it first
learnt of the 1st Defendant when it noticed the 1st Defendant's
application for registration of this word ESSEL in Class 21 in
respect of cups, drinking glasses, table plates, saucers, small
domestic utensils made of plastic and thermocol including kitchen
utensils advertised in the Trade Marks Journal. The Plaintiff filed a
notice of opposition in May 2003. The 1st Defendant had been
incorporated a short while earlier on 21st March 2001.
11. A few months after filing its notice of opposition to the 1st
Defendant's application for registration in Class 21, on 10th
November 2003, the Plaintiff through its Attorneys issued a cease-
and-desist notice to the 1st Defendant.3 In this notice, the Plaintiff
asserted that the 1st Defendant's adoption of the mark ESSEL was
deliberately dishonest and mala fide, was bound to cause confusion
and to deceive the public, and that it constituted both infringement
and passing off.
12. In paragraph 22 of the plaint, the averment made is this:
"22. The 1st Defendant did not respond to
the Plaintiffs' legal notice dated
10.11.2003. The Plaintiff did not
initiate legal proceedings then, against
Exhibit "K", page 183.
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the Defendants, since the Plaintiff
believed that the Defendants have
desisted its further use of the similar
trade mark in view of the Plaintiff's
strong objections to contest the
registration of trade mark and cease and
desist notice. The Plaintiff however
strongly pursued and elected to contest
the registration proceeding."
13. This paragraph is one that I must deal with straight away
because it is demonstrably untrue to the Plaintiff's knowledge.
From start to finish it is misleading. The very first statement in this
paragraph is incorrect. The Plaintiff's Advocates did in fact receive
a reply dated 1st December 2003 from the 1st Defendant's
attorneys. A copy of that reply is annexed to the Written
Statement.4 Also annexed is a copy of the registered post A/D card
evidencing service of this reply letter on the Plaintiff's advocates.5
The incorrectness of the first averment in paragraph 22 undermines
the second; for, in its attorneys' reply letter, the 1st Defendant said
that there was no possibility of confusion, deception or similarity
and put the Plaintiff to specific notice that it fully intended to
continue using the rival mark. There was no question of the
Plaintiff ever being "led to believe" that the 1st Defendant had
accepted any part of the Plaintiff's cease-and-desist notice or that
the 1st Defendant had in fact stopped using the mark. There is no
evidence of such stoppage. The material on record in the Notice of
Motion as also the annexures to the Written Statement prima facie
indicate that the 1st Defendant did continue to use the rival mark
Exhibit "M", P. 390
Pp. 393-394
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both for domestic sales and, later, for exports. That this claim to
being lulled into a state of complacency is wholly incorrect is also
evident from the fact that a few months after this advocates'
correspondence, in 2004 the 1st Defendant filed Civil Suit No.
1284 of 2004 in the Calcutta High Court seeking an injunction
against the Plaintiff from issuing groundless threats. The Plaintiff
was served with a summons. Further, the last sentence is also
incorrect: a few years later, the Plaintiff abandoned its opposition to
the 1st Defendant's registration application. In any case, the last
sentence contradicts the previous ones: the very fact that the 1st
Defendant was pursuing its registration application, and that the
Plaintiff, on its own showing, felt compelled to 'strongly' pursue
and contest it is prima facie enough to show that there was no cause
for the Plaintiff to believe that the 1st Defendant had desisted its
use of the rival mark.
14. Matters did not end there. On 29th March 2005, the 1st
Defendant filed a Notice of Opposition to the Plaintiff's
registration application. In the Plaint, there is no mention of this at
all. Paragraph 22 also cannot be reconciled with what is said in the
following paragraph 23, for here the Plaintiff accepts that on 1st
December 2005 it was served with an Affidavit affirmed by the
General Manager of the 1st Defendant containing evidence
proposed to be used in support of the 1st Defendant's opposition to
the Plaintiff's registration. The Plaintiff seems to have filed an
appeal before the Intellectual Property Appellate Tribunal. On 4th
January 2010, all opposition by the Plaintiff to the 1st Defendant's
application for trade mark registration was finally and completely
abandoned. The 1st Defendant's mark proceeded to registration.
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15. Before proceeding any further, I think it is necessary to note
the averments made in paragraph 23:
"23. The Plaintiff's Advocates were
however in or around 3rd December 2005
served with an affidavit affirmed on
01.12.2005 by A. Roy Choudhury, the
General Manager of the 1st Defendant and
filed as evidence in support of
opposition initiated by them before the
Learned Registrar of Trade Marks against
the Plaintiffs' trade mark application
whenever [sic] Defendant No. 1 alleged
actual and commercial use of ESSEL as
trade mark. In the said Affidavit 1st
Defendant exhibited, inter-alia,
specimens of printed cartons allegedly
used for secondary packaging and printed
poly-sleeves used for primary packaging
of their products, bearing the mark
ESSEL. The Plaintiff's submit that due to
discontinuance of association of the
Advocate firm who had served the Notice
dated 10th November 2003 on the
Defendants and as the Advocate attending
to the registration was only concerned
with the registration, the significance
of the material annexed to affidavit
dated 1st December 2005 was inadvertently
missed out. It is only in or around May
2009 after the Plaintiff chanced upon a
advertisement brochure of the Defendants
it transpired that the trade mark was
still deceptively misused and
consequently the Plaintiff and its
lawyers decided to go into the further
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details. The Plaintiffs through their
advocates' letter dated 19.06.2009,
therefore called upon the 1st Defendants'
advocates to provide copies of exhibits
to the said affidavit dated 01.12.2005.
The 1st Defendants' advocates through
their letter dated 23.06.2009, served
upon the Plaintiffs copies of the
exhibits to the said affidavit dated
01.12.2005. It is from these exhibits the
Plaintiffs substantiated that the
Defendants were still using the name/mark
ESSEL by manufacturing and/or marketing
and/or dealing with disposable containers
used for packing and/or serving materials
and/or similar packaging materials. In
the list of dealers of the 1st Defendants
being Exh.-B to the said affidavit, the
Plaintiffs came across reference to their
own distribution network in Mumbai. This
was clearly objectionable. These
inquiries revealed that the Defendant had
begun to use the Plaintiffs' trade
mark/name on a substantial scale."
(Emphasis added)
16. Clearly this paragraph now suggests that the reason for the
delay between 2005 and 2009-10 was because of some alleged
miscommunication with the Plaintiff's advocates. This is an aspect
that will have consequence to at least one of the defences raised by
Mr. Parikh, but for the present, it certainly seems to me that this
defence is wholly untenable at this prima facie interim stage.
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17. To complete the factual narrative: after the Plaintiff
abandoned its opposition to the 1st Defendant's trade mark
application, that application proceeded to registration. In the
meantime, on 15th June 2009 the Plaintiff, through new advocates,
sent a second cease and desist notice to the 1st Defendant.6 In this
second notice, the Plaintiff makes no reference at all to its previous
notice dated 10th November 2003. There is also no reference to the
1st Defendant's reply to that notice. Both these factors were
specifically mentioned in the 1st Defendant's attorneys' reply dated
3rd July 2009.7 In paragraph 4 of this reply, the 1st Defendant's
attorneys referred to the previous correspondence. They then
pointed out that very shortly thereafter on 10th December 2003
they had also filed a Caveat in the Bombay High Court and in
January 2004 another Caveat in the High Court of Calcutta. Both
these Caveats were duly served on the Plaintiff. Again, of this there
is no mention anywhere in the Plaint. The 1st Defendant once again
denied all allegations of infringement, passing off, deception,
deceptive similarity or confusion. The present Suit was then filed
on 12th January 2010.
18. Some facts are, therefore, undisputed: that both sides use the
mark ESSEL; that the Plaintiff's adoption is of the year 1982; that
the 1st Defendant's adoption is no earlier than 2002; and that today
both marks are registered though in different classes. Mr. Kamath's
submission is that by the time the 1st Defendant adopted the rival
mark, the Plaintiff's mark had come to achieve so significant a
reputation and standing and such tremendous goodwill, that there
Exhibit "L", page 187
Exhibit "M", page 192
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is no possibility at all of the 1st Defendant's adoption ever being
bona fide or honest. Being a packaging manufacturer, the Plaintiff
could not have been unknown to the 1st Defendant. In any case, he
submits, it is settled law that the 1st Defendant was required to take
an adequate search both in the registry and in the market before
adopting its rival mark and had it done so, it would undoubtedly
have noticed the Plaintiff's mark. When the 1st Defendant applied
for registration, the Plaintiff's mark, by then already registered, was
cited as a conflicting mark. Yet, in the circumstances I have set out
above, the 1st Defendant's mark was allowed to proceed to
registration.
19. Mr. Kamath's first submission is that the Plaintiff's mark is
"a well-known mark". Mr. Kamath uses this to further his case that
the Plaintiff is entitled to sue the 1st Defendant for infringement
and passing off although the 1st Defendant's goods, products and
trade channels are entirely distinct from those of the Plaintiff. I am
unable to see how this in any way assists Mr. Kamat, even assuming
that he has been able to establish that the Plaintiff's mark is a well-
known mark. The Trade Marks Act, 1999 does not prohibit the
registration of multiple similar marks. Indeed, Section 12 seems to
me to contemplate the coexistence of rival similar or even identical
marks in respect of the same or similar goods or services. If there is
honest and concurrent use, or there exist other special
circumstances, the Registrar may permit such multiple
simultaneous registrations, subject to any conditions and limitations
that he thinks fit. If the argument of a well-known mark is advanced
with reference to Section 29, a new feature of the 1999 Act, then, as
Mr. Parikh points out, the submission is ill-conceived. That section
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has no application. It is restricted to infringing use by a person who
is neither a registered proprietor nor a permitted user of the rival
mark.
20. Mr. Parikh is also correct in pointing out that the definition
of a "well-known mark" added in Section 2(zg) of the TM Act
1999, in relation to any goods or services, means a mark that has
become so well-known to a substantial segment of the public which
uses such goods or receives such services that such use for other
goods and services would be "likely to be taken" as indicating a
nexus in the course of trade or rendering of services between those
other goods or services and the person using the mark that is
claimed to be well-known. This, Mr. Parikh submits, is a complex of
factors. It is not established merely by claiming high volume of sales
when there is a special segment of users. The requirement is of
such widespread recognition across markets and so pervasive an
identification in the public imagination that should any other
person use that mark or one similar to it in relation to other goods
or services, anyone would be apt to conclude that the rival's goods
or services share a provenance with the first mark. We should be
guided if not bound, Mr. Parikh says, and I agree, by the principles
we find in Sections 11(6), 11(7) and 11(8) of the TM Act, 1999
which deal with the considerations that should weigh with the
Registrar in determining whether a mark is a well-known mark.8 In
that determination, under Section 11(6), the Registrar is to consider
all relevant factors, including--
Tata Sons Ltd v Manoj Dedia & Ors., 2011 (46) PTC 244 (Del.)
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(i) the knowledge or recognition of that
trade mark in the relevant section of the
public including knowledge in India
obtained as a result of promotion of the
trade mark;
(ii) the duration, extent and
geographical area of any use of that
trade mark;
(iii) the duration, extent and
geographical area of any promotion of the
trade mark, including advertising or
publicity and presentation, at fairs
ig or
exhibition of the goods or services to
which the trade mark applies;
(iv) the duration and geographical area
of any registration of or any application
for registration of that trade mark under
this Act to the extent they reflect the
use or recognition of the trade mark;
(v) the record of successful enforcement
of the rights in that trade mark; in
particular, the extent to which the trade
mark has been recognised as a well-known
trade mark by any court or Registrar
under that record.
21. In determining whether a trade mark is known or recognised
in a relevant section of the public for the purposes of sub-section
(6), the Registrar is to take into account the number of actual or
potential consumers of the goods or services; the number of
persons involved in the channels of distribution of the goods or
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services; and the business circles dealing with the goods or
services, to which that trade mark applies.9
22. These requirements, Mr. Parikh suggests, are not satisfied on
the present materials. I agree. I do not suggest a conclusion that the
Plaintiff's mark is not a well-known mark; merely that on the
present material before me, I cannot conclude that it is. Also, I do
not think that such a finding is necessary for this case, nor do I
believe that the fate of this Notice of Motion will turn on a
determination of that issue. That is something that must be left
open to the trial of this suit and, very possibly, to some other action
by the Plaintiff.
23. Mr. Kamath then submits that there is no novelty shown by
the 1st Defendant in the manner in which it chose to adopt the rival
mark: in the Written Statement, the 1st Defendant says that it, too,
took the first letters of two names, those of its Managing Director's
mother and aunt, expressed these phonetically and conjoined
them.10 Therefore, he says, the 1st Defendant's adoption of the
rival mark is dishonest and mala fide, and an injunction must follow.
I believe this to be some sort of self goal. For, by the same
reasoning, there is no 'novelty' in the Plaintiff's adoption of its own
mark either. In both cases the parties have taken individual letters
from the names of certain persons connected to their enterprises
Section 11(7). Section 11(8) then says that "Where a trade mark has
been determined to be well-known in at least one relevant section of the
public in India by any court or Registrar, the Registrar shall consider
that trade mark as a well-known trade mark for registration under this
Act."
Pp.201 to 202
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and have expressed these phonetically. There are limited ways in
which the letters 'S' and 'L' can be expressed phonetically. If there
is no novelty in the adoption of the 1st Defendant's mark, then
there is no novelty in the Plaintiff's adoption of its mark either.
'Novelty' in this context must mean something more than first-out-
of-the-gates. It must connote some unusual or imaginative use. The
word 'ess' is actually to be found in dictionaries. It means the letter
'S' or something shaped like the letter 'S'. Its first known use dates
back to 1540.11 I imagine the same is true for 'el'.
24. To further his case on dishonest adoption, Mr. Kamath also
points to paragraph 5 of the Written Statement12 in which the 1st
Defendant says that when it took search in the market it was
satisfied that there was no competing mark 'in respect of subject
nature of goods, namely, disposable utensils' with this trade mark.
Mr. Kamath submits that this is hardly sufficient. It is settled law,
he says, that the required search cannot be a narrow or targeted
search within this or that class of goods. It must be to see whether
there are any products of any description in the market. Had such a
search been taken, he says, the 1st Defendant would undoubtedly
have seen the Plaintiff's mark. Therefore, in his submission, the
adoption of the rival mark by the 1st Defendant is in its inception
dishonest and not bona fide. Consequently, Mr. Kamath submits
that the Plaintiff is entitled to an injunction.
Shorter Oxford English Dictionary, 5th ed.; Webster's Encyclopedic
Unabridged Dictionary of the English Language, 1989;
http://www.merriam-webster.com/dictionary/ess.
Page 205
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25. In response, Mr. Parikh does not suggest, and I think quite
wisely, that the fact that both marks are registered prohibits the
Plaintiff from suing for passing off. His submission is that since
both marks are registered, neither is deemed to have exclusivity as
against the other by virtue of that registration; but each can claim
exclusivity against third parties as if it is the sole proprietor. This is
based on a reading of Section 28(3) of the TM Act 1999. Mr.
Parikh's point is more fundamental. First, there is, in his
submission, no possibility at all of any confusion. It is undisputed
that the rival marks are visually distinct and do not resemble each
other, even if both marks feature the coined word 'Essel'. He
submits that if the well-known tests set out by the Supreme Court
in paragraph 35 of its decision in Cadila Health Care Ltd v Cadila
Pharmaceuticals Ltd.13 cannot be satisfied in this particular case at
least so far as the cause of action in passing of is concerned; that is,
if the rival product ranges are different; the trade channels are
distinct; the intended consumer base is entirely separate; and there
is, therefore, no possibility either of confusion or deception of any
person, then there is no case made out for an injunction. Even
assuming that the Plaintiff has been able to establish a case of being
sufficiently diversified, it is hardly likely that anyone would say that
the Plaintiff's goods and those of the 1st Defendant share a
common source. If the Plaintiff cannot establish that it is a 'well-
known mark' across, then the injunction cannot be granted.
26. More fundamentally, Mr. Parikh submits, this is the clearest
possible case of deliberately false and misleading pleadings, of a
false case being set up, of unconscionable and unexplained delay
(2001) 5 SCC 73
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and of actual acquiescence. This is not, he submits, a case of a
'mere delay', some length of time before the Plaintiff moved. This
is a case where the Plaintiff was put to counter-notice of the 1st
Defendant's intention to continue using its rival mark. The Plaintiff
received that counter-notice in the form of the 1st Defendant's
attorneys' response to the first cease and desist notice of 10th
November 2003. The Plaintiff deliberately concealed this from the
Plaint. It also concealed the fact of its own knowledge of the 1st
Defendant's continued use of the rival mark and of the 1st
Defendant taking cautionary steps by serving caveats. It did not
mention the fact that the 1st Defendant had filed an earlier suit in
2004 in Calcutta. The law on acquiescence, Mr. Parikh submits, is
not and cannot be that all this must be overlooked and ignored and
that every other registrant or user of a rival mark must
automatically suffer an injunction.
27. The bulk of the debate before me concentrated on this aspect
of the matter. Before I turn to this, I should note what the 1st
Defendant has adduced in support of its case of continued use.
There is, to begin with, the 1st Defendant's incorporation
certificate of 2001.14 This shows the 1st Defendant's use of the
word 'Essel' in its corporate name. There is then a copy of its trade
mark as submitted for registration, the word 'Essel' written in a
stylized all-caps hand script font in deep red surrounded by two
concentric oval rings.15 There are specimen invoices of domestic
sales from 6th February 2002 onward.16 There are also export
Written Statement, p. 239.
Written Statement, p. 240.
Written Statement, pp. 250-305.
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invoices.17 In respect of one of its products, a drinking glass, the 1st
Defendant has applied for a patent.18 There are also materials
relating to publicity, events, launches and so on.
28. Mr. Kamat submits that there is no acquiescence on the
Plaintiff's part and the delay, if any, is inconsequential. Once the
Plaintiff put the 1st Defendant to notice, he says, the subsequent
conduct of the 1st Defendant and all its actions in utilizing its rival
mark is at its peril. Mr. Kamat first relies on the fabled decision of
B. N. Kirpal J (as he then was), sitting singly in the Delhi High
Court, in Hindustan Pencils Pvt Ltd v M/s Indian Stationery Products
Co & Anr19 to say that even if there is a delay, this is not per se
sufficient to defeat the application for an injunction. While
addressing the question of acquiescence, the Hindustan Pencils
court held that in its classical definition, acquiescence arises where
the proprietor knowing of his rights and knowing that the infringer
is ignorant of them, does something to encourage the infringer's
misapprehension, with the result that the infringer acts on his
mistaken belief and so worsens his position. A mere failure to sue,
without a positive act of encouragement does not generally afford a
sufficient defence. Where a defendant infringes a plaintiff's mark
knowingly, he cannot be heard to complain if he is later sued for
that infringement; and a defendant who commences his use without
a search20 is no better placed than one who did search and learnt of
Written Statement, pp. 306-334.
Written Statement, p. 379.
1989 PTC 61
In the Register in that case, and in Bal Pharma Ltd. v Centaur
Laboratories Pvt. Ltd. and Anr., 2002 (24) PTC 226 (Bom) (DB). Now
broadened to require a market search: Gorbatschow Wodka K.G. v John
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the plaintiff's mark. Where the adoption of the trade mark is
dishonest, mere delay will not defeat an injunction application.
Ordinarily, where infringement is shown, an injunction must
follow.21 It makes no difference if the product ranges are distinct.22
29. Mr. Parikh commends caution in too slavish an adoption of
any such principle. This is not, he says, an absolute or invariable
standard. Between a case of an actual consent by a plaintiff at one
end and a case where a plaintiff simply did not know of the
infringing use, but suffered some delay in asserting his rights, there
are certainly more than fifty shades of grey; fact-specific
considerations are not to be ignored. When, therefore, Mr. Kamath
invokes the decision of a Division Bench of this Court in Schering
Corporation & Ors. v Kilitch Co. (Pharma) Pvt. Ltd.23 he overlooks
the cautionary words used in paragraph 20:
20. The principles enunciated by the
single Judge of the Delhi High Court, in
our opinion, are a complete answer to the
defendants' plea on the ground of delay.
Once it is established that there is
visual and phonetic similarity, and once
it is established that the defendants'
adoption of the trade mark is not honest
or genuine, then the consideration of any
Distilleries Limited, 2011 (47) PTC 100 (Bom), per Dr. D.Y.
Chandrachud J, as he then was.
Midas Hygiene Industries P. Ltd. & Anr. v Sudhir Bhatia & Ors., 2004
(28) PTC 121 (SC)
Aktiebolaget Volvo v Volvo Steels Limited, 1998 PTC (18) (DB); Daimler
Benz Aktiegesellschaft & Anr. v Hybo Hindustan, 1994 (14) PTC 287
(Del)
PTC (Suppl) (2) 22 (Bom.) (DB)
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plea as to delay must be on the basis of
a consideration whether there has been
such delay in the matter as has led the
defendants to assume that the plaintiffs
have given up their contention and/or
whereby the defendants have altered their
position so that it would be inequitable
to grant interim relief to stop them from
using the trade mark till the suit is
decided?
(Emphasis added)
30.
There is, therefore, Mr. Parikh submits, the additional
burden that the Plaintiff here must discharge in showing dishonesty
and mala fides in adoption of the rival mark. This has not been
done. Further, the Plaintiff must also show that it did not act in
such a way as to lead the 1st Defendant reasonably to assume that
the Plaintiff had given up its contention. This the present Plaintiff
cannot possibly do, he says, and I think he is right. The averments
in paragraphs 22 and 23 of the Plaint and the wholly egregious non-
disclosure of vital facts that were clearly to the Plaintiff's
knowledge, including most important its knowledge that the 1st
Defendant intended and actually continued use of the rival mark,
cannot possibly be without consequence. Even paragraph 63 of the
Division Bench judgment of this Court in Aktiebolaget Volvo v Volvo
Steels Limited,24 on which too Mr. Kamath relies, is actually against
says Mr. Parikh, and I think with some quite considerable
justification:
1998 PTC (18) (DB)
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63. So far as the point of acquiescence
is concerned, we do not find any material
on record to hold against the plaintiffs.
There is no material to show that the
plaintiffs in any way encouraged or
deliberately and knowingly permitted the
defendants to use the name Volvo. Looking
to the status and reputation of the
plaintiffs to which we will make a
reference hereinafter we do not consider
it probable at all that despite knowledge
the plaintiffs allowed the defendants to
use the name right from 1990. On the
contrary the moment the plaintiffs came
to know about the use of name Volvo by
the defendants they have immediately
moved the court. On the basis of the
legal position in this behalf as
enunciated by the case cited and referred
to by us, we are of the opinion that the
plaintiffs cannot be declined the reliefs
on the alleged ground of delay or
acquiescence.
(Emphasis added)
31. The factors that weighed with the Volvo court cannot possibly
be invoked in this case.
32. Mr. Parikh says that if ever there was a clear case of
acquiescence, this is it. He points out, for instance, that not only is
there flagrant suppression in the Plaint and a complete falsehood
about non-receipt of the reply to the Plaintiff's first notice, a matter
not without significance, but by that reply the 1st Defendant in
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effect put the Plaintiff to notice that it intended to continue using
the rival mark. The Plaintiff did not respond. It filed no suit. It took
no action. It sat idly by while the 1st Defendant continued to grow
its business. The explanation in paragraph 23 is, he says, no
explanation at all. The Plaintiff omits mention of the fact that the
1st Defendant had served on the Plaintiff caveats both in the
Bombay High Court and Calcutta High Court fully anticipating at
that time, seven years before the suit was filed, that the Plaintiff
would move against the 1st Defendant. Yet the Plaintiff did not act.
There is no mention in the Plaint either of the Plaintiff's
abandonment of its opposition to the 1st Defendant's registration
application, a fact that, on its own shows that the Plaintiff knew
throughout of the 1st Defendant's use of the rival mark but sought
no injunctive relief. Today, when the 1st Defendant's volumes of
domestic and international sales are high, it would, Mr. Parikh says,
be wholly inequitable to grant the kind of injunction Mr. Kamat
seeks. I think Mr. Parikh is right on all counts.
33. Mr. Parikh invites me to consider the Supreme Court
decision in M/s. Power Control Appliances & Ors. v Sumeet Machines
Pvt. Ltd.25 with him. That decision, of 1994, referred to and
followed the decision of the UK Court of Appeals in Electrolux LD
v Electrix LD.26 That in turn cited the very old decision of Fry J (as
he then was) in Willmott v Barber27 on the so-called five-fold test to
establish acquiescence. That was not a case in infringement and
passing off at all, but its principles were invoked in trade mark cases
(1994) 2 SCC 448
1954 RPC 23.
(1880) 15 Ch D 96 : 43 LT 95
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and passed into received wisdom. But, correctly read, Power
Controls does not support the principle that Mr. Kamath now
advances, submits Mr. Parikh, for it said in paragraph 26:
26. Acquiescence is sitting by when
another is invading the rights and
spending money on it. It is a course of
conduct inconsistent with the claim for
exclusive rights in a trade mark, trade
name etc. It implies positive acts; not
merely silence or inaction such as is
involved in laches. In Harcourt v. White
28 Beav 303 Sr. John Romilly said: "It is
important to distinguish mere negligence
and acquiescence." Therefore,
acquiescence is one facet of delay. If
the plaintiff stood by knowingly and let
the defendants build up an important
trade until it had become necessary to
crush it, then the plaintiffs would be
stopped by their acquiescence. If the
acquiescence in the infringement amounts
to consent, it will be a complete defence
as was laid down in Mouson & Co. v. Boehm
(1884) 26 Ch D 406. The acquiescence must
be such as to lead to the inference of a
licence sufficient to create a new right
in the defendant as was laid down in
Rodgers v. Nowill (1847) 2 De GM & G 614
: 22 LJ kCh 404.
34. When Mr. Parikh says that everything in this paragraph
applies squarely to the Plaintiff, I am inclined to agree. The Plaintiff
sat by. Its conduct is inconsistent with its claim for exclusivity. With
full knowledge and notice of the 1st Defendant's intentions, avowed
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unequivocally in the 1st Defendant's attorneys' reply to their first
cease and desist notice, the Plaintiff stood by and allowed the 1st
Defendant to build its trade until the Plaintiff felt it necessary to
crush it. This passage also tells us that in given circumstances
acquiescence can indeed amount to consent, even inferentially. It is
therefore incorrect to suggest that the 'positive act' so often
mentioned in the context of acquiescence is an actual green light. If
that were so, there would be no distinction at all between consent
and acquiescence.
35. So it is with good reason that Mr. Parikh turns for support to
the later Supreme Court decision in Khoday Distilleries Ltd v Scotch
Whisky Association & Ors.28 The law has travelled from Willmott v
Barber, Electrolux and Power Control:29
44. The development of law was also
noticed by the Court of Appeal in Habib
Bank Ltd. v. Habib Bank A.G. Zurich
[(1981) 1 WLR 1265 : (1981) 2 All ER 650
(CA)], WLR at pp. 1283-84, in the
following terms:
We were again referred to many
authorities on this subject and to
the debate which has taken place as
to whether, in order to succeed in a
plea of acquiescence, a defendant
must demonstrate all the five
probanda contained in the judgment
of Fry, J. in Willmott v. Barber
2008 (37) PTC 413 (SC) : (2008) 10 SCC 723
Paragraph numbers follow the SCC report.
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[(1881-85) All ER Rep Ext 1779 :
(1880) 15 Ch D 96] : see the recent
judgment of Robert Goff, J. in
Amalgamated Investment & Property
Co. Ltd. v. Texas Commerce
International Bank Ltd. [1982 QB 84
: (1981) 3 WLR 565 : (1981) 3 All ER
577 (CA)] Whether all five of those
probanda are necessary or not, Mr
Aldous submits that to succeed HBZ
must at least establish three
things. They must show, first, that
HBZ have been acting under a mistake
as to their legal rights. That, in
the instant case, must mean that
they were unaware that what they
were doing (that is to say, carrying
on their business under the name in
which they had been incorporated
with the active assistance of the
plaintiffs' predecessors),
constituted any invasion of the
plaintiffs' rights. Secondly, they
must show that the plaintiffs
encouraged that course of action,
either by statements or conduct.
Thirdly, they must show that they
have acted upon the plaintiffs'
representation or encouragement to
their detriment.
45. Noticing various other decisions,
Oliver, L.J., noticing a decision in
Taylors Fashions Ltd. v. Liverpool
Victoria Trustees Co. Ltd. [1982 QB 133 :
(1981) 2 WLR 576 : (1981) 1 All ER 897]
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opined [Ed.: Quoting from Taylors
Fashions Ltd. v. Liverpool Victoria
Trustees Co. Ltd., (1981) 1 All ER 897,
pp. 915j-916a.] : (Habib Bank case
[(1981) 1 WLR 1265 : (1981) 2 All ER 650
(CA)] , All ER p. 666h-j)
"Furthermore, the more recent cases
indicate, in my judgment, that the
application of the Ramsden v. Dyson
[(1866) LR 1 HL 129 (HL)] principle
(whether you call it proprietary
estoppel, estoppel by acquiescence
or estoppel
ig by encouragement is
really immaterial) requires a very
much broader approach which is
directed rather at ascertaining
whether, in particular individual
circumstances, it would be
unconscionable for a party to be
permitted to deny that which,
knowingly, or unknowingly, he has
allowed or encouraged another to
assume to his detriment than to
inquiring whether the circumstances
can be fitted within the confines of
some preconceived formula serving as
a universal yardstick for every form
of unconscionable behaviour."
It was held: (Habib Bank case [(1981) 1
WLR 1265 : (1981) 2 All ER 650 (CA)] ,
All ER p. 668c-e)
"I have to acknowledge my
indebtedness to counsel on both
sides for some illuminating
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arguments, but at the end of them I
find myself entirely unpersuaded
that the judge erred in any material
respect. He concluded his judgment
in this way on the question of
estoppel:
'Of course, estoppel by conduct
has been a field of the law in
which there has been
considerable expansion over the
years and it appears to me that
it is essentially the
application of a rule by which
justice is done where the
circumstances of the conduct
and behaviour of the party to
an action are such that it
would be wholly inequitable
that he should be entitled to
succeed in the proceeding.'
That, to my mind, sufficiently
appears on the facts of this
case."
Thus, in cases involving equity or
justice also, conduct of the parties has
also been considered to be a ground for
attracting the doctrine of estoppel by
acquiescence or waiver for infringement.
(Emphasis added)
36. Should we be of a mind to go back several years to Power
Control, we should find there in paragraph 28 a principle at no very
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great remove from this statement of the law, one that does not in
the least support Mr. Kamath's formulation before me today:30
28. In Devidoss and Co. [AIR 1941 Mad 31
: (1940) 2 MLJ 793 : ILR 1941 Mad 300] at
pages 33 and 34 the law is stated thus:
"To support a plea of acquiescence
in a trade mark case it must be
shown that the plaintiff has stood
by for a substantial period and thus
encouraged the defendant to expend
money in building up a business
associated with the mark. In Rowland
v. Michell [(1896) 13 RPC 464] Romer
J. observed:
'If the plaintiff really does
stand by and allow a man to
carry on business in the manner
complained of to acquire a
reputation and to expend money
he cannot then after a long
lapse of time, turn round and
say that the business ought to
be stopped.'"
...
Dealing with the question of
standing by in Codes v. Addis and
Son [(1923) 40 RPC 130, 142] at p.
142, Eve, J. said:
Paragraph numbers are from the SCC report.
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'... But I must assume also
that they have not, during that
period, been adopting a sort of
Rip Van Winkle policy of going
to sleep and not watching what
their rivals and competitors in
the same line of business were
doing. ... But the question is
a wider question than that:
ought not he to have known; is
he entitled to shut his eyes to
everything that is going on
around him, and then when his
rivals have perhaps built a
very important trade by the
user of indicia which he might
have prevented their using had
he moved in time, come to the
Court and say : "Now stop them
from doing it further, because
a moment of time has arrived
when I have awakened to the
fact that this is calculated to
infringe my rights." Certainly
not. He is bound, like
everybody else who wishes to
stop that which he says is an
invasion of his rights, to
adopt a position of aggression
at once, and insist, as soon as
the matter is brought to Court,
it ought to have come to his
attention, to take steps to
prevent its continuance; it
would be an insufferable
injustice were the Court to
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allow a man to lie by while his
competitors are building up an
important industry and then to
come forward, so soon as the
importance of the industry has
been brought home to his mind,
and endeavour to take from them
that of which they had
legitimately made use; every
day when they used it
satisfying them more and more
that there was no one who
either could or would complain
of their so doing. The position
might be altogether altered had
the user of the factor or the
element in question been of a
secretive or surreptitious
nature; but when a man is
openly using, as part of his
business, names and phrases, or
other elements, which persons
in the same trade would be
entitled, if they took steps,
to stop him from using, he gets
in time a right to sue them
which prevents those who could
have stopped him at one time
from asserting at a later stage
their right to an injunction.'
...
Delay simpliciter may be no defence
to a suit for infringement of a
trade mark, but the decisions to
which I have referred to clearly
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indicate that where a trader allows
a rival trader to expend money over
a considerable period in the
building up of a business with the
aid of a mark similar to his own he
will not be allowed to stop his
rival's business. ... No hard and
fast rule can be laid down for
deciding when a person has, as the
result of inaction, lost the right
of stopping another using his mark.
As pointed out in Rowland v. Michell
[Rowland v. Michell, (1897) 14 RPC
37, 43] each case must depend on its
own circumstances, but obviously a
person cannot be allowed to stand by
indefinitely without suffering the
consequence."
37. No portion of this legal position could ever be said to be
inapplicable to the present Plaintiff, Mr. Parikh correctly says, and
then proceeds to refer me to a judgment I delivered in Unichem
Laboratories Ltd. v Eris Life Sciences Pvt. Ltd.,31 where the issue was
also raised. If the Plaintiff knew of the 1st Defendant's adoption
and use of the mark since 2002 or 2003 and chose not to act till
2010, then there is certainly a ground made out in acquiescence.32
38. Perhaps it is time to rid ourselves once and for all of this
strange conflation of delay and acquiescence, and of this habit of
saying that since mere delay is no reason to refuse an injunction that
Notice of Motion (L) No.1852 of 2014, decided on 7th October 2014.
Yonex Kabushiki Kaisha v Philips International & Anr., 2007 (35) PTC
345 (Del.)
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is otherwise warranted, therefore there can be no acquiescence;
and, too, of this equally fallacious notion that when we speak of a
positive act in the context of acquiescence in intellectual property,
we mean and mean only some sort of pinpointed go-ahead. If that
were so, there would be no distinction between consent and
acquiescence. The latter is a species of estoppel, and for that
reason, it is both a rule of evidence and a rule in equity. It is an
estoppel in pais, and this only means that a party is prevented by his
or her own conduct from obtaining the enforcement of a right
which would operate to the detriment of another who justifiably
acted on such conduct. This type of estoppel differs from an
estoppel by deed or by record which, as a result of the language set
out in a document, bars the enforcement of a claim against a party
who acted in reliance upon those written terms. Courts adopt
estoppel in pais when a contradictory stance stands unfair to
another person who relied on the original position. What was the
1st Defendant here to make of the Plaintiff's failure to sue after it
served a cease and desist notice? After it served caveats and no suit
followed? After the Plaintiff abandoned its opposition to the 1st
Defendant's registration application and allowed the 1st
Defendant's mark to proceed to registration? Acquiescence means
assent to an infringement of rights, either express or implied from
conduct, by which the right to equitable relief is normally lost. It
takes place when a person, with full knowledge of his own rights
and of any acts which infringe them, has either at the time of
infringement or after infringement, by his conduct led the persons
responsible for the infringement to believe that he has waived or
abandoned his rights.33 It literally means silent assent. It imports
Earl Jowitt, The Dictionary of English Law, 2nd ed.
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placid consent, concurrence, acceptance, or assent.34 The equitable
doctrine of acquiescence may be taken to be that if a party having a
right stands by and sees another dealing with the property in a
manner inconsistent with that right and makes no objection while
the act is in progress, he cannot afterwards complain.35 A proprietor
of the trade mark who knowingly watches his competitor grow in
the market and takes no action can claim no exclusivity in his own
trade mark. He is deemed to have affirmed his rival's use of the
mark in question. If the owner of a registered trade mark stands by
and allows a man to spend considerable amounts on sales and
promotional activities in order to acquire a reputation, he cannot
then assert his rights in order to stop the business of another.
Where acquiescence in the infringement amounts to consent, it is a
complete defence.36
39. It is equally a mistake, I think, to suggest that the law relating
to the grant of interim injunctions is somehow displaced and has no
application to cases of infringement or passing off or both. Nothing
in law suggests this; no authority points to this. All point to the
contrary, including Power Control itself, which, in paragraphs 33 to
35 powerfully rearticulates the well-established principles that
govern the grant of interim injunctions. It is only necessary to note
the reaffirmation of the Supreme Court decision in Wander Ltd v
Antox India P. Ltd.37 and the imperative 'to preserve in status quo
the rights of the parties which may appear on a prima facie case.' In
granting a restraint order, the Court will also consider whether the
Vidyavathi Kapoor Trust v Chief CIT, (1992) 194 ITR 584 (Kant)
Rukmini Ama Sardamma v Kallyani Sulochana, AIR 1993 SC 1616
Unichem Laboratories Ltd v Eris Life Sciences Pvt Ltd., supra.
1990 Supp SCC 726
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defendant is yet to commence his enterprise or whether he has
already been doing so; if the latter, considerations somewhat
different from those in the former situation are attracted. Clearly,
equities and special equities are not irrelevant in considering
injunction applications in trade mark cases.38
40. Mr. Parikh puts it thus: on the facts of this case, it was the 1st
Defendant who put the Plaintiff to notice of the 1st Defendant's
intention to continue using the mark complained of. Everything that
the Plaintiff did thereafter, or, more importantly, did not do, was at
the Plaintiff's peril. Its inaction and lack of any effective steps to
halt the 1st Defendant in its tracks was encouragement enough. The
1st Defendant grew and expanded its business. It did so right under
the Plaintiff's nose. It was not till seven years after it received the
1st Defendant's reply or counter-notice that the Plaintiff finally
moved this Court. That, Mr. Parikh says, and I must agree, is far
too late.
41. Mr. Parikh is also justified in his reliance on the observations
of the Supreme Court in paragraph 35 of Cadila Health Care Ltd v
Cadila Pharmaceuticals Ltd.39 in the context of the claim in passing
off. As the Supreme Court said, one must have regard not only to
the nature of marks and their decree of similarity but also to the
nature of goods, the similarity in the nature, character and
performance of rival traders, the class of purchasers, their
education intelligence and decree of care, mode of purchasing the
Neon Laboratories Limited v Medical Technologies Limited & Ors., (2016)
2 SCC 672
Supra
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goods and of surrounding circumstances. I very seriously doubt that
any of the Plaintiff's customers would ever be mistaken or cast into
a state of wonderment at seeing the 1st Defendant's kitchenware or
drinking glasses. The Court's perspective must be that of an
ordinary man, the quidam consumer or customer: reasonable, albeit
unwary, not one who is overly punctilious, nor the rushed
individual of immoderate understanding.40
42. Both parties have registrations. Between them, therefore, the
exclusive right to use the trade mark is unavailable one against the
other. This is the more so where a plaintiff has not opposed or,
having opposed, has abandoned its opposition to the defendant's
registration application. Concurrent registration will not, of course,
prevent a plaintiff from seeking a relief in passing off. That is an
action in deceit. Its three probanda are goodwill, misrepresentation
and damage to goodwill.41 In a given case, if both plaintiff and
defendant are registered proprietors and, for that reason, no relief
in infringement is available to the plaintiff, is relief in passing off to
be granted to such a plaintiff merely because the defendant is using
his registered mark? Or must there be some additional material
shown in relation to the defendant's use of his own registered mark
but distinctly decipherable from the mark itself: his choice of
Evergreen Sweet House v Ever Green & Ors., 2008 (38) PTC 325 (Del);
Klas Tape Company v Vinod Hardware Stores & Ors., 2010 (118) DRJ
403; PP Jewellers Pvt Ltd & Anr. v PP Buildwell Pvt Ltd, (2010) 169 DLT
35 (DB); Skol Breweries v Unisafe Technologies, (2010) 173 DLT 453. The
regrettable and unfortunate phrasing in question, is of course, from the
dictum of Foster J in Morning Star Cooperative Society v Express
Newspapers, [1979] FSR 113. It was used again in the same year by
Denning LJ in Newsweek Inc v British Broadcasting Corp [1979] RPC 441.
S. Syed Mohideen v P. Sulochana Bai, (2016) 2 SCC 683
36 of 38
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colours, fonts, presentation, prominence of a particular feature and
so on? I do not believe that the law requires that, as between two
registered proprietors, relief in passing off one against the other
must follow axiomatically. The action in passing off is certainly
maintainable, just as the action in infringement is not. But the
essence of 'passing off', as the term itself implies, is masquerade,
deception, misdirection; of the three established probanda, it is
misrepresentation that is the keystone. This means
misrepresentation as to ownership, source and a shared origin and
provenance. Y has obtained registration of a mark that is, for
illustration, very similar to that of X, also a registered proprietor.
Neither can sustain an action in infringement against the other. But
to obtain relief in passing off against Y, X must show something
more than the existence of Y's registration. X must show that Y is
misrepresenting his products as those of X, or as those likely to
have emanated from X. How this is demonstrated is, necessarily,
fact-dependent; but it is clearly not sufficiently demonstrated by
pointing only to the existence of a registration of a rival mark. This
is where the Cadila test comes into play. In this case, that test is not
met.
43. Similarly, the establishing of a good prima facie case is but
one part of the raft of considerations that a Court of equity must
weigh in the balance. The test of the prima facie is not the beginning
and end of the matter. A given defendant may not be able to show
acquiescence. On a fuller consideration after a trial is complete and
all evidence is taken, his defence may even fail. But he is surely
entitled to say that equity demands that injunctive relief be denied
at the interim or ad-interim stage; and that, should the plaintiff
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succeed, compensation can always be ordered. We often do this
even in cases under trade mark law when we direct only that a
defendant should maintain accounts but deny the injunction. What
is this except the acceptance of a supervening principle of equity?
There are, inter alia, the tests of balance of convenience and
irretrievale prejudice, questions of special equities, that govern the
interlocutory applications generally. There is no reason to jettison
these merely because the action is in trade mark law. In assessing
any such case, whether founded in infringement or passing off or
both, a Court considers not just the privileges and protection of
exclusivity afforded by statute and common law to a claimant but
also, and perhaps even more importantly, the greater public good:
healthy and fair commercial competition, the avoidance of
unjustified monopolies, and the paramount interest of the
unsuspecting consumer of goods and services. Mr. Parikh therefore
correctly relies on the decision of the Supreme Court in M/s.
Gujarat Bottling Co. Ltd. & Ors. v Coca Cola Company & Ors.42 for
the proposition that the grant of injunctions is a purely equitable
relief. A vital consideration in equity, one that I imagine is
unyielding, is that the party seeking an injunction should be free
from blame in its approach to the Court. This Plaintiff is not.
44. In my view neither on equity nor on law has any case been
made out for the grant of an injunction. The Notice of Motion is
dismissed. There will no order as to costs.
(G. S. PATEL, J.)
AIR 1995 SC 2372
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