TMI Blog1994 (2) TMI 297X X X X Extracts X X X X X X X X Extracts X X X X ..... as is available at present the denial of injunction, once the infringement of trade mark, copyright and design is established, cannot be supported. Pending suit, there will be an injunction in favour of the appellants (the plaintiffs). - C.A. 2551 OF 1993 - - - Dated:- 8-2-1994 - S. MOHAN, AND M.N. VENKATACHALLIAH, JJ. JUDGMENT The Judgment of the Court was delivered by MOHAN, J.- All these appeals can be dealt with under a common judgment. The Civil Appeal Nos. 2551-52 of 1993 are by the first plaintiff while Civil Appeal No. 2553 of 1993 by the second plaintiff. 2.The plaintiffs filed three suits on the file of the High Court of Madras- (i) C.S. No. 343 of 1992 complaining of infringement of the copyright of the first plaintiff (Power Control Appliances Company); (ii)C.S. No. 431 of 1992 alleging the violation of the registered trade mark 'Sumeet' No. 263836 in Part-A in Class 7 for machines (electric) for kitchen use; (iii)C.S. No. 432 of 1992 claiming the design registration in the 'Whipper Blade' of the power operated mixies. 3.Pending these suits, four application Nos. 226, 227, 271 and 272 of 1992 were taken out, two in C.S. No. 343 of 1992 and one each ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e public limited company. Mrs Madhuri Mathur is the Chairman and Director. She holds 59.25% shares. 6.The artistic manner in which the word 'Sumeet' is written was conceived and published by the first plaintiff. It was registered trade mark with effect from April 18, 1970. This trade mark was assigned to the second plaintiff on January 1, 1981. The second appellant is the owner of the copyright. 7.The first defendant was incorporated in 1984. It has been manufacturing and selling mainly washing machines and vacuum cleaners from September/October 1991. It has started manufacturing domestic mixies exactly similar to plaintiffs' mixer with identical specifications except for power rating. The package and the pictorial display are identical. Even the booklet is pagewise reproduction including an error with respect to Design No. 146781, a design number not belonging to the plaintiffs. The contents of the guarantee card are also identical. The first defendant is affixing in each of the appliances the registered trade mark 'Sumeet' belonging to the second plaintiff in the same artistic manner in which it is registered. On these allegations, it was urged that the first defendant had co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... athur is a shareholder in first defendant, she having been allotted 5000 shares. Likewise, the father of first defendant also owns 5000 shares. 12.Since 1986, the first defendant has been manufacturing and marketing mixies under the trade name of 'Sumeet'. This was done with the knowledge and consent of the plaintiffs openly and concurrently. Further, Mrs Madhuri Mathur and the father of first defendant have signed and given personal guarantees to the State Bank of Hyderabad on behalf of the first defendant. The loans were secured on that basis. In short, the reply of the first defendant is that the copyright trade mark and the copyright design is that of the first defendant which was conceived as a family concern. The word 'Sumeet' was given with the blessings and consent of Madhuri Mathur and S.P. Mathur. Therefore, he has been an honest and concurrent user. In any event, the plaintiffs' applications were not entitled to the reliefs on the ground of acquiescence. 13.The learned Single Judge as seen from the report of decision in Power Control and Appliances Co. v. Sumeet Machines Pvt. Ltd. I held that the copyright with respect to operative instructions and recipe book, guara ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nvited applications for distribution. 16.The conclusions of the High Court lead to strange results. Notwithstanding the finding of the court that the appellants' copyrights, registered trade mark and registered design having been occupied totally consciously and deliberately without any alteration and thereby infringed by the defendant to deny injunction in equity cannot be supported. After all the plaintiff Mrs Madhuri Mathur as an individual has 3.3 per cent of the shareholding in the first defendant-company. 17.To hold that the first defendant was using the registered trade mark from 1984 is wrong when admittedly the first defendant-company came into existence only in 1984. 18.Under Sections 19 and 54 of the Copyright Act reproduction of the copyright itself is infringement unless there is specific assignment in writing by the proprietor. In this case, there is not even a plea that Mrs Madhuri Mathur assigned the copyright in the outer carton handbook and guarantee card. The concept of honest and concurrent user found in Section 12(3) of the 1958 Act for securing concurrent registration is totally irrelevant as defence in a suit for infringement and copyright arising out o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of Companies regarding the allocation of the name Sumeet. (2)The encouragement of production of new electronic food preparation machine. (3)No objection whatsoever by the plaintiff or any other related companies or even by Mr or Mrs Madhuri Mathur to the manufacture and sale by this respondent till the issue of notice dated November 18, 1991. There is also evidence in this case to show that the first respondent has been manufacturing mixing machines from July 1987. There is also a clear * The Trade and Merchandise Marks Act, 1958 + The Trade Marks Act, 1940 admission on the part of the plaintiff that the first respondent was manufacturing his products under the trade name of Sumeet at least since June 1989. This is evident from the following: (i)Criminal complaint dated April 6, 1992 mentions the manufacture of washing machines, vacuum cleaners and industrial mixies from 1984 and the manufacture of kitchen machines from 1989-90. (ii)The affidavit filed on behalf of the appellants mentions about the manufacture since June 1989. There is a similar admission in paragraph II of the plaint. The export of these domestic mixies as Sumeet 842 INT is done by the first responde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r determination. For such a determination, we refrain from going into the details relating to evidence as that will prejudice the parties in the suits. Section 30(1)(b) of the 1958 Act says: "30. Acts not constituting infringment.-(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered trade mark--- (a * * * (b)the use by a person of a trade mark in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark." Therefore, acquiescence is one of the defences still available to the first respondent. Of course, it is a different issue whether the plea of acquiescence has been made out in this case. That will be examined for a limited purpose after setting out the law on this aspect. 26.Acquiescence is sitting by, when another is invading the rights an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t the defendant has done him a wrong and the question is whether the plaintiff has so acted as to disentitle him from asserting his right and from seeking redress from the wrong which has been done to him. Cases may occasionally lay down principles and so forth which are a guide to the court, but each case depends upon its own circumstances. Dealing with the question of standing by in Codes v. Addis and Son16 at P. 142, Eve, J. said: 'For the purpose of determining this issue I must assume that the plaintiffs are traders who have started in this more or less small way in this country, and have been continuously carrying on this business. 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. I accept the evidence of any gentleman who comes into the box and gives his evidence in a way which satisfies me that he is speaking the truth when he says that he individually did not know of the existence of a particular element or a particular factor in the goods marketed by his opponents. But the question is a wider question ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rector of the plaintiff company admitted that he had known of the use of the word 'glazine' by the defendants for four years he would not say it was not five years. It was held that the plaintiffs failed on the merits and by reason of their delay in bringing the action. 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 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. If he were permitted to do so great loss would be caused not only to the rival trader but to those who depend on his business for their livelihood. A village may develop into a large town as the result of the building up of a business and most of the inhabitants may be dependent on the 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. Michell15 each case must depend on its own circumstances, but obviously a person cannot be allow ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ants did suggest that there had been something more than mere delay on the part of the plaintiffs, and that the plaintiffs had lain by and allowed the goodwill which the plaintiffs now propose to acquire, but this point was not seriously pressed. It was suggested that Mr Evans Bajker, the plaintiffs' solicitor, knew from 1941 onwards what the defendants were doing, but it is impossible to impute to a busy solicitor a knowledge which he could only acquire by seeing advertisements in local or farming papers advertising the defendants' activities. No direct information was afforded to him; on the contrary it will be remembered that when in 1942 he made enquiries on behalf of his clients information was studiously withheld from him. I conclude therefore that there has been no acquiescence to disentitle the plaintiff to relief."' 31 In Electrolux LD. v. Electrix5 at pp. 32 and 33 it was held thus: "I now pass to the second question, that of acquiescence, and I confess at once that upon this matter I have felt no little sympathy for the defendants, and have been not a little envious of the good fortune which has attended the plaintiffs, though no doubt they may justly attribute it to t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y, the plaintiff must 'have expended some money or must have done some act (not necessarily upon the defendant's land) on the faith of his mistaken belief. Thirdly, the defendant, the possessor of 'the legal right, must know of the existence of his own right which is inconsistent with 'the legal right, must know of the existence of his own right which is inconsistent with' the right claimed by the plaintiff. If he does not know of it he is in the same position 'as the plaintiff, and the doctrine of acquiescence is founded upon conduct with a knowledge' of your legal rights. Fourthly, the defendant, the possessor of the legal right, must know 'of the plaintiff's mistaken belief of his rights. If he does not, there is nothing which' calls upon him to assert his own rights. Lastly, the defendant, the possessor of the legal 'right, must have encouraged the plaintiff in his expenditure of money or in the other acts which he has done, either directly or by abstaining from asserting his legal right'. In reading that passage, it is perhaps necessary to note (because it makes it at first sight a little more difficult to follow) that the positions of plaintiff and defendant as they are usual ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ords, where the plaintiff s title is disputed or the fact of infringement or misrepresentation amounting to a bar to the action or some other defence is plausibly alleged upon the interlocutory motion, the Court in granting or refusing the interim injunction is guided principally by the balance of convenience that is by the relative amount of damage which seems likely to result if the injunction is granted and the plaintiff untimately fails or if it is refused and he ultimately succeeds; Read Brothers v. Richardson and Co., Hommel v. Bauer Co. ... It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mark. Improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be granted if the plaintiff has delayed interfering until the defendant has built up a large trade in which he has notoriously used the mark. North British Rubber Co., Ltd. v. Gormully and Jeffery Manufacturing Co., Army and Navy Cooperative Society, Ltd. v. Army Navy and Civil Service Cooperative Society of South Africa Ltd., Hayward Bros. Ltd. v. Peakall, Yost ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience" lies.' The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted." 36. In this case we will briefly analyse the materials on record as they now exist to decide the plea of honest and concurrent user of acquiescence. The learned Single Judge in paragraph 18 of his judgment at p. 1271 observes: "A careful perusal of the above referred documents in particular along with the other voluminous documents, clinch the fact that Smt Madhuri Mathur, the mother of the deponents in the affidavits filed in support of the a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the directorship and shares in almost all the companies and deeply involved in manufacturing either the components, motors and other accessories for their companies' products under the registered trade name and mark, SUMEET and that accordingly, they are being marketed the same through the company (sic common) distributor." 37.In paragraphs 19 and 20 of the impugned judgment the learned Judge refers to the documents filed by the respondent. None of these documents throw any light as to the manufacture. It might be that the first respondent was marketing, having regard to the close relationship as mother and son between the plaintiff and the first defendant. This was why the Division Bench remarked: "There is some evidence showing that the first defendant has been at least marketing domestic mixers allegedly manufactured by Power Control and Appliances (Bombay) Limited since its incorporation. Whether it actually manufactured before September 1991, however, is not possible to answer without proper evidence as to the actual manufacturing of the kitchen mixers by the first defendant." (emphasis supplied) 38.So, as such there is no evidence of manufacture. As rightly contended by ..... X X X X Extracts X X X X X X X X Extracts X X X X
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