TaxTMI 
TaxTMI 
1994 (2) TMI 297
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....S. No. 343 of 1992 and one each in C.S. Nos. 431 and 432 of 1992 respectively. 4. The facts are common to all the suits and the applications. In C.S. No. 343 of 1992 in the application Nos. 226 & 227/1992, the plaintiffs prayed for an interim injunction to restrain the respondents (defendants) from using, distributing, printing or causing to he printed the work as contained in Document Nos. (1) receipt and instruction manual, (2) guarantee card and (3) outer carton and the work as found in Document Nos.4, 5, and 6. 5. In C.S. No. 431 of 1992 in application No. 271/92 an interim injunction was sought to restrain the respondents from using the registered trade mark. 6. In C.S. No. 432 of 1992 in application No. 272/92 the injunction was sought to restrain the respondents from using the design registration in manufacturing the mixies. 7. Admittedly, Mrs. Madhuri Mathur is the sole proprietary of M/s. Power Control and Appliances Company. She started manufacturing power operated kitchen mixies for domestic use since 1963. They are marketed since 1964 under the brand name of 'Sumeet'. The mixy was packed in a cardboard box and at the top the pictorial and photograph ....
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....hich it is registered. On these allegations, it was urged that the first defendant had committed infringement of the exclusive copyright of the first plaintiff in the artistic material and trade literature displayed on the card-board box. Similarly, the operating instructions and recipe book and the guarantee card issued by them. 10. With regard to the four components of the mixer, Mrs. Madhuri Mathur had obtained registration of their design under Part II of the Designs Act, 1911. Those components are: i) Dry grinding blade, ii) Whipper blade, iii) Polycarbonate dome iv) Stainless steel jar with rim. 11. Each one of them has a specific registration number. Though the statutory period of 15 years or the validity of the copyright had elapsed on 23.5.1992 concerning items (i), (ii) and (iv), as regards whipper blade the validity of registration is up to 5.4.1994. Therefore, it is not open to anyone to infringe the same. Thus, the applications on the grounds came to be preferred. 12. The first defendant did not file the written statement. However, he filed his counter- affidavit. The stand taken by him is that he (Ajay Parkash Mathur) is....
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....om the report of decision in Power Control and Appliances Co. and Anr. v. Sumeet Machines Private Ltd. and Anr. AIR1993Mad120 , held that the copyright with respect to operative instructions and recipe book, guarantee card and the outer carton of the Sumeet Kitchen Mixies vested in the Power Control Appliances Company represented by the Sole proprietary Mrs. Madhuri Mathur. Equally, the copyright in the design registration No. 148246 in relation to 'whipper blade' was also accepted as belonging to the plaintiff. The trade mark in the name of 'Sumeet' with the particular artistic design is registered in the name of Sumeet Research and Holdings Limited was accepted as claimed by the plaintiffs. Notwithstanding, all these, the relief of injunction was not granted in view of acquiescence by the plaintiffs in the honest and concurrent user of the first defendant. Against this judgment, O.S.A. No. 144-146/1992 came to be preferred. 16. The Division Bench by the impugned judgment dated 26.2.1993 held that the learned Single Judge was not wrong in holding that the plaintiffs have acquiesced in the use of the trade literature and the trade mark by the first defendant. The....
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....ee 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 of a different Act, namely, 1957 Act. Therefore, there can be no honest and concurrent user of one's copyright by another. After 1958 Act, the plea of acquiescence is not available at all. Even assuming that the first defendant was manufacturing between June 1989 and October 1991 he cannot have the benefit of Section 30(1)(b) of the 1958 Act. This Act creates offences for such infringement under Sections 78 and 29. Section 96 also speaks of imply warrantee. These provisions were not found in the 1940 Act. In Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. [1970]2SCR222 at page 224 this Court had occasion to point out the distinction between the infringement and passing off. On this basis it is submitted all that has to be proved by the plaintiff is that she is the registered owner of the trade mark. If there is an infringement, injunction must follow. Section 12(3) of the 1958 Act talks of special circumstances in relation to honest and concurrent user. In such ....
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....admission in paragraph 11 of the plaint. The export of these domestic mixies as Sumeet 842 INT is done by the first respondent. All these point out to acquiescence which would be a good ground for denying the interim relief of injunction. 22. The appellant has disentitled itself from the grant of equitable relief of injunction by reason of unexplained delay and suppression of material facts. The balance of convenience is also overwhelmingly in favour of this respondent in view of the facts stated above that the first respondent has been manufacturing and marketing productions with the trade name of Sumeet since 1989. 23. It is not correct to contend that once the trade mark is infringed the plaintiff would be entitled to injunction. Section 30(b) is still applicable and it is open to this respondent to show that there had been an implied consent to the use of the trade mark. In support of this submission learned Counsel places reliance on Devidoss and Co. v. Alathur Abboyee Chetty AIR 1941 Madras 31. 24. As regards the principles in relation to the grant of interim injunction the law has been laid down in K.E. Mohammed Aboobacker v. Nanikram Maherchand 1957 2 Mad LJ 573. S....
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....ut in this case. That will be examined for a limited purpose after setting out the law on this aspect. 27. 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. 28. The law of acquiescence is stated by Cotton, L.J. in Pro tor v. Bannis (1887) 36 C....
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....idence 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 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 allow a man to lie by while his competitors are building up an important....
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....ndent 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 (1897) 14 R P C 37 , Rowland v. Michell, each case must depend on its own circumstances, but obviously a person cannot be allowed to stand by indefinitely without suffer the consequence. This is the legal position. Again in Halsbury's Laws of England Fourth Edition, 24 at paragraph 943 it is stated thus: 943. Acquiescence, An injunction may be refused on the ground of the plaintiff's acquiescence in the defendant's infringement of his right. The principles on which the court will refuse interlocutory or final relief on this ground are the same, but a stronger case is required to support a refusal to grant final relief at the hearing. (Patching v. Subbins (1843) Kay 1; Child v Douglas (1854) 5 De GM & G 739; Johnson v. Wyatt 1863 2 De GJ & Sm 18; Turner v Mirfield (1854) 5 De GM & G 739; Johnson V Wyatt 1863 2 De GJ & Sm 18; Turner v. Mirfield (1865) 34 Beav 390; Hogg v. Scott (1874) LR 18 Eq 444; Price v Bala and Festiniog Rly Co (1884) 50 LT 787. The reason is that at th....
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....d 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." In Electrolux LD. v. Electrix 1954 71 R.P.C 23 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 the astuteness of their advisers; but, as has already been said, the defendants have traded openly and (as the Judge found) honestly, beyond any question, in the ordinary course and substantially under this name "Electrix" for a very long period of time, since early 1930's. During that time, they have built up (I doubt not) a valuable goodwill associated with that name. If the possibility that the mark "Electrolux" was infringed is out of the way, and if 1 disregard for the moment (as I do) the point taken by Mr. Kenneth John stone that in any event the use of "electrolux" was a sufficient use for the purpose of Se....
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....thly, 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 usually met with are there transposed, and that one of the parties who is there spoken of as the plaintiff corresponds with the present case with the Defendants, and vice versa." 29. Amritdhara Pharmacy v. Satyadeo Gupta [1963]2SCR484 is a case where Halsbury was quoted with approval. However, on the facts of that case it was held that the plea of acquiescence had not been made out. 30. Now, we come to the principles in relation to the grant of interim injunction. The case in K.E. Mohammed Aboobacker v. Nanikram Maherchand and Anr. (1957 II MAD LJ 573 makes a reference to ....
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....lt if the injunction is granted and plaintiff ultimately succeeds; Read Brothers v. Richardson and Co. (1881) 45 L.T. 54, Hommel v. Bauer & Co. (1903) 20 R.P.C. 801. ...It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mar. 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 Company, Ltd. v. Gormully and Jeffery Manufacturing Company (1894) 12 R.P.C. 17, Army and Navy Co- operative Society, Ltd. v. Army Navy and Civil Service Co-operative Society of South Africa Ltd. (1902) 19 R.P.C. 574, Hayward Bros. Ltd. v. Peakall (1909) 26 R.P.C. 89. Yost Typewriter Company ; Ltd. v. Typewriter Exchange Company (1902) 19 R.P.C. 422, Royal Warrant Holders' Association v. Slade & Co., Ltd. (1908) 25 R.P.C. 245. In American Cyanamid Co, (supra) it is held at page 511 as under: "Where other factors appear to be evenly balanced it is a counsel of....
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....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. 32. 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 reported in AIR 1993 Mad 120 observes: "A careful perusal of the above referred documents in particular along with the other voluminous documents, clinch the fact that Smt. Madhuri Mathur, mother of the deponents in the affidavits filed in support of the applications, as well as the counter affidavit, get the trader mark "SUMEET" registered long back as early as 1964 and that by the very strenuous efforts, hard work, skill, exertion, devised so many designs and improved the appliances on par with the modern tec....
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....ingly, they are being marketed the same through the company distributor. 33. In paragraphs 19 & 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). 34. So, as such there is no evidence of manufacture. As rightly contended by Mr. Chidambaram, learned Counsel, marketing may not advance the case of the first defendant-respondent. We do not think, as is urged by Mr. Soli J. Sorabjee, learned Counsel, either the criminal complaint or the averment in the plaint would amount to im....