TaxTMI 
TaxTMI 
2023 (9) TMI 707
X X X X Extracts X X X X
X X X X Extracts X X X X
....on restraining the respondent from infringing copyright in its artistic label either by reproducing the label or the substantial part of it in any material form by printing, publishing or using the label or any other work, which is an imitation or reproduction of the appellant's label or substantial part thereof. In the suit, the appellant also prayed for a decree of injunction restraining the respondent from manufacturing, selling, offering for sale, advertising, or otherwise dealing in country liquor having the appellant's trade mark label or any deceptively similar trademark label so as to pass off the country liquor of the respondent as and for the well-known country liquor of the appellant. After a complete trial, the learned District Judge decreed the suit by passing the following decree: "1.Suit is decreed with costs. 2.Defendant or anybody claiming through it, are hereby permanently restrained by an order of perpetual injunction from infringing the Plaintiff's copyright in its artistic labels Annexure' A', 'A1' (Exh.66), 'B' and 'Bl' (Exh.71) by reproducing the same or substantial part thereof in material form or by prin....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... for the appellant has taken us through the judgment of the Trial Court and the impugned judgment. The learned counsel submitted that the learned Single Judge of the High Court ought not to have attached much importance to the fact that during the pendency of the suit, the application made by the appellant claiming interim relief in terms of the decree prayed in the suit was rejected, which was affirmed by the High Court. He urged that since after a complete trial, a decree was passed in favour of the appellant, it ought not to have been stayed. He submitted that merely because the appellant withdrew its objections raised before the Commissioner for State Excise to the labels used by the respondent, the rights of the appellant under the copyright and trademark cannot be defeated. The learned Single Judge had no reason to disturb the findings recorded by the Trial Court based on evidence by granting a drastic relief of stay of the execution of the decree. 6. The learned counsel has produced, for the perusal of the Court, the specimen bottles in which country liquor is being sold by the appellant and the respondent. He contended that there are striking similarities in the labels u....
X X X X Extracts X X X X
X X X X Extracts X X X X
....nt on 25th April 2016, but the suit was filed by the appellant on 4th October 2017 which is nearly one and half years after the objections were withdrawn. 8. The learned senior counsel relied upon the following decisions in support of his submissions: Khoday Distilleries Ltd. v. Scotch Whisky Association & Ors. (2008) 10 SCC 723; Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. & Ors. (2018) 2 SCC 1; Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR (1960) SC 142; Ciba Ltd. Basle Switzerland v. M. Ramalingam and S. Subramaniam trading in the name of South Indian Manufacturing Co., Madura & Anr. AIR (1958) Bom 56; A decision of the Court of Appeal dated 24th January 1990 in the case of Payton & Co. Ld. v. Snelling Lampard & Co. Ld. and a decision of the House of Lords dated 8th February 1990 in the case of Reckitt & Colman Products Ltd. v. Borden Inc. & Ors. (1990) 1 WLR 491 CONSIDERATION OF SUBMISSIONS 9. We may note here that we are referring to the rival contentions in detail only because very detailed submissions were made before us. But we are conscious of the fact that we are dealing with an interi....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing-off action. It would depend upon the volume of sales and extent of advertisement. 14. The second element that must be established by a plaintiff in a passing-off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any mala fide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to the plaintiff [Cadbury Schweppes v. Pub Squash, 1981 RPC 429 : (1981) 1 All ER 213 : (1981) 1 WLR 193 (PC); Erven Warnink v. Townend, 1980 RPC 31 : (1979) 2 All ER 927 : 1979 AC 731 (HL)]. What has to be established is the likelihood of confusion in the minds of the publ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....in chief of Shri K.K. Kalani, in paragraph 10, only the figures of sales and marketing expenses have been quoted. Prima facie, it appears to us that at the time of the final hearing of the suit, it was incumbent upon the appellant plaintiff to actually prove the figures of sales and expenditure incurred on the advertising and promotion of the product. Only by producing the statements without proving the contents thereof, the appellant could not have established its reputation or goodwill in connection with the goods in question. According to the witness, the statements produced were signed by a Chartered Accountant Mr. Natesh. This aspect surely makes out a prima facie case for grant of stay to the execution of the decree in favour of the respondent as regards the passing-off action. 13. For establishing goodwill of the product, it was necessary for the appellant to prove not only the figures of sale of the product but also the expenditure incurred on promotion and advertisement of the product. Prima facie, there is no evidence on this aspect. While deciding an application for a temporary injunction in a suit for passing-off action, in a given case, the statements of accounts si....
X X X X Extracts X X X X
X X X X Extracts X X X X
....nditionally, he accepted that in the letters of withdrawal of the objection, it is not mentioned that the withdrawal was conditional. In fact, in paragraph 30, he admitted that the three objections were withdrawn by the appellant. The witness, however, volunteered to state that it was a conditional withdrawal. When the witness was confronted with copies of the letters of withdrawal of the objection, he accepted that it is not written therein that the withdrawal was conditional. He stated that it was also not mentioned that the withdrawal was unconditional. He stated that the authorities were orally informed that the withdrawal was conditional. 16. In the facts of the case, it appears that when permission was sought by the respondent to use the impugned labels, the appellant raised objections in writing to the grant of permission to the respondent to use the said labels. It is not as if those objections were not pursued, but there was a positive act on the part of the appellant of withdrawing the said objections by submitting the letters of withdrawal in which, admittedly, it was not mentioned that the withdrawal was conditional. This important factual aspect supports the order o....