1. Infringement of registered trade marks and patent relating to cement concrete pipes — Suit for injunction and damages under Trade Marks Act and Patents and Designs Act. (Para 1 , 2 )
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1961 Supreme(SC) 343
SUPREME COURT OF INDIA
SATYANARAYANA RAJU AND NARASIMHAM, JJ.
Indian Hume Pipe Co., Ltd., Appellant
Versus
Vendra Venkanna, Proprietor of Jai Bharathi Cement Works, Penugonda, Respondents.
Appeals Nos. 140, 154 and 170 of 1957, D/-13-10-1961, against decree of Addl. Dt. Judge, W. Godavari at Eluru,
D/- 7-8-1956.
Advocates appeared
M. Krishnarao, for Appellant; N. Rajeswararao, D. Ramachandramurti, A. Gangadhara Rao, M. Bhujangarao, B. Satyanarayana Raju, P. Sitarama Raju, E. Venkatesam, M. Adinarayana Raju, for Respondents.
Registration of a trade mark grants exclusive rights regardless of the infringer's knowledge. However, under patent law, damages cannot be recovered if the defendant proves they were unaware of the patent and had no reasonable means of knowing its existence.
Headnote:(A) Trade Marks Act, 1940 - Section 21 - Patents and Designs Act, 1911 - Sections 12, 26, 29 and 30 - Infringement of trade mark and patent - Use of a registered trade mark by another manufacturer - Whether ignorance of registration is a defense - No - Registration gives the proprietor the exclusive right to use the mark, and infringement occurs when a mark identical or nearly resembling it is used in trade to cause confusion (Paras 41, 49).
(B) Patents and Designs Act, 1911 - Section 30 - Recovery of damages for patent infringement - Defendant's lack of knowledge - A patentee is not entitled to recover damages from a defendant who proves that at the date of infringement, they were not aware nor had reasonable means of making themselves aware of the existence of the patent (Paras 23, 35).
(C) Law of Damages - Nominal vs. Substantial Damages - Nominal damages are awarded to affirm the infraction of a legal right when no real damage is proven (Para 53). Substantial damages are intended as fair and adequate compensation to put the injured party in the position they would have been in but for the wrongful act (Para 54). Where the determination of actual damages is left open for investigation by a Commissioner, the court cannot legitimately dispose of the claim by awarding only nominal damages (Paras 52, 55).
Facts of the case:
A manufacturer of cement concrete pipes filed suits against other manufacturers for infringement of its registered trade marks and a patent relating to the machinery used for producing the pipes. The trial court granted a permanent injunction and nominal damages of Rs. 100/- for trade mark infringement but denied relief for patent infringement, noting the patent had expired and the defendants were unaware of its existence. The plaintiff appealed against the award of nominal damages and the denial of patent damages.
Findings of Court:
The court affirmed that the use of the registered trade marks constituted infringement, rejecting the argument that the terms were merely descriptive of the product. Regarding the patent, the court upheld the finding that the defendants were ignorant of the patent's existence, which precluded the recovery of damages under the Patents and Designs Act. However, it found that the trial court erred in awarding only nominal damages for trade mark infringement when the right to ascertain actual damages had been reserved.
Issues: Whether the use of a registered trade mark is excused by ignorance of its registration or by the claim that the mark is generic; whether damages for patent infringement can be recovered if the defendant was unaware of the patent; and whether nominal damages are appropriate when the quantum of actual damages is left for further investigation.
Ratio Decidendi: Under the Trade Marks Act, registration confers an exclusive right that is infringed regardless of the defendant's knowledge of the registration. Under the Patents and Designs Act, proof of ignorance of the patent's existence is a statutory defense against a claim for damages. Furthermore, nominal damages are insufficient when there is a provision to investigate substantial losses, as the principle of restitutio in integrum requires fair compensation for actual injury.
Result: Appeal allowed in part; the award of nominal damages set aside and the matter remitted to the lower court for assessment of damages via a Commissioner; the injunction affirmed; other appeals and cross-objections dismissed.
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2. Whether the trade mark was descriptive of the product, whether the patent was subsisting, and whether ignorance of patent registration precludes the recovery of damages. (Para 3 , 4 , 5 , 6 , 7 , 8 , 17 )
3. Ignorance of trade mark registration is no defense; however, under the Patents and Designs Act, ignorance of a patent precludes recovery of damages. (Para 24 , 25 )
4. Can a patentee recover damages from a defendant who was unaware of the patent's existence?
No. Section 30 of the Patents and Designs Act 1911 precludes the recovery of damages if the defendant proves that, at the date of infringement, they were unaware and had no reasonable means of becoming aware of the patent. (Para 23 , 24 , 25 )
Judgment
SATYANARAYANA RAJU, J.:-
The Indian Hume Pipe Co., Ltd., is the appellant in all these appeals. The appeals are presented against common judgment of the Court of the District Judge, West Godavari at Eluru in O. S. Nos. 30, 53 and 54 of 1954 which were all instituted by the appellant herein as the plaintiff against various defendants. The suits were instituted claiming reliefs for an alleged infringement of the trade mark of the plaintiff in relation to cement concrete pipes manufactured and sold by the plaintiff and of the patent registered in relation to the said cement concrete pipes.
(2) The plaintiff s case in brief is that it is a long standing manufacturer and seller of cement concrete pipes under the trade mark and name "Hume Pipes" and "Humeogenous Pipes". The said pipes manufactured by it" acquired reputation in India and other countries. The Company had registered the said trade marks with the Registrar of Trade Marks under the Trade Marks Act of 1940 (Act V of 1940) as Nos. 1313 and 1317 on 24-6-1942. The registration was for a period of 7 years in the first instance and renewal thereof was obtained for a further period of 15 years.
The plaintiff-company is therefore the registered proprietor of the said trade mark. The plaintiff-company had also, registered its patent in relation to the said cement pipes as an invention in or relating to cages or drums for forming thereon reinforcement of concrete pipes as patent No. 20709 on 19-3-1934 under the Patents and Designs Act of 1911 (Act II of 1911). By virtue of the said patent, the plaintiff has the sole and exclusive rights in the use and manufacture of the machine and method which was so registered. The said patent is valid and subsisting. While so, the plaintiff alleged that the various defendants, who are manufacturers of cement concrete pipes, had infringed the rights of the plaintiff by manufacturing and selling cement concrete pipes under the plaintiff s trade mark and name and using the patented machine and method for manufacturing the said cement pipes.
(3) The defendant in O. S. No. 30 of 1954 is one Vendra Venkanna, Proprietor of Jai Bharathi Cement Works, Penugonda, West Godavari District. The plaintiff alleged against him that he bad infringed the plaintiff s rights deliberately and wilfully and was passing off his cement concrete pipes as those of the plaintiff making the public to believe that his goods of inferior quality were the genuine goods of the plaintiff and that the plaintiff came to know of the said infringement in or about July 1953 whereupon by notice dated 16-10-1953 the plaintiff called upon the defendant to desist from infringement. The defendant replied expressing ignorance of the plaintiff s rights and professing to desist from the using the plaintiff s trade mark for his goods.
The plaintiff, however, understood that he was still publishing advertisements etc., offering his goods as "Hume Pipes" and "Humeogenous Pipes". Since the defendant began to market his products, the sales of the plaintiff had fallen and orders from Municipalities, Corporations and other Public bodies had been obtained by the defendant. The plaintiff had suffered damage. The plaintiff therefore claimed damages estimated at Rs. 10,000/- for the loss suffered by the diminution in the plaintiff s sales by reason of the defendant s marketing his goods under the plaintiff s trade mark. The plaintiff further claimed a sum of Rs. 9,000/- as damages for the infringement of the patent. Further to the relief of damages, the plaintiff prayed for an injunction restraining the defendant from infringing the plaintiff s trade mark and patent. The plaintiff also prayed for the relief s of delivery or destruction of the goods made in infringement of the patent, for an account to be taken of the profits made by the defendant by the sale of the goods infringing the plaintiff s trade mark and for an enquiry into the profits so made.
(4) The defendant pleaded that he was not aware o
