Back
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE ARUMUGHAM
Power Control and Appliances Company and Another - Appellant
Versus
Sumeet Machines Private Limited and Another - Respondents
Original Application Nos. 226 and 227 of 1992
Decided On : 29 April 1992
TRADE MARK - SUIT FOR INJUNCTION - AD INTERIM INJUNCTION - BALANCE OF CONVENIENCE - DOCTRINE OF ACQUIESCENCE - HONEST AND CONCURRENT USER - APPLICANT/PLAINTIFF HAVING ALLOWED THE RESPONDENT TO MANUFACTURE AND MARKET THE SAME PRODUCT UNDER THE REGISTERED TRADE MARK AND COPYRIGHT FOR A LONG PERIOD, THE DOCTRINE OF ACQUIESCENCE AND HONEST AND CONCURRENT USER WOULD APPLY - BALANCE OF CONVENIENCE IS IN FAVOUR OF THE RESPONDENT - AD INTERIM INJUNCTION VACATED.
Fact of the Case:
The applicant/plaintiff, a proprietorship concern, engaged in manufacturing power operated kitchen machines under the registered trade mark 'SUMEET' since 1963. The respondent, a private limited company, was incorporated in 1984 and started manufacturing the same product under the same trade mark. The applicant/plaintiff filed three suits and applications for interim injunction to restrain the respondent from manufacturing and marketing the product under the said trade mark and copyright. The respondent contended that the applicant/plaintiff had acquiesced in the respondent's use of the trade mark and copyright by allowing the respondent to manufacture and market the product for a long period of time. The respondent also contended that the balance of convenience was in its favour as it had invested heavily in the business and had established a market for its product.
Finding of the Court:
The Court held that the applicant/plaintiff had established a prima facie case of infringement of trade mark and copyright. However, the Court also held that the respondent had established a strong case of acquiescence and honest and concurrent user of the trade mark and copyright. The Court further held that the balance of convenience was in favour of the respondent as it had invested heavily in the business and had established a market for its product. Accordingly, the Court vacated the ad interim injunctions that had been granted against the respondent.
Issues: 1) Whether the applicant/plaintiff had established a prima facie case of infringement of trade mark and copyright? 2) Whether the respondent had established a strong case of acquiescence and honest and concurrent user of the trade mark and copyright? 3) Whether the balance of convenience was in favour of the applicant/plaintiff or the respondent?
Ratio Decidendi: The Court held that the doctrine of acquiescence and honest and concurrent user would apply in the present case as the applicant/plaintiff had allowed the respondent to manufacture and market the same product under the registered trade mark and copyright for a long period of time. The Court also held that the balance of convenience was in favour of the respondent as it had invested heavily in the business and had established a market for its product.
Final Decision: The Court dismissed the applications for interim injunction and vacated the ad interim injunctions that had been granted against the respondent.
The Order of the Court was as follows :
The above applications are filed by the applicant/plaintiff, viz., the Power Control and Appliances Company, against both the respondents herein, under Order 14, Rule-8 of the Original Side Rules, read with Order 39, Rules-1 and 2 of Civil Procedure Code, seeking the relief of ad-interim injunction to be passed against both the respondents herein, their servants, agents and men from manufacturing selling and advertising for sale of any electric mixer machine for kitchen use, using the trade mark of the applicant, 'SUMEET' in any way adopting such design deceptively similar in phonetic and visual aspects of the registered trade mark, 'SUMEET' by way of committing the infringement of the copyright of the plaintiff in their artistic work, containing in Document Nos. 1 to 3 filed along with the plaint by distributing, printing or causing to be printed the work as found in Document Nos. 4, 5 and 6 or printing, distributing and selling in any other manner infringing plaintiff's copyright; and from committing infringement of the copy right, the second plaintiff has in the artistic work shown in Document No. 7, Trade Mark Registration No.263836 filed along with the plaint by printing, causing to be printed and distributing material containing the plaintiff's artistic style of writing, 'SUMEET' as found on defendants' mixies, Document No. 4, 5 and 6 and other trade literature and stationery of the defendants, till the disposal of the suit.
2. The short facts as culled out from the affidavits, filed in support of all the applications are as follows :-
The first applicant is a proprietorship concern, having adopted its registered trade name, 'SUMEET' engaged in manufacturing the power operated kitchen machine during 1963 and registered it subsequently under the relevant provisions of Trade and Merchandize Act, developed its business in manufacturing the said mixies by getting the business of the said product well established and having registered the same under the Designs Act by obtaining the necessary certificates, improved the said designs as the exclusive owner of the said trade mark, 'SUMEET' and that in the said sojourn, the proprietrix has innovated lot of methods to be followed by the consumers, who purchased the said mixies, in printing and caused to be printed so many modes through the said power operated mixies in the form of the operational instructions of 'Sumeet Mixies' as well as the trade literature along with the guarantee card in such a way to make all the general public identified with reference to the particular mode, design and pattern of the applicants' product, 'SUMEET' power operated mixies and that by doing so, since 1973 onwards she has introduced so many technical changes in the operation of the said product and thereby acquired a very vast market within and outside the country and earned a very good reputation and market in the country and abroad by receiving awards for the good product and so on for being manufactured and marketed in the power operated kitchenware mixies technology.
3. It was the claim in brief being made by the applicants that in extending its business in vast area like manufacturing not only the power operated kitchenware like mixies, but also washing machines, vacuum cleaners and so on with the collaboration by way of entering into agreement with the newly developed companies and started the factories and through the appointed distributors for their products, under the trade name, 'SUMEET' floated the business area to several crore as on today.
4. While that being so, in or about the month of March 1992, the applicants/plaintiffs came to know through the advertisements caused in the newspaper, 'The Hindu', both the respondents herein claimed that they were the manufacturers of SUMEET power operated kitchen machines and claimed that they are the manufacturers. They caused the publications by adopting the same pattern, design, colour and trade m
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
