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1994 Supreme(Mad) 705
High Court of Judicature at Madras
JAYASIMHA BABU
Modern Food Products
Versus
Ushodaya Enterprises Limited
Application No. 499 of 1994 & Application No. 4431 of 1994 in C.S. No. 608 of 1994
Decided On :Decided on: 07-09-1994
For the Applicant: K. Sampath, Senior Counsel.
For the Respondent.:U.N.R. Rao, Senior Counsel for K. Mahesh C. Danial, D. Parthasarathy, K. Hemaprakesa Rao, B. Muralidha, Advocates.
A registered proprietor of a trade mark is not entitled to an interim injunction against an infringer if the infringer is a prior user of the mark, the registered proprietor has acquiesced in the infringer's use of the mark, the balance of convenience is in favor of the infringer, and damages would constitute an adequate remedy for the registered proprietor.
Headnote:
TRADE MARK - INFRINGEMENT - INTERIM INJUNCTION - PRIOR USER - ACQUIESCENCE - BALANCE OF CONVENIENCE - DAMAGES - REGISTRATION - DELAY - SECTION 33 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958.
Fact of the Case:
Plaintiff, a registered proprietor of the trade mark 'Priya' for pickles, filed a suit for permanent injunction restraining the defendant from manufacturing and marketing its products, especially pickles under the trade mark 'Priya' in India and abroad. The defendant claimed to be a prior user of the mark and had been using it since 1974. The plaintiff had obtained registration of the mark in 1992 and had renewed it in 1994.
Finding of the Court:
1. The defendant had been using the trade mark 'Priya' for pickles since 1974, which was prior to the plaintiff's application for registration in 1980. 2. The plaintiff had acquiesced in the defendant's use of the mark for over fourteen years and had not taken any action against the defendant despite knowledge of such use. 3. The balance of convenience was in favor of the defendant, which had been carrying on business under the mark for a long time and had established a sizable domestic and export market. 4. Damages would constitute an adequate remedy for the plaintiff, as the defendant was financially capable of meeting such a claim.
Issues: 1. Whether the defendant was a prior user of the trade mark 'Priya' for pickles. 2. Whether the plaintiff had acquiesced in the defendant's use of the mark. 3. Whether the balance of convenience was in favor of the plaintiff or the defendant. 4. Whether damages would constitute an adequate remedy for the plaintiff.
Ratio Decidendi: 1. Section 33 of the Trade and Merchandise Marks Act, 1958 protects the rights of a prior user of a trade mark, even if the mark is subsequently registered in the name of another person. 2. Acquiescence by the registered proprietor of a trade mark can disentitle him from obtaining an interim injunction against an infringer. 3. The balance of convenience is a relevant factor in determining whether to grant an interim injunction, and the court must weigh the harm that would be caused to the plaintiff if the injunction is not granted against the harm that would be caused to the defendant if the injunction is granted. 4. Damages can be an adequate remedy for infringement of a trade mark, especially where the defendant is financially capable of meeting such a claim.
Final Decision: The plaintiff's application for an interim injunction was dismissed, and the defendant's application to vacate the ex parte ad interim injunction was allowed, subject to the defendant furnishing a bank guarantee for a sum of Rs. 5 lakhs and filing quarterly reports showing the quantities of pickles manufactured and sold in the domestic and export markets.
1. The question for consideration in this application is as to whether the plaintiff, pending trial of the suit, is entitled to an interim injunction to restrain the defendant from using the trade mark ‘priya’ on the pickles manufactured and marked by the defendant.
2. The affidavits and documents produced by the parties prima facie show that both who carry on business from Baroda and the defendant which has its registered office at Hyderabad and its factories at Vijayawada, have been using this trade mark for pickles having conceived the same independently of each other since 1980 viz., for the last fourteen years. The trade mark was registered in 1992 in class 29 under No. 366103-B with effect from 15.9.1980 in the name of the petitioner/Pathiath Babu Rajendran who has filed this suit in his trading name.
3. While the plaintiff claims that as the registered proprietor of the mark, he is entitled to an interim injunction as a matter of course to prevent the invasion of its proprietary right, the defendant claims to be a prior user whose rights are protected under S. 33 of the Trade and Merchandise Marks Act and in any case, concurrent and honest user of the trade mark for fourteen years such user being open, extensive and continuous to the knowledge of the plaintiff and that the plaintiff was acquiesced in the same. The defendant claims it has built up and established an extensive market for its pickles marketed under this mark in India and abroad particularly in U.S.A. by its extensive promotional and marketing efforts that therefore the balance of convenience, even if there be a prima facie case in favour of the plaintiff, lies in not granting any interim injunction, as such injunction if granted, would bring to a grinding halt an honest well established business presently employing over 1000 workmen.
4. It is also the case of the defendant that injury complained of by the plaintiff is compensable in damages and this defendant is financially capable of meeting such a claim while the plaintiff does not have this financial capacity to compensate the defendant for the loss that will be sustained by the defendant, if it is held at the trial that the plaintiff is not entitled to injunction. The defendant also alleges that plaintiff has not come to court with clean hands and that this action is tainted by mala fides having been instituted at the instance of the defendants disgruntled former agent in the U.S.A. The validity of the registration in favour of the plaintiff has also been called into question.
5. Sri K. Sampath, learned senior counsel for the plaintiff raised a preliminary objection to the defendant being heard in the matter, as according to him, the defendant has committed contempt of Court by failing to obey the ex-parte interim injunction granted by this Court and therefore, till the defendant purges itself of this contempt, the defendant cannot be heard on the merits of the applications. The contempt alleged is that the defendant has continued to advertise its pickles under the trade mark ‘Priya’ despite ex parte injunction. This allegation has been met by the defendant in the counter affidavit dated 22.8.1994. The defendant has produced, along with that affidavit copy of a letter by which its advertising agency has confirmed that as per the defendants instructions, they have got cancelled the Priya pickles ad campaign in press as well as in Doordharshan Zee TV, Sun TV which had been approved earlier by the defendant on 19.7.1994. The ex parte order of injunction was served on the defendant on 26.7.94. Regarding the advertisement in ENADU the defendant has stated that despite instructions given not to publish the advertisement, the instructions had not been carried out and that since then, the defendant has withdrawn the blocks concerning the advertisement from ENADU from their contractors and printers. It is also stated that in the affidavit that they had intended participating in a trade Exhibition in
