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1959 Supreme(MP) 55
IN THE HIGH COURT OF MADHYA PRADESH (INDORE BENCH)
SHIV DAYAL SHRIVASTAVA, J.
Abdullakhan
Vs.
Mohammad Ismail
Misc. Civil Appeal No. 9 of 1956
Decided On: 20.02.1959
For Appellant/Petitioner/Plaintiff: Patel
For Respondents/Defendant: Khan
In a trademark infringement suit, the court may grant an injunction to restrain the defendant from using the infringing trademark if the plaintiff can show a prima facie case for ownership of the trademark, that the defendant's use of the trademark is likely to cause irreparable harm to the plaintiff's reputation and goodwill, and that the balance of convenience favors the plaintiff.
Headnote:
TRADEMARK - INJUNCTION - BALANCE OF CONVENIENCE - DELAY - LACHES - TRADE MARKS ACT, 1940 - SECTIONS 2(1)(zb), 18(1) - INTERPRETATION - INJUNCTION GRANTED.
Fact of the Case:
Plaintiffs and defendant were brothers who had inherited a Bidi business and trademark, 'Nag Chhap', from their father. Defendant started a separate Bidi business using the same trademark, prompting plaintiffs to file suit for infringement and seek an injunction. The trial court initially granted an ex parte injunction but later revoked it.
Finding of the Court:
The court found that the plaintiffs had a prima facie case for ownership of the trademark and that the defendant's use of the same trademark was likely to cause irreparable harm to the plaintiffs' reputation and goodwill. The court also found that the balance of convenience favored the plaintiffs as their business was well-established and the defendant's business was relatively new.
Issues: 1. Whether the plaintiffs had a prima facie case for ownership of the trademark 'Nag Chhap'. 2. Whether the defendant's use of the same trademark was likely to cause irreparable harm to the plaintiffs' reputation and goodwill. 3. Whether the balance of convenience favored the plaintiffs or the defendant.
Ratio Decidendi: 1. The court held that the plaintiffs had a prima facie case for ownership of the trademark 'Nag Chhap' based on the separation agreement of 1943, the registration of the trademark in the plaintiffs' name in 1948, and the fact that the plaintiffs had been using the trademark exclusively since then. 2. The court held that the defendant's use of the same trademark was likely to cause irreparable harm to the plaintiffs' reputation and goodwill, as the plaintiffs had established a high position in the Bidi market with the 'Nag Chhap' trademark. 3. The court held that the balance of convenience favored the plaintiffs as their business was well-established and the defendant's business was relatively new.
Final Decision: The court allowed the appeal, set aside the order of the trial court revoking the injunction, and granted an injunction restraining the defendant from using the trademark 'Nag Chhap' during the pendency of the suit.
Shivdayal, J.
1. This appeal arises from an order passed by the Additional District Judge. Bhopal, setting aside the ex parte injunction which he had previously passed.
2. The appellants Abdullakhan, Gulam Mohammad, Yakubkhan and respondent No. 1 Mohammad Ismail, are all brothers, being sons of one Sahebkhan who died in 1948. Originally, Sahebkhan and his four sons constituted a firm and started Bidi business sometime about the year 1918 and adopted a trade-mark styled as 'Nag Chhap'. It is alleged by the plaintiffs that in the year 1943 Sahebkhan and hi- sons became separated by a private arrangement which was reduced to writing and was signed by all of them. Thereafter Sahebkhan and his three sons, the appellants, formed a firm and continued the Bidi business with the same 'Nag-Chhap' trade-mark. In August 1948, Sahebkhan died and the three brothers (the plaintiffs) continued the business under a fresh agreement of partnership. It is also alleged by the plaintiffs that the 'Nag-Chhap' trade-mark was registered in 1948 at Bombay under the Indian Trade Marks Act, in the name of the plaintiffs and it was exclusively used by them, and that the defendant Mohammad Ismail had no concern with that trade-mark. However, in the year 1954, the defendant started a separate business of manufacturing Bidi at Sagar and began to use the same trade-mark. This fact having come to the plaintiff's knowledge, they served a notice to Mohammad Ismail, upon which he stopped that business but the plaintiffs eventually discovered that the defendant No. 1 secretly shifted his business to Bhopal in 1955 and again used the 'Nag Chhap' trade mark, in conspiracy which defendant No. 2, whereupon the appellants instituted the present suit on January 25, 1956. They also made an application for issuance of a temporary injunction under Order 39 Rule 2, Civil Procedure Code, to restrain the defendant from using the 'Nag Chhap' trade-mark during the pendency of the suit.
3. The learned trial Judge at first passed an ex parte order but on the objection of the defendant, the same has been revoked and it is against the subsequent order that the plaintiffs have preferred this appeal.
4. In a matter like this, I have to see whether the discretion exercised by the learned trial Judge was so erroneous as to call for interference in appeal.
5. At this stage, I do not propose to go deeper and find out the respective rights of the parties; but prima facie it seems that in view of the separation agreement dated November 23, 1943, and in view of the fact that the trade-mark was registered at Bombay in 1948 in the name of the plaintiffs, they are really the owners of the trade-mark. They have thus a prima facie and presentable case. Shri Khan, Learned Counsel for the respondent contends that even on the plaintiff's own showing their father was also a joint proprietor of the trade mark and, therefore, on the death of Sahebkhan, the defendant also succeeded, just as the plaintiffs did, to the rights which Sahebkhan had. Here again, I will refrain from expressing any opinion on the question of law which is thus being agitated. Suffice it to say that prima facie the defendant did not inherit the right of using the trade-mark by starting a separate business and adopting the same trade-mark. Here is not a case where the defendant wanted to participate in the business of his brothers by virtue of his right of succession. Shri Khan has not been able to satisfy me by any law or authority that the defendant could start a new business and use the trade-mark of which the defendant's father was a co-proprietor with the plaintiffs. I would guard myself against discussing this question any further so that a fair trial in the lower Court may not be prejudiced.
6. Then Shri Khan contends that the plaintiffs disentitled themselves for the equitable relief because of laches. He invites my attention to the averment in the plaint that the plaintiffs gave a notice to the defendant in 1954, while
