Madras High Court
K.R. Jadayappa Mudaliar And Ors. vs K.B. Venkatachalam And Anr. on 19 July, 1988
Equivalent citations: (1990)1MLJ119
ORDER Srinivasan, J.
1. The defendants in O.S. No. 16 of 1987 on the file of the District Judge, North Arcot at Vellore have preferred this Civil Miscellaneous Appeal against the order made in I.A. No. 295 of 1987 restraining them by an injunction from manufacturing and selling matches using the impugned trade mark devices "Standing Stag" and "Standing Deer" shown in Schedules B and C to the application and passing off the goods manufactured by them under the above said trade marks till the disposal of the suit.
2. The first respondent herein is the proprietor of the second respondent concern. The respondents filed the suit referred to above for permanent injunction restraining the appellants from in any manner infringing their trade mark "National Park" together with the device of a 'Standing Stag' and the colour scheme and get up by using the offending "Running Deer" together with the device of "Standing Stag" and identical colour scheme and get up or any other mark or marks which are in any way deceptively similar to or a colourable imitation of their trade mark and for an injunction restraining the appellant from in any manner passing off their safety matches for the safety matches of the plaintiff by using the offending trade mark "Running Deer" or any other mark and for other consequential reliefs. In the plaint it was stated by the respondents that they have been since 13.8.1955 using in connection with safety matches manufactured by them a distinctive trade mark "National Park" with the device of "Standing Stag" with a peculiar colour scheme and get up with a view to indicate that such goods are of their manufacture. It was also stated that the plaintiffs had done and were still doing extensive business under the aforesaid trade mark and by reason of long, extensive and continuous user, the aforesaid mark had become distinctive of the goods of the plaintiffs only. According to the plaint, the mark was registered under the Trade and Merchandise Marks Act, 1958 under No. 170403 in Class 34 and was being renewed from time to time. A photo copy of the Registration Certificate granted to the plaintiffs was filed along with the plaint. It was claimed by the plaintiffs that they had spent considerable amounts and efforts for promoting the sales of their safety matches under the aforesaid trade mark and had acquired valuable goodwill for the said trade mark because of the excellent quality and high standard as well as the sales promotion efforts put in by the plaintiffs. It was stated that the plaintiffs had done business under the aforesaid mark to the tune of several lakhs and were still doing extensive business. According to the plaint, the plaintiffs had placed orders with the third defendant for manufacture and supply of safety matches without any right in the trade mark of the plaintiffs and accordingly, the third defendant was supplying safety matches to the plaintiffs for some time and as he was not maintaining the quality and standard, the plaintiffs were obliged to stop procuring safety matches from the third defendant. A reference was made to a letter dated 30.9.1985 given by defendants 3 and 4 to the plaintiffs to evidence that the plaintiffs permitted them to manufacture and supply safety matches without any right over, the trade mark. A xerox copy of the said letter was produced along with the plaint. The plaintiffs claimed to have informed the Central Excise Department of the Government of India about the withdrawal of the agreement between the plaintiffs and defendants 3 and 4 by their letter dated 12.3.1986. Reference was made to a letter sent by the Superintendent of Central Excise Department, Government of India, Range No. 2, Gudiyatham, dated 14.3.1986 to the defendants not to manufacture any further safety matches, a copy of which was sent to the plaintiffs. A xerox copy of the same was produced along with the plaint. It was, therefore, stated in the plaint that after the withdrawal of the permission given by the plaintiffs, the defendants had no right to manufacture safety matches and supply to the plaintiffs.
3. The plaint proceeded to state that in or about 1986, the plaintiffs learnt that the defendants had commenced manufacturing and selling safety matches using an identical trade mark together with device of the "Standing Stag" and "Running Deer" with an identical colour scheme and get up and thus deliberately copying the plaintiff's trade mark "National Park". Reference is made to a complaint made by the plaintiffs to the police and a copy of the F.I.R. dated 27.3.1986 was produced along with the plaint. It was alleged that after the police complaint, the defendants stopped manufacturing and selling safety matches under the label and that for the past two days prior to the filing of the suit, the defendants had started the manufacturing and selling of the safety matches again in infringement of the registered trade marks of the plaintiffs. It was stated that defendants 1 and 2 were using the mark set out in plaint B Schedule and defendants 3 and 4 were using the mark set out in Plaint C Schedule. The first defendant is the father of the third defendant and they are members of a joint family, according to the plaint. The first defendant is the proprietor of the second defendant concern and the third defendant is the proprietor of the fourth defendant concern. The plaint alleged that the safety matches manufactured and sold under the trade mark with the device "Deer" and with the colour effect used by the plaintiffs had come to be associated in the public mind with the safety matches manufactured by the plaintiffs and with the evil intention of making illegal money by making use of the trade mark of the plaintiffs, the defendants are adopting the same device and the goods manufacture by the defendants under the trade marks shown in Schedules B and C to the plaint were sold in public as the goods i.e., safety matches of the plaintiffs. Thus, according to the plaint, the defendants were guilty of infringing the plaintiffs' trade mark "National Park" and also for passing off their goods as those of the plaintiffs. On those allegations, the plaintiffs prayed for the reliefs referred to already.
4. Along with the plaint, the plaintiffs filed I.A. No. 295 of 1987 for a temporary injunction till the disposal of the suit. The averments found in the affidavit filed in support of the application for injunction were on the same lines as those found in the plaint but in a shortened form. However, it has to be mentioned that there was no averment in the affidavit with regard to the passing off the goods of the defendants as those of the plaintiffs excepting in the prayer paragraph.
5. The defendants filed their counter affidavits in which the relevant averments were as follows:
The 1st and 2nd respondents submit that the plaintiffs giving no objection to Central Excise Department have allowed match factories for producing and marketing matches to use the petitioners' trade mark and they have not been impleaded in this application and the petitioners have suppressed the material facts and for the very same reason the above petition has to be dismissed. The plaintiffs trafficking in their trade mark have lost their distinctiveness and lost their exclusive right of trade mark as it has become publici juris in the market.
It is not necessary to refer to the general denials made by the defendants in their counters.
6. Defendants 3 and 4 filed a written statement dated 21.3.1988 and defendants 1 and 2 filed a written statement dated 17.4.1988. In both the written statements, a list of 22 match factories was given, which had obtained licences from the central Excise Department. The particulars of the respective licences and the dates of approval given by the Central Excise Authorities were also set out therein. Almost ail of them were using the trade mark "National Park". Some of them had added the words "Running Deer" to "National Park", Some others had added "Three Maan". Some others had added the words "National Deer". According to the written statements, the plaintiffs had given no objection certificates to the Central Excise Department for the 22 persons set out in the written statements for using the trade mark "National Park'.' It was, therefore, alleged in the written statements that the plaintiffs' mark had lost its distinctiveness and was not entitled to continue in the Register of Trade marks. It was expressly pleaded that the plaintiffs' trade mark had become publici juris and that the defendants were taking steps to rectify the Register of Trade marks by appropriate proceedings. In the written statement of defendants 1 and 2 it was alleged that the plaintiffs were not continuously using their trade mark and they had been stopping their manufacture of safety matches off and on. It was stated that the plaintiffs stopped production of their safety matches under the Trade Mark "National Park" in the year 1982 and they had even surrendered all the licences and the approval of the trade mark to the departments concerned and that they had again started their production in October, 1985. It was stated that the plaintiffs had no reputation or goodwill in existence. It was further alleged by defendants 1 and 2 that the plaintiffs were trafficking in their registered trade mark and that they had allowed more than 25 persons to use their trade marks apart from giving no objection to the Central Excise Authorities for approval. The user by the other persons had started even in 1975. All the 22 persons listed in the written statement were manufacturing matches in Gudiyatham itself. It is not necessary for the purpose of this appeal to refer to the other pleas raised in the written statements.
7. Admittedly the defendants have filed a petition on the original side of this Court under Sections 32(c), 46 and 107 of the Trade and Merchandise Marks Act for removing the registered trade mark No. 170403 belonging to the plaintiffs from the register. The said petition is pending as O.P. No. 182 of 1988.
8. The learned District Judge of North Arcot heard the application for injunction and passed an order on 3.5.1988 allowing the same as-prayed for by the plaintiffs. In his order, the learned Judge had referred to the fact that the defendants had produced before him the labels used by other manufacturers numbering about 20, which contained marks identical with the plaintiffs' trade mark. Though there is express reference in his order to the said labels, he has not marked them as exhibits. He has also, referred to the fact that the plaintiffs admitted before him that they permitted the user of such labels by the other manufacturers. The learned Judge refers to the arguments advanced by learned Counsel for the plaintiffs that such user by the other manufacturers with the permission of the plaintiffs would not constitute infringement of the trade mark of the plaintiffs under Sections 29 and 30 of the Trade Marks Act and accepted the said argument fully. The learned Judge held that as the defendants did not get such permission from the plaintiffs, they should be considered to have infringed the plaintiffs' trade mark. On that footing, the learned Judge granted the injunction prayed for by the plaintiffs. He made a reference to the proceedings for removal of the trade mark from the register, but held that such proceedings did not prevent him from making interlocutory orders.
9. It is the said order of injunction granted by the learned District Judge which is under challenge in this appeal. The main argument of learned Counsel for the appellants is that the trade mark of the plaintiffs respondents has become publici juris in view of the long user by several other manufacturers of the very same mark. According to learned Counsel for the appellants, the so called permission granted by the plaintiffs to the other manufacturers is not one in accordance with the provisions of the Act and Rules framed thereunder and consequently, the user of the trade mark by the other manufacturers cannot be treated as "permitted use" within the meaning of the Act. According to learned Counsel, the registration of the trade mark of the plaintiffs had thus lost its validity and the mark was not fit to continue in the Register. Learned Counsel contends that in such circumstances, the plaintiffs were not entitled to the discretionary relief of interim injunction till the disposal of the suit. Learned Counsel for the appellants also raised contentions that the suit was bad for mis-joinder of causes of action and that it was barred by the provisions of Order 23, Rule 1, Code of Civil Procedure. I do not think it necessary to consider the second and third contentions urged by learned Counsel for the appellants in the view I am taking on the first submission made by him.
10. Per contra, learned Counsel for the respondents contended that so long as a trade mark continues to be in the Register, the validity thereof cannot be questioned in proceedings instituted by the proprietor thereof against the persons who are guilty of infringement of such trade mark. Learned Counsel for the respondents submitted that there is absolutely no evidence before the Court to support the contention of the defendants that the trade mark of the plaintiffs has become publici juris. Learned Counsel argued that a mere glance at the labels used by the defendants would show that there is a clear case of infringement of the plaintiff's trade mark and the order of injunction made by the learned District Judge is unassailable.
11. There is no dispute in this case that the trade mark of the plaintiffs has been registered and is still on the Register. The proceedings for removal of the mark from the Register have been recently instituted by the defendants. There cannot be any doubt that the burden is on the defendants to show that the trade mark of the plaintiffs has become publici juris. The relevant provisions of the Trade Marks Act are found in Sections 28, 29, 31 and 32. Section 28 of the Act provides that the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act. Section 29 states that a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. Section 30 of the Act sets out that certain acts do not constitute an infringement of the right to the use of a registered trade mark, but it is not relevant for our purpose. Under Section 31 of the Act, the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof in all legal proceedings relating to a trade mark registered under the Act including applications under Section 56 of the Act for cancellation or variation of the registration of the trade mark. Section 32 of the Act in so far as it is relevant reads thus:
Subject to the provisions of Section 35 and Section 46, in all legal proceedings relating to a trade mark, registered in Part-A of the register (including applications under Section 56), the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved
(a)
(b)
(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.
12. It is by virtue of Clause (c) of Section 32 of the Act, the defendants seek to contend that on the date of the suit instituted by the plaintiffs, the trade mark of the plaintiffs had lost its distinctiveness. It is seen that Section 32 of the Act is subject to the provisions of Section 35 and Section 46. Section 35 of the Act is not relevant for our purposes. Section 46 provides for removal of a trade mark from the register and imposition of limitation on grounds of non-use. The petition filed by the defendants in this Court for removal of the plaintiffs trade-mark is one falling under Section 46 read with Section 32(c) of the Act. Thus, in a proceeding instituted by the registered proprietor of a trade mark on the ground of infringement of his trade mark, a plea under Section 32(c) of the Act that the mark had lost its distinctiveness at the commencement of the proceedings would certainly be a good defence and it should be considered by the Court, for under Section 31 of the Act, the registration of the trade mark would only be prima facie evidence of the validity thereof. A combined reading of Sections 31, 32(c) and 46 of the Act leads to the result that in a proceeding based on the infringement of a trade mark, it is open to the defendant to contend that the registered trade mark of the plaintiff had lost its validity and become liable to be removed from the register.
13. The law on the subject is stated by Dr. S. Venkateswaran in his book "The Law of Trade and Merchandise Marks", 1963 Edition at page 659 as follows:
The validity of registration of a trade mane registered in Part-A of the Register can be attacked, if at the commencement of the rectification proceedings the mark has lost its distinctiveness, even though seven years have elapsed after the date of its registration. If, therefore, a mark although originally distinctive, has ceased to be so by reason of events, subsequent to registration, the mark is liable to be struck off from Part A of the Register subject to the provisions of Section 35. Distinctiveness may be lost where there have been several infringements and the proprietor neglects to take prompt action to restrain them. But infringements by the same person, though repeated, will not ordinarily be enough to deprive the mark of its distinctiveness.
The occurrence of a few fraudulent infringement without the knowledge of the proprietor of the trade mark will not make the mark common to the trade. Barlow & Jones v. Johnson Jabez & Co. (1890)7 R.P.C. 395. As was said by James L.M. In Ford v. Foster (1872) L.R.7 Ch. 611 at 625: "It has been said that one murder makes a villain and millions a hero; but I think it would hardly do to act on that principle in such matters as this and to say that the extent of a man's piratical invasions of his neighbour's rights is to convert his piracy into a lawful trade". Occasional or sporadic user of the mark by other persons is not sufficient to make the mark common to the trade. (Boord & Son. v. Thorn & Comeron Ltd. (1907)24 R.P.C. 697. See also Star Cycle Co. Ltd. v. Frankendurgs (1907)24 R.P.C. 46, 405 (Passing off).
Whether a trade mark has or has not become publici juris is a question of fact. (Bass Ratcliff and Gretton Ld.'s Tms. (1902)19 R.P.C. 529). The test whether a mark has become publici juris was laid down by Lord Justice Mellish p.628 thus: "The question is, has it ('Eureka' for shirts) become publici juris? and there is no doubt, I think that a word which has originally a trade mark, to the exclusive use of which a particular trader, or his successors in trade, may have been entitled, may subsequently become publici juris, as in the case which has been cited of Harvey's Sauce. (Lazenby v. White (1871)41 L.J. Ch.354 : L.R. 6 Ch.89 : 24 L.T.N.S.380). It was admitted that although that originally had been the name of a sauce made by a particular individual it had become publici juris, and that all the world were entitled to call the sauce they made 'Harvey's Sauce " if they pleased. Then what is the test by which a decision is to be arrived at whether a word which was originally a trade mark has become publici juris? I think the test must be, whether the use of it by other persons is still calculated to deceive the public, whether, it may still have the effect of inducing the public to buy goods not made by the original owner of the trade mark as if they were his goods. If the mark has come to be so public and in such universal use that nobody, can be deceived by the use of it, and can be induced from the use of it to believe that he is buying the goods of the oriental trader, it appears to me, however hard to some extent it may appear on the trader, yet practically, as the right to a trade mark is simply a right to prevent the trader from being cheated by other persons' goods being sold as his goods through the fraudulent use of his trade mark, the right to the trade mark must be gone.
14. My attention was drawn by learned Counsel for the appellants to a similar passage in Narayanan's "Trade Marks and Passing Off, Third Edition, paragraph 492 at pages 224 and 225:
A word or device which was originally a trade mark, to the exclusive use of which a particular trader, or his successors in business, may have been entitled, may subsequently become publici juris and the exclusive right may be lost. (Ford V. Foster (1872)7 Chancery Appeals 611, quoted in Reddaway and Co. v. Bentham Hemp Spinning Co. (1892) 9 R.P.C. 503 at P. 506). No full or exhaustive definition can be given of the circumstances which will make a word or name publici juris and each case must depend upon its own facts. (The National Starch Manufacturing Co. v. Munn 's Patent Maizena and Starch Co. (1894)11 R.P.C. 281 atp.293(P.C). The proper test to decide whether a mark which was originally a trade mark has become publici juris, is to see whether the use of it by other persons is still calculated to deceive the public. If the mark has come to be so public and in such universal use of it, or can be induced from the use of it to believe that he is buying the goods of the original trader, the right to the trade mark must be gone. Lord Justice Mellish in Ford v. Foster, 7 C.A. 611, followed by the Court of Appeal in Reddaway and Co. v. Bentham Hemp Spinning Co. (1892)9 R.P.C. 503 at 506; also quoted by the House of Lords in Leahy Kelly and Leahy v. Grover (1893) 10 R.P.C. 141 at P. 159; Treasure Cot. Coy. Ld. v. Hamley Bros. Ld. (1950)67 R.P.C. 89 at P. 90; see Rain Rakpal v. Amritdhara Pharmacy and Ors. . The case law relating to publici juris is discussed in The Andhra Perfumery Works v. Karupakula Suryanarayaniah and Ors. . "The true meaning of a trade mark is the association of the mark with one person's goods. If you show that a large number of people have all been using the same mark then it becomes a practical impossibility to say that the mark was associated with any one person's goods." Boord & Son v. Thorn and Cameron Ltd. (1907)24 R.P.C. 697 at p; 716. To say that a mark has become common to the trade is another way of saying that it has ceased to be distinctive of a particular trader's goods.
Failure to take action against infringers may cause the mark to become common to the trade. Hyde & Co.'s Tm. (1978)7 Ch.D.724 (Bank of England Sealing Wax).
15. In this case, the matter has come before me at the interlocutory stage and the question whether the trade mark of the plaintiffs has lost its distinctiveness and become liable to be removed from the register has to be decided by this Court in O.P. No. 182 of 1988 on its original side. It is not in dispute that by virtue of the provisions of Section 111 of the Trade and Merchandise Marks Act, the suit out of which this appeal arises has to be kept stayed till the disposal of O.P. No. 182 of 1988. But as provided by Sub-section (5) of Section 111 of the Act, there is no bar against the fact, (Sic) the learned District Judge has proceeded to dispose of the I.A. only on the basis of Section 111 (5) of the Act.
16. Unless the Court comes to the conclusion that the defendants have prima facie made out their case that the plaintiffs' mark has lost its distinctiveness, the Court will be bound to grant injunction in a case like this, as admittedly the defendants had commenced their business only very recently and even at the threshold they were injuncted by an order obtained by the plaintiffs in Application No. 1402 of 1986 in C.S. No. 156 of 1986 in this Court as early as on 20.3, 1986 which was admittedly in force till September, 1987 and again on 22.9.1987 in I.A. No. 295 of 1987 in the District Court of North Arcot at Vellore, which was ultimately confirmed by the order under appeal on 3.5.1988. Thus, the defendants had practically not been able to carry on any business since the plaintiffs started instituting proceedings in the first instance in this Court and later in the District Court at Vellore. According to the plaintiffs, the defendants stopped their business even in March, 1986 when they gave a police complaint against them. Thus, the defendants cannot in this case plead long user on their part of their marks as a circumstance to be taken into account by the court for refusing to grant an injunction prayed for by the plaintiff.
17. Hence, the only way by which the defendants could succeed in the present proceedings is to make out a prima facie case that the plaintiffs' mark had lost its distinctiveness. While extracting the pleadings in the suit and the affidavits filed by the parties, I had pointed out that the specific plea raised by the defendants was that the plaintiffs were trafficking in their registered trade mark. In spite of the complete details having been given by the defendants to their written statements of the persons who are using identical trade marks as that of the plaintiffs, the plaintiffs did not choose to file any reply statement or any reply affidavit in the court below. It is seen from the order of the learned Judge that the defendants had also produced the labels of the other traders. Instead of denying the said user by the other traders, the plaintiffs had expressly admitted before the learned District Judge that other persons are using the trade mark belonging to the plaintiffs, but they were using the mark with the permission of the plaintiffs. The learned Judge has chosen to accept the contention urged on behalf of the plaintiffs that such permission was sufficient to make the user a 'permitted use' as contemplated by the Act. As submitted by learned Counsel for the appellants, the learned Judge is clearly in error in thinking that the user by the other traders of the trade mark of the plaintiffs is 'permitted use' as defined by the Act.
18. Section 2 (m) of the Trade and Merchandise Marks Act defines 'permitted use' thus:
"permitted use", in relation to a registered trade mark, means the use of a trade mark -
(i) by a registered user of the trade mark in relation to goods,-
(a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time being; and
(c) for which he is registered as registered user; and
(ii) which complies with any conditions or restrictions to which the registration of the trade mark is subject.
Section 2(s) defines a 'registered user' as a person who is for the time being registered as such under Section 49. Section 49 of the Act prescribes the procedure for registration of a person as a registered user. Section 48 provides that subject to the provisions of Section 49, a person other than the registered proprietor of a trade mark may be registered as the registered user thereof in respect of any or all of the goods in respect of which the trade mark is registered otherwise than as a defensive trade mark, and that the Central Government may make rules in that behalf. It is expressly provided in that section that no application for registration as registered user shall be entertained unless the agreement between the parties complies with the conditions laid down in the rules for preventing trafficking in trade marks. It is thus clear that any permission to use a trade mark given by the registered proprietor thereof to another person cannot be considered to be 'permitted use' under the Act. Unless the procedure prescribed by the Act and the rules thereof is followed and a person is registered as 'registered user' it cannot be said that his user of the trade mark will not constitute an infringement as provided in Section 29 of the Act.
19. This proposition has been clearly laid down by a Division Bench of the Delhi High Court in K.R. Beri & Co., v. Metal Goods Mfg. Co., Pvt. Ltd. A.I.R. 1980 Delhi 299, relied on by learned Counsel for the appellants. The following passage in the judgment states the law thus:
Rules have been framed under the Act. Rule 82 in Chapter V of the Rules onwards deal with the application for registration and various particulars and procedure for hearing the applicants or the other interested parties. The considerations which are to be borne by the Central Government in allowing or refusing the application are laid down in Rule 85. Some of the considerations are to see that the permitted use will not contravene the policy of the Act which is to prevent trafficking in trade mark and consideration of bona fide for registration is also to be considered. It will thus be seen that a very elaborate, detailed and purposeful procedure has been laid down by the Act and the Rules for registering a person as a registered user. Section 48 (2) provides an exception in case of permitted use of trade mark being deemed to be used by the proprietor and shall be deemed not to be a use by a person other than the proprietor for the purpose of Section 46. The result of that is that if a registered user has used the trade mark the ground for removing the trade mark from register on the ground of non-use ceases to be available. It is an advantage given to a proprietor but only in case of permitted use by the registered user. This being the scheme of the Act, is it permissible to accept the contention of Mr. Anoop Singh (which has been accepted by Prakash Narain, J.) that even without the use by a registered user of the trade mark, use by any person can be equated as a use by the proprietor, if it is with the latter's consent? If this argument was to be accepted this will make the provision of Section 48 (2) of the Act more or less otiose and superfluous. It is well settled that superfluity cannot be attributed to legislature. When the legislature is creating a fiction by means of Section 48 (2) of the Act to equate the use by a registered user only as that of proprietor, how can the courts ignore this mandate of the legislature and hold as the learned single Judge has held that the use of trade mark by M/s Cinni Pvt. Ltd., an unregistered user can be equated to the user by the respondent. We are afraid we cannot so construe the provisions of the Act which will be contrary to the intention of the legislature, which is meant to subserve the public interest because it is well settled that, that construction should be adopted that would advance the legislature's object and suppress the mischief sought to be cured. We are of the opinion that the legislature has expressed definite intention that any proprietor who wishes to treat the use of trade mark by somebody else to be equated with his use must do it only in the manner laid down by the Act.
It is an undisputed dictum of law that when a statute requires a thing to be done in a certain manner it shall be done in that manner alone and the court would not expect its being done in some other manner vide State of Bihar v. J.A.C. Saldahha .
14. Similarly it is also well settled that where a power is given to do a certain thing in a certain way the thing must be done in that way or not at all. Other methods of performance are necessarily forbidden, vide Nazir Ahmad v. King Emperor A.I.R. 1936 P.C. 253 at P. 257.
15. Thus when Section 48 (2) of the Act provides that a user by a registered user will be deemed to be user by the registered proprietor it necessarily excludes any argument that user by a person other than the registered user can be deemed to be user by the registered person. Legislature having only recognised the permitted user of a trade mark, for the purpose of Section 46, necessarily excludes any other user being taken advantage of for avoiding the rigour of Section 46. There is no hardship involved. If a proprietor wishes to get the benefit of Section 48 (2) he must get that person registered as registered user. But if for any special reasons he does not wish to do so the law cannot compel him. But surely in that eventuality a proprietor cannot claim that he should be given the benefit provided under Section 48 (2) even though he has not complied with the conditions laid down under the Act. If therefore the proprietor wishes to take advantage he must follow the law which provides registration as a registered user under Sections 48 and 49 of the Act, and in default to be ineligible to take advantage of Section 48 (2) of the Act.
20. The learned District Judge is also wrong in assuming that the user by the other traders was only under the permission granted by the plaintiffs. Apart from the fact that such permission was not in accordance with the provisions of the Act, there is nothing on record to show that the plaintiffs had actually permitted such traders to use their registered mark. In the affidavit filed in support of the application for stay in C.M.P. No. 8666 of 1988 in this appeal, it is stated in paragraph 5 as follows:
The trial court has ample admitted evidence of the plaintiffs openly and brazenly trafficking in his trade mark.
In the counter affidavit filed by the respondents, this averment made in the affidavit of the petitioners has not been traversed. There is absolutely no whisper in the counter affidavit as to whether the plaintiffs had permitted the other traders to use their mark and, if so, whether such permission was in accordance with the procedure prescribed in the Act and the Rules. In the face of the admission made by "the plaintiffs before the learned District Judge that the other traders have been permitted by the plaintiffs to use their registered trade mark and in the absence of any plea or evidence that such permission is in accordance with the procedure prescribed by the Act and rules, it has to be held that there is a strong prima facie case of trafficking in trade mark by the plaintiffs.
21. Learned Counsel for the respondents relied on the documents included in the typed set filed by them in this appeal and contended that the third defendant had agreed not to use the trade mark of the plaintiffs as early as on 30.9.1985. The first document in the typed set is a letter dated 30.9.1985 written by the third appellant to the second respondent. It is to the effect that the third appellant was affixing the label containing the trade name "Running Deer" approved by the plaintiffs on the match boxes and was supplying the same to the plaintiffs or the parties suggested by the plaintiffs. He had stated therein that he would not conduct the business independently. He had assured the plaintiffs that he would remove the labels if the goods manufactured by him were not upto the standard. It is not known how this letter could prevent the appellants from putting forward the plea now raised by them. The second document is a copy of a letter written by the Superintendent of Central Excise, Range II, Gudiatham on 12.3.1986 to M/s K.M.B. Wax Match Industries. The document does not indicate that any copy was marked to the plaintiffs. However, a xerox copy of the letter addressed to a third party has been produced. The said document is marked as Ex A-2 in the trial court. The contents of the letter show that there was no approval of the lable by name "Standing Stag" to M/s Vanaja Match Works (4th appellant) and that the trade label "Running Deer" was approved to Vanaja Match Works (4th appellant). It was further stated that the trade label "Running Deer" belongs to M/s Golden Match Industries (Second respondent) and that they have given consent letter to M/s Vanaja Match Works (4th appellant) for affixing the said label to the matches manufactured in their factory. It is significant to note that the respondents had not registered the mark "Running Deer". They had registered only the mark "National Park". It is not known how the Superintendent of Central Excise could say that the label "Running Deer" belonged to the second respondent. Even assuming that it had a right over the label "Running Deer", it is clear from that letter that the label was to be affixed on the matches manufactured by Vanaja Match Works. The next letter relied on by learned Counsel for the respondents is dated 14.3.1986 addressed to the fourth appellant by the Superintendent of Central Excise to the effect that the second respondent had withdrawn the consent for affixing the trade label "Running Deer" and that the fourth appellant should not affix the said label on their matches with effect from 14.3.1986. Even the documents relied on by the respondents would only give the impression that the respondents have been trafficking in their registered trade mark.
22. The expression "trafficking in trade mark" has not been defined, though it has been used in Section 48 of the Act. It would only mean unrestricted licence of a trade mark to a number of persons or registration of a trade mark with the sole object of licensing to others without any bona fide intention to use the mark by the registered proprietor himself. It is not necessary for me in this case to discuss further on this aspect of the matter. Suffice it to say that there is sufficient material on record to come to a prima facie conclusion that the plaintiffs are guilty of trafficking in their registered trade mark. Of course, this conclusion of mine will not in any way prejudice the plaintiffs in the proceedings for removal of their trade mark from the register viz., O.P. No. 182 of 1988 on the file of this Court. It is for the Judge who deals with the said petition on the original side to come to a conclusion on the basis of the materials which are placed before him. As I have stated earlier, I have no option but to consider the question in the present proceedings for the purpose of arriving at a prima facie conclusion in order to decide whether the equitable and discretionary relief of injunction should be granted in favour of the plaintiffs during the pendency of the suit instituted by them.
23. It was argued by learned Counsel for the appellants that the application for injunction was only to restrain the defendants from passing off their goods as those of the plaintiffs. That argument of learned Counsel for the appellants is based on a wrong reading of the application for injunction filed by the plaintiffs. In fact, there was absolutely no averment in the affidavit filed in support of the application for injunction with regard to passing off excepting for a prayer in the last paragraph of the affidavit that the defendants should be prevented from passing off their goods as those of the plaintiffs. The petition for injunction was not only for prevention of passing off but also for prevention of infringement of the trade mark of the plaintiffs. In any event, the learned trial Judge had granted injunction only on the basis of infringement of the trade mark and not on the ground of passing off.
24. The object of an interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the case ends in his favour at the trial; but the plaintiff's need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated if ultimately the trial ends in his favour. The Court must weight one need against another and determine where the balance of convenience lies. In the present case, I have come to a prima facie conclusion that the plaintiffs are trafficking in their registered trade mark. They have not chosen to place before the Court their sales figures though they have alleged that they have still extensive business, under the aforesaid trade mark. On the other hand, the written statement of defendants 1 and 2 is emphatic in stating that the plaintiffs were stopping their business off and on and had actually surrendered their licences in 1982 and commenced the business once again in October, 1985. In spite of that allegation in the written statement, the plaintiffs have not produced any document whatever either in the court below or in this Court to prove that they are even now doing business under the registered trade mark.
25. The appellants have stated in the affidavit filed in support of the application for stay in this Court that by the order of injunction granted by the court below, they are deprived of their living and their business has come to a grinding halt. The balance of convenience is, therefore, in favour of the appellants in the present case. They should not be prevented from carrying on their business at the instance of a person who has been prima facie found to be trafficking in a registered trade mark. The plaintiffs are not entitled to the equitable relief of interim injunction during the pendency of the suit.
26. In the circumstances, the order of the learned District Judge, North Arcot at Vellore made in I.A. No. 295 of 1987 in O.S. No. 16 of 1987 on his file is wholly unsustainable. The order is, therefore set aside. The Civil Miscellaneous Appeal is allowed with costs throughout.