Calcutta High Court
Pratyush Kumar Jana & Anr vs New Howrah Bakery (Bapuji) Private Ltd on 29 April, 2008
Author: Indira Banerjee
Bench: Surinder Singh Nijjar, Indira Banerjee
In the High Court at Calcutta
Civil Appellate Jurisdiction
Original Side
Present:
The Hon'ble Justice Surinder Singh Nijjar, Chief Justice
And
The Hon'ble Justice Indira Banerjee
A.P.O.T. No. 69 of 2008
G.A No. 2885 of 2006
C.S. No. 216 of 2006
Pratyush Kumar Jana & Anr.
Versus
New Howrah Bakery (Bapuji) Private Ltd.
For the Appellants : Mr. Ajay Gupta, Adv.,
Mr. Ravi Kapoor, Adv.,
Mr. Tapan Sil. Adv.
For the Respondent : Mr. Goutom Chakraborty, Sr. Adv.,
Mr. Ratnanko Banerjee, Adv.,
Mr. Sunil Singhania, Adv.,
Mr. Sarad Singhania, Adv.,
Miss. Pujarini Paul. Adv.,
Heard on : 20.03.2008
Judgment on : 29.04.2008
SURINDER SINGH NIJJAR, C.J. : The defendants have filed this
appeal against the judgment/order of the learned Single Judge dated
21st February, 2008 whereby the appellants have been restrained
from using the name "Bapuji" in connection with any confectionery
item. Since the parties have been litigating against each other in
various fora, it would be appropriate to notice the essential facts as
pleaded by the parties.
The plaintiff "New Howrah Bakery (Bapuji) Pvt. Ltd. is a
Company incorporated on 1st January 1998 under the provisions of
the Companies Act. It carries on business in manufacturing and
selling of various kinds of bread, cakes, biscuits and confectionery
products under the trade mark and name "BAPUJI". Smt. Aparna
Jana was the owner of the trade mark and name "Bapuji" and has
been carrying on business as such since 1973. By a deed of sale
dated 1st April 1998 she had transferred and assigned all rights in the
trade mark and name to the plaintiff. Aparna Jana apart from being
the registered owner of the trade mark "Bapuji" was also the
registered owner/copyright in the name "Bapuji". The plaintiff is at
present the registered owner of the trade mark and name.
Initially, the business belonged to Sital Chandra Laha who
had been running the same since 1969 with the assistance of his
daughter Aparna Jana. The first defendant Pratyush Kumar Jana is
the nephew (brother's son) of Aparna Jana's husband Sri Alokesh
Jana. Defendant no. 1 and his father Prakash Jana were residing
with Aparna Jana and her husband. It is claimed by the plaintiff that
food, lodging and expenses for the education of defendant no. 1 were
looked after by Aparna Jana and her husband. Prakash Jana left for
his native village in 1975 and her nephew continued to live with his
uncle and aunt. During this period the nephew was employed by the
aunt to look after the legal and administrative work of the bakery.
This arrangement continued till 16th April, 1987. She had reposed full
confidence in her nephew and he was looking after the business and
had full knowledge and was aware of the trade mark "Bapuji" which
belonged to and was used by her. She being the original and sole
owner of the trade mark "Bapuji" had been using it since 10th April,
1973 openly and uninterruptedly without any objection from any one
including defendant no. 1. Initially, the trade mark "Bapuji" was
registered in the name of the proprietor firm of Aparna Jana, namely,
(New Howrah Bakery and Confectionery) on 5th August, 1987 in Class
30. Before registration of the trade mark in the name of Aparna Jana,
notice of opposition was lodged by defendant no. 1 as the sole
proprietor of M/s. New Bapuji Bakery on 26th December, 1991. On
investigation of the entire matter, the Deputy Registrar, Trade Marks
by an order dated September 13, 1995 disallowed the opposition of
defendant no. 1 and allowed the application of the plaintiff to proceed
for registration. Against this order the defendant no. 1 filed an appeal
in this Court under the provisions of Section 109 of the Trade &
Merchandise Mark Act, 1958 on 16th September, 1995. This appeal
was dismissed by Justice Sujit Kumar Sinha by order dated February
27, 1998. Dissatisfied, the defendant no. 1 filed an appeal before the
Division Bench which was dismissed on 26th July, 2000. Being
aggrieved by the order of the Division Bench, defendant no. 1 filed
SLP which was dismissed by the Supreme Court by an order dated
February 12, 2001. On November 15, 2001, the trade mark
certificate was issued by the Registrar, Trade Marks in favour of the
plaintiff. The trade mark has been renewed on 5th August, 2001 for a
period of 7 years.
On the other hand, defendant no. 1 also filed an application in
respect of the very same trade mark on December 12,1988. This
application was allowed by the Registrar, Trade Marks by order dated
August 14, 1988. The aforesaid order was challenged by Aparna Jana
in appeal before this Court which was allowed by Justice K. J.
Sengupta by order dated 14th August, 1988. The matter was remitted
back to the learned Registrar, Trade Marks for a fresh decision. On
remand the Joint Registrar, Trade Marks disallowed the application of
defendant no. 1 by order dated January 22, 2001. Again, defendant
no. 1 preferred an appeal against the aforesaid order. By order dated
6th January, 2003, Justice Ashim Kumar Banerjee remitted the
matter back to the Registrar, Trade Marks for a fresh hearing. Being
aggrieved against the aforesaid order, Aparna Jana has filed an
appeal before the Division Bench of this Court which is admitted and
pending. The Division Bench by order dated 23rd June, 2005 stayed
the operation of the order dated January 6, 2003.
The plaintiff has stated the sales figures in connection with the
confectionery items sold under the trade name "Bapuji" year-wise,
from 1973 to 2004-2005. The plaintiff has also set out the details of
expenses incurred for publishing, promoting and popularizing the
trade mark and name "Bapuji" for the same period. The plaintiff
claims that defendant nos. 1 and 2 have been selling confectionery
items manufactured by defendant no. 1 named as "Bapuji" with very
similar or almost identical trade mark and name as that of the
registered trade mark of the plaintiff. The offending products are
being sold by the defendants within and outside the jurisdiction of
this Court. The plaintiff, therefore, claims that the defendants thereby
infringed and are infringing the plaintiff's trade mark and they are
also passing off their goods as those of the plaintiff. The plaintiff,
therefore, filed a suit claiming a decree of perpetual injunction
restraining the appellants/defendant nos. 1 and 2 from infringing the
trade mark "Bapuji". In this suit on 16th September, 2006
interlocutory applications were moved by the plaintiff. The matter
was directed to appear on 25th September, 2006. Appellants were
directed to file supplementary affidavit. No interim order was made
on 25th September, 2006. However, the learned Single Judge,
Aniruddha Bose, J., noticed the chequered history of the litigation
and observed that the matter required to be adjudicated further upon
filing of affidavit. Against the aforesaid order, the plaintiff filed an
appeal which was disposed of by a Division Bench on 5th February,
2007. The matter was remanded back to the learned Single Judge for
decision on merits. On 21st February, 2008 the learned Single Judge,
Sanjib Banerjee, J., decided the interlocutory application on merits
by granting an order of injunction in terms of Prayer (a) and (b) of the
notice of motion. However, the appointment of receiver has been
declined. Against the aforesaid order the appellants have filed this
present appeal.
We have heard the learned counsel for the parties. We have also
perused the paper book. Mr. Gupta learned counsel for the
appellants submitted that the registration of the trade mark in favour
of the plaintiff is doubtful as the certificate of registration dated
November 15, 2001 shows the Trade Mark No. 476370, whereas the
application of the plaintiff was numbered as 476371. It is submitted
that in the normal course the number on the application is also the
number on the trade mark registration. He has relied on the
monograph attached with the additional representation of the trade
mark under the pending application no. 476371 in Class 30 dated 5th
August, 1987 made by Aparna Jana. This document shows that
Aparna Jana had claimed user of a trade mark since 10th April, 1975.
Learned counsel also relied on the additional representation made by
the appellants dated 12th December, 1988 showing 19th March, 1974
as the date of user of the trade mark. Learned counsel also relied on
the additional representation of the trade mark under pending
application no. 476370 in Class 11 in the name of a third party. In
fact, it is a company having an address in England. According to the
learned counsel, these documents are conclusive proof that the
registration of a trade mark in the name of the plaintiff is contrary to
law. (A copy of this has been attached at Annexure "G" of the stay
application). Learned counsel further submitted that no relief of
injunction could have been granted to the plaintiff as the appellants
user of the trade name is since 1974, whereas the claimed user by
the plaintiff is from 1975. It is next submitted by the learned counsel
that the plaintiff's application for interim injunction ought to have
been rejected on the ground that the plaintiff has not come to Court
with clean hands. The plaintiff is guilty of suppression of material
facts. The plaintiff has not disclosed that Aparna Jana had earlier
filed a suit in the Howrah Court against the appellants which was
dismissed for default on January 16, 1997. A copy of the relevant
order was produced before the learned Single Judge but the Court
illegally did not take the same on the record. It is further submitted
by the learned counsel that the learned Single Judge has failed to
appreciate that both the parties had been simultaneously using the
trade mark for more than 30 years without a single complaint of
confusion. Therefore, in order to preserve the status quo, the plaintiff
could not have been granted interim injunction at the interlocutory
stage. It is submitted by the learned counsel that the registration of
the trade mark in favour of the plaintiff had not attained finality in
view of the directions issued by the Supreme Court on February 12,
2001. In any event, the learned Single Judge has failed to take notice
that the plaintiff had acquiesced in the use of the trade mark by the
appellant since 1974. Even, after the registration of trade mark in its
favour in November, 2001, the suit was not filed until August 2006.
These facts would clearly demonstrate that the plaintiff was not
entitled to any discretionary relief on the principle of equitable
estoppel. Learned counsel reiterated that the plaintiff was quite aware
that the registration has not reached finality in view of the
observations of the Supreme Court in the order dated 12th February,
2001. It is also submitted that the learned Single Judge has
erroneously come to the conclusion that the user of the trade mark
by the appellants is dishonest. This finding of the learned Single
Judge, according to the learned counsel, is unsupported by any
evidence and is based on a misappreciation of law as well as the facts
and circumstances of this case. It is also submitted that the learned
Single Judge has erroneously ignored the pleadings as well as the
documentary evidence filed by the appellants.
In support of his submissions Mr. Gupta, learned counsel has
relied on judgments of the Supreme Court in the cases of
(1) Wander Ltd. & Anr. vs. Antox India P. Ltd. reported in
1990(Supp) SCC 727;
(2) M/s. Power Control Appliances & Ors. vs. Sumeet Machines
Pvt. Ltd. reported in (1994)2 SCC 448;
(3) Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel
& Ors. reported in (2006)8 SCC 726
Mr. Goutom Chakraborty, learned senior Advocate appearing on
behalf of the respondents has submitted that in case there was any
doubt about the ownership of the trade mark by the plaintiff, there
was no need for the appellants to make an application for concurrent
registration of the trade mark. According to the learned senior
Advocate, concurrent user cannot be claimed in view of Section 12 of
the Trade and Merchandise Marks Act, 1958. Learned senior counsel
further submitted that the trial Court has correctly come to the
conclusion that the dishonest user by the plaintiff is sufficient to
negative the plea with regard to acquiescence. Learned senior counsel
further submitted that the principle with regard to grant of injunction
orders, in actions for infringements have been settled long ago. Where
an infringement of trade mark is prima facie established, no further
evidence is required to show that the plaintiff's right has been
violated. An injunction order would normally follow. It is submitted
by the learned senior counsel that infringement of a trade mark is a
continuing cause of action. That being so, the plea with regard to
estoppel based on laches would not be available to the appellants.
Learned senior counsel further submitted that even though the
appellants have claimed to have a turn over which is in excess of the
turn over of the plaintiff, no documents have been placed on the
record in proof of the alleged claim of user of the trade name "Bapuji"
since 1974. No document has been placed on the record prior to year
2000. Learned senior Advocate submitted that the judgment does
not call for any interference. The stay application as well as the
appeal deserve to be dismissed.
In support of his submissions Mr. Chakraborty, learned senior
counsel has relied on the following judgments :
(1) Kaviraj Pandit Durga Dutt Sharma vs. Navaratna
Pharmaceutical Laboratories reported in AIR 1965 SC
980;
(2) Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia &
Ors. reported in (2004) 3 SCC 90;
(3) M/s. Bengal Waterproof Ltd. vs. M/s. Bombay Waterproof
Manufacturing Company & Anr. reported in AIR 1997 SC
1398.
We have considered the submissions made by the learned
counsel.
In our opinion it would be appropriate to notice some of the
observations made by different Courts during the course of the
litigation. While dismissing the appeal against the order dated 13th
September, 1995 which disallowed the opposition of the appellant to
the application of the plaintiff for registration, Sujit Kumar Sinha, J.
observed as follows : -
" The Court : Upon hearing the submissions made on behalf of the parties who are aunt and nephew, it appears to me that the questions involved in this appeal are merely questions of fact. The Deputy Registrar of Trade Marks by his impugned order dated September 13, 1995 under Appeal, has held against the appellant that the appellant at his age of only eighteen years in 1974 could not have alone established the business of bakery and confectionery products as claimed by him. The said Deputy Registrar has further held that there is no cogent evidence produced in support of the case made by the appellant. The said Deputy Registrar has also held that the accounts of sales submitted by the appellant also are not supported by any cogent evidence."
The Letters Patent appeal filed by the appellants against the aforesaid order was dismissed by the Division Bench by its order dated 26th July, 2000. The SLP filed by the appellants against the order was dismissed on 12th February, 2001 with the following observations :-
"Learned counsel for respondent no. 3 has placed before us an order dated 22nd January, 2001 passed by the Joint Registrar of Trade Marks whereby the application of the petitioner for registration of the trade mark has been rejected. The present special leave petition arises from the order whereby the petitioner's objection to the registration of the same trade mark in the name of respondent no. 3 was rejected. This decision was upheld by the Single Judge and the Division Bench. In view of the order of 22nd January, 2001, pima facie the right of the petitioner in this petition to challenge the impugned judgment would not survive. However, as he has a right of appeal against the order dated 22nd January, 2001, we dispose of this special leave petition by directing that if at any point of time the order dated 22nd January, 2001 is set aside and registration granted in favour of the petitioner, then the petitioner will have a right to apply for revival of this special leave petition."
The application filed by the appellants for registration of the trade mark "Bapuji" was allowed on 14th August, 1998. The statutory appeal filed against the aforesaid order of the Registrar, trade mark was allowed and the matter was remanded back to the Registrar, Trade Marks by K. J. Sengupta, J. by an order dated 14th October, 1999. We may notice here the observations made by Justice K. J. Sengupta as follows :-
"No fresh or further material was produced in support of the application by the respondent no. 3 herein. It is not understood by me as to how the same authority can reject his earlier findings and decision on the self-same facts and circumstances. Of course he has tried to give an explanation that the aforesaid materials were not placed before him. It does not appear to me that respondent no. 3 contended before him that the previous decision is bad in absence of materials. It should have occurred to the mind of the respondent no. 1 that basis of the objection of the respondent no. 3 to the application of the appellant was similar and same identically with that of the application made by him later on. It is true the legal principle of res judicata may not be applicable in this kind of proceeding but then it smacks of serious doubt in the credibility and acceptability of the quasi judicial authority inasmuch as in no uncertain terms with reasons he held certain set of facts to be baseless and irrelevant and on a later point of time he has changed his mind that too without having any challenge or basis. This is unexpected of a quasi judicial authority to act such an unexcusably flexible manner. If this act is allowed to be retained then there cannot be any sanctity and/or acceptability of any decision of this quasi judicial authority."
On remand the application filed by the appellants was disallowed by the Registrar, by order dated 22nd January, 2001. Prayer of the appellants for adjournment of the matter in view of the pendency of the SLP filed by the appellant challenging the order of the Division Bench dated 26th July, 2000 was not allowed. The statutory appeal filed by the appellants against the aforesaid order of the Registrar was allowed by Justice Ashim Kumar Banerjee and the matter was remanded back to the Registrar for fresh adjudication.
Letters Patent appeal filed against the aforesaid order has been admitted and the operation of the order has been stayed. While admitting the appeal the Division Bench consisting of Justice A. N. Ray and Justice Joytosh Banerjee made some observations :-
"By reason of the consistent success of the appellant in getting the mark "Bapuji" registered in her favour and by reason of the good and plausible explanation given by her of the initial adoption of the mark by her from her father, we are of the opinion that the matter needs to be disposed of on a careful consideration of all the documents and papers, such an examination having already once taken place in the registry.
The appeal before the High Court unfortunately attacked mainly the integrity of the learned Registrar disposing of the application. Much was made also of the fact that no adjournment was granted although the Supreme Court matter had not been disposed of in favour of the appellant on that day, and adjournment had been prayed for because of the pendency of the SLP.
We find, however, that the same Mr. Majumdar who had represented the respondent on several occasions in the registry before ultimately appeared and argued. The order passed by the Registrar is about 15 pages long and deals with all the points raised. The Registrar has not accepted that the respondent produced any sufficient and cogent evidence showing use of the mark by him since 1974. Furthermore, and this appears to us to be a point of crucial importance in this case, the original adoption of the mark "Bapuji" by the respondent was not found in the registry to be bona fide. From the facts, so far seen by us, it appears that the respondent chose to use the mark "Bapuji" only after getting associated with it through and in connection with the business run by the appellant, and the licence given to him by the appellant, for manufacture of lozenges only (called hard boiled sweets in the papers)."
The observations made by Justice K. J. Sengupta in the order dated 14th October, 1999 make it abundantly clear that the appellants have not been able to produce any fresh or further material in support of the application for registration which had not been produced by the appellants in opposing the application of the plaintiff which was allowed by order dated 13th September, 1995. That order having been upheld up to the Supreme Court, we would perhaps be justified in coming to a tentative or prima facie conclusion that the appellants would not have a very bright chance of succeeding in the registration of the trade mark "Bapuji" in its name on the basis of the material, thus far made available to the Court. It is in this factual backdrop that we have to examine the findings recorded by the learned Single Judge in the order under appeal.
The learned Single Judge has come to the conclusion that use of the trade mark "Bapuji" by the appellants from the year 1974 is not supported by any material evidence. It has been held that in the many pages that accompany the defendants' affidavit, there appears to be no document at least none were shown by the defendants, despite the plaintiff's challenge in the hearing to show, user of the mark since 1974. The learned Single Judge after considering the entire material has come to the conclusion that there is no material that the defendants bring to assert adoption of the mark at the time that they claim, far less documents to suggest honest adoption. Learned Single Judge has also come to the conclusion that merely because an action for infringement is delayed, would not lead to the conclusion that the Court will require the plaintiff to get his injunction at the trial even if the facts otherwise warrant the grant of interlocutory injunction. In our opinion, the learned Single Judge correctly came to the conclusion that if the adoption of the mark is as deliberate and dishonest as it tentatively appears on the materials now shown, mere prolonged delay in asserting the rights in respect of a registered mark would not disentitle the plaintiff to interim protection. The learned Single Judge has come to a tentative conclusion that the final hearing of the plaintiff's motion that neither acquiescence nor honest adoption has been demonstrated by the appellants. The learned Single Judge has also held that filing of the Howrah suit by Aparna Jana prior to the registration would also indicate that the appellants had been using the mark prior to the registration in favour of the plaintiff. But according to the learned Single Judge this would be concurrent use only to that extent; whereas the law protects not mere concurrent use but honest concurrent use. It has been again tentatively observed by the learned Single Judge that the appellants have neither been able to establish that it was they who first came upon or coined the mark, nor does it appear that there was any honesty about the adoption thereof whenever it was adopted.
Mr. Gupta, learned counsel appearing for the appellants, has taken us through the paper-book and has invited us to re-appreciate the material on record. Learned counsel made an attempt to show that the findings of the learned Single Judge were not based on a correct appreciation of the material on the record. We are of the considered opinion that in the appellate jurisdiction the powers of this Court are very limited to interfere with the exercise of discretion of the Court of first instance. It is well settled that the appellate court cannot substitute its own view in place of the view taken by the Trial Court except in compelling circumstances and within the known limitations. A discretion exercised by a learned Single Judge can rarely be substituted by the discretion of the appellate Court except where it is demonstrated that the learned Single Judge has erred in law by ignoring the settled principles of law regulating grant or refusal of interlocutory injunctions. The discretion has to be shown to have been exercised arbitrarily, capriciously or perversely. In the very same judgment that has been relied upon by the learned counsel for the appellants i.e., Wander Ltd. (supra), the Supreme Court has set out the limits within which the appellate Court would normally exercise its jurisdiction in substituting its own views for the views expressed by the learned Single Judge. In this judgment it has been observed as follows :-
"13. On a consideration of the matter, we are afraid, the appellate bench fell into error on two important propositions. The first is a misdirection in regard to the very scope and nature of the appeals before it and the limitations on the powers of the appellate court to substitute its own discretion in an appeal preferred against a discretionary order. The second pertains to the infirmities in the ratiocination as to the quality of Antox's alleged user of the trademark on which the passing-off action is founded. We shall deal with these two separately.
14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph : (SCR 721) "... These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton '...the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case'."
The appellate judgment does not seem to defer to this principle."
Keeping the aforesaid principles we have examined the findings recorded by the learned Single Judge.
In our opinion, the findings of the learned Single Judge though tentative, are based on relevant considerations of the materials placed before the learned Single Judge. We are of the considered opinion that the appellants have failed to create even a dent in the claim put forward by the plaintiff of being the rightful and registered owner of the trade mark "Bapuji". We have also noticed above the various Single and Division Bench orders passed in this matter. This we have done only to indicate that so far the appellants have singularly failed to, even prima facie, establish any semblance of a claim for the registration of the trade mark "Bapuji" in its name.
As noted earlier the learned counsel for the appellants has relied on the judgment of the Supreme Court in the case of Wander Ltd. & Anr (supra). Learned counsel has emphasized the observations of the Supreme Court as follows :-
"The interlocutory remedy is intended to preserve in status quo, the rights of parties may appear on a prima facie case."
In our opinion, the aforesaid observations of the Supreme Court would not come to the support of the appellant. The ratio of the law laid down by the Supreme Court, relevant to the submissions made by the learned counsel for the appellants is contained in paragraph 9 of the judgment which is as under :-
"9. Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory remedy it is stated :-
"... ... is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The 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. The court must weigh one need against another and determine where the 'balance of convenience' lies."
"The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."
In this case injunction was claimed by Antox who had been manufacturing a drug, under an agreement, for Wander Ltd, registered owner of the registered trade mark "Cal-De-Ce". Upon the agreement being rescinded by Wander Ltd., Antox continued to manufacture and sell the drug "Cal-De-Ce". At this stage, Antox filed a suit, seeking temporary injunction against Wander Ltd. The learned Single Judge (the Trial Court), of the Madras High Court declined to grant injunction. In appeal, the Division Bench allowed the injunction. Hence, Wander Ltd. was in appeal before the Supreme Court. In these circumstances, the Supreme Court made the observations noticed above. Mr. Gupta, the learned counsel for the appellants, had laid stress only on two lines of the paragraph. These observations cannot be read in isolation. A perusal of the entire paragraph 9 of the judgement would show that the Supreme Court in maintaining the status quo, had declined relief to the plaintiff. The prima facie legal rights of the registered owner of the trade mark were protected. The observations made by the Supreme Court leave no manner of doubt that the anxiety of the Court even at the interlocutory stage was to protect Wander Ltd, registered owner of the trade mark, against injury by violation of its rights. In the present case by granting the injunction in favour of the plaintiff, the learned Single Judge has only preserved the status quo. Given the chequered history of the litigation and the consistent rejection of the claim of the appellants by all Courts at all stages, it would be a little difficult to accept, at this stage, that the plaintiff has not established even a prima facie case for grant of injunction.
With regard to the submission on acquiescence and estoppel the learned counsel has referred to the judgment of the Supreme Court in the case of M/s. Power Control Appliances & Ors. (supra). He has made a particular reference to paragraph 29 of the judgment in which it has been held as follows :-
29. This is the legal position. Again in Halsbury's Laws of England, Fourth Edn., Vol.24 at paragraph 943 it is stated thus :
"943. Acquiescence. - An injunction may be refused on the ground of the plaintiff's acquiescence in the defendant's infringement of his right. The principles on which the court will refuse interlocutory or final relief on this ground are the same, but a stronger case is required to support a refusal to grant final relief at the hearing. [Patching v. Dubbins, Child v. Douglas, Johnson v. Wayatt, Turner v. Mirfield, Hogg v. Scott, Price v. Bala and Festiniog Rly. Co.] The reason is that at the hearing of the cause it is the court's duty to decide upon the rights of the parties, and the dismissal of the action on the ground of acquiescence amounts to a decision that a right which once existed is absolutely and for ever lost : Johnson v. Wyatt at 25; and see Gordon v. Cheltenham and Great Western Union Rly. Co. per Lord Langdale MR."
In our opinion, these observations would not support the submissions made by the learned counsel for the appellants. Undoubtedly, in the facts of the present case it would not be possible to hold that the plaintiff has not made out a strong prima facie case for grant of injunction. It can also not be held that the plaintiff has stood by and encouraged the appellants to establish a rival business without taking any steps. The circumstances in which acquiescence may disentitle a plaintiff to the relief of an interlocutory injunction have been enumerated in a number of judgments that have been quoted in different paragraphs of the judgment relied upon by the learned counsel for the appellants. We may notice here the observations of the Supreme Court :
"26. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White Sr. John Romilly said : "It is important to distinguish mere negligence and acquiescence." Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) & Co. v. Boehm. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill.
27. The law of acquiescence is stated by Cotton, J.L. in Pro tor v. Bannis as under :
"It is necessary that the person who alleges this lying by should have been acting in ignorance of the title of the other man, and that the other man should have known that ignorance and not mentioned his own title."
In the same case Bowen, L.J. said :
"In order to make out such acquiescence it is necessary to establish that the plaintiff stood by and knowingly allowed the defendants to proceed and to expend money in ignorance of the fact that he had rights and means to assert such rights."
28. In Devidoss and Co. at pages 33 and 34 the law is stated thus :
"To support a plea of acquiescence in a trade mark case it must be shown that the plaintiff has stood by for a substantial period and thus encouraged the defendant to expend money in building up a business associated with the mar. In Rowland v. Michell Romer J. observed :
'If the plaintiff really does stand by and allow a man to carry on business in the manner complained of to acquire a reputation and to expend money he cannot then after a long lapse of time, turn round and say that the business ought to be stopped.' ......................"
Given the chequered history of the litigation in the present proceeding, we are of the considered opinion that the discretion exercised by the learned Single Judge in granting the injunction cannot be said to be arbitrary, capricious or perverse. In fact, in our opinion, the learned Single Judge has rightly concluded that neither the anxiety of the appellants in adoption of the trade mark nor the user of the trade mark since 1974 have been established. The learned Single Judge has also concluded, not without justification, that adoption of the mark is deliberate and dishonest. In such circumstances, not to grant interim injunction to protect the legal rights of the registered owner of the trade mark, may well lead to failure of justice.
In Ramdev Food Products (P) Ltd. (supra) the Supreme Court observed as follows :-
"103. Acquiescence is a facet of delay. The principle of acquiescence would apply where : (I) sitting by or allowing another to invade the rights and spending money on it; (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name, etc."
In our opinion, these observations would not be applicable in the facts of this case. The plaintiff has been contesting the claim of the appellants in different proceedings since 1988. At present, the legal status of the parties is that :- (a) the rejection of the objections of the appellants to the registration of the trade mark in the name of the plaintiff have been upheld by the order of the Supreme Court dated 12th February, 2001; (b) the claim of the appellants for registration of the trade mark has been rejected by the Registrar Trade Marks by order dated 22.1.2001. This order has been set aside in appeal, by the learned Single Judge. The appeal filed against the order passed by the learned Single Judge has been admitted, and the order of the learned Single Judge has been stayed. Thus, the only operational order would be the order of the Registrar dated 22.1.2001 The principles with regard to the grant or refusal of interim relief has been very lucidly stated in the case of Midas Hygiene Pvt. Ltd. (supra) as follows :-
"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."
In this case, it is not necessary for the plaintiff to establish that appellants have infringed the trade mark as there is no dispute that both plaintiff as well as appellants are seeking to use the name "Bapuji" to sell the items of confectionery. It is also not in dispute that the mark in both the cases is identical. In normal circumstances undoubtedly in an action for infringement, the plaintiff must make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is very close either visually, phonetically or otherwise, no further evidence is required to establish that the plaintiff's rights are violated. This proposition has been laid down by the Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma (supra) in the following words:-
"28. The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under S. 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The fiding in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action, for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods" (Vide S.21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two cases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial;
whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."
Since, the action brought by the plaintiff in the present proceeding is based on infringement of the registered trade mark, the aforesaid observations of the Supreme Court would be fully applicable to the facts of this case. The principle enunciated by the Supreme Court in the Midas Hygiene Industries Pvt. Ltd. (supra) has been reiterated by the Supreme Court in Ramdev Food Products (P) Ltd. (supra). In fact, in Ramdev's case (supra) Supreme Court has also reiterated the settled principle of law as follows :-
"107. Kerr in his Treatise on the Law and Practice of Injunction, 6th Edn. At pp.360-361 states as under :
"Mere delay after knowledge of the infringement to take proceedings, not sufficient to call the Statute of Limitations into operation, or where the infringement continues, is not, it seems, a bar to the right of an injunction at the trial. Lapse of time unaccompanied by anything else is, it seems, no more a bar to a suit for an injunction in aid of the legal right than it is to an action for deceit.
But delay may cause the court to refuse an interlocutory injunction, especially if the defendant has built up a trade in which he has notoriously used the mark......"
108. Specific knowledge on the part of the plaintiff and prejudice suffered by the defendant is also a relevant factor. (See Spry on Equitable Remedies, 4th Edn., p.433.)
109. Applying the aforementioned principles in the instant case, it is evident that the time gap between the issuance of the notice and filing of an application for grant of injunction was not a voluntary act on the part of the appellant herein. It had to wait for the outcome of various proceedings pending before different courts. The respondents having themselves taken recourse to judicial proceedings, as noticed hereinbefore, cannot now be permitted to set up the defence of acquiescence on the part of the appellant. Indisputably, in a case of infringement of trade mark, injunction would ordinarily follow where it is established that the defendant had infringed the trade mark and had not been able to discharge its burden as regards the defence taken by it."
In our opinion, these observations will be fully applicable in the facts and circumstances of this case. The parties have been litigating with each other in the present case since 1987/88. In such circumstances, it would not be possible to hold that the plaintiff can be denied the benefit of interim injunction on the ground of acquiescence. Mr. Chakraborty has thereafter relied on the observations of the Joint Registrar, Trade Marks, in its order dated 22nd January, 2001, in support of his submission that the appellants having applied for concurrent registration cannot be permitted to argue that the plaintiff is not entitled to the registration of the trade mark "Bapuji". A perusal of the order passed by the Joint Registrar, Trade Marks, dated 23rd January, 2001 would show that the registrar has rejected the claim of the appellants under Section 12(3) of the Trade & Merchandise Marks Act, 1958 with the observation that honesty of adoption and use is sine qua non for considering the application under Section 12(3) of the Trade & Merchandise Marks Act, 1958. In our opinion these observations of the Registrar Trade Marks, are in consonance with the provision contained in Section 12(3). This Section provides as under :-
"12(3). In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in resect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose."
A bare perusal of this provision would lead to the conclusion that concurrent user can only be granted, on the Registrar being satisfied of the honest user of the trade mark by the appellant. Even then, the concurrent user may be granted upon conditions and limitations.
Considering the aforesaid provision, the learned Single Judge has concluded, though prima facie, that in the present case the element of honesty is clearly lacking in the claim of the appellants either with regard to concurrent user or with regard to the date when the trade mark "Bapuji" was first/ originally adopted in 1974. In our opinion, the aforesaid observations have been very aptly made in the facts and circumstances of this case.
Learned counsel for the plaintiff thereafter relied on the judgment in the case of M/s. Bengal Waterproof Ltd. (supra) to emphatically answer the submissions made by the learned counsel for the appellants with regard to the acquiescence of the plaintiff.
"8. ... ... ... It is obvious that thus the alleged infringement of plaintiff's trade mark 'DUCK BACK' and the alleged passing off action on the part of the defendants in selling their goods by passing off their goods as if they were plaintiff's goods has continued all throughout uninterrupted and in a recurring manner. It is obvious that such infringement of a registered trade mark carried on from time to time would give a recurring cause of action to the holder of the trade mark to make a grievance about the same and similarly such impugned passing off actions also would give a recurring cause of action to the plaintiff to make a grievance about the same and to seek appropriate relief from the Court. It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach of infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper reliefs, for all times to come in future defendant of such a suit should be armed with a licence to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts.................................."
These observations would clearly show that the claim of the plaintiff cannot be rejected at this stage on the ground of acquiescence. In our opinion, the learned Single Judge has correctly observed that in case the defendant fails to establish an honest concurrent user of the identical trade mark, the injunction must normally follow in favour of the plaintiff. Learned counsel for the plaintiff has also relied on a Single Bench judgment of the Delhi High Court in the case of M/s. Hindustan Pencils Pvt. Ltd. (supra).
On the basis of the aforesaid judgment it is submitted that in case the defendants act fraudulently in infringing the registered trade mark of the plaintiff the relief of injunction cannot be denied to the plaintiff only on the ground of inordinate delay. In the aforesaid judgment it is held as follows :-
"31. Even though there may be some doubt as to whether laches or acquiescence can deny the relief of a permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff's rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. The defence of laches or inordinate delay is a defence in equity. In equity both the parties must come to the Court with clean hands. An equitable defence can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else's right cannot claim the continued misuse of the usurped right. It was observed by Romer, J. in the matter of an application brought by J.R. Parkington and Co. Ltd., (1946) 63 RPC 171 at page 181 that "in my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently". It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history. In other words, the equitable relief will be afforded only to that party who is not guilty of a fraud and whose conduct shows that there had been, on his part, an honest concurrent user of the mark in question. If a party, for no apparent or a valid reason, adopts, with or without modifications, a mark belonging to another, whether registered or not, it will be difficult for that party to avoid an order of injunction because the Court may rightly assume that such adoption of the mark by the party was not an honest one. The Court would be justified in concluding that the defendant, in such an action, wanted to cash in on the plaintiffs name and reputation and that was the sole, primary or the real motive of the defendant adopting such a mark. Even if, in such a case, there may be an inordinate delay on the part of the plaintiff in bringing a suit for injunction, the application of the plaintiff for an interim injunction cannot be dismissed on the ground that the defendant has been using the mark for a number of years. Dealing with this aspect Harry D. Nims in his "The Law of Unfair Competition and Trade Marks", Fourth Edition, Volume Two at page 1282 noted as follows :-
"Where infringement is deliberate and wilful and the defendant acts fraudulently with knowledge that he is violating plaintiffs rights, essential elements of estoppel are lacking and in such a case the protection of plaintiffs rights by injunctive relief never is properly denied. "The doctrine of estoppel can only be invoked to promote fair dealings"."
These observations, in our opinion, are fully applicable in the facts and circumstances of this case as the defendant has failed to establish an honest concurrent user of the trade mark "Bapuji". For the reasons stated above, we see no merit in the appeal.
The appeal is, thus, dismissed.
There will, however, be no order as to costs.
( SURINDER SINGH NIJJAR, C.J.) I agree, (INDIRA BANERJEE, J.)