1. These two appeals are by the plaintiff Company in O.S. Nos. 10268 and 10269 of 1980 and are directed against the common order dated 22-1-1981 passed by the VI Addl. City Civil Judge, Bangalore City, on I.A. No. I instituted in the two suits vacating the ex-parte order of injunction issued in each case.
2. The two suits are filed by the same plaintiff viz., Brooke Bond India Ltd., against the same defendants viz., Royal Products, a proprietory concern, represented by two others, for permanent injunction to restrain the defendants from using the plaintiff''s registered trade marks for marketing their tea and from passing off their tea as the tea of the plaintiff/Company and. thus, infringing the registered trade marks of the plaintiff''s concern.
3. O.S. No. 10268 of 1980 is in respect of the plaintiff''s registered trade mark ''Brooke Bond Tea Super Dust'', with the pictorial representation of a row of coloured flowers. O.S. No. 10269 of 1980 is in respect of the plaintiff''s registered trade mark ''Brooke Bond A-1 Dust Tea,''with the pictorial representation of a coloured bird resting on a flowery twig.
4. Plaintiff Company instituted two suits under Sections 105 and 106 of the Trade and Merchandise Marks Act (XLIII of 1958), hereinafter referred to as ''the Act''), read with S. 26 and Order VII Rule 1 of CPC. The plaintiff is a Company incorporated under the Indian Companies Act, 1913, engaged in the production and marketing of tea inter alia. According to plaint averments, the plaintiff Company is one of the leaders in tea trade in India and has been in tea trade for more than half a century. They blend, pack and market tea under different trade marks. By reason of their long standing in business and the high quality of tea marketted by them and the advertisements made by them they have acquired a great name and reputation in the tea trade as blenders and marketeers of excellent quality tea and marketed by them by their trade marks has a wide and receptive market, wholesale and retail, throughout the country. They market tea in 2 forms viz., leaf tea and dust sea. Leaf tea is marketed applying various trade marks including ''Supreme'', ''Taj Mahal'', ''Red special'' and ''Red Standard''. Dust tea is marketed by the plaintiff/Company by various trade marks including ''A-1 Dus''. ''Super Dust'', ''Special Hotel Blend'' and ''Three Roses''. The tea marketted by the plaintiff/Company under these trade names is identified as the product of the plaintiff/Company.
5. The plaintiff (Company has registered their trade marks in respect of various brands of tea marketted by them under the Act. The registered trade mark and brand name are printed on labels pasted on packets of the tea marketted by the plaintiff/Company. These packets are of different sizes ranging from 500 gms. to 25 gms.
6. One of the trade marks registered by the plaintiff/Company is ''Brooke Bond A-1 Dust Tea''. It is the subject-matter of OS No. 10269 of 1980. In this trade mark the distinctive feature is the pictorial representation of a coloured bird resting on a flowery twig. There is also the name ''Brooke Bond'' printed above on the left hand side and ''A-1 Dust Tea'' below at the right hand corner. These are available in packets of 500 gms, 100 gms, 50 gms, and 25 gms. This trade mark is registered at No. 18469 on 12-4-1958. The Certificate of Registration is produced along with the plaint at Annexures A-1, A-2, A-3 and A-4. They are generally packed in yellow wrappers.
7. The other brand that is relevant for our purpose is registered with the trade mark having a distinctive pictorial representation of a row of coloured flowers with the, words ''Super Dust Tea''. That is the subject-matter of OS No. 10268 of 1980. The trade marl was registered at No. 301187 on 4-12-1974. The packets are in green colour with pictorial representation of a row of flowers at the bottom.
8. It is the case of the plaintiff Company that their turnover for the year ending with 30-6-1979 is of the order of 150 crores and that it has been on the increase. They had been widely advertising their products with their various trade marks in all the leading newspapers and periodicals in the country and also through cinemotographic media. The advertising expenses incurred by the plaintiff/Company runs to several millions of rupees every year,
9. The plaintiff/Company has further averred that because of the quality and the wide advertisements carried on by the Company, people have come to identify their product by their trade marks viz., the coloured bird and the row of flowers, as stated above.
10. D-2 in the two suits carries on business under the name and style ''Royal Products'' of which she is stated to be the sole proprietrix. The Company is impleaded in the two suits as defendant-1. Defendant-3 is the husband of defendant-2 and is actually in-charge of the business of ''Royal Products'', being its manager.
11. The defendants, according to the plaintiff/Company, are fully aware of the long standing and high reputation of the plaintiff/Company as sellers of quality tea and of the wide and receptive market they have built up with their trade mark.
12. Plaintiff/Company a few months prior to the suits, noticed that the defendants were marketing their tea with deceptively similar trade mark, obviously, with an intent to pass off their tea as the tea of the plaintiff/Company and to gain advantage from it. They are selling their tea in green packet under the name ''Super Dust Tea'' with deceptively similar row of flowers as are contained in the trade mark of the plaintiff/ Company in five different packets, produced at Annexures B-1, B-2, B-3, B-4, B-5, B-6 and B-7 in the suits. They are also marketing the tea with a coloured bird perched on a twig with flowers under the name ''Royal Brand No. 1 Dust Tea,'' which mark is deceptively similar to the registered trade mark of the plaintiff/Company for their ''A-1 Dust Tea.''
13. Thus, the plaintiffs have brought the suit to restrain the defendants by a permanent injunction from preventing infringement of their trade marks, viz., the trade mark with a coloured bird perched on a twig with flowers and for their ''A-1 Dust Tea'' with a row of flowers at the bottom of the label for their ''Super Dust Tea.''
14. Oninstitution of the two suits, the plaintiff/Company instituted applications under Order XXXIX, Rules I and 2 of CPC for temporary injunction during the pendency of the hearing of the suits in each suit and ex-parte injunction order in each suit was issued against the defendants.
15. The defendants, however, on entering appearance, resisted the interim injunction order issued in each suit. According to them, they were manufacturing and selling tea since April 1978. Their colour, design, get up and contents were distinctive of their own, goods. The tea labels, viz., that of the plaintiff [Company and that of the defendants, could easily be distinguished. They were not deceptively similar. Hence, they denied that the plaintiff/Company was entitled for interim injunction. They also denied that the balance of convenience was in favour of issuing the injunction and they further averred that the plaintiff [Company would not be put to irreperable loss in case of injunction was vacated.
16. The VI Additional City Civil Judge, Bangalore City, before whom these matters came up for hearing, clubbed the two matters, heard them together and has passed a common impugned order dated 22-1-1981.
17. In the course of his order, the learned City Civil Judge raised the following points as arising for his consideration:
(1) Whether the plaintiff has made out a prima facie case?
(2) Whether irreparable injury would be caused to the plaintiff if temporary injunction is not granted.
(3) Whether the balance of convenience lies in favour of granting or refusing the injuction?
18. On hearing the Counsel, the learned City Civil Judge has come to the conclusion that the plaintiff [Company has made out a prima facie case though not a strong one. He has further held that no irreparable injury would be caused to the plaintiff/Company if temporary injunction is not granted and he has found that the balance of convenience lies in favour of refusing the injunction, in view of the fact that the institution of the interlocutory application in each case suffers from laches. in that view, he has passed the final order thus:
"For the above reasons, I.A. I in both the suits is rejected, subject to tile condition that the defendants file into Court, every month on or before 15th a true and correct statement of their accounts pertaining to their business in respect of the two brands Of tea, which are subject-matter of the two suits. The ex-parte order of injunction is vacated."
19. It is against that order, as stated above, that the present appeals are instituted. MFA No. 486 of 1981 pertains to OS No. 10268 of 1980 and MFA No. 503 of 1981 pertains to OS No. 10269 of 1980.
20. The learned Advocate Shri S.G. Sundaraswamy, appearing for the appellant/plaintiff in the two appeals, vehemently argued that the learned City ''Civil Judge having held that there was a prima facie case established by the plaintiff/Company, ought to have affirmed the ex-parte interim injunction order already issued in the two cases. He further submitted that the balance of convenience was in favour of continuing the injunction in favour of the plaintiff/Company. According to him, there were no laches and the plaintiff in each case would be put to irreparable'' injury in case temporary injunction is not issued during the pendency of the hearing of the suit.
21. As against that, the learned Advocate Shri K.G. Raghavan, appearing for the respondents/defendants in the two appeals, argued. supporting the order passed by the learned City Civil Judge vacating the ex-parte interim injunction issued in each case.
22. The points, therefore, that arise for my consideration in these two appeals are:
(1) Whether the materials on record establish a prima facie case for injunction in favour of the plaintiff/Company?
(2) Whether the balance of convenience is in favour of issuing injunction?
(3) Whether irreparable injury would be caused to the plaintiff (Company if injunction is not issued?
(4) Whether the plaintiff/Company is not entitled to temporary injunction in view of laches alleged?
23. The plaintiff/Company has come to Court alleging infringement of registered trade mark in each case.
24. S. 28 of the Act confers certain rights on the trader by registering the trade mark. Sub-sec. (1) of S. 28 of the Act reads:
"Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register 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 this Act."
S. 29 of the Act speaks of infringement of trade marks. Sub-Sec. (1) of that section reads:
"A registered trade mark is infringed by a person who, hot being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in in the course of a 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."
S. 105 of the Act provides for suit for infringement etc., to be instituted before a District Court and S. 106 of the Act speaks of reliefs in suits for infringement or for passing off. Sub-sec. (1) of S. 106 of the Act reads.
"The relief which a Court may grant in any suit for infringement or for passing off referred to in Section 105 includes an injunction (subject to such terms, if any, as the Court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure."
Sec. 2 (d) of the Act defines ''deceptively similar'' thus:
"A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion."
25. Thus, by reading the provisions of law, it becomes clear that the plaintiff/ Company becomes entitled for an injunction if the defendants use in the course of trade mark which is identical with or deceptively similar to the registered trade mark of the plaintiff/ Company.
26. It is not the case of the plaintiff/ Company in the instant cases that the marks used by the defendants are identical with their registered trade marks. It is their case that they are deceptively similar in the sense that they so nearly resemble the registered trade marks as to be likely to deceive or cause confusion in the minds of the buyers that the goods offered by the defendants are the goods of the plaintiff/Company.
27. The Supreme Court of India, in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC. 980. speaking through Ayyangar J., has observed in para-29 of the judgment regarding infringement of trade mark thus:
"When once the use by the defendant of the mark which is claimed to Infringe the plaintiff''s mark is shown to be ''in the course of trade'', the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff''s registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered. A point has sometimes been raised as to whether the words ''or cause confusion'' introduce any element which is not already covered by the words ''likely to deceive'' and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words ''likely to deceive''. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff''s mark. The purpose of the comparison is for determining whether the essential features of the plaintiff''s trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
28. In this connection, it would be relevant to read the observations in Kerly''s Law of Trade Marks And Trade Names, X Edn. in para 17-08 at page 456 of the book.
It reads:
"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side, by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus,, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. Reynolds v. Laffeaty''s. 1958 R.P.C. 387. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. De Cordova v. Vick Chemical Company (1951) 68 R.P.C. 103 at. p. 106 Moreover, variations in details might well be supposed by customer to have been made by the owners of the trade mark they are already acquainted with for reasons of their own. Raverihead Brick Co. Ltd. v Ruabon, Brick Co. Ltd. (1937) 54 RPC 341 at p. 349.
Kerly further observes in the next paragraph:
"When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most, of the same elements as the other and yet the leading, or it may be the only, impression left on the mind might be very different on the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken. Taw Mfg. Co. Ltd. V Notek Ltd. (1951) 68 RPC 271.
29. Thus, it is clear that the persons with whom we are concerned, while finding out whether the mark is deceptively similar, are the persons who are likely to purchase the articles in question. It is a matter of common knowledge that most of the persons that use tea powder in India are illiterate, without having the capacity even to read and write their own regional language, nor to speak of the English language. It is with such unwary people of imperfect memory that we are concerned.
30. It is no doubt true, as mentioned by the Supreme Court of India in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC. 142, in para 28.
"In deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them."
In the same case, the Supreme Court of India has further observed at para-17 thus:
"... It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question.''
31. In the case of Amritdhara pharmacy v. Satyadeo Gupta, AIR 1963 SC 449, the Supreme Court of India Inter alia, observed:
"We are aware that the admission of a mark is not to be refused, because unusually stupid people, ''fools or idiots,'' may be deceived. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing-the whole word has to be considered."
The Supreme Court of India in that case has also pointed out;
"Each case must be decided on its own facts. What degree of resemblance is necessary to deceive or cause confusion must in the nature of tilings be incapable of definition a priori."
32. The Supreme Court of India, in the case of Parle Products (P) Ltd. v. J.P. and Co. Mysore, AIR 1972 SC. 1359, has pointed out in para-9 of the judgment thus:
"It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find ''hat the packets axe practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other."
The Supreme Court of India in that case further pointed out:"
".. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes.''
Further, pointing out the difference between an action based on infringement of trade mark which is a, statutory action and an action for passing off, their Lordships have pointed out, relying on the observations of the Supreme Court of India in the case of Durga Dutt v. Navaratna Laboratories, (1) that to decide the question as to whether the plaintiff''s right to a trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as those of the plaintiff. Therein, the Supreme Court of India has observed:
"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. 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."
The Supreme Court of India, in Durga Dutt''s case referred to supra, has further pointed out:
"In an action for infringement, the plaintiff must, no doubt, 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 so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence isrequired 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 ease 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."
33. The following propositions of law emerge from the above discussion in the matter of infringement of a registered trade mark:
(1) In deciding, whether the alleged infringing trade mark is likely to cause confusion or not depends on the totality of the trade mark and the main idea left on the mind of an onlooker by it;
(2) Initially, the burden of showing that the defendant''s mark is likely to deceive or cause confusion lies on the plaintiff who wants to restrain the user of the alleged infringing mark. As soon, however, as deceptive resemblance is found to exist ex-facie between the two marks, it is, then for the defendants to show that the two marks are so dis-similar that there is no reasonable probability of any considered section ox the people being deceived;
(3) In order to decide a dispute about the infringement of a trade mark, the Court has to have regard to the way in which the infringing trade mark will appear when it Is placed with the goods of the owner of the registered trade mark. If, on doing so, the Court finds that an ordinary unwary purchaser is likely to refuse to buy the goods as those of the registered owner, there is no infringement; but, if the Court comes to the conclusion that an ordinary purchaser of the goods in, question is likely to be unable to distinguish, between the offending mark and the registered mark, the Court would be justified to come to a conclusion in favour of the plaintiff; there is an essential difference" between proof in an action for infringement and an action for passing off;
(4) The question of possibility of confusion is not to be decided on the basis of a person looking at the two trade marks side by side; but on the basts that normally a customer would see one trade mark in the absence of the other without making Up his mind about the trade mark before Mm being one he is looking for or not, in the light only of his general recollection of what the nature of the trade mark sought for by him was. This is particularly so, as the eye is not always an accurate recorder of visual detail and marks are more usually remembered by the general impressions or by some significant detail than by a photographic recorrection of the Whole.
(5) The Court has to approach the subject from the point of view of a man of average intelligence and of imperfect recollection. Merely because an alleged offending mark is likely to deceive fools or stupid persons is ho ground to hold that the use of the mark amounts to an infringement;
(6) The resemblance between the two marks may be phonetic, may be visual, may be auditory. The resemblance may also be in the basic idea represented by the plaintiff''s mark Which, idea may depict in a different representation and the identification of the essential features of a mark is in essence aquestion of fact and depends oh the judgment of the Court based on the evidence placed before it as regards the usage of the trade mark. The object of the enquiry in the ultimate analysis is Whether the mark used by the defendants as a Whole is deceptively similar to that of the registered mark of the plaintiff or not; and (7) It should be remembered that the decisions on the subject should be used as a guide and aid regarding the tests to be applied as the facts of each case differ and it is not possible to lay down objectively and a priori all the tests to find out Whether, on the facts of a given case, the offending mark is deceptively similar, (Vide: Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449.
34. I would presently proceed to examine the facts of the present case to find out whether the alleged offending marks of the defendants can be said to be deceptively similar. For, the question whether one mark so nearly resembles another as to be likely to deceive is a question for the Court and is not a matter for a Witness, Harker Stagg Ltd., (1951) 71 RPC 136 at p. 140. Proof of actual deception, if the mark is in the opinion of the Court likely to deceive, is unnecessary, Seville Perfumery Ltd. v. June Perfect Ltd., (1941) 58 RPC at p. 147, 174, per Viscount Mangham (H.L.)
35. For that, I have to find out the essential feature in the trade mark which is likely to be left over in the minds of unwary purchasers of imperfect recollection. Adverting first to the trade mark ''Brooke Bond A-1 Dust Tea'', the essential feature in the trade mark is a coloured bird perching on a twig with flowers. It is immaterial Which way the coloured bird Is looking. It is immaterial how many twigs the branch has and what is the nature of flowers. They cannot be expected to be remembered by a man of average intelligence with imperfect memory. What is likely to be remembered is the coloured bird perching on a twig with flowers. Now, looking at the trade mark of the defendants in the case of ''No. 1 Dust Tea'', sold by him, it is seen that there is a picture of a coloured bird perched on a twig with flowers on it and the colour of wrapper and the size of packets are similar. Thus, I have no hesitation to hold that the overall similarity of the trade mark of the defendants to the registered mark of the plaintiff/Company is likely to mislead a person usually dealing with tea to accept the other viz:, of the defendants if offered to him. The packets are practically of the same size, the colour scheme of the two wrappers are almost the same and the design on both, though not identical, bears such a close resemblance that one can be easily mistaken for the other. Hence, I am satisfied prima facie that the defendants'' trade mark is deceptively similar to the plaintiff''s registered trade mark.
36. Adverting next to the ''Super Dust Tea'' of the plaintiff/Company. the registered trade mark represents coloured flowers at the bottom of the wrapper; that forms its essential feature. The defendants have called their tea Super Dust Tea. They have packed it in green colour wrapper just as the plaintiff/Company. The sizes are similar. They have painted coloured rose flowers at the bottom. Thus, I have no hesitation to hold that the overall similarity between the two is likely to deceive an unwary customer of imperfect memory. He may easily accept ''Super Dust Tea'' of the defendants taking it for the ''Super Dust Tea'' of the plaintiff/ Company.
37. The packets are produced before me and I form my opinion on the basis of the real evidence that is placed before me in addition to the affidavits filed on behalf of the plaintiff/Company and of the defendants. Thus, I have no hesitation to hold that the plaintiff/Company in the two cases has made out a prima facie case of infringement of their trade marks.
38. The learned City Civil Judge appears to think that there is a prima facie case of similarity though it is not so strong as to be deceptively similar, though he has not stated so in so many words. He has not approached the subject in the right perspective and, at the inception, he appears to think that prima facie case merely means that there should be a triable issue at the trial. But, when the suits are for infringement of registered trade marks, it was his duty to find out whether there is a prima facie case of infringement made out apart from the question of there being a triable issue in the suits. Hence, I am unable to accept the finding of the learned City Civil Judge. Differing from him, I hold, for the reasons discussed above that the plaintiff Company has made out a primafacie case that its registered trade marks involved in the two suits are prima facie infringed by the defendants.
39. That leads me to the question of balance of convenience and the question of laches.
40. Kerly, speaking about the interlocutory application for interim injunction, in para 15-64 at page 337 (X Edition), observes:
"The plaintiff in an infringement or passing off action may move, as soon as the action is commenced, for an interim injunction to restrain the defendant, until the hearing of the action or further order, from continuing or committing the infringement or deceptive conduct of which he complains. Quite apart from the advantages of stopping the infringement without delay, experience shows that a successful motion for interlocutory injunction normally puts an end to the litigation and the infringement, with a great saving in expense compared with a full trial. Accordingly, such a motion should be considered in every case; and, accordingly, proprietors of trade marks should make it a rule to take action upon every instance of infringement with the necessary speed to enable such a motion to be launched. In extremely urgent cases, where the right is very clear, an ex parte injunction may be obtained before the full hearing of the motion. (Eothen, Films Ltd. v. Industrial and Commercial Education Mac. Millan Ltd. 1966 FSR 356.
Speaking of balance of convenience, Kerly at para 15-65 at page 337, (X Edn.) observes:
"Where the fact of infringement is doubtful, or misrepresentation amounting to a bar to the action, or some other defence is plausibly alleged upon the interlocutory motion the Court, in granting or refusing the interim injunction, is guided principally by the balance of convenience, that is, by the relative amounts of damage which seem likely to result if the injunction is granted and the plaintiff ultimately fails, Spillers Ltd. v. Quaker Oats Ltd. 1969 FSR 510 or if it is refused and he ultimately succeeds Salaried Persons Postal Loans Ltd. v. Postal and Salaried Loans of Glasgow Ltd. 1988 RPC 24.
41. In the instant cases; the plaintiff Company is a limited company having developed vast trade and having Completed transactions of more than 150 crores by 1979. The defendants are trying obviously to push off their goods under the reputation of the plaintiff''s trade marks. They have started business only in about the year 1978. If they are not restrained by a temporary injunction forthwith, they are likely to develop their business and to that extent people would be deceived and the reputation of the plaintiff/Company would suffer. til the circumstances, I am of the considered view that the balance of convenience lies in issuing the temporary injunction.
43. It was further urged strenuously before me by the learned Advocate appearing for the respondents that since there are laches, on the facts of the present cases, in bringing the suits and in praying for temporary injunction the learned city Civil Judge was perfectly justified in not issuing temporary injunction orders in these cases.
43. The learned Advocate appearing for the respondents invited my attention to Section 61 at page 805 of American Jurisprudence, (2nd Edn), Vol. 42, which speaks of laches, acquiescence, or delay generally. It reads:
"It is a well established principle that equity aids the vigilant relief in that tribunal is confined to those who manifest reasonable diligence in asserting their rights and demanding equitable protection, and will be denied to those who sleep upon, their rights to the prejudice of the party against whom relief is asked. This principle has peculiar force when the injunctive power of the court is invoked. Laches or inexcusable delay will not be countenanced when this special form of relief is sought. Consequently, remedy by way of injunction will not generally be granted in favour of one who, with full knowledge of what is being done or with means of acquiring such knowledge, is acquiescent or delays in asserting, or neglects to assert, his rights until the defendant has placed himself in a position from which he is unable to extricate himself without great injury or damage. It would be contrary to equity and good conscience to suffer a party to stand by and see acts done involving risk and expense to others, and then permit him to enforce his rights by injunction, and thereby inflict loss and damage on parties acting in good faith."
44. The learned Advocate appearing for the respondents submitted, relying on these observations, that in the instant cases, the plaintiff/Company was very well aware that the defendants were using the trade marks even before the issue of the legal notice on 6-12-79. The plaintiff/Company, however, has actually instituted two suits only on 21-11-80. Thus, he submitted that the plaintiff] Company has delayed for nearly eleven months and, hence, without more, the prayer for interim injunction in the two suits should be rejected and that it was rightly rejected in the two suits by the learned City Civil Judge.
45. As against that, the learned Advocate appearing for the appellant pointed out that after the legal notices were issued in the two cases, the defendants approached the plaintiff and assured that they would discontinue the use of the deceptive trade marks a it was only after they came to know that defendants did not discontinue that the Company was constrained to file the suits and that therefore, there was no delay as such.
46. The learned Advocate appearing for the appellant further invited my attention to the observation in Kerly that the doctrine of laches would operate only if the plaintiff waited until the defendant has placed himself in the position from which he is unable to extricate himself without great injury or damage. There was no such situation on the facts of the present cases. The defendants had actually stopped their trade in the middle and their business has not increased from What it was from 1979 in 1980. Besides he pointed out that the defendants were indulging in unconscionable activity and, in such a case, the question of a little delay, even if it is there, cannot come in the way of the plaintiff obtaining an equitable remedy by way of injunction.
47. The learned Advocate appearing for the appellant, in support of his submission, pressed into service the observations made by Spry in his illustrious Treatise ''Equitable Remedies (2nd Edn.) at page 402. Under the rubric ''Laches'' this is what is observed:
''In order that there may be established laches on the part of the plaintiff it must appear, first, that there has been unreasonable delay in the commencement or prosecution of proceedings, and secondly, that in view of the nature and consequences of that delay it would be unjust or inequitable to grant the specific relief which is in question.
At page 405, stating further on the aspect, the learned Author has observed:
It is not sufficient, however, that the defendant should be able to show merely that the plaintiff has been guilty of unreasonable delay. It must be shown further that the delay in question has rendered unjust the grant of the particular relief which is sought. Thus ordinarily it must be established that, by reason of the material delay, either the plaintiff has gained an unjust advantage or the position of the defendant has been altered so that an injunction now granted would operate substantially more harshly upon him than an injunction granted without delay or that some other such consideration has arisen so that in all the circumstances it is just that the plaintiff should be confined to such other remedies as he may be entitled to.
At page 407, the Author further observed:
"A further matter to be borne in mind here arises where the defendant is shown to have been guilty of fraudulent or unconscionable behaviour and has not been misled by the undue delay on the part of the plaintiff; for the ultimate question in all cases of undue delay is whether that delay has rendered the grant of particular specific relief unjust and unreasonable, and in answering that question unconscionable behaviour of the defendant may be decisive in inducing the court not to refuse relief on the ground of laches. Turner v. General Motors (Australia) Pty Ltd. (1929) 42 CLR 352 esp. at p. 370.
48. Thus, it is obvious that merely the aspect of delay would not be sufficient to refuse an equitable remedy like an injunction. It must further be shown that the defendant has changed his position on account of the delay and, in the changed circumstances, it would be unjust and harsh on the defendant, to issue such an injunction and in a case where the Court is satisfied that the defendant is indulging in a fraudulent or unconscionable transaction, laches would not come in the way of the Court in issuing injunction.
49. In the instant cases, as already stated by me above, even the turnover of the defendants has not materially increased. Moreover, the plaintiff/Company has made out a prima facie case that the defendants are actually practising deception on the unwary customers of average intelligence and imperfect memory by passing off their goods as the goods covered by the registered trade marks of the plaintiff/Company. Thus, the defendants are indulging in an unconscionable transaction. Hence, the delay of a few months, on the facts of the present cases, in instituting the two suits can never be a good ground to refuse the temporary injunction order. The learned City Civil Judge was obviously in error in labouring under the contrary impression.
50. It is needless for me to point out that if the defendants are allowed to carry on with their illegal and unconscionable activities, it would hamper the reputation of the plaintiff/ Company and would thus cause irreparable loss to the plaintiff/Company.
51. In view of the foregoing reasons, I am of the considered view that these are cases where the ex-parte temporary injunction orders issued by the trial Court in the two suits should have been made absolute till the final hearing of the suits. The appeals are, therefore, entitled to succeed.
52. In the result, therefore, the appeals are allowed. The impugned common order passed by the learned City Civil Judge in the two suits is hereby set aside and the exparte temporary injunction orders issued by the trial Court in the two suits are made absolute and they shall continue during the pendency of the suits.
53. The appellant (Plaintiff/Company), however, shall file a bond into trial Court in each suit within 15 days of the receipt of this order by the trial Court or within 15 days of the re-opening of the Court, whichever is later, that they undertake to pay to the defendants in the proceedings such damages as may be found due upon enquiry in that behalf, in the event of their being unsuccessful in the suits.
54. Send back the records in the suits along with copy of the present order to trial Court forthwith.
No costs.
