Control Appliances Vs. Sumeet Machines Pvt. Ltd.  INSC 100 (8 February 1994)
S. (J) Mohan, S. (J) Venkatachalliah, M.N.(Cj)
1994 SCR (1) 708 1994 SCC (2) 448 JT 1994 (2) 70 1994 SCALE (1)446
Judgment of the Court was delivered by MOHAN, J.- All these appeals can be
dealt with under a common judgment. The Civil Appeal Nos. 2551-52 of 1993 are
by the first plaintiff while Civil Appeal No. 2553 of 1993 by the second
plaintiffs filed three suits on the file of the High Court of Madras-
C.S. No. 343 of 1992 complaining of infringement of the copyright of the first
plaintiff (Power Control & Appliances Company);
No. 431 of 1992 alleging the violation of the registered trade mark 'Sumeet'
No. 263836 in Part-A in Class 7 for machines (electric) for kitchen use;
No. 432 of 1992 claiming the design registration in the 'Whipper Blade' of the
power operated mixies.
these suits, four application Nos. 226, 227, 271 and 272 of 1992 were taken
out, two in C.S. No. 343 of 1992 and one each in C.S. Nos. 431 and 432 of 1992
facts are common to all the suits and the applications. In C.S. No. 343 of1992
in the Application Nos. 226 & 227 of 1992, the plaintiffs prayed for aninterim
injunction to restrain the respondents (defendants) from using, distributing,
printing or causing to be printed the work as contained in Document Nos. (1) receipt
and instruction manual, (2) guarantee card and (3) outer carton and the work as
found in Document Nos. 4, 5 and 6.
C.S. No. 431 of 1992 in Application No. 271 of 1992 an interim injunction was
sought to restrain the respondents from using the registered trade mark. In
C.S. No. 432 of 1992 in Application No. 272 of 1992 the injunction was sought
to restrain the respondents from using the design registration in manufacturing
Mrs Madhuri Mathur is the sole proprietrix of M/s Power Control and Appliances
Company. She started manufacturing power operated kitchen mixies for domestic
use since 1963. They are marketed since 1964 under the brand name of 'Sumeet'.
The mixy was packed in a cardboard box and at the top the pictorial and
photograph display of the appliance in different colours showing the different
purposes for which the mixy could be used was shown. A booklet was enclosed
bearing the title "Sumeet Domestic Mixer-Operating Instructions and Recipe
Book". That consisted of 80 pages bound spirally in hard art paper cover.
A guarantee card was also issued. All these were devised, conceived and made by
the first plaintiff in 1982 with the assistance of artists, photographers,
printers and executives employed by the first plaintiff for valuable
considerations fully paid. As such the first plaintiff is the owner of
copyright with respect of all the above items in terms of Section 17 of the
Copyright Act, 1957. 'Sumeet' mixy came to be in great demand in India and
abroad. The business expanded. To cope up with the demand, the first plaintiff had
to float three more concerns for the manufacturing of the same appliances. The
Power Control and Appliances (Bombay) Ltd.
Micro Motors and Appliances Ltd.
Control Appliances (Kandla).
All these concerns except Power Control and Appliances (Bombay) Limited buy
electric motors for their mixies from the second plaintiff Sumeet Research and
is deemed to be public limited company. Mrs Madhuri Mathur is the Chairman and
Director. She holds 59.25% shares.
artistic manner in which the word 'Sumeet' is written was conceived and
published by the first plaintiff.
registered trade mark with effect from April 18, 1970. This trade mark was
assigned to the second plaintiff on January 1, 1981. The second appellant is
the owner of the copyright.
first defendant was incorporated in 1984. It has been manufacturing and selling
mainly washing machines and vacuum cleaners from September/October 1991. It has
started manufacturing domestic mixies exactly similar to plaintiffs' mixer with
identical specifications except for power rating.
package and the pictorial display are identical. Even the booklet is pagewise
reproduction including an error with respect to Design No. 146781, a design
number not belonging to the plaintiffs. The contents of the guarantee card are
also identical. The first defendant is affixing in each of the appliances the
registered trade mark 'Sumeet' belonging to the second plaintiff in the same
artistic manner in which it is registered. On these allegations, it was urged
that the first defendant had committed infringement of the exclusive copyright
of the first plaintiff in the artistic material and trade literature displayed
on the cardboard box. Similarly, the operating instructions and recipe book and
the guarantee card issued by them.
regard to the four components of the mixer, Mrs Madhuri Mathur had obtained
registration of their design under Part-11 of the Designs Act, 191 1. Those
Stainless steel jar with rim.
one of them has a specific registration number.
the statutory period of 15 years or the validity of the copyright had elapsed
on May 23, 1992 concerning items (i), (ii) and (iv),
as regards whipper blade the validity of registration is up to April 5, 1994. Therefore, it is not open to
anyone to infringe the same. Thus, the applications on the grounds came to be
first defendant did not file the written statement.
he filed his counter-affidavit. The stand taken by him is that he (Ajay Parkash
Mathur) is the eldest son of Mrs Madhuri Mathur. On his return from United
States, the family business, mainly kitchen appliances and mixer machines under
the trade name of 'Sumeet' had picked up by the innovative ideas and dynamic
marketing strategies evolved by him. The family of Mathurs included the
plaintiffs, the first defendant and others. The family was selling 453 Sumeet mixies
since 1963. It is true that three other companies were floated. In fact, he was
the Director of Power Control and Appliances Bombay Limited until recently.
of inter se disputes, he was obliged to leave the said company.
first defendant company was incorporated in 1984 as Sumeet Machines Private
Limited for the purpose of manufacture of market kitchen appliances under the
trade name of 'Sumeet' and other products such as washing machines. The said
company itself was incorporated with the knowledge and approval of the
plaintiffs-applicants. When Sumeet Machines Private Limited was sought to be
registered before the Registrar of Companies, Maharashtra, a letter of no objection from the owners of the trade mark
'Sumeet' had to be produced. The first defendant obtained letters both from the
first and second plaintiffs on May 7, 1984. It
was only on this the company came to be registered on September 5, 1984. As a matter of fact, Mrs Madhuri Mathur
is a shareholder in first defendant, she having been allotted 5000 shares.
Likewise, the father of first defendant also owns 5000 shares.
1986, the first defendant has been manufacturing and marketing mixies under the
trade name of 'Sumeet'. This was done with the knowledge and consent of the
plaintiffs openly and concurrently. Further, Mrs Madhuri Mathur and the father
of first defendant have signed and given personal guarantees to the State Bank
of Hyderabad on behalf of the first defendant.
The loans were secured on that basis. In short, the reply of the first
defendant is that the copyright trade mark and the copyright design is that of
the first defendant which was conceived as a family concern.
word 'Sumeet' was given with the blessings and consent of Madhuri Mathur and
S.P. Mathur. Therefore, he has been an honest and concurrent user. In any
event, the plaintiffs' applications were not entitled to the reliefs on the
ground of acquiescence.
learned Single Judge as seen from the report of decision in Power Control and
Appliances Co. v. Sumeet Machines Pvt. Ltd. I held that the copyright with
respect to operative instructions and recipe book, guarantee card and the outer
carton of the Sumeet Kitchen Mixies vested in the Power Control Appliances
Company represented by the Sole Proprietrix Mrs Madhuri Mathur. Equally, the
copyright in the Design Registration No. 148246 in relation to 'whipper blade'
was also accepted as belonging to the plaintiff. The trade mark in the name of
'Sumeet' with the particular artistic design is registered in the name of Sumeet
Research and Holdings Limited was accepted as claimed by the plaintiffs.
Notwithstanding, all these, the relief of injunction was not granted in view of
acquiescence by the plaintiffs in the honest and concurrent user of the first
defendant. Against this judgment, OSA Nos. 144-46 of 1992 came to be preferred.
Division Bench by the impugned judgment dated February 26, 1993 held that the learned Single Judge was not wrong in holding
that the 454 plaintiffs have acquiesced in the use of the trade literature and
the trade mark by the first defendant. The relief in equity of injunction, if
granted, will affect the interest of not only Ajay Mathur but also other
members of the family who are shareholders of the first defendant's company.
Accordingly the appeals were dismissed. It is under these circumstances, these
civil appeals have been preferred; Civil Appeal No. 2551 of 1993 against
Application Nos. 226 & 227 of 1992 in CS No. 343 of 1992, Civil Appeal No.
2552 of 1993 against Application No. 271 of 1992 in CS No. 432 of 1992 and
Civil Appeal No. 2553 of 1993 against Application No. 272 of 1992 in CS No. 431
P. Chidambaram, learned counsel for the appellants submits that both the courts
below having held in favour of the appellants herein that there is an
infringement of the trade mark, the copyright and the design should not have
dismissed the application for injunction solely on the ground of honest and
concurrent user and on the plea of acquiescence. On the contrary the evidence
in this case discloses that the first defendant was only marketing (but never
manufacturing) from 1986. Therefore, merely because he was marketing, that
cannot amount to honest and concurrent user. It was only in September-October
1991 he started infringing the trade mark, copyright and the design.
when the suit came to be filed immediately, no question of acquiescence would
ever arise. It is only on 28th of October, 1991 the first defendant invited
applications for distribution.
conclusions of the High Court lead to strange results. Notwithstanding the
finding of the court that the appellants' copyrights, registered trade mark and
registered design having been occupied totally consciously and deliberately
without any alteration and thereby infringed by the defendant to deny
injunction in equity cannot be supported. After all the plaintiff Mrs Madhuri Mathur
as an individual has 3.3 per cent of the shareholding in the first
hold that the first defendant was using the registered trade mark from 1984 is
wrong when admittedly the first defendant-company came into existence only in
Sections 19 and 54 of the Copyright Act reproduction of the copyright itself is
infringement unless there is specific assignment in writing by the proprietor.
this case, there is not even a plea that Mrs Madhuri Mathur assigned the
copyright in the outer carton handbook and guarantee card. The concept of
honest and concurrent user found in Section 12(3) of the 1958 Act for securing
concurrent registration is totally irrelevant as defence in a suit for
infringement and copyright arising out of a different Act, namely, 1957 Act.
Therefore, there can be no honest and concurrent user of one's copyright by
1958 Act, the plea of acquiescence is not available at all. Even assuming that
the first defendant was manufacturing between June 1989 and October 1991 he
cannot have the 455 benefit of Section 30(1)(b) of the 1958 Act*. This Act
creates offences for such infringement under Sections 78 and
Section 96 also speaks of implied warranty. These provisions were not found in
the 1940 Act. In Ruston & Hornsby Ltd. v. Zamindara Engineering Co.2 this
Court had occasion to point out the distinction between the infringement and
passing off. :On this basis it is submitted all that has to be proved by the
plaintiff is that she is the registered owner of the trade mark. If there is an
infringement, injunction must follow. Section 12(3) of the 1958 Act talks of
special circumstances in relation to honest and concurrent user. In such a case
the defences available are as laid down in Sections 30, 34 and 35 of that Act.
Such defences are not available in the instant case.
this case, factually there is no acquiescence.
support of these submissions; learned counsel relies on Amritdhara Pharmacy v. Satyadeo
Gupta3 and particularly the passage occurring at page 497 to show in what case
the plea of acquiescence could ever be made. Equally, in Aktiebolaget Manus v.
J. Fullwood and Bland, Ltd.4 it was held that the court is bound to grant an
injunction if the legal right is established. In the case on hand it has been
so established. In Electrolux LD. v. Electrix LD.5 as to when the plea of
acquiescence could be upheld, is stated.
Trade Mark6 the plea of acquiescence has been dealt with. Judged in the light
of these rulings, the finding relating acquiescence cannot at all be upheld.
J. Sorabjee, learned Senior Counsel for the respondent submits that it is a
clear case in which there are various acts, collectively pointing out to
implied consent to the use of plaintiff's trade mark. They establish, at least
prima facie, the acquiescence on the part of the appellant. They would
disentitle it to the interim relief of injunction. The acts are as under:
letter dated May 7, 1984 to the Registrar of Companies regarding the allocation
of the name Sumeet.
encouragement of production of new electronic food preparation machine.
objection whatsoever by the plaintiff or any other related companies or even by
Mr or Mrs Madhuri Mathur to the manufacture and sale by this respondent till
the issue of notice dated November 18, 1991.
is also evidence in this case to show that the first respondent has been
manufacturing mixing machines from July 1987. There is also a clear * The Trade
and Merchandise Marks Act, 1958 + The Trade Marks Act, 1940 2 (1 969) 2 SCC 727
: (1970) 2 SCR 222, 224 3 (1963) 2 SCR 484: AIR 1963 SC 449 4 (1948) 55 RPC 329,
338 5 1954 RPC 23, 34 6 1963 RPC 183, 202 456 admission on the part of the
plaintiff that the first respondent was manufacturing his products under the
trade name of Sumeet at least since June 1989. This is evident from the
complaint dated April 6, 1992 mentions the manufacture of washing machines,
vacuum cleaners and industrial mixies from 1984 and the manufacture of kitchen
machines from 1989-90.
affidavit filed on behalf of the appellants mentions about the manufacture since
June 1989. There is a similar admission in paragraph II of the plaint. The
export of these domestic mixies as Sumeet 842 INT is done by the first
respondent. All these point out to acquiescence which would be a good ground
for denying the interim relief of injunction.
appellant has disentitled itself from the grant of equitable relief of
injunction by reason of unexplained delay and suppression of material facts.
The balance of convenience is also overwhelmingly in favour of this respondent
in view of the facts stated above that the first respondent has been
manufacturing and marketing productions with the trade name of Sumeet since
is not correct to contend that once the trade mark is infringed the plaintiff
would be entitled to injunction.
30(b) is still applicable and it is open to this respondent to show that there
had been an implied consent to the use of the trade mark. In support of this
submission learned counsel places reliance on Devidoss and Co. v. Alathur Abboyee
Chetty & Co.7 23.As regards the principles in relation to the grant of
interim injunction the law has been laid down in K.E. Mohammed Aboobacker v. Nanikram
Maherchand8. Similar principles are stated in American Cyanamid Co. v. Ethicon
Ltd.9 24.In dealing with this case we would like to keep this in the back of
our mind that we are concerned with an interim application for injunction in
relation to the violation of copyright, trade mark and the design. The Division
Bench observed in paragraph 8 as follows:
learned Single Judge, while disposing of the applications, has in the impugned
judgment, accepted the copyright with respect to operating instructions and
recipe book, guarantee card and the outer carton of the Sumeet kitchen mixies
in the Power Control and Appliances Company represented by the Sole Proprietrix
Mrs Madhuri Mathur, as well as the copyright in the Design Registration No.
148246 for 'whipper blade' for which there is validity till April 5, 1994. He has also accepted the
plaintiffs' case that the trade mark in the name 'Sumeet' with the particular
artistic design is registered in the name of Sumeet Research and Holdings
Limited. He has, however, declined to grant any injunction, for in his opinion
the doctrine of acquiescence and honest and concurrent user will be
attracted." 8 (1957) 2 MLJ 573 9 (1 975) 1 All ER 504, 511 : (1975) AC 396
457 25.If there is an infringement of the same whether the appellant would be
entitled to interim injunction at this stage is the important question for determination.
For such a determination, we refrain from going into the details relating to
evidence as that will prejudice the parties in the suits. Section 30(1)(b) of
the 1958 Act says:
Acts not constituting infringment.-(1) Notwithstanding anything contained in
this Act, the following acts do not constitute an infringement of the right to
the use of a registered trade mark--- (a * * * (b)the use by a person of a
trade mark in relation to goods connected in the course of trade with the
proprietor or a registered user of the trade mark if, as to those goods or a
bulk of which they form part, the registered proprietor or the registered user
conforming to the permitted use has applied the trade mark and has not
subsequently removed or obliterated it, or has at any time expressly or
impliedly consented to the use of the trade mark." Therefore, acquiescence
is one of the defences still available to the first respondent. Of course, it
is a different issue whether the plea of acquiescence has been made out in this
case. That will be examined for a limited purpose after setting out the law on
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.
Harcourt v. White10 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. Nowill12.
law of acquiescence is stated by Cotton, L.J. in Pro tor v. Bannis13 as under:
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:
(1860) 28 Beav 303 :54 ER 382 11 (1884)26ChD406 12 (1847) 2 De GM&G 614: 22
LJ KCH 404 13 (1887) 36 Ch D 740 458 "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."
Devidoss and Co.7 at pages 33 and 34 the law is stated thus:
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 mark. In
Rowland v. Michell14 Romer J.
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."' In the same case, but on appeal Lord Russel, C.J. said' 5 at p.
the plaintiff disentitled to relief under that head by injunction because of
acquiescence? Of course it is involved in the consideration of that that the
plaintiff has a right against the defendant and that the defendant has done him
a wrong and the question is whether the plaintiff has so acted as to disentitle
him from asserting his right and from seeking redress from the wrong which has
been done to him. Cases may occasionally lay down principles and so forth which
are a guide to the court, but each case depends upon its own circumstances.
with the question of standing by in Codes v. Addis and Son16 at P. 142, Eve, J.
the purpose of determining this issue I must assume that the plaintiffs are
traders who have started in this more or less small way in this country, and
have been continuously carrying on this business. But I must assume also that
they have not, during that period, been adopting a sort of Rip Van Winkle
policy of going to sleep and not watching what their rivals and competitors in
the same line of business were doing. I accept the evidence of any gentleman
who comes into the box and gives his evidence in a way which satisfies me that
he is speaking the truth when he says that he individually did not know of the
existence of a particular element or a particular factor in the goods marketed
by his opponents. But the question is a wider question than that : ought not he
to have known : is he entitled to shut his eyes to everything that is going on
around him, and then when his rivals have perhaps built a very important trade
by the user of indicia which he might have prevented their using had he moved
in time, come to the Court and say : "Now stop them from doing it further,
because a moment of time has arrived 14 (1896) 13 RPC 464 15 Rowland v. Michell,
(1 897) 14 RPC 37, 43 16 (1923) 40 RPC 130, 142 459 when I have awakened to the
fact that this is calculated to infringe my rights." Certainly not. He is
bound, like everybody else who wishes to stop that which he says is an invasion
of his rights, to adopt a position of aggression at once, and insist, as soon
as the matter is brought to Court, it ought to have come to his attention, to
take steps to prevent its continuance; it would be an insufferable injustice
were the Court to allow a man to lie by while his competitors are building up
an important industry and then to come forward, so soon as the importance of
the industry has been brought home to his mind, and endeavour to take from them
that of which they had legitimately made use; every day when they used it
satisfying them more and more that there was no one who either could or would
complain of their so doing. The position might be altogether altered had the
user of the factor or the element in question been of a secretive or
when a man is openly using, as part of his business, names and phrases, or
other elements, which persons in the same trade would be entitled, if they took
steps, to stop him from using, he gets in time a right to sue them which
prevents those who could have stopped him at one time from asserting at a later
stage their right to an injunction.' In Mc. Caw Stevenson & Orr Ltd. v. Lee
Bros.17 acquiescence for four years was held to be sufficient to preclude the
plaintiff from succeeding. In 1897 the plaintiffs in that case registered the
word 'glacier' as a trade mark in respect of transparent paper as a substitute
for stained glass. As the result of user the word had become identified with
the plaintiffs' goods. In 1900 the defendants commenced to sell similar goods
under the name 'glazine. In 1905 the plaintiffs commenced an action for
defendants denied that the use of the word 'glazine' was calculated to deceive
and also pleaded acquiescence. A director of the plaintiff company admitted
that he had known of the use of the word 'glazine' by the defendants for four
years he would not say it was not five years. It was held that the plaintiffs
failed on the merits and by reason of their delay in bringing the action.
may be no defence to a suit for infringement of a trade mark, but the decisions
to which I have referred to clearly indicate that where a trader allows a rival
trader to expend money over a considerable period in the building up of a
business with the aid of a mark similar to his own he will not be allowed to
stop his rival's business. If he were permitted to do so great loss would be
caused not only to the rival trader but to those who depend on his business for
their livelihood. A village may develop into a large town as the result of the
building up of a business and most of the inhabitants may be dependent on the
business. No hard and fast rule can be laid down for deciding when a person
has, as the result of inaction, lost the right of stopping 17 (1960) 23 RPC 1
460 another using his mark. As pointed out in Rowland v. Michell15 each case
must depend on its own circumstances, but obviously a person cannot be allowed
to stand by indefinitely without suffering the consequence."
This is the legal position. Again in Halsbury's Laws of England, Fourth Edn., Vol.
24 at paragraph 943 it is stated thus:
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.
v. Dubbins18; Child v. Douglas19; Johnson v. Wyatt2O; Tumer v. Mirfield 21;
Hogg v. Scott22; Price v. Bala and Festiniog Rly. Co.23] 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. Wyatt2O at 25; and see Gordon v. Cheltenham and Great Westem
Union Rly. Co.24 per Lord Langdale MR.') 30.In Aktiebolaget Manus v. R.J. Fullwood
& Bland, LD.4 at pp. 338-39 it was held thus:
from this point the case of Fullwood v. Fullwood25 shows that the injunction in
a passing-off case is an injunction sought in aid of a legal right, and that
the Court is bound to grant it if the legal right be established unless the
delay be such that the Statute of Limitations would be a bar. That case
apparently concerned some predecessors of the defendants. The delay was one of
rather under two years and the relief sought was an injunction to restrain the
use by the defendants of cards and wrappers calculated to induce the belief
that his business was connected with the plaintiff. Fry, J., in the course of
his judgment said this:
Now, assuming, as I will, for the purpose "of my decision, that in the
early part of 1875 the plaintiff knew of all the material facts" which
have been brought before me today, he commenced his action in November 1876.
"In my opinion that delay, and it is simply delay, is not sufficient to
deprive the plaintiff of' his rights. The right asserted by the plaintiff in
this action is a legal right. He is, in 18 (1853) Kay 1 : 69 ER 1 19 (1 854) 5
De GM&G 739: 43 ER 1057 20 (1863) 2 De GJ&Sm 18: 46 ER 281 21 (1865) 34
Beav 390: 55 ER 685 22 (1874) LR 18 Eq 444 23 (1 884) 50 LT 787 24 (1 842) 5 Beav
229, 233 : 49 ER 565 25 (1878) 9 Ch D 176: 47 LJ Ch 459 461 "effect,
asserting that the defendants are liable to an action for deceit". It is
not suggested in the defence that the delay here involves a question under or
analogous to the period under the Statute. The defendants did suggest that
there had been something more than mere delay on the part of the plaintiffs,
and that the plaintiffs had lain by and allowed the goodwill which the
plaintiffs now propose to acquire, but this point was not seriously pressed. It
was suggested that Mr Evans Bajker, the plaintiffs' solicitor, knew from 1941
onwards what the defendants were doing, but it is impossible to impute to a
busy solicitor a knowledge which he could only acquire by seeing advertisements
in local or farming papers advertising the defendants' activities. No direct
information was afforded to him; on the contrary it will be remembered that
when in 1942 he made enquiries on behalf of his clients information was
studiously withheld from him. I conclude therefore that there has been no
acquiescence to disentitle the plaintiff to relief."' 31 In Electrolux LD.
v. Electrix5 at pp. 32 and 33 it was held thus:
now pass to the second question, that of acquiescence, and I confess at once
that upon this matter I have felt no little sympathy for the defendants, and
have been not a little envious of the good fortune which has attended the plaintiffs,
though no doubt they may justly attribute it to the astuteness of their
advisers; but, as has already been said, the defendants have traded openly and
(as the Judge found) honestly, beyond any question, in the ordinary course and
substantially under this name 'Electrix' for a very long period of time, since
early 1930's. During that time, they have built up (I doubt not) a valuable
goodwill associated with that name. If the possibility that the mark
'Electrolux' was infringed is out of the way, and if I disregard for the moment
(as I do) the point taken by Mr Kenneth John stone that in any event for use of
'Electrolux' was a sufficient use for the purpose of Section 26(1) of 'Electnix'
(seeing that the two marks were associated). I have no doubt that if the
plaintiff had challenged in the courts the right of the defendants to use 'Electrix'
before they have effect to their decision to apply the word 'Electrux' to their
cheaper model in lieu of 'Electrolux', they would in all probability have failed,
because the defendants' motion to strike the word 'Electrux' off the Register
would have succeeded, but the fact is that when the battle was joined, 'Electrux'
was no longer vulnerable on that account, unless the defendants can establish
that the use was not bona fide, a matter to which I shall come presently. It
is, however, said that by the defendants that the plaintiffs have deprived
themselves of their legal right or, at least, of any right to the equitable
remedy of injunction.
this matter, a great deal of learning has been referred to, and we have also
had our attention drawn to a number of cases. The latter 462 include the
well-known statement in Willmott v. Barber26 by Fry, J. (as he then was) at p.
105. He said this: 'It has been said that the acquiescence which' will deprive
a man of his legal rights must amount to fraud, and in my view that is an
abbreviated statement of a very true proposition. A man is not to be deprived
of his legal rights unless he has acted in such a way as would 'make it
fraudulent for him to set up those rights'. Let me pause here to say that I do
not understand that, by the word 'fraudulent', the learned Judge was thereby
indicating conduct which would amount to a common law tort of deceit. 'What,
then, are the elements or requisites necessary to constitute fraud of that
description?' In the first place 'the plaintiff must have made a mistake as to
his legal rights'. Secondly, the plaintiff must 'have expended some money or
must have done some act (not necessarily upon the defendant's land) on the
faith of his mistaken belief. Thirdly, the defendant, the possessor of 'the
legal right, must know of the existence of his own right which is inconsistent
with 'the legal right, must know of the existence of his own right which is
inconsistent with' the right claimed by the plaintiff. If he does not know of
it he is in the same position 'as the plaintiff, and the doctrine of
acquiescence is founded upon conduct with a knowledge' of your legal rights.
Fourthly, the defendant, the possessor of the legal right, must know 'of the
plaintiff's mistaken belief of his rights. If he does not, there is nothing
which' calls upon him to assert his own rights. Lastly, the defendant, the
possessor of the legal 'right, must have encouraged the plaintiff in his
expenditure of money or in the other acts which he has done, either directly or
by abstaining from asserting his legal right'. In reading that passage, it is
perhaps necessary to note (because it makes it at first sight a little more difficult
to follow) that the positions of plaintiff and defendant as they are usually
met with are there transposed, and that one of the parties who is there spoken
of as the plaintiff corresponds with the present case with the defendants, and
vice versa." 32 Amritdhara pharmacy v. Satyadeo Gupta is case where Halsbury
was quoted with approval. However, on the facts of that case it was held that
the plea of acquiescence had not been made, out.
we come to the principles in relation to the grant of interim injunction. The
case in K.E. Mohammed Aboobacker v. Nanikram Maherchand8 makes a reference to
the case-law and holds at pages 574-75 as under:
The principles which should govern the Court in granting or withholding a
temporary injunction in trade mark infringement actions are well-settled : See
recent decision Henry Hemmings, Ltd. v. George Hemmings, Ltd.27 As a temporary
injunction is merely of a provisional nature and does not conclude the rights
of the parties in any way, the 26 (1880) 15 Ch D 96: 43 LT 95 27 (1951) 68 RPC
47 463 Court will exercise its discretion in favour of the applicant only in
strong cases. The plaintiff must make out a prima facie case in support of his
application for the ad interim injunction and must satisfy the Court that his
legal right has been infringed and in all probability will succeed ultimately
in the action. This does not mean, however, that the Court should examine in
detail the facts of the case and anticipate or prejudice the verdict which
might be pronounced after the hearing of the suit or that the plaintiff should
make out a case which would entitle him at all events to relief at the hearing.
v. Farrow & Co.28, Hoover, Ltd. v. Air- way Ltd.29, Upper Assam Tea Co. v.
Herbert and Co.30, Star Cycle Co., Ltd. v. FrankenburgS31.
fact the Court will not ordinarily grant an interlocutory injunction if a large
amount of evidence is necessary to support the plaintiff s case. The proper
course in such a case is to ask for the trial of the action. The injury must be
actual or imminent. Pinel & Cie v. Maison Pinet, Ltd.32 Where the defendant
disputes the plaintiff's title to the mark or contends that the plaintiff is
not entitled to relief by reason of the acquiescence or delay or other estoppel
or of the defendant's concurrent rights, the Court will be guided by the
balance of inconvenience which may arise from granting or withholding the
injunction as well as the justice of the cause after considering all the
circumstances in the suit. In other words, where the plaintiff s title is
disputed or the fact of infringement 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 amount of
damage which seems likely to result if the injunction is granted and the
plaintiff untimately fails or if it is refused and he ultimately succeeds; Read
Brothers v. Richardson and Co.33, Hommel v. Bauer & Co.34 ... It is
necessary that an application for interlocutory injunction should be made
immediately after the plaintiff becomes aware of the infringement of the mark.
Improper and unexplained delay is fatal to an application for interlocutory
injunction. The interim injunction will not be granted if the plaintiff has
delayed interfering until the defendant has built up a large trade in which he
has notoriously used the mark. North British Rubber Co., Ltd. v. Gormully and
Jeffery Manufacturing Co.35, Army and Navy Cooperative Society, Ltd. v. Army
Navy and Civil 28 (1898) 15 RPC 198 29 (1936) 53 RPC 399 30 (1890) 7 RPC 183 31
(1906) 23 RPC 337 32 (1895) 14 RPC 933 33 (1 881) 45 LT 54 34 (1903) 20 RPC 801
35 (1 894) 12 RPC 17 464 Service Cooperative Society of South Africa Ltd.36,
Hayward Bros. Ltd. v. Peakall37, Yost Typewriter Co. Ltd. v. Typewriter
Exchange Co.38, Royal Warrant Holders'Assn. v. Slade & Co., Ltd.39"
American Cyanamid Co.9 it is held at page 511 as under:
other factors appear to be evenly balanced it is a counsel of prudence to take
such measures as are calculated to preserve the status quo. If the defendant is
enjoined temporarily from doing something that he has not done before, the only
effect of the interlocutory injunction in the event of his succeeding at the
trial is to postpone the date at which he is able to embark on a course of
action which he has not previously found it necessary to undertake; whereas to
interrupt him in the conduct of an established enterprise would cause much
greater inconvenience to him since he would have to start again to establish it
in the event of his succeeding at the trial.
factors which he took into consideration, and in my view properly, were that Ethicon's
sutures XLG were not yet on the market; so that had no business which would be
brought to a stop by the injunction; no factories would be closed and no work
people would be thrown out of work. They held a dominant position in the United Kingdom market of absorbable surgical
sutures and adopted an aggressive sales policy." 35.Again in Wander Ltd.
v. Antox India P. Ltd.40 at page 731 to which decision one of us (M.N. Venkatachaliah,
J., as he then was) was a party it was stated thus: (SCC pp. 731- 32, para 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 injunction, it is stated:
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 36 (1902)
19 RPC 574 37 (1909) 26 RPC 89 3 8 (1902) 19 RPC 422 39 (1908) 25 RPC 245 40
1990 Supp SCC 726: 1991 SCC (Cri) 145 ((Mohan, J.) 465 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." 36.In this
case we will briefly analyse the materials on record as they now exist to
decide the plea of honest and concurrent user of acquiescence. The learned
Single Judge in paragraph 18 of his judgment at p. 1271 observes:
careful perusal of the above referred documents in particular along with the
other voluminous documents, clinch the fact that Smt Madhuri Mathur, the mother
of the deponents in the affidavits filed in support of the applications, as
well as the counter- affidavit, got the trade mark 'SUMEET' registered long
back as early as 1964 and that by the very strenuous efforts, hard work, skill,
exertion, devised so many designs and improved the appliances on par with the
modem technology and along with other members of the family, viz., husband,
sons and daughters were able to start different business concerns as
specifically pleaded in the affidavit and reply affidavit and by entering into
various agreements among themselves and by remaining as shareholders and
Directors in the companies engaged in manufacturing the various domestic
power-operated machines like mixies, washing machines and so on by using the
trade name and marketed SUMEET mixies in various categories and numbers. It has
to be seen that during the said sojourn, Thiru Ajay Prakash Mathur, the present
Managing Director of the first respondent was also the Director of the
plaintiff's company previously and still continuing as shareholder and that
during 1984, the first defendant company was incorporated as private limited
company under the Companies Act and in adopting the name 'SUMEET', his mother Smt
Madhuri Mathur as well as his father gave written consent to the authority
constituted under the Companies Act and that the several number of documents
produced on behalf of the applicant as well as the respondents, clearly
demonstrate the fact that Smt Madhuri Mathur's family including her husband,
daughter, two sons and the other family members were all directly concerned and
involved in all of their sister concerns including the first respondent company
and have been engaged in manufacturing the various types of Sumeet home
appliances and power operation machines and being marketed through a common
distributor, viz., M/s Reprographers and Engineers, Madras and all of their
accounts were being audited by one and the same auditors 466 concerned and that
even to provide the working capital to the first respondent company being run
by Thiru Ajay Prakash Mathur it appears that in the company of the first
respondent, both the mother and the father stood guarantee for a sum of Rs
2,00,00,000 in the Bank of Hyderabad. All virtually go to show that each and
everyone in the family of Smt Madhuri Mathur having involved in almost all the
companies incorporated in the Companies Act by entering into agreement or
otherwise and having the directorship and shares in almost all the companies
and deeply involved in manufacturing either the components, motors and other
accessories for their companies' products under the registered trade name and
mark, SUMEET and that accordingly, they are being marketed the same through the
company (sic common) distributor." 37.In paragraphs 19 and 20 of the
impugned judgment the learned Judge refers to the documents filed by the
respondent. None of these documents throw any light as to the manufacture. It
might be that the first respondent was marketing, having regard to the close
relationship as mother and son between the plaintiff and the first defendant.
This was why the Division Bench remarked: "There is some evidence showing
that the first defendant has been at least marketing domestic mixers allegedly
manufactured by Power Control and Appliances (Bombay) Limited since its incorporation. Whether it actually
manufactured before September 1991, however, is not possible to answer without
proper evidence as to the actual manufacturing of the kitchen mixers by the
first defendant." (emphasis supplied) 38.So, as such there is no evidence
of manufacture. As rightly contended by Mr Chidambaram, learned counsel,
marketing may not advance the case of the first defendant- respondent. We do
not think, as is urged by Mr Soli J.
learned counsel, either the criminal complaint or the averment in the plaint
would amount to implied consent, more so, when no oral evidence has been let
in, the parties having chosen to proceed on affidavit and counter-affidavit.
1984 the first defendant-company came to be incorporated. This was for the
purpose of diversifying the industrial activity of the family group for
manufacturing other technical appliances like washing machines, vacuum cleaners
etc. But there is nothing on record to show that the first defendant was
manufacturing earlier than the alleged violation of trade mark, copyright and
design, as stated in the plaint.
find considerable difficulty in appreciating the conclusion of the Division
Bench which had failed to note that the proprietor of the trade mark is Sumeet
Research and Holdings Ltd. Again, the complaint of infringement of trade mark
is not against Ajay Mathur but against Sumeet Machines Private Limited and M/s Sekar
is a settled principle of law relating to trade mark that there can be only one
mark, one source and one proprietor. It cannot have two origins. Where,
therefore, the first defendant-respondent has proclaimed himself as a 467 rival
of the plaintiffs and as joint owner it is impermissible in law. Even then. the
joint proprietors must use the trade mark jointly for the benefit of all. It
cannot be used in rivalry and in competition with each other.
plea of quasi-partnership was never urged in the pleading. As regardscopyright
there is no plea of assignment. The High Court had failed to notethe plea of
honest and concurrent user as stated in Section 12(3) of 1958 Act for securing the
concurrent registration is not a valid defence for the infringement of
copyright. For all these reasons we are unable to support the judgments of the
High Court under appeal. We reiterate that on the material on record as is
available at present the denial of injunction, once the infringement of trade
mark, copyright and design is established, cannot be supported. Pending suit,
there will be an injunction in favour of the appellants (the plaintiffs). All
the civil appeals will stand allowed. No cost.
request the High Court to try the suits with utmost expedition.
make it clear that whatever we have observed herein will have absolutely no
bearing in the trial of the suits which have to be decided independently on
their respective merits.