1994 (2) TMI 297 - SC - Companies Law

Infringement of the copyright Violation of the registered trade mark - Held that - It 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 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. The plea of quasi-partnership was never urged in the pleading. As regards copyright there is no plea of assignment. The High Court had failed to note the plea of honest and concurrent user as stated in Section 12(3) of 1958 Act for securing the concurrent registration is not a valid defense 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).

The Supreme Court of India delivered a judgment concerning a dispute over the infringement of copyright, trademark, and design registration involving the plaintiffs and the defendants. The core issues revolved around whether the defendants had infringed upon the plaintiffs' rights and whether the plaintiffs were entitled to interim injunctions to prevent further alleged infringements.

Issues Presented and Considered:

The Court considered several key legal questions:

Whether the defendants infringed the plaintiffs' copyright, trademark, and design registration.
Whether the plaintiffs were entitled to interim injunctions despite the defendants' claims of honest and concurrent use and acquiescence by the plaintiffs.
Whether the defendants had a valid defense under the doctrine of acquiescence or honest and concurrent use.

Issue-wise Detailed Analysis:

1. Infringement of Copyright, Trademark, and Design:

Legal Framework: The plaintiffs claimed infringement under the Copyright Act, 1957, and the Trade Marks Act, 1958. The plaintiffs argued that the defendants used their registered trademark 'Sumeet' and copied their design and trade literature without authorization.
Court's Interpretation: The Court acknowledged that the plaintiffs held valid registrations for their trademark and design and had copyright protection for their trade literature. The defendants' use of identical or similar marks and designs constituted infringement.
Application of Law: The Court applied the legal principles of trademark and copyright infringement, concluding that the defendants' actions amounted to unauthorized use of the plaintiffs' protected rights.
Conclusion: The Court found that the plaintiffs had established a prima facie case of infringement of their trademark, copyright, and design registration.

2. Doctrine of Acquiescence and Honest and Concurrent Use:

Legal Framework: The defendants argued that the plaintiffs had acquiesced to their use of the trademark and design, and that they were honest and concurrent users under Section 30(1)(b) of the Trade Marks Act, 1958.
Court's Interpretation: The Court examined the doctrine of acquiescence, which involves a party knowingly allowing another to use their rights without objection, thereby losing the right to claim infringement later.
Key Evidence and Findings: The Court noted that the defendants had been using the trademark 'Sumeet' with the plaintiffs' knowledge and without objection for a considerable time. However, the evidence did not conclusively establish that the plaintiffs had acquiesced to the defendants' use.
Application of Law: The Court held that mere delay or inaction by the plaintiffs did not amount to acquiescence, as there was no evidence of the plaintiffs' consent to the defendants' use of the trademark and design.
Conclusion: The Court rejected the defendants' defense of acquiescence and honest and concurrent use, stating that these defenses were not applicable in the context of copyright infringement.

Significant Holdings:

The Court emphasized that there can be only one source and proprietor for a trademark, and the defendants' claim of joint ownership was impermissible.
The Court reiterated that the plea of honest and concurrent use under Section 12(3) of the Trade Marks Act, 1958, is not a valid defense for copyright infringement.
The Court held that the denial of an injunction, despite the established infringement, was not justified. The plaintiffs were entitled to an interim injunction pending the resolution of the suit.
Pending suit, the Court granted an injunction in favor of the plaintiffs, preventing the defendants from using the disputed trademark, copyright, and design.

The Supreme Court allowed the civil appeals, set aside the judgments of the High Court, and requested the High Court to expedite the trial of the suits. The Court clarified that its observations in this judgment would not affect the merits of the case during the trial.

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