2023 (9) TMI 707 - SC - Indian Laws

infringement of copyright and passing-off - Claiming permanent injunction restraining the respondent from infringing copyright in its artistic label - prayer for a decree of injunction restraining the respondent from manufacturing, selling, offering for sale, advertising, or otherwise dealing in country liquor having the appellant s trade mark label - HELD THAT - For establishing goodwill of the product, it was necessary for the appellant to prove not only the figures of sale of the product but also the expenditure incurred on promotion and advertisement of the product. Prima facie, there is no evidence on this aspect. While deciding an application for a temporary injunction in a suit for passing-off action, in a given case, the statements of accounts signed by the Chartered Accountant of the plaintiff indicating the expenses incurred on advertisement and promotion and figures of sales may constitute a material which can be considered for examining whether a prima facie case was made out by the appellant-plaintiff. However, at the time of the final hearing of the suit, the figures must be proved in a manner known to law - Even assuming that the allegation of deceptive similarity in the labels used by the respondent was established by the appellant, one of the three elements which the appellant was required to prove, has not been proved. Therefore, we find that the High Court was justified in staying that particular part of the decree of the Trial Court by which injunction was granted for the action of passing-off. Infringement of copyright - HELD THAT - In the facts of the case, it appears that when permission was sought by the respondent to use the impugned labels, the appellant raised objections in writing to the grant of permission to the respondent to use the said labels. It is not as if those objections were not pursued, but there was a positive act on the part of the appellant of withdrawing the said objections by submitting the letters of withdrawal in which, admittedly, it was not mentioned that the withdrawal was conditional. This important factual aspect supports the order of stay granted by the High Court as regards the decree in respect of the infringement of copyright. The objections were withdrawn on 25th April 2016 and the suit was filed on 4th October 2017. A prima facie case of acquiescence by the appellant was made out by the respondent. There is a huge pendency of suits in the Trial Courts in the State of Maharashtra. If the members of the Bar do not cooperate with the Trial Courts, it will be very difficult for our Courts to deal with the huge arrears. While a trial is being conducted, the members of the Bar are expected to act as officers of the Court. They are expected to conduct themselves in a reasonable and fair manner. The members of the Bar must remember that fairness is a hallmark of great advocacy. If the advocates start objecting to every question asked in the cross-examination, the trial cannot go on smoothly. The trial gets delayed. In the facts of the case, looking at the persistent objections raised by the learned advocate, the Court was required to record a substantial part of the cross-examination in question and answer form which consumed a lot of time of the Court. The High Court was justified in granting the order of stay pending the final disposal of the appeal. The appeal is, accordingly, dismissed.

Summary

Issues Involved:
1. Infringement of Copyright
2. Passing Off
3. Acquiescence

Summary:

Infringement of Copyright:
The appellant, engaged in selling country liquor under the label "Tango Punch," claimed that the respondent's label "Two Punch Premium" infringed its copyright. The Trial Court decreed in favor of the appellant, granting a permanent injunction against the respondent for infringing the appellant's artistic labels. However, the High Court stayed the execution of this decree pending appeal. The Supreme Court noted that acquiescence is a valid defense in copyright infringement cases. The appellant had withdrawn objections to the respondent's label approval, which the Court interpreted as a prima facie case of acquiescence, justifying the High Court's stay order.

Passing Off:
The appellant also sought to restrain the respondent from passing off its liquor as that of the appellant's by using deceptively similar labels. The Trial Court found in favor of the appellant, but the High Court stayed the execution of this part of the decree. The Supreme Court emphasized that for a passing-off action, the appellant must prove its reputation or goodwill through sales and advertisement figures. The appellant failed to provide sufficient evidence, such as verified sales figures and marketing expenses. Consequently, the High Court's decision to stay the injunction on passing-off grounds was upheld.

Acquiescence:
The respondent argued that the appellant's delay in filing the suit and withdrawal of objections to the respondent's label approval amounted to acquiescence. The Supreme Court agreed, noting that the appellant's conduct of withdrawing objections without explicitly stating conditions supported the High Court's stay of the decree.

Conclusion:
The Supreme Court upheld the High Court's interim order staying the execution of the Trial Court's decree until the final disposal of the appeal. The appeal was dismissed, and the High Court was instructed to decide the pending appeal based on its own merits, without being influenced by the observations made in the interim and Supreme Court judgments. No order as to costs was made.