- Bookmark
- Share
- CaseIQ
Synthetic Moulders Ltd. v. Semperit Aktiengesellschaft
Factual and Procedural Background
The respondent plaintiff holds the registered trademark ‘MATADOR’ in India for combs manufactured in Austria. The appellant began using the same mark for combs manufactured by it from 1966 onwards. The respondent challenged this use and obtained a temporary injunction against the appellant. The appellant appealed against the grant of this temporary injunction. The suit for permanent injunction remains pending for decision on merits.
Legal Issues Presented
- Whether the respondent plaintiff has the exclusive right under Section 28 of the Trade and Merchandise Marks Act, 1958, to use the registered trademark ‘MATADOR’ for combs in India.
- Whether the grant of temporary injunction in favor of the respondent was justified, considering the principles governing injunctions under Order 39 of the Code of Civil Procedure and the equitable considerations involved.
- Whether the appellant’s use of the trademark ‘MATADOR’ for combs amounts to infringement justifying injunctive relief despite the respondent’s delay in asserting its rights and the ban on import of the respondent’s combs in India.
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Kerley on Trade Marks and Trade Names, 10th Edition, paragraph 15.65 | Determination of balance of convenience in granting temporary injunction by weighing relative damages if injunction is granted and plaintiff ultimately fails. | The Court applied this principle to conclude that the damage to the appellant could be total, whereas no damage would be caused to the respondent because its combs were banned from import in India since 1954. |
Court's Reasoning and Analysis
The Court identified that while the respondent holds a registered trademark under Section 28 of the Trade and Merchandise Marks Act, the grant of temporary injunction is an equitable remedy governed by Order 39 of the Code of Civil Procedure, not solely by the trade mark statute. The Court emphasized that proving a legal right does not automatically entitle a party to an injunction.
It recognized the respondent’s claim that the appellant’s use of ‘MATADOR’ was unfair and intended to capitalize on goodwill. However, the Court noted several factors against granting the injunction:
- The balance of convenience favored the appellant since the damage to it would be total if injunction were granted, whereas the respondent would suffer no damage due to the import ban on its combs.
- The nature of the product—combs of common usage and small value—means purchasers rely more on the feel and look of the product rather than the trademark name, reducing the likelihood of confusion or deception.
- The respondent was almost unknown in India and had delayed asserting its rights for about twelve years after the appellant began using the mark, raising questions about laches and delay.
Accordingly, the Court held that these equitable considerations were not adequately weighed by the Single Judge in granting the temporary injunction. The Court clarified that these observations pertain only to the temporary injunction and do not affect the pending suit on merits for permanent injunction.
Holding and Implications
The appeal is allowed and the temporary injunction granted by the learned Single Judge is set aside.
The direct effect is that the appellant is permitted to continue using the trademark ‘MATADOR’ for its combs pending final adjudication of the suit. No order as to costs was made. The Court’s decision does not establish new precedent on permanent injunctions or trademark rights but restricts the grant of temporary injunctions to cases where equitable considerations fully support such relief.
V.S Deshpande, C.J:— Counsel had requested that the whole appeal itself may be heard. We accordingly heard it. After having heard the learned counsel we think the real question at issue is this. Under section 28 of the trade & merchandise marks act, 1958, the respondent plaintiff has the exclusive right to use the registered trade mark ‘MATADOR’ in respect of the combs manufactured by it in Austria inasmuch as the said trade mark has been registered in India. The grant of temporary injunction is governed by the well-known considerations of prima facie case, irreparable injury and balance of convenience. A prima facie case is made out in respect of a legal right. But injunction is an equitable remedy. It need not follow invariably on the proof of legal right. Had that been so the whole distinction between law and equity which is now codified in the Indian statutes would disappear. The grant of temporary injunction has to be in accordance with Order 39 of the Code of Civil Procedure and not according to the provisions of the Trade Mark Act. Similarly, the grant of permanent injunction has to be according to the provisions of the Specific Relief Act
2. We sympathise with the case of the respondent that it was unfair on the part of the appellant to have chosen the word ‘MATADOR’ for the combs manufactured by the appellant and thus there may have been intention on the part of the appellant to take advantage of the goodwill which existed in favour of the combs manufactured by the respondent. Unfortunately, the right established under Section 28 and the use of the very word ‘MATADOR’ by the appellant for his combs when the same word had been registered as trade mark in favour of the plaintiff-respondent, are not sufficient for the grant of temporary injunction in the present case.
3. Firstly, according to the statement of law in Kerley on Trade Marks and Trade Names, 10th Edition, paragraph 15.65 the balance of convenience in granting temporary injunction is to be determined by relative amounts of damage which is likely to result after the injunction is granted and the plaintiff ultimately fails. The damage which would be caused to the appellant could be total.
4. On the contrary no damage would be caused to the respondent-plaintiff for the simple reason that from 1954 onwards the import of the plaintiff-respondent's combs has been banned in India. The legal injury by the infringement of the trade mark of the respondent is a question of law while the amount of damage that can be caused to the respondent is a question of equity. The strength of the plaintiff's case on the former is not reflected in the latter.
5. Secondly the nature of the article is such that it is of common use by almost every person in this country. For such a common article of small value what one sees is the article itself and the feel of the article in combing the hair. It is only the look and the feel and not the name of the plaintiff's article ‘MATADOR’ which make the purchasers wish to buy a comb. The respondent-plaintiff is almost totally unknown in India and one will be surprised that a substantial number of persons in this country could be shown to go to the market to buy the comb made by the plaintiff-respondent. If an article of special nature and of higher value made by a renowned manufacturer were concerned, then it would be possible to hold what the purchasers in buying the article made by the appellant would be misled into thinking that they were purchasing the article made by such renowned maker. In view of the nature of this particular article, no such deception can be envisaged.
6. Lastly, the appellant has been making this article from 1966 onwards while the respondent has come to challenge this use only in 1978. It is doubtful if the respondent would be able to explain satisfactorily the very great delay on its part in vindicating its right.
7. We are of the view that the above provisions were not given adequate weight in the grant of the temporary injunction. We further make it quite clear that the suit is pending for decision on merits and none of the above observations regarding the grant of temporary injunction are to be taken into account in deciding the question of the grant of permanent injunction to the plaintiff-respondent in the pending suit.
8. For the above reasons the appeal is allowed and the temporary injunction granted by the learned Single Judge is set aside. No order for costs.
Alert