James A. Joblin and Company Ltd. vs B.K. Shaw Industries Private Ltd.

Masud, J.—This is an appeal against the order of S.P. Mitra, J. dated March 16, 1965, whereby the Plaintiff-Appellant''s application for injunction, restraining the Respondents from infringing the Appellant''s registered trade marks or from using the marks ''SKYREX'' in respect of glasswares manufactured by the Respondent, was dismissed. The Appellant is a manufacturer of international reputation in respect of domestic and industrial glasswares including laboratory and scientific glasswares which are being sold in India and in other parts of the world under the trade mark ''PYREX''. The Appellant since 1943 had duly got itself recorded in the register of the trade marks at the Trade Marks Registry, Bombay, as a registered proprietor of Certain trade marks particulars of which are set out in para 3 of the petition. According to the Appellant, it had since 1919 used the said mark ''PYREX'' on scientific, nautical, surveying and electrical apparatus and instruments, various kinds of glassware, cooking utensils and other goods. According to the Respondent, they independently started manufacturing glasswares for scientific laboratory and domestic use and on or about October 21, 1957, filed the application No. 181937 for the registration of the mark ''SKYREX'' in class 9 for certain specified items of scientific and laboratory glasswares and another application No. 181939 for the registration of the same mark in class 21 for certain specified items of domestic glasswares. The said application No. 181939 was advertised in the; trade mark journal and the Appellant thereafter lodged a notice of opposition No. 4085 on August 8, 1958 to the registration of the mark ''SKYREX''. The Respondents, however, did not proceed with the said applications. In the meantime, on June 19, 1958, the Respondent No. 1 made two applications to the Registrar for registration of the trade mark ''SKYREX'', namely, application No. 185547 in respect of "apparatus, instruments and equipments included in class 9 all for scientific purposes and for use in laboratories" and application No. 185548 in respect of "glasswares and domestic wares included in class 21". The mark ''SKYREX'' was proposed to be used by the Respondent No. 1 on June 19, 1958. The said two applications were duly advertised in the trade marks journal and the Appellant opposed the registration of the said applications. The Deputy Registrar of Trade Marks, Calcutta, after hearing both parties refused the said applications by his order dated July 7, 1964. Inspite of the said order dated July 7, 1964, the Respondents continued to sell their goods under the mark ''SKYREX''. Accordingly, the Appellant, on August 29, 1964, instituted this suit against the Respondents or, inter alia, a perpetual injunction restraining the Respondents and their agents from infringing the Appellant''s registered trade marks or from using the mark ''SKYREX'' and from passing off or from assisting others to pass off the Respondents'' goods for the goods of the Appellant and in particular, from manufacturing (sic), selling, any goods by or under the mark ''SKYREX''. The Appellant, thereafter, on August 31, 1964, moved the present application, before the Interlocutory Court for an injunction restraining them and their servants and agents from using the mark ''SKYREX'' on their goods or from manufacturing, stocking, selling or'' advertising for sale any goods by or under the mark ''SKYREX''. On or about March 16, 1965, S.P. Mitra, J. after hearing both parties dismissed the said application and it was against that order that the present appeal was preferred.

Mr. Sankar Banerjee, Learned Counsel for the Appellants, has contended before us that the Appellant made out a prima facie case in support of its prayer for injunction and as such, the learned Judge was wrong in dismissing his client''s application. He urged the following grounds in support of his contention:

(a) Admittedly, the Appellant company is a manufacturing concern of international reputation in respect of domestic and industrial glasswares and has been manufacturing and selling them long before the Respondent commenced their business. They are the proprietors of the various trade marks registrations in India since 1943 and as such, they have got the absolute legal right to use their goods under their trade mark, ''PYREX''.

(b) The Respondent No. 1 on October 21, 1957, made an application for registration of the trade mark ''SKYREX'' under mark No. 181939 in respect of "glasswares and domestic wares included in class 21 particularly tumbler glasses, wine glasses, etc." The said application in due course was advertised in the trade marks journal and the Appellant forthwith lodged a notice of opposition No. 4085 on August 8, 1958 to the registration of their mark ''SKYREX''. As a result of such opposition the Respondents did not choose to pursue the matter and the application was consequently treated by the Registrar as abandoned.

(c) On June 19, 1958, the Respondent made applications Nos. 185547 and 185548 before the Registrar for registration of the trade mark ''SKYREX'' in respect of their goods. The said applications were opposed by the Appellant and the Deputy Registrar of Trade Marks, Calcutta, by order dated July 7, 1964, refused the said applications.

(d) The Deputy Registrar is the statutory authority who has finally decided against the Respondent in disallowing them to sell their goods under the mark ''SKYREX''. The Appellant has got the legal right under the Trade Marks Act, 1946, to prevent other parties from interfering with his legal right to do this business under their trade mark ''PYREX'' until the said order of the Registrar is set aside by a competent Court.

Mr. Banerjee has submitted that the learned Judge should not have rejected "his client''s application merely on the ground of delay in moving such application Mr. Banerjee has admitted that the Appellant had knowledge of the fact that the Respondents were selling goods under their trade name ''SKYREX'' in or about 1960, but his client at no stage acquiesced in such invasion of its legal right inasmuch as the Appellant had been opposing the Respondent''s applications for registration before the Deputy Registrar. According to him, it was not desirable that his client should have rushed to the Court in or about 1960 when already proceeding before the statutory authority was going on in" respect of the Appellant''s said legal right. His client waited for the decision of the Registrar and it was only when the Respondent No. 1, in spite of the said decision, refused to stop manufacture and sale of its goods under the trade mark ''SKYREX'', the Appellant had to institute the present suit and asked for injunction. The delay, if at all, was legitimately explained and the learned Judge should have accepted the said explanation. Mr. Banerjee has also added that the learned Judge should not have dismissed the application on the ground of balance of convenience. According to him, the prohibition of importation of the Appellant''s goods in respect of domestic glasswares and also the suspension of the import license thereof should not have weighed with the learned Judge in dealing with the said application. The Appellant, he submitted, has an absolute and unqualified legal right and to substantiate such legal right his client had made out a prima facie case and therefore, his client should have been protected by an order for injunction.

There is great force in Mr. Banerjee''s contention. But it should be remembered that in deciding the Appellant''s said interlocutory application we are not concerned with the merits of the Appellant''s legal right. We are not deciding the suit nor are we at this stage in a position to evaluate the legality of the rights of the parties. It is true that the prima facie legal right of the party asking for injunction is a relevant fact to be considered in granting an injunction. But that fact by itself cannot be the determining factor in granting this relief. Injunction is an equitable remedy and as such, the Court has got to exercise a judicial discretion in granting such relief after consideration of the facts and circumstances of each case. Apart from the question of respective legal rights of the parties, various other considerations are taken into account when an equitable relief in the nature of injunction is granted. The following principles are well-established although their applications may differ in different situations:

(a) The party claiming for injunction must make out a prima facie case for his legal right and also its invasion or threatened invasion by the contending to party.

(b) The party praying for injunction must prove that he, would suffer irreparable loss during the pendency of the suit if the injunction is not granted.

(c) The party aggrieved with the invasion of right cannot be granted injunction unless he seeks the intervention of the Court without delay or unless the delay, if any, is reasonably explained.

(d) Injunction when asked for as an interlocutory relief during the pendency of a suit must consider the balance of convenience between the parties.

In applying these principles to the facts and circumstances of the present case, we do not think that this is a proper case where injunction should be granted. The grounds for holding this view may be set out as follows:

(a) In para. 23 of the petition the Appellant has stated that the mark ''SKYREX'' was proposed to be used by the Respondent No. 1 on July 19, 1958. According to Ex. B to the petition, Mrs. Ila Roychowdhury in her affidavit dated December 5, 1960, stated the circumstances under which a glass bowl bearing the Respondents'' trade mark ''SKYREX'' was passed on to her as the Appellant''s goods. Thus, the Appellant knew very well that the Respondent was selling their goods under their mark ''SKYREX'' prior to December, 1960 and the Appellant did not make any attempt to restrain the Respondent from invading Appellant''s rights for about four years. It is true that the Appellant was not waiving his right nor acquiescing in the invasion of his rights because he was consistently opposing the Respondent''s right to manufacture and sell those goods under their trade mark ''SKYREX'' before the Registrar from the very beginning. But even then by not coming to the Court in or about 1960, the Appellant has virtually allowed the Respondents to sell its goods in the market. The loss of the Appellant if at all, has been suffered by it on account of its own inaction. Further, there is nothing to show that the Appellant has actually suffered any loss since the alleged infringement of Appellant''s trade mark.

(b) The explanation put forward by the Appellant in not instituting the suit for about four years cannot be accepted because there is no statutory bar under the Trade Marks Act or any other Act. Reliance may be made on the'' following observations in Kerly on "Trade Marks" 8th ed., p. 297:

But delay may affect the nature of the relief granted. It may cause the Court to refuse the ordinary interlocutory injunction, either on terms of the Defendant keeping, an account, or absolutely, or to direct an account of profits in lieu of damages or to restrict such account to profits made since the beginning of the action.

Further, if the Appellant''s explanation of the delay to the effect that the suit was not instituted and injunction was not sought for until 1964 because of the pending dispute before the Registrar, the Appellant might well be asked to wait until the pending appeal from the Registrar''s order dated July 7, 1964, is decided. Admittedly the appeal against the said order of the Deputy Registrar is still pending in this Court.

(c) The Appellant''s loss far from being irreparable if the injunction is not granted seem to be at the present moment more hypothetical than substantial. In para. 17 of the affidavit-in-reply Mr. Ojha, a constituted attorney of the Appellant, has stated that the goods of the Petitioner are manufactured abroad and they are sold throughout the world including India. He has also deposed in the same paragraph that the products of the Appellant are imported under import licence. In para. 10 of the affidavit-in-opposition Mr. Pannalal Shaw on behalf of the Respondent No. 1 has referred to the affidavit of one Harold Nicolas Robinson, as advertising agent of the Appellant, affirmed on December 12, 1960, where he admitted that since 1957 the trade mark ''PYREX'' in respect of domestic glasswares had not been advertised on account of Government of India''s ban oh import of domestic glasswares. It appears that the only goods over which the Appellant is making business in India are in respect of scientific, laboratory and industrial glasswares, but even those goods are also subjected to import restrictions. Further, the goods belonging to the Appellant are manufactured abroad and their price is much higher than the locally manufactured goods of the Respondent. The Appellant''s goods are of much superior quality and fineness compared to the goods manufactured by the Respondent No. 1. The class of customers who are used to buy the Appellant''s goods are different from the class of buyers of the Respondent''s goods. The very fact that the import licence is necessary to bring the Appellant''s goods makes the goods of the Appellant more expensive and as such, the Appellant''s goods would be distinguishable by the customers from those of the Respondent and the element of deception or confusion in passing off one''s goods as others is absent. Accordingly, there is very little chance of the Appellant suffering substantial loss if the Respondents are allowed to sell their goods in the market under the trade mark ''SKYREX''. The Appellant has set out in para. 7 of the petition particulars of the sales of his goods bearing the mark ''PYREX'' in India from 1952 upto July 12, 1964. Admittedly, the Respondent No. 1 was selling their goods from the year 1960 under their trade mark ''SKYREX''. But the total sales of the Appellant''s goods from the year 1960 to 1964 show that as a result of the sale of the Respondent''s goods in the market, the Appellant''s sales far from being diminished were substantially increased. This also shows that if the injunction is not granted, the Appellant would not be suffering irreparable loss.

(d) In para. 22 of the affidavit-in-opposition, Pannalal Shaw on

behalf of Respondent No. 1 has mentioned the following particulars of sales of ''SKYREX'' glasswares:

Table missing in file No. WB660301

This statistics also shows that the Respondents during 1959-64 were making substantial business and as such, built up a goodwill and reputation connected with the trade mark ''SKYREX''. An injunction, if granted in favour of the Appellant restraining the Respondents from selling the ''SKYREX'' goods might, on the contrary, cause irreparable loss to the Respondent No. 1 and it is not desirable that a business which was allowed to be done by the Appellant itself from 1960 to 1964 should be made to suffer by such an injunction order. On the contrary, if the Appellant could have waited for four years, it can be legitimately said that, the Appellant should wait until his appeal against the said order dated July 7, 1964, is disposed of. Further, if it is not granted, the Appellant could continue to do its business as it was going in the past without suffering actual loss. The learned Judge was right when he directed to affix on each article sold by the Respondents bearing the mark ''SKYREX'' a label of white paper with the following words printed on it "Manufactured in India by B.K. Shaw Industries Private Ltd." Further, the learned Judge''s order directing the Respondents to keep separate accounts of all sales, of their products bearing the mark ''SKYREX'' and to send the accounts once in every quarter to the Appellant''s solicitor with liberty to the Appellant to inspect the accounts are sufficient safeguards for the Appellant against possible losses of the Appellant''s business in India.

Mr. Banerjee has relied upon the judgment of my learned brother in John Wyeth and Bros v. Adcco Ltd. (1959) 65 C.W.N. 746 , where injunction was granted by him in favour of the holder of a registered trade mark, ''Aludrox'', in respect of a medicinal preparation against another person selling similar goods under the trade name of ''Aludrox''. In that case the delay in instituting the suit for about 12 years was not held as a bar to the grant of an injunction in favour of the Plaintiff. As stated earlier, the grant of an equitable relief like injunction would depend on the facts and the circumstances of each case. In that case there was evidence that goods worth Rs. 200 were sold in 3 months from June 1948 to September 1948 and the suit was filed in 1959. But there was nothing to show the extent of business which the Respondent was doing between 1948 and 1959; or, in other words, the learned Judge was not convinced that the Defendant''s product, ''Al Hydrox'' has been in the market for several years past, prior to the institution of suit in 1959. Further, the facts explaining the delay as set out in the petition there were accepted by the Judge. The following observations in the concluding paragraph of the judgment at p. 753 indicate the ratio decidendi of the case:

Inspite of the close phonetic similarity of the words if the Respondent had given any evidence of the fact worth considering that it had been manufacturing goods and selling the same under the name ''Al Hydrox'' from 1947 or 1948, I would not have granted any injunction pending the hearing of the suit, but, if at all, only directed the Respondent to maintain an account of its sales pending the hearing. It is surprising that although the Respondent claims to have been manufacturing and selling the goods for the last 12 years it has made no attempt to bring before the Court any evidence to show the extent of its sales during these years.

My learned brother with Arun Kumar Mukherjea, J. in another judgment, Bostik Ltd. v. Chemisol Industries Unreported decision of Mitter and A.R. Mukherjea, JJ., dated December 1, 1965 allowed an appeal and granted an injunction in a similar case, but there also the following observations were made by my learned brother:

If the first Defendant could have satisfied us by the production of material which should have been at his command, that he had been selling adhesives under the mark ''Bostik'' for a number of years before 1963 in such circumstances as to lead to an inference that the Appellant should have known of such sales if they had been alert, I would have hesitated to grant an injunction in their favour.

In the instant case, we are satisfied, as stated earlier, that the Respondent No. 1 was doing good business between 1960 and 1964 and the Appellant inspite of that knowledge allowed the Respondent to establish its goodwill and develop the trade.

Lastly, Mr. Banerjee has drawn our attention to Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) 2 S.C.A. 52, where Ayyangar, J. has distinguished the legal effect of evidence in an action for infringement of trade mark from that of evidence in an action for ''passing off''. But it is not necessary to discuss the principles laid down in that case, because that decision was an appeal against the decree and as such, a decision on the merits of the suit itself.

For all these reasons stated above, the Court below, in our opinion, was right in dismissing the Appellant''s application for injunction. The appeal is therefore dismissed with costs.

Certified for two counsel.

G.K. Mitter, J.

I agree.