One of the well-known principles of equity is -Law supports the vigilant and not the indolent. How important is vigilance on the part of the proprietor of an infringed trademark in getting relief in the action for infringement/ passing off? This article is an analysis of the recent case laws (limited to the year 2005) on extent and the circumstances under which the delay would be fatal to an action for infringement or passing off under the Act. In an action for infringement, it is commonplace for the defendants to plead delay of the part of the plaintiff in bringing the action as a ground for rejecting the suit.
In Novartis AG V. Wanbury Ltd & Anr. 2005 (31) PTC 75(Del), Novartis brought a suit of infringement against Wanbury for manufacturing and selling its cough syrup under the brand name “CORIMINIC-X” on the ground that is was deceptively similar to its brand name “TRAMINIC” and “TRIOMINIC”. One of the defences adopted by Wanbury was that there was delay on the part of Novartis in filing a suit for infringement. Delhi High Court while considering question of delay held:
“Mere delay in bringing an action for infringement of a trademark or for passing off is no ground for refusing an injunction. The grant of injunction becomes necessary if it prima facie appears that the adoption of the mark was dishonest”
Also, in such cases it must be shown that the plaintiff was aware of the existence of the mark of the defendant. If under the circumstances of the case, there were no possibility of the plaintiff knowing the existence of the mark, delay would not prevent him from getting the relief sought.
Sterling’s Mac Fast Food V. Mc Donald’s Corporation, U.S.A. & Anr. 2005(30) PTC 417. The instant case arose as an appeal against the interim injunction granted by the trial Court, restraining Sterling Mac Fast Food from using the Word “MAC” in their trading style. Mc Donald filed a suit of infringement seeking permanent injunction against Sterling’s Mac Fast Food on the ground that the latter was using the word “MAC” as a part of its trading style. In year 1993 when Mc Donald’s came to know about the use of the mark by Sterling, it sent a legal notice asking the latter to desist from using the word “MAC”. In reply, Sterling stated that their trading style is ‘Sterling Mac Fast Food’ that is clearly displayed on all the outlets. In order to avoid legal dispute, Mac Donald’s requested Sterling to use the word Sterling’s in Bold font similar to the other words “STERLING’S MAC FAST FOOD” which was turned down by the latter.
In the suit the main argument forwarded by the sterling was that Mc Donald’s has acquiesced to the use of the mark “MAC” as they have been carrying on the business in their trading style since 1982 but the legal notice was given to them in the year 1993 and the suit was instituted in the year 1996.
The Karnataka High Court was of the opinion that by keeping quite for such a long time till Sterling had established his business, Mc Donald’s had acquiesced to the use of the word “MAC” by the former and therefore are not entitled to interim injunction. Also, Mac Donald’s could not explain the inordinate delay in filing the suit of infringement. According to the Court if Mac Donald’s could wait for 20 years before filing the suit, it could not be said that irreparable loss would be caused to it, if permanent injunction were not granted. The order of the trial court granting interim injunction was set aside.
Franco Indian Research Pvt. Ltd V. Unichem Laboratories 2005 (30) PTC (BOM) In the instant case, Franco filed a notice of motion to restrain Unichem from using the word mark ‘EVACAL’ as it is similar to its registered trademark ‘EVACUOL’. Franco claimed to have been using the mark ‘EVACUOL’ since the year 1976. In 2002 Franco came to know about the use of the impugned mark ‘EVACAL’ by Unichem in respect of its calcium tablets. Thereafter in November 2002, Franco called upon Unichem to withdraw the impugned mark. After a reminder, Franco received a reply from Unichem in February 2003 stating that the use of impugned mark by them does not infringe Franco’s trademark. Subsequently, Franco brought out the current notice against Unichem in February 2004.
Unichem opposed the motion interalia on the ground that Franco had received their reply in 2003 but brought out the instant motion in the year 2004 and thus have acquiesced to the use of the mark ‘EVACAL’ by Unichem. Since there was delay of the part of Franco in bringing the action, they should be denied the relief of interim injunction. After considering the arguments and the evidence adduced, the Bombay High Court Held:
“ It is clear that after giving notice to the defendants, if there is some delay on the part of the plaintiffs, it does not create any equity in favour of defendants’
Inspite of the delay as the Franco has established a strong prima facie case in its favour, the Court granted temporary injunction against Unichem Laboratories
From the above-discussed cases following propositions emerge:
- The Courts may refuse to grant interlocutory relief in case the plaintiff fails to provide a satisfactory explanation.
- Where there is a dishonest adoption of the mark by the infringer, mere delay would not prevent the plaintiff from getting the relief under law.
- The plaintiff can get over the objection on the ground of delay by establishing a prima facie case in his case.
- Knowledge of the existence of an infringing mark on the part of the plaintiff is an important factor in cases of delay. In order to determine the knowledge on the part of the plaintiff, regard shall be given to the publicity given by the infringer to the impugned mark
Comments and Conclusions
It is advisable for proprietors of trademark to take prompt action against any instances of infringement of their mark. It is not necessary to file an action for infringement immediately but notice should be served on the infringer at the earliest. Where the infringer refuses to comply with the instructions of the notice, action for infringement should be taken promptly. Delay of 4-5 months may defeat claim for interim relief.
© Lex Orbis 2005
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.