India: Denial Of Equitable Relief

Introduction

The black letter of the law was not always regarded as the delivery of justice; there were numerous occasions wherein justice was denied due to the technicality of law and hence a new form of justice delivery came into existence which was more focused on equity rather than the codified law.

The principle of equity was developed in the thirteenth and fourteenth century, when the judges of the English courts were developing the common law system which was not based upon the codified law but based upon the principles of laws developed in the precedent cases. The pleadings in these cases required so many intricacies that it was not easy for a common man to qualify his case fit for adjudication. Their valid complaints were rejected due to failure to comply with technicality of pleadings and hence finally the aggrieved person had to move to King regarding the redressal of their cause. Taking into account the problem, the King referred these matters to a Royal Court, known as Chancery which had the power to settle the dispute and order relief according to its conscience.

Equitable relief and its denial:

Equity means the power to do justice based upon discretion of the adjudicator and it could be relief based upon the particular circumstances of the matter in hand. Equitable reliefs are Court ordered actions directing any person to do or refrain from doing anything, in order to provide relief to a party in an action brought by him against a person.

A person approaching a court seeking relief in his matter is bound to specify all the facts related to the case truthfully and any hindrance on his part would likely take away his right of seeking relief. Any dishonesty on the part of seeker of justice would make his case weaker and will be considered by the court against him while delivering the justice. In cases of trademark infringement, equitable relief is sought from the court such as injunction, account of profits etc. Hence it is required that the plaintiff should present his case as honestly as possible and should not make court look into the things which are either not substantial to the cause nor they are specifically be taken as suppression of material facts.

Equity is said to work on the conscience of the parties to a matter and either party would be liable for the consequences if their conscience is not clear. The application of equity in the result is bound to happen in a case where applicable law is certain about a particular situation but the circumstances and the material fact are such that equity overtakes the black letter of law due to certain act of the either party. The Court while applying equity is bound to appropriate the law in such a manner that it should not be taken against the applicable law but can be seen as the discretion of the Court in light of a particular situation.

In order to get equitable relief, a party is required to come with clean hands before the Court and hence the Doctrine of Equitable relief provides the relief to a party in dispute who come with clear conscience and has not hidden any material fact from the Court.

Types of equitable relief in trademark cases:

The equitable relief in case of Trademark Infringement can be of any of the below:

  • Injunction
  • Specific performance
  • Account of profits
  • Rectification
  • Declaratory relief
  • Damages

In order to demand equitable relief from a Court in an infringement case, the plaintiff is required to be honest about the facts of the case and should make sure that anything which is of the tiniest of importance should be brought to the notice of the Court. Failure to do so would not only cause his case becoming weak but moreover it will also lead to the denial of relief due to this reason. There are numerous occasions where Courts denied the relief to the plaintiff even though the plaintiff was sure regarding the codified law being on his side.

In Warner Bros. Entertainment Inc. & Anr Vs. Harinder Kohli & Others (155 (2008) DLT 56), the Honorable High Court of Delhi, held that "It is the settled position both in law and in equity that a deliberate suppression of material facts, viewed singularly or coupled with blatantly false assertions, so far as the grant of equitable relief of injunction is concerned, is fatal. The plaintiffs in the instant action have attempted to lightly brush off their intentional non-disclosure by feigning oversight, contending that they had nothing to gain from the aforesaid non-disclosure. What has been lost sight of is that it is a cardinal principle of law that a person who seeks the equitable relief of injunction must come to the Court with clean hands."

While discussing the principle of equitable relief in case of Paramount Surgimed Limited Vs Paramount Bed India Private Limited & Ors (CS(COMM) 222/2017), the Honorable High Court of Delhi, held that

"the submission of the plaintiff that it was only in February, 2017 that he learnt about the activities of the defendant is clearly a wrong statement and the plaintiff is not entitled to any equitable relief from this Court................................ the newspaper articles as also the advertisement campaign of the defendants shows that he has been recognized as a name as way back as in the year 2007 and the plaintiff was well aware of his presence and this is clear from the fact that he has filed his opposition to the application seeking registration of the defendant as way back as in the year 2009; the suit filed in 2017 averring that it was only in February, 2017 that the plaintiff learnt about the presence of the defendant in the market is a clear case of suppression of material facts for which the plaintiff is not entitled to any equitable relief."

An equitable relief is the byproduct of the honest and bonafide submission and if a party is not honest while making submission then he should be more worthy of rejection rather than the relief. In this case, even though the Trademark Law provides that a relief should be provided to the registered proprietor against anyone who is using a similar trademark but the fact remains that although the registration of the plaintiff's trademark is valid but the material fact regarding the knowledge of the Defendant mark, was concealed by the Plaintiff and applying the doctrine of equitable relief, the Honorable High Court held that concealment of fact regarding the knowledge about the Defendant's trademark is against the equity hence the Plaintiff is not liable to get the equitable relief from this Court.

The concealment of fact regarding the knowledge about the Defendant's trademark is also treated as acquiescence in Indian Trademark Act and hence same is a case of denial of the equitable relief. The principle of acquiescence applies where the legal proprietor is:

(i) sitting by or allows other(s) to invade the rights and spending money on it;

(ii) of a conduct inconsistent with the claim for exclusive rights for trademark, trade name, etc.

In case of acquiescence, the registered owner has a legal right to stop others from using a similar trademark but if he keeps sitting on his rights and allow others (bonafidely) to use a similar trademark, then same is against the equity and hence the Proprietor forgoes his rights to take action against the user after a specific period of time.

In case of Milment Oftho Industries and Others Vs. Allergen Inc. 2004 (28) PTC 585 (SC), the plaintiff had a registered mark and the defendant was un-registered yet the business of the defendant having grown over the years and the plaintiff not having objected to the same, it was a clear case of acquiescence and the interlocutory injunction had been refused to the said plaintiff.

Conclusion:

A relief in a case may include both legal as well as equitable claims and a person may ask the Court in his prayer for a hybrid award containing both claims. But in order to prevail regarding the equitable claim, the plaintiff is required to come with clean hands and any misdeed on his part would lead to the loss of the equitable relief to him as is the case of acquiescence in case of Trademark infringement.

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.

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