Holding

Pending suit, an interim injunction in favour of the plaintiffs must be granted; the defenses of honest concurrent use and acquiescence do not bar it.

Summary

The plaintiffs, Power Control Appliances and related companies, owned the copyright in the packaging, instruction manual, guarantee card and the design of the 'whipper blade' of their 'Sumeet' kitchen mixers, and the registered trade mark 'Sumeet'. The defendant, Sumeet Machines Pvt. Ltd., began manufacturing and marketing mixers that copied the same trade mark, packaging and design. The plaintiffs sued for infringement of copyright, trade mark and design and sought interim injunctions. The Madras High Court denied the injunction, relying on alleged acquiescence and the defence of honest and concurrent use. The Supreme Court held that once infringement is established, an interim injunction must be granted; the defence of honest and concurrent user under the Trade Marks Act does not apply to copyright infringement, and acquiescence is not proved here. Consequently, the appeals were allowed and injunctions were ordered pending trial.

Issues considered

The appropriateness of granting an interim injunction despite the defendant's claim of acquiescence and honest concurrent use.
Whether the defence of honest and concurrent user under the Trade Marks Act, 1958 applies to copyright infringement.
The effect of acquiescence as a defence in trademark, copyright and design infringement cases.
The principle that a trade mark can have only one source and proprietor.
Whether an assignment of copyright is required to establish ownership.

Legislation cited

Copyright Act, 1957s. 17, s. 19, s. 30, s. 34, s. 54
Designs Act, 1911s. 47
Trade Marks Act, 1958s. 12(3), s. 30(1)(b)

Subjects

copyright infringementtrademark infringementdesign registrationinterim injunctionacquiescencehonest concurrent userintellectual propertyIndian law

Judgment

A POWER CONTROL APPLIANCES AND ORS.
v.
SUMEET MACHINES PVT. LTD.

FEBRUARY 8, 1994
'
B [M.N. VENKATACHALIAH, CJ AND S. MOHAN, J.J

The Copy Right Act, 1957: Sections 17, 19, 30, 34 and 54-Copy right-
infringement of-Interim injunction-family business-One offamily mem-
bers who was also a Director in the company, earlier started his own
C manufacture of same commodity with same design and trade mark as
registered by miginal company-The Company immediately filed suits for in-
fringement of their copy right, violation of their registered trade marks and
design registration-Interim injunction prayed-Held, pending suit, there will
be an interim injunction infavour ofplaintiffs as regards infringement of trade
D mark, copy right and design. ·
~-
Trade and Merchandise Marks Act, 1958: Ss. 12(3), 30(1)(b}-Trade
Mark-copy right-Infringement of-Plea of honest and concurrent user for
securing concurrent registration is not a valid defence for infringement of copy
right.
E
Acquiescence-Meaning of-If aquiescence in infringement amounts to
consent, it will be a complete defence--Acquiescence must be such as to lead
to inference of a licence sufficient to create a new right in defenilant.

The Designs Act, 1911: Section 47-Registered design-Copy right
F on-Infringement-Interim injunction-Grant of-Principles explained.

The appellants filed three suits in the High Court, alleging infringe-
ment of their copy l"ight, violation of their registered trade iqarks and
claiming the design registration in the 'Whipper Blade" of the power
G operated mixies. They also filed applications for interim injunctions. Their
case was that they started manufacturing power operated kitchen mixies
for domestic use since 1963 and were marketing the same since 1964 under
the brand name of 'Sumeet', which was their registered trade mark. The
respondent-Company, incorporated in 1984, started manufacturing
domestic mixies exactly similar to appellants' mixer with identical
H specifications except for power rating and atlh:ed in each of the appliances
708
POWER CONTROL APPLIANCES v. SUMEET MACHINES 709

the registered trade mark 'Sumeet', belonging to the apellants in the same A
artistic manner in which it was registered by the appellants, and thus
committed infringement of the exclusive copy right of the appellants in the
artistic material,_trade literature displayed on the cardboard box, operat-
ing instructions, receipe book and the guarantee card issued by them.

The case of the defendant-respondents was that defendant No. 2 was B
the eldest son of the proprietrix of the first plaintiff. Production of kitchen
appliances and mixer machines under th~ trade name of 'Sumeet' was their
family business. The copy right trade mark and the copy right design were
that of defendant No. l conceived by it. Defendant No. 2 was the Director
of one of the companies owned by the family but because of inter se disputes c
he left the said company. The proprietrix of first plaintiff-company, and
her husband were snare holders of defendant-company which was incor-
porated with the knowledge and approval of the plaintiffs for manufactur-
ing and marketing kitchen appliances under the trade name of 'Sumeet'
and was registered on issuance of no objection from them. Therefore, the D
defendant-company was an honest and concurrent user.

The Single Judge of the High Court held that though the copy right
with respect to operative instructions and receipe book. guarantee card
and the outer carton of the Sumeet Kitchen Mixies vested in the design
registration No. 148246 in relation to 'Whipper Blade' also belonged to the E
first pla~ntiff and the trade mark in the name of 'Sumeet' with the par-
ticular artistic design was registered in the name of second plaintiff, but
in view of acquiescence by the plaintiffs in the honest and concurrent user
of the first defendant, injunction could not be granted. The intra-court
appeals filed by the plaintiffs were dismissed. The plaintiffs filed the p
appeals by special leave.

It was contended on behalf of the appellants that the High Court
having held that there was an infringement of the trade mark, the copy
right and the design, erred in dismissing the applications for injunction
on the ground of honest and concurrent user and the plea of acquiescence; G
that there was no question of honest and concurrent user or acquiescence
as the defendants never manufactured but were only marketing their
product and it was only in September-Octorber 1991, that they started
infringing trade mark copy right and design and immediately thereafter
the al,>pellants filed the suits. H
710 SUPREME COURT REPORTS {19921) 1 S.C.R.

A Allowing the appeals, this Court

HELD: 1.1. Pending suit there will be an injunction in favour of the
plaintiff-appellants. On the material available on record once the infringe-
ment of the trade mark, the copy right and the design is established,
injunction cannot be denied. [733-H; 734-A]
B I
1.2. There is no plea of assignment. The plea of honest and concur-
rent user as stated in s. 12(3) of the Trade and Merchandise Act, 1958 for
securing the concurrent registration is not a valid defence for the infringe-
ment of copy right. [733-G]
c 1.3. The law relating to trade mark is that, there .can be only one
mark, one source and one proprietot'. It cannot have two origins. Where,
therefore, the defendant-respondent has proclaimed himself as a rival of
the plaintiffs as also a joint owner, it is impermissible in law. Even then,
the joint proprietors must use the trade mark jointly for the benefit of all.
D It cannot be used in rivalry and in competition with each other. The plea
of quasi partnership was never urged in the pleading. [733-E, F]

Power Control andAppliances Co. &Anr. v.Sumeet Machines Pvt. Ltd.
.& Anr., A.I.R. (1993) Madr.ls 120, overruled.

E Rampa/ Singh v. Rias Ahmad Ansari, [1990] Supp. S.C.C. 726, relied
on.

KE. Mohammed Aboobacker v. Manikram Maherchand, (1957) II
Madras Law Journal (Vol. 113) 573;

F American Dyanamid Co. v. Ethicon Ltd., (1975) 1 All E.R. 504 and
Aktiebolaget Manus v. R.J. Fullwood & Bland, L.D., (1948) R.P.C. Vol. XLV
329, referred to.

2.1. It there is an infringement of the copy right, acquiescence is one
G of the defences still available to .:i defendant. [717-D]
2.2. Acquiescence is sitting by when another is invading the rights and
spending money on it. It is a course of conduct inconsistent with the claim
for exclusive rights in a trade mark, trade name etc. It implies positive acts;
not merely silence or inaction such as is·involved in laches. Acquiescence is
H one facet of delay. If the plaintiff stood by knowingly and let the defendants
POWER CONTROL APPLIANCES v. SUMEET MACHINES 711

-build up an important trade until it had become necessary to crush it, then A
the plaintiffs would be stopped by their acquiescence. If the acquiescence in
the infringement amounts to consent, it will be a complete defence. The
!iCquiescence must be such as to lead to the inference of a licence sufficient
to create a new right in the defendant. [720-E, F]

2.3. In the instant case, the defendant-company came to be incor- B
porated in 1984. This was for the purpose of diversifying the industrial
activity of the family group for manufacturing other technical appliances
like washing machines, vacuum cleaners etc. But there is nothing on record
to show that the defendant was manufacturing earlier than the alleged
violatioo of trade mark, copy right and design, as stated in the plaint. C
[733-C]
Harcourt v. White, 28 Beav 303; Mauson & Co. v. Boehm, [1884) 26
Ch. D 406; Pro ter v. Bannis, [1887) 36 Ch. D 740; Electrolux L.D. v. Electrix,
[1954) R.P.C. Vol. LXXI 23 and Amrithdara Phannacy v. Satyadeo Gupta,
(1963] 2 S.C.R. 484, referred to.
D
Halsbury's Laws of England, 4th Edn. 24 para 943, referred to.

Ruston & Hornsby Ltd. v. The Zamindara Engineering Co., [1970] 2
S.C.R. 222; Amritdhara Phannacy v. Satyadeo Gupta, [1963] 2 S.C.R. 484;
Aktiebolaget Manus v. J. Fullwood & Bland, Ltd., (1948) R.P.C. Vol. LXV
329; Electrolux L.D. v. Electric L.D., R.P.C. 23 at 34 and M/s. Devidoss & E
Co. v. Afathur Abboyee Chetty, A.I.R. (1941) Madras 31, cited.

CIVIL APPELLATE JURISDICTION: Civil Appeal Nos. 2551-
2552 of 1993.
F
From the Judgment and_Order dated 26.2.1993 of the Madras High
Court in O.S.A. No. 144 & 146 of 1992.

WITH

Civil Appeal No. 2553 of 1993. G
From the Judgment and Order dated 26.2.1993 of the Madras High
Court in O.S.A. No. 145 of 1992.
-~
P. Chidambaram, U.A. Rana, Pallav Sisodhia, Ms. Jayanti Natarajan,
M. Rupal for the Appellants. H
712 SUPREME COURT REPORTS [1994] 1 S.C.R.

A Soli J. Sorabjee, Harish N. Salve Mrs. P.S. Shroff, Ms. Pratibha and
S.S. Shroff for the Respondent. J..._

The Judgment of the Court was delivered by

MOHAN, J. 1. All these appeals can be dealt with· under a common
B judgment. The civil appeal Nos. 2551-2552/1993 are by the first plaintiff
while civil appeal No. 2553/1993 by the second plaintiff.

2. The plaintiffs filed three suits on the file of the High Court of
Madras; (i) C.S. No. 343 of 1992 complaining of infringement of the
copyright of the first plaintiff. (Power Control & Appliances Company);
c
(ii) C.S. No. 431 of 1992 alleging the violation of the registered trade
mark 'Sumeet' No. 263836 in Part-A in Class 7 for machines (electric) for
kitchen use;

D (iii) C.S. No. 432 of 1992 claiming the design registeration in the
'Whipper Blade' of the power operated mixies.
~
~
3. Pending these suit, four applications Nos. 226, 227, 271 and 272 of
1992 were taken out, two in C.S. No. 343 of 1992 and one each in C.S. Nos.
431 and 432 of 1992 respectively.
E
4. The facts are common to all the suits and the applications. In C.S.
No. 343 of 1992 in the application Nos. 226 & 227/1992, the plaintiffs
prayed for an interim injunction to restrain the respondents (defendants)
from using, distributing, printing or causing to be printed the work as
contained in Document Nos. (1) receipt and instruction manual, (2)
F guarantee card and (3) outer carton and the work as found in Document
Nos. 4, 5, and 6.

5. In C.S. No. 431 of 1992 in application No. 271/92 an interim
injunction was sought to restrain th"'. respondents from using the registered
G trade mark.

6. In C.S. No. 432 of 1992 in application No. 272/1992 the injunction
was sought to restrain the respondents from using the design registration
in manufacturing the mixies.
.., _
H 7. Admittedly, Mrs. Madhuri Mathur is the sole propretrix of Mis
POWER CONfROLAPPI.lANCES v. SUMEEr MACIIlNES (MOHAN, J.) 713

Power Control and Appliances Company. She started manufacturing A
power operated kitchen mixies for domestic use since 1963. They are
marketed since 1964 under the brand name of 'Sumeet'. The mixy was
packed in a cardboard box and at the top the pictorial and photograph
display of the appliance in different colours showing the different purposes
for which the mixy could be used was shown. A booklet was enclosed B
bearing the title 'Sumeet Domestic Mixer-Operating Instructions and
Recipe Book'. That consisted of 80 pages bound spirally in hard art paper
cover. A guarantee card was also issued. All these were devised, conceived
and made by the 1st plaintiff in 1982 with the assistance of artists, photog-
raphers, printers and executives employed by the 1st plaintiff for valuable
considerations fully paid. As such the 1st plaintiff is the owner of copyright C
with respect of all the above items in terms of Section 17 of the Copyright
Act, 1957. 'Sumeet' mixy came to be in great demand in India and aborad.
The business expanded. To cope up with the demand, the 1st plaintiff had
to float three more concerns for the manufacturing of the same appliances.
The companies are:
D
(i) Power Control and Appliances (Bombay) Ltd.

(ii) Mathur Micro Motors and Appliances Ltd.

(iii) Power Control Appliances (Kandla).
E
All th~se concerns except-Power Control and Appliances (Bombay)
Limited buy electric motors for their mixies from the second plaintiff
plaintiff Sumeet Research and Holdings Limited. That is deemed to be
public limited company. Mrs. Madhuri Mathur is the Chairman and Direc-
tor. She holds 59.25% shares. F
8. The artistic manner in which the word 'Sumeet' is written was
conceived and published by the first plaintiff. It was registered trade mark
with effect from 18.4.1970. This trade mark was assigned to the second
plaintiff on 1.1.1981. The second appellant is the owner of the copyright.
G
9. The first defendant was incorporated in 1984. It has been manufac-
turing and selling mainly washing machines and vacuum clearners from
September/October 1991. It has started manufacturing domestic mixies
exactly similar to plaintiffs' mixer with identical specifications except for
power rating. The package and the pictorial display are identical. Even the H
714 SUPREME COURT REPORTS [1994] 1 S.C.R.

A booklet is pagewise reproduction includin5 an error with respect to Design
No. 140781, a design nuober not belonging to the plaintiffs. The contents
of the guarantee card are also the idootical. The first defendant is affixing
in each of the appliances the registerd trade mark 'Sumeet' belonging to
the second plaintiff in the same artistic manner in which it is registered.
On these allegations, it was urged that the first defendant had committed
B infringement of the exclusive copyright of the first plaintiff in the artistic
material and trade literature displayed on the card-board box. Similarly,
the operating instructions and recipe book and the guarantee card issued
by them.

C 10. With regard to the four components of the mixer, Mrs. Madhuri
Mathur had obtained registration of their design under Part II of the
Designs Act, 1911. Those components are:

(i) Dry grinding blade,

D (ii) Whipper blade,

(iii) Polycarbonate dome

(iv) Stainless steel jar with rim.

E 11. Each one of them has a specific registration number. Though the
statutory period of 15 years or the validity of the copyright had elapsed on
23.5.1992 concerning items (i), (iii) and (iv), as regards whipper blade the
validity of registration is up to 5.4.1994. Therefore, it is not open to anyone
to infringe the same. Thus, the applications on the grounds came to be
preferred.
F
12. The first defendant did not file the written statement. However,
he filed his counter-affidavit. The stand taken by him is that he (Ajay
Parkash Mathur) is the eldest son of Mrs: Madhuri Mathur. On his return
from United States, the family business, mainly kitchen appliances and
mixer machiness under the trade name of 'Sumeet' had picked up by the
G innovative ideas and dynamic marketing strategies evolved by him. The
family of Mathurs included the plaintiffs, the first defendant and others.
The family was selling Sumeet mixies since 1963. It is true that three others
companies were floated. In fact, he was the director of Power Control and
Appliances Bombay Limited until recently. Because of inter se disputes, he
H was obliged to leave the said company.

T
POWER CONfROLAPPLIANCES v. SUMEET MACHINES [MOHAN, J.) 715

13. The first defendant company was incorporated in 1984 ,as Sumeet A
Machines Private Limited for the purpose of manufacture of market
kitchen appliances under the trade name of 'Sumeet' and other products
such as washing machines. The said company itself was incorporated with
the knowledge and approval of the plaintiffs-applicant~. When Sumeet
Machines Private Limited was sought to be registered before the Registrar B
of Companies, Maharashtra, a letter of no objection from the owners of
the trade mark 'Sumeet' had to be produced. The first defendant obtained
letters both from the first and second plaintiffs on 7.5.1984. It was only on
this the company came to be registered on 5.9.1984. As a matter of fact,
Mrs. Madhuri Mathur is a shareholder in first defendant, she having been
allotted 5000 shares. Likewise, the father of first defendant also owns 5000 C
shares.

14. Since 1986, the first defendant has been manufacturing and
marketing mixies under the trade name of 'Sumeet'. This was done with
the knowledge and consent of the plaintiffs openly and concurrently. D
Further, Mrs. Madhuri Mathur and the father of first defendant have
-signed and given personal guarantees to the State Bank of Hyderabad on
behalf of the first defendant. The loans were secured on that basis. In short,
the reply of the first defendant is that the copy right trade mark and the
copyright design is that of the first defendant who has conceived as a family
concern. The word 'Sumeet' was given with the blessigns and consent of E
Madhuri Mathur and S.P. Mathur. Therefore, he has been an honest and
concurrent user. In any event,-the plaintiffs' applications were not entitled
to the reliefs on the ground of acquiescence.

15. The learned Single Judge as seen from the report of desision in F
Power Control and Appliances Co. & Anr. v. Sumeet Machines Private Ltd.
& Anr., A.LR. 1993 Madras 120, held that the copyright with respect to
operative instructions and recipe book, guarantee card and the outer
carton of the Sumeet Kitchen Mixies vested in the Power Control Applian-
ces Company represented by the Sole Proprietrix Mrs. Madhuri Mathur.
Equally, the copyright in the design registration No. 148246 in relation to G
'whipper blade' was also accepted as belonging to the plajntiff. The trade
mark in the name of 'Sumeet' with the particular artistic design is
registered in the name of Sumeet Research and Holdings Limited was
accepted as claimed by the plaintiffs. Notwithstanding, all these, the relief
of injunction was not granted in view of acquiescence by the plaintiffs in H
716 SUPREME COURT REPORTS (1994) 1 S.C.R.

A the honest and concurrent user of the first defendant. Against this judg-
~-.
ment, O.S.A. No. 1~4-146/1992 came to be preferred.

16. The Division Bench by the impugned judgment dated 26.2.1993
held that the learned Single Judge was not wrong in holding that the
plaintiffs have acquiesced in the use of the trade literature and the trade
B tr.ark by the first defendant. The relief in equity of injunction, if granted,
will affect the interest of not only Ajay Mathur but also other members of
the family who are shareholders of the first defendant's company. Accord-
ingly the appeals were dismissed. It is under these circumstances, these civil
appeals have been preferred; Civil Appeal No. 2551/1993 against applica-
C tion Nos. 226 & 227/1992 in C.S. No. 343/1992, Civil Appeal No. 2552/1993
against application No. 271/1992 in C.S. No. 432/1992 and Civil Appeal No.
2553/1993 against application No. 272/1992 in C.S. No. 431/1992.

17. Mr. P. Chidambaram, learned counsel for the appellants submits
that both the courts below having held in favour of the appellants herein
D that there is an infringement of the trade mark, the copyright and the
design should not have dismissed the application for injunction solely on
the ground of honest and concurrent user and on the plea of acquiescence.
On the contrary the evidence in this case discloses that the first defendant
was only marketing (but never manufacturing) from 1986. Therefore, mere-
E ly because he was marketing, that cannot amount to honest and concurrent
\1ser. It was only in September-October, 1991 he started infringing the trade
mark, copyright and the design. Therefore, when the suit came to be filed
immediately, no question of acquiescence would ever arise. It is only on
28th of October, 1991 the first defendant invited applications for distribu-
tion.
F
18. The conclusions of the High Court lead to strange results. Not-
withstanding the finding of the court that the appellants' copyrights,
registered trade mark and registered design having been occupied totally
consciously and deliberately without any alteration and thereby infringed
G by the defendant to deny injuction in equity cannot be supported. After all
the plaintiff Mrs. Madhuri Mathur as an individual has 3.3. per c~nt of the
shareholding in the first defendant-company.

To hold that the first defendant was using the registered trade mark
from 1984 is wrong when admittedly the first defendant-company came into
H existence only in 1984.
)
POWERCONTROLAPPLiANCES v. SUMEEI'MACHINES[MOHAN,J.) 717

19. Under Sections 19 and 54 of the Copyright Act reproduction of A
the copyright itself is infringement unless there is specific assignment in
writing by the proprietor. In this case, there is not even a plea that Mrs.
Madhuri Mathur assigned the copyright in the outer carton handbook and
guarantee card. The concept of honest and concurrent user found in
Section 12 (3) of the 1958 Act for securing concurrent registration is totally B
irrelevant as defence in a suit for infringement and copyright arising out of
a different Act, namely, 1957 Act. Therefore, there can be no honest and
concurrent user of one's copyright by another. After 1958 Act, the plea of
acquiescence is not available at all. Even assuming that the first defendant
was manufacturing between June 1989 and October 1991 he cannot have
the benefit of Section 30(1)(b) of the 1958 Act. This Act creates offences C
for such infringement under Sections 78 and 29. Section 96 also speaks of
imply warrantee. These provisions were not found in the 1940 Act. In
Ruston & Hornsby Ltd v. The Zamindara Engineering Co., [1970] 2 S.C.R.
222, at page 224 this Court had occasion to point out the rustinction
between the infringement and passing off On this basis it is submitted all D
that has to be proved by the plaintiff is that she is the registered owner of
the tr~ade mark. If there is an infringement, injunction must follow. Section
12(3) of the 1958 Act talks of special circumstances in relation to honest
. and concurrent user. In such a case the defences available are as laid down
in Sections 30, 34 and 35 of that Act. Such defences are not available in
the instant case. In this case, factually there is no acquiescence. E

20. In support of these submissions; learned counsel relie[ on Am-
ritdhara Phannacy v. Satyadeo Gupta, [1963) 2 S.C.R. 484, and particularly
the passage occurring at page 497 to show in what case the plea acquies-
cence could ever be made. Equally, in Aktiebo!aget Manus v. J. Fullwood F
and Bland, Ltd., (1948) R.P.C. Vol. LXV 329 at 338, it was held that the
court is bound to grant an injuncion if the legal right is established. In the
case on hand it has been so established. In Electrolux L.D. v. Electrix L.D.,
R.P.C. 23 at 34, as to when the plea of acquiescence could be upheld, is
stated. In Bostitch Trade Mark, 1963 R.P.C. 183 at 202, the plea of acquies-
cence has been dealt with. Judge in the light of these rulings, the finding G
relating acquiescence :::annot at all be upheld.

21. Mrs. Soli J. Sorabjee, learend senior counsel for the respondent
submits that it is a clear case in which there are various atts, collectively
pointing out to implied consent to. the use of plaintiffs trade mark. They H
718 SUPREME COURT REPORTS (1994) 1 S.C.R.

A establish, at least prima f acie, the acquiescence on the part of the appellant.
They would disentitle it to the interim relief of injunction. The acts are as
under:

(1) The letter dated 7.5.1984 to the Registrar of Com-
panies regarding the allocation of the name Sumeet.
B
(2) The encouragement of production of new electronic
food preparation machine.

(3) No. objection whatsoever by the plaintiff or any other
related companies or even by Mr. or Mrs. Madhuri
c Mathur to the manufacture and sale by this respondent
till the issue of notice dated 18.11.1991.

There is also evidence in this case to show that the first respondent has
been manufacturing mixing machines from July 1987. There is also a clear
D admission on the part of the plaintiff that the first respondent was manufac-
turing his products under the trade name of Sumeet at least since June
1989. This is evident from the following:-

(i) Criminal complaint dated 6.4.1992 mentions the manufacture of
washing vacuum clearners and industrial mixies from 1984 and the
E manufacture of kitchen machines from 1989-90.

(ii) The affidavit filed on behalf of the appellants mentions ab0ut the
manufacture since June 1989. There is a similar admission in paragraph 11
of the plaint. The export of these domestic mixies as Sumeet 842 INT is
done by the first respondent. All these point out ~o acquiescence which
F would be a good ground for denying the interim relief of injunction.

22. The appellant has disentitled itself from the grant of equitable
relief of injunction by reason of unexplained delay and suppression of
material facts. The balance of convenience is also overwhelmingly in favour
G of this respondent in view of the facts stated above that the first respondent
has been manufacturing and marketing productions with th~ trade name
of Sumeet since 1989.

23. It is not correct to contend that once the trade mark is infringed
the plaintiff would be entitled to injunction. Section 30(b) is still applicable
H and it is open to this respondent to show that there had been an implied
)
POWERCONfROLAPPLIANCES v. SUMEETMACHINES [MOHAN,J.) 719

consent to the use of the trade mark. In support of this submission learned A
counsel places reliance on Messrs. Devidoss and ·Co. v. Alathur Abbovee
Chetty A.LR. (1941) Madras 31.

24. As regards the principles in relation to the grant of interim
injunction the law has been laid down in.KE. Mo.hammed Aboobacker v.
Nanikram Maherchand, (1957) II Madras Law Journal (Vol. 113) 573. B
Similar principles are stated in American Cyanamid Co. v. Etlticon Ltd.,
(1975) 1 E.R. 504 at 511.

25. In dealing with this case we would like to keep this in the back
of our mind that we are concerned with an interim application for injunc- C
tion in relation to the violation of copyright, trade mark and the design.
The Division Bench observed in paragraph 8 as follows:

"The learned Single Judge, while disposing of the ap-
plications, has in the impugned judgment, accepted the
copyright with respect to operating instructions and recipe D
book, guarantee card and the outer carton of the Sumeet
Kitchen mixies in the Power Control and Appliances
Company represented by the Sole Proprietirx Mrs. Mad-
huri Mathur, as well as the copyright in the Design
Registration No. 148246 for 'whipper blade' for which
E
there is validity till 5.4.1994. He has also accepted the
plaintiffs' case that the trade mark in the name 'Sumeet'
with the particular artistic design is registered in the name
of Sumeet Research and Holdings Limited. He has, how-
ever, declined to grant any injunction, for in his opinion
the doctrine of acquiescence and honest and concurrent F
user will be attracted."

26. If there is an infringement of the same whether the appellant
would be entitiled to interim injunction at this stage is the important
question for determination. For such a determination, we refrain from G
going into the details relating to evidence as that will prejudice the parties
in the suits. Section 30(1)(0) of the 1958 Act says:

"30. Acts not constituting infringement- (1) Not-
withstanding anything contained in this Act, the following
acts do not constitute an infringement of the right to the H
720 SUPREME COURT REPORTS [1994) 1 S.C.R.

A use of a registered trade mark:

(a) ...

(b) the use by a person of a trade mark in relation to
goods connecteri in the course of trade with the proprietor
B or a registerred user of the trade mark if, as to these goods
or a bulk of which they form part, the registered
proprietor or the registered user conforming to the per-
mitted use has applied the trade mark and has not sub-
sequently removed or obliterated it, or has at any time
c expressly or impliedly consented to the use of the trade
mark."

Therefore, acquiescence is one of the defences still available to the first
respondent. Of course, it is a different issue whether the plea of acquies-
cence has been made out in this case. That will be examined for a limited
D purpose after setting out the law on this aspect.

27. Acquiescence is sitting by, when another is invading the rights
and spending money on it. It is a course of conduct inconsistent with ~he
claim for exclusive right. in a trade mark, trade name etc. It implies positive
E acts; not merely silence or inaction such as is involed in laches. In Harcourt
v. White, 28 Beav 303, Sr. Johan Romilly said: "It is important to distinguish
mere negligence and acquiescence. Therefore, acquies·cence is one facet of
delay. If the plaintiff stood by knowingly and let the defendants build up
an important trade until it had become necessary to crush it, then the
plaintiffs would be stopped by their acquiescence." If the acquiescence in
F the infringement amounts to consent, it will be complete defence as was
laid down in Mouson & Co. v. Boehm, [1884) 26 Ch. D 406. The acquies-
cence must be such as to lead to the inference of a licence sufficient to
create a new right in the defendant as was laid down in Rodg~rs v. Nowill
[1847) 2 De G.M. & G. 614: 22 L.J. K. Ch. 404.
G 28. The law of acquiescence is stated by Cotton, L.J. in Pro tor v.
Bannis, [1887) 36 Ch. D 740 as under:

"It is necessary that the person who alleges this lying
by should have been acting in ignorance of the title of the
H other man, and that the other man should have known
)
POWERCONTROLAPPLIANCES v. SUMEEfMACHINES (MOHAN,J.J 721

that ignorance and not mentioned his own title." A

In the same case Bowen, L.J. said:

"In order to make out such acquiescence it is necessary
to establish that the plaintiff stood by and knowingly
allowed the defendants to proceed and to expend money B
in ignorance of the fact that he had rights and means to
assert such right."

In Messr. Devidoss and Co. (supra) at pages 33 and 34 the law is
stated thus:
c
"To support a plea of acquiescence in a trade-mark
case it must be shown that the plaintiff has stood by for a
substantial period and thus encouraged the defendant to
expend money in building up a business associated with
the mark. In [1896] 13 R.P.C. 464, Rowland v. Michell, D
Romer J. observed:

"If the plaintiff really does stand by and allow a man
to carry on business in the manner complained of to
acquire a reputation and to expend money he cannot then
after along lapse of time, turn round and say that the E
business ought to be stopped.

In the same case, but on appeaJ Lord Russel C.J. said
(1877) 14 R.P.C. 37 at p. 43: •

Is the plaintiff disentitled to relief under that head by F
injunction because of acquiescence? Of course it is in-
volved in the consideration of that the plaintiff has a right
against the defendant and that the defendant has done
him a wrong and the question is whether the plaintiff has
so acted as to disentitled him from asserting his right and G
from seeking redress from the wrong which has been done
to him. Cases may occassionally lay down principles and
so forth which are a guide to the Court, but each case
depends upon its own circumstances.

Dealing with the question of standing by in [1923) 40 H
722 SUPREME COURT REPORTS [1994] 1 S.C.R.

A R.P.C. 180 Codes v.Addis and Son, at p. 142, Eve J. said:

For the purpose of determining this issue I must as-
sume that the plaintiffs are traders who have started in
this more or less small way in this country, and have been
continuously carrying on this business. But I must assume
B
also that they have not, during that period, been adopting
a sort of Rip Van Winkle policy of going to sleep and not
watching what their rivals sand competitiors in the same
line of business were doing. I accept the evidecce of any
gentleman who comes into the box and gives his evidence
c in a way which satisfies me that he is speaking the truth
when he says that he individually did not know of the
existence of a. particular element or a particular fa<;tor in
the goods marketed by his opponents. But the question is
a wider question than that : ought not he to have known:
D ',.·' is he entitiled to shut his eyes to everything that is going
on around him, and then when his rivals have perhaps
built a very important trade by the user of indicia which
he might have prevented their using had he moved in
time, come to the Court and say: 'Now stop them from
doing it further, because a moment of time has arrived
E when I have awakened to the fact that this is calculated
to infringe my rights'. Certainly not. He is bound, like
everybody else who wishes to stop that which he says is
an invasion of his rights, to adopt a position of aggression
at once, and insist, as soon as the matter is brought to
F Court, it ought to have come to his attention, to take steps
to prevent its continuance; it would be an insufferable
injustice were the Court to allow a man to lie by while his
competitionrs are building up· an important industry and
then to come forward, so soon as the importance of the
industry has been brought home to his mind, and en-
G deavour to take from them that of which they had .
legitimately made use; every day when they used it satis-
fying them more and more that there was no one who
either could or would complain of their so doing. The
position might be altogether altered had the user of the
H factor or the element in question been of a secretive or
)
POWERCONfROLAPPLIANCES I'. SUMEETMACHINES [MOHAN,J.) 723

surreptitious nature; but when a man is openly using, as A
part of his business, names and phrases, or other elements,
which persons in the same trade would be entitled, if they
took steps, to stop him from using, he gets in time a right
to sue them which prevents those who could have stopped
him at one time from asserting at a later stage their right
to an injunciton.
B

In [1960] 23 R.P.C. 1, Mc. Car Stevenson & Orr Ltd.
v. Lee Bros, accquiescence for four years was held to be
sufficient to preclude the plaintiff from succeeding. In
1897 the plaintiffs in that case registered the word 'glacier' · c
as a trade mark in respect of transparent paper as a
substitute for stained glass. As the result of user the word
had become indentified with the plaintiffs' goods. In 1900
the defendants commenced to sell similar goods under the
name "glazine." In 1905 the plaintiffs commenced an action
for infringement. The defondants denied that the use of
D
the word "glazine'' was calculated to deceive and also
pleaded acquiescence. A director of the plaintiff company
admitted that he had known of the use of the word
"galzine" by the defendants for four years-he would not
say it was not five years. It was held that the plaintiffs E
failed on the merits and by reason of their delay in
bringing the action.

Delay simpliciter may be no defence to a suit fur
infrmgement of a trade mark, but the decisions to which F
I have referred to clearly indicate that where a trader
allows a rival trader to expend money over a considerable
period in the building up of a business with the aid of a
mark similar to his own he will not be allowed to stop his.
rival's business. If he were permitted to do so great loss
would be caused not only to the rival trader but to those G
who depend on his business for their livelihood. A village
--( may develop into a large town as the result of the building
up of a business and most of the inhabitants may be
dependent on the business. No hard and fast rule can be
laid down for deciding when a person has, as the result H
724 SUPREME COURT REPORTS [1994) 1 S.C.R.

A of inact~on, lost the right of stopping another using his
mark. As pointed out in [1897) 14 R.P.C. 37 at p. 43,
Rowland v. Michell, each case must depend on its own
circumstances, but obvic-~1sly a person cannot be allowed
to stand by indefinitely without suffer the consequence."

B This is the legal position. Again in Halsbury's Laws of England
Fourth Edition, 24 at paragraph 943 it is stated thus:

"943. Acquiescence. An injunction may be refused on
the ground of the plaintiff's acquiescence in the
defendant's infringement of his right. The principles on
c which the court will refuse interlocutory or final relief
on this ground are the same, but a stronger case is re-
quired to support a refusal to grant final relief at the
hearing. Patching v. Subbins, (1843) Kay I; Child v.
Douglas, [1854) 5 De GM & G 739; Johnson v. Ujiatt,
D [1863) 2 De GJ & Sm 18; Turner v. Mirfteld, [1854) 5 De
GM & G 739; Johnson v. Ujiatt, [1863) 2 De GJ & Sm 18;
Turner v. Mirfteld, [1865) 34 Beav 390; Hogg v. Scott, [1874)
LR 18 Eq 444; Price v. Bala and Festiniog Rly Co., [1884)
50 LT 787. The reason is that at the hearing of the cause
E it is the court's duty to decide upon the rights of the
parties, and the dismissal of the action on the ground of
acquiescence amounts to a decision that a right which
once existed is absolutely and for ever lost: Johnson v.
Ujiatt, supra at 25; and see Gordon v. Cheltenham and
Great Western Union Rly Co., [1842) 5 Beav 229 at 223,
F per Lord Langdale MR."

In Aktiebolaget Manus v. RJ. Fullwood & Bland, L.D., [1948] R.P.C.
Vol. Xl V 329 at 338-339 it was held thus:

"Apart from this point the case of Fullwood v.
G Fullwood, 9 Ch. D. 176, shows that the injunction in a
passing-off case is an injunction sought in aid of a legal
right, and that the Court is bound to grant it if the legal
right be established unless the delay be such that the
Statute of Limitations would be a bar. That case apparent-
H ly concerned some predecessors of the Defendants. The
POWERCONfROLAPPLIANCES v. SUMEETMACHINES[MOHAN,J.] 725

J, delay was one of rather under two years a.id the relief A
sought was an injunction to restrain the use by the defen-
dants of cards and wrappers calculated to induce the
belief that his business was connected with the plaintiff.
Fry, J., in the course of his judgment said this: "Now,
assuming, as I will, for the purpose "of my decision, that
in the early part of 1875 the Plaintiff knew of all the B
material facts "which have been brought before me to-day,
he commenced his action in November, 1876. "In my
opinion that delay, and it is simply delay, is not sufficient
to deprive the plaintiff of "his rights. The right asserted by
the Plaintiff in this action is a legal right. He is, in "effect, c
asserting that the Defendants are liable to an action for
deceit." It is not suggested in the defence that the delay
here involves a question under or analagous to the period
under the Statute. The Defendants did suggest that there
had been something more than mere delay on the part of
the Plaintiffs, and that the Plaintiffs had lain by and D
allowed the goodwill which the Plaintiffs now propose to
acquire, but this point was not seriously pressed. It was
suggested that Mr. Evans Bajker, the Plaintiffs' Solicitor,
knew from 1941 onwards what the Defendants were doing,
but it is impossible to impute to a busiy solicitor a E
knowledge which he could only acquire by seeing adver-
~
tfaements in local or farming papers advertising the
Defendants' activities. No direct information was afforded
-..,, him; on the contrary it will be remembered that when in
1942 he made enquiries on behalf of his clients informa-
tion was studiously withheld from him. I conclude there- F
fore that there has been no acquiescence to disentitle the
Plaintiff to relief."

In Electrolux L.D. v. Electrix, (1954) R.P.C. Vol. LXXI page. 23 at 32
and 33 it was held thus:
G
"I now pass to the second question, that of acquies-
cence, and I confess at once that upon this matter I have
felt no little sympathy for the Defendants, and have been
not a little envious of the good fortune which has attended
the Plaintiffs, though no doubt they may justly attribute it H
72JJ SUPREME COURT REPORTS [1994) 1 S.C.R.

A to the astuteness of their advisers; but, as has already been
said, the Defendants have traded openly and (as the Judge
found) honestly, beyond any question, in the ordinary
course and substantially under this name "Electrix'' for a
very long period of time, since early 1930's. During that
time, they have built up (I doubt not) a valuable goodwiss
B associated with that name. If the possibility that the mark
"Electrolux'' was infringed is out of the way, and if I
disregard for the moment (as I do) the point taken by Mr.
Kenneth Johnstone that in any event the use of
"Electrolux" was a sufficient use for the purpose of Sec.
c 2JJ(l) of "Electrux'' (seeing that the two marks were as-
sociated). I have no doubt that if the Plaintiff had chal-
lenged in the courts the right of the Defendants to use
"Electrix" before they have effect to their decision to apply
the word "Electrux" to their cheaper model in lieu of
"Electrux", they would in all probability have failed, be-
D
Ca.use the Defendants' motion to strike,the word "Electrux''
off the Register would have succeeded, but the fact is that
when the battle was joined, "Electrux" was no longer
vulnerable on that account, unless the Defendants can
• E
establish that the use was no bona fide, a matter to which
I shall come presently. It is, however, said that by the
Defendants that the Plaintiffs have deprived themselves
of their legal right or, at Jest, or any right to the equitable
remedy of injunction.

F Upon this matter, a great deal of learning has been
referred to, and we have also had our attention drawn to
a number of cases: The latter include the well-known
statement in Willmott v. Barber, (1880), 15 Ch. D. 96, by
Fry, J. (as he then was) at p. 105. He said this: "It has been
said that the acquiescence which will deprive a man of his
G leg~ rights must "amount to fraud, and in my view that is
an abbreviated statement of a very true proposition. "A
man is not to be deprived of his legal rights unless he has
acted in such a way as would "make it fraudulent for him
to set up those rights". Let me pause here to say that I do
H not understand that, by the word "fraudulent", the learned
POWERCONfROLAPPUANCES v. SUMEETMACHINES [MOHAN,J.) 727

Judge was thereby indicating conduct which would A
amount to a common law tort of deceit. "What, then, are
the elements or requisites necessary to constitute fraud of
that description? In the first place "the plaintiff must have
made a mistake as to his legal rights. Secondly, the plaintiff
must "have expended some money or must have done
some act (not necessarily upon the defendant's land) on B
the faith of his mistaken belief. Thirdly, the defendant, the
possessor of "the legal right, must know of the existence
of his own right which is inconsistent with "the legal right,
must know of the existence of his own right which is
inconsistent with "the right claimed by the plaintiff. If he c
does not know of it he is in the same position "as the
plaintiff, and the doctrine of acquiescence is founded
upon conduct with a knowledge "of your legal rights.
Fourthly, the defendant, the possessor of the legal right,
must know "of the plaintiff's mistaken belief of his rights.
D
If he does not, there is nothing which "calls upon him to
assert his own rights. Lastly, the defendant, the possessor
of the legal "right, must have encouraged the plaintiff in
his expenditure of money or in the other "acts which he
has done, either directly or by abstaining from asserting
his legal right." In reading that· passage, it is perhaps E
necessary to note (because it makes it at first sight a little
more difficult to follow) that the positions of plaintiff and
defendant as ~~P.Y are usually met with are there
transposed, and that one of the parties who is there
spoken of as the plaintiff corresponds with the present
F
case with the Defendants, and vice versa."

29. Amrithdara Phannacy v. Satyadeo Gupta, (1963] 2 S.C.R. 484, is
a case where Halsbury was quoted with approval. However, on the facts of
that case it was held that the plea of acquiesence had not been made out.
G
30. Now, we come to the principles in relation to the grant of interim
injunction. The case in KE. Mohammed Aboobacker v. Nanikram Maher-
chand and Another, (1957] II Madras Law Journal 573 makes a reference
to the case law and holds at page 574-75 as under:

"The 1 principles which should govern the Court in H
72B SUPREME COURT REPORTS [1994] 1 S.C.R.

A granting or withholding a temporary injunction in trade-
mark infringement actions are well-settled : See recent
decision Henry Hemmings, Ltd. v. George Hemmings, Ltd.,
(1951) 68 R.P.C. 47. As a temporary injunction is merely
of a provisional nature and does not conclude the rights
of the parties in any way, the Court will exercise its
B
discretion in favour of the applicant only in srong cases.
The plaintiff must make out a prima facie case in support
of his application for the ad interim injunction and must
satisfy the Court that his legal right has been infringed and
in all probablity will succeed ultimately in th·e action. This
c does not mean, however, that the Court should examine
in detail the facts of the case and anticipiate or prejudice
the verdict which might be pronounced after the hearing
of the suit or that the plaintiff should make out a case
which would entitled him at all events to relief at the
D hearing. Colman v. Fa"ow & Co., (1898) 15 R.P.C. 198,
Hoover, Ltd. v. Air-way Ltd., [1936] 53 R.P.C. 399, The
Upper Assam Tea Company v. Herbert and Co., (1890] 7
R.P.C. 183, Star Cycle Company, Ltd. v. Frankenburgs,
[1906] 23 R.P.C. 337. In fact the Court will not ordinarily
E grant an interlocutory injunction if a large amount of
evidence is necessary to support the plaintifrs case. The
proper course in such a case is to ask for the trial of the
action. The injury must be actual or imminent. Pine/ & Cie
v. Maison Pinet, Ltd. (1895] 14 R.P.C. 933. Where the
defendant disputes the plaintiff's title to the mark or
F contends that the plaintiff is not entitled to a relief by a
reason of the acquiescence or delay or other estoppel or
of the defendant's concurrent rights, the Court will be
guided by the balance of inconvenience which may ari~e
from granting or withholding the injunction as well as the
G justice of the cause after considering all the circumstances
in the suit. In other -.. 0rds, where the plaintiffs title is
disputed or the fact of infringement or misrepresentation
)-
amounting to a bar to the action or some other defence·
is plausibly alleged upon the interlocutory motion, the
H Court in granting or refusing the interim injunction is
POWERCONTROLAPPLIANCES v. SUMEETMACHINES[MOHAN,J.) 729

guided principally by the balance of convenience that is A
by the relative amount of damage which seems likely to
result if the injunction is granted and plaintiff ultimately
fails or if it is refused and he ultimately succeeds; Read
Brothers v. Richardson and Co., [1981] 45 L.T. 54, Hommel
v. Bauer & Co., (1903) 20 R.P.C. 801.
B
..... .It is necessary that an application for interlocutory
injunction should be made immediately after the plaintiff
becomes aware of the infringement of the mark. Improper
and unexplained delay is fatal to an application for inter-
locutory injunction. The interi.:n injuction will not be c
granted if the plaintiff has delayed interfering until the
defendant has built up a large trade in which he has
notoriously used the mar~. North British Rubber Company,
Ltd. v. Gonnully and Jeffery Manufacturing Company,
[1894] 12 R.P.C. 17, Anny and Navy Co-operative Society,
Ltd. v. Anny Navy and Civil Service Co-operative Society
D
of South Africa Ltd., [1902) 19 R.P.C. 574, Hayward Bros.
Ltd. v. Peakal~ [1909) 26 R.P.C. 89, Yost Tyipewriter Com-
pany Ltd. v. Typrewriter Exchange Company, [1902) 19
R.P.C. 422, Royal Wa"ant Holders' Association v. Slade &
Co., Ltd., [1908) 25 R.P.C. 245." E

In American Cyanamid Co. (Supra) it is held at page 511 as under:

"Where other factors appear to be evenly balanced it
is a counsel of producence to take such measures as are F
calculated to preserve the status quo. If the defendant is
enjoined tomporarily from doing something that he has
not done before, the only effect of the interlocutory in-
junction in the event of his succeeding at the trial is to
postpone the date at which he is able to embark on a
course of action which he has not previously found it G
necessary to undertake; whereas to interrupt him in the
conduct of an established enterprise would cause much
greater inconvenience to him since he would have to start
again to establish it in the event of his succeeding at the
trial. H
730 SUPREME COURT REPORTS (1994) 1 S.C.R.

A The factors which he took into consideration, and in
my view properly, were that Ethicon's sutures XLG were
not yet on the market; so that had no business which would
be brought to a stop by the injunction; no factories would
be closed and no workpeople wollld be thro\\n out of
work. They held a dominant position in the United
B Kingdom market foir absorbable surgical sutures and
adopted an aggressive sales policy."
..,._.
31. Again in Rampa/ Singh v. Rias Ahmad Ansari, (1990) Supp. 727
at page 731 to which decision one of us (M.N. Venkatachaliah, J., as he
C then was) was a party it was stated thus:

"Usually, the prayer for grant of an interlocutory in-
junction is at a stage when the existence of the legal right
asserted by the plaintiff and its alleged violation are both
contensted and uncertain and remain uncertain till they
D are established at the trial on evidence. The court, at this
stage, acts on certain well settled principles of administra-
tion of this form of interlocutory remedy which is both
temporary and discretionary. The object of the inter-
locutory injunction, it is stated.
E ".. .is to protect the plaintiff against injury by violation
of his rights for which he could not adequately be com-
pensated in damages recoverable in the action if the
uncertainty were resolved in his favour at the trial. The
need for such protection must be weighed against the
F corresponding need of the defendant to be protected
against injury resulting from his having been prevented
from exercising his own legal rights for which he could
not be adequately compensated. The court must weigh
one need against another and determine where the
'balance of convenience' lies."
G
The interlocutory remedy is intended to preserve in status
quo, the rights of parties which may appear on a prima
facie case. The court also, in restraining a defendant from
exercising what he considers his legal right but what the
H pla~tiff would like to be prevented, puts into the scales,

,..,
POWERCONfROLAPPLIANCES v. SUMEETMACHINES[MOHAN,J.) 731

as a relevant consideration whether the defendant has yet A
to commence his enterprise or whether he has already
been doing so in which latter case considerations some-
what different from those that apply to a case where the
defendant is yet to commence his enterprise, are at-
tracted."
B
32. In this case we will briefly analyse the materials on record as they
now exist to decide the plea of honest and concurrent user of acquiescence.
The learned Single Judge in paragraph 18 of his judgment reported in
A.l.R. 1993 Madras 120 at 127 observes:
c
"A careful perusal of the abovereferred documents in
particular along with the other voluminous documents,
clinch the fact that Smt. Madhuri Mathur, mother of the
deponents in the affidavits filed in support of the applica-
tions, as well as the counter affidavit, get the trade mark D
'SUMEET' registered long back as early as 1964 and that
by the very strenuous efforts, hard work, skill, exertion,
devised so many designs and improved the appliances on
par with the modern technology and along with other
members of the family, viz., husband, sons and daughters
were able to start different business concerns as specifi- E
cally pleaded in the a_ffidavit and reply affidavit and by
entering into various agreements among themselves and
by remaining as share-holders and directors in the com-
panies engaged in manufacturing the various domestic
power operated machines like mixies, washing machines F
and so on by using the trade name and marketed
SUMEET mixies in various categories and numbers. It
has to be seen that during the said sojour, Thiru Ajay
Prakash Mathur, the present Managing Director of the
first respondent was also the director of the plaintifrs
company previously and still continuing as shareholder G
and that during 1984, the first defendant company was
incorporated as private limited company under the Com-
panies Act and in adopting the name 'SUMEET', his
mother Smt. Madhuri Mathur as well as his father gave
written consent to the authority constituted under the H
732 SUPREME COURT REPORTS (1994) 1 S.C.R.

A Companies Act and that the several number of documents
produced on behalf of the applicant as well as the respon-
dents, clearly demonstrate the fact that Smt. Madhuri
Mathur family including her hui:.band, daughter, two sons
and the other family members were directly concerned
and involvled in all of their sister concern including the
B first respondent company and have been engaged in
manufacturing the various types of Sumeet home applian-
ces and power operation machines and being marketed
through a common distributor, viz., Mis. Reprographers
and Engineers, Madras and all of their accounts were
c being audited by one and the same auditors concerned
and that even to provide the working capital to the first
respondent company being run by Thiru Ajay Prakash
Mathur it appears that in the company of the first respon-
dent, both the mother and the father stood guarantee for
a sum of Rs. 2,00,00,000 in the Bank of Hyderabad. All
D
virtually go to show that each and everyone in the family
of Tmt. Madhuri Mathur having involved in almost all the
companies incorporated in the Companies Act by entering
into agreement or otherwise and having the directorship
and shares in. almost all the companies and deeply in-
E volved in manufacturing either the components, motors
and other accessories for their companies' products under
the registered trade name and mark, SUMEET and that
accordinly, they are being marketed the same through the
company distributor."
F
33. In paragraphs 19 & 20 of the impugned judgment the learned Judge
refers to the documents filed by the Respondent. None of these documents
throw any light as to the manufacture. It might be that the first respondent
was marketing, having regard to the close relationship as mother and son
between the plaintiff and the first defendant. This was why the Division
G Bench remarked "There is some evidence showing that the first defendant
has been at least marketing domestic mixers allegedly manufactured by
Power Control and Applicances {Bombay), Limited since its incorporation.
Whether it actually manufactured before September 1991, however, is not
possible to answer without proper evidence as to the actual manufacturing of
H the kitchen mixers by the first defendant." (emphasis supplied)
POWER CONTROL APPLIANCES v. SUMEET MACHINES [MOHAN, J.) 733

34. So, as such there is no evidence of manufacture. As rightly A
contended by Mr. Chidambaram, learned counsel, marketing may not
advance the case of the first defendant-respondent. We do not think, as is
urged by Mr. Soll J. Sorabjee, learned counsel, either the criminal com-
plaint or the averment in the plaint would amount to implied consent, more
so, when no oral evidence has been let in, the parties having chosen to B
proceed on affidavit and counter affidavit.

35. In 1984 the first defendant-company came to be incorporated.
This was for the purpose of diversifying the industrial activity of the family
group for manfacturing other technical appliances like washing machines,
vacuum cleaners etc. But there is nothing on record to show that the first c
defendant was manufacturing earlier than the allged violation of trade
mark, copyright and design, as stated in the plaint.

36. We find considerable difficulty in appreciating the conclusion cf
the Division Bench which had failed to note that the proprietor of the trade D
mark is Sumeet Research and Holdings Ltd. Again, the complaint of
infringement of trade mark is not against Ajay Mathur but against Sumeet
Machines Private Limited and M/s Sekar and Sagar.

37. It is a settled principle of law relating to trade mark that there E
can be only one mark, one source and one proprietor. It cannot have two
origins. Where, therefore, the first defendant- respondent has proclaimed
himself as a rival of the plaintiffs and as joint owner it is impermissible in
law. Even then, the joint proprietors must use the trade mark jointly for
the benefit of all. It cannot be used in rivalry and in competition wi•h each
other.
F

38. The plea of quasi-partnership was never urged in the pleading.
As regards copyright there is no plea of assignment. The High Court has
failed to note the plea of honest and concurrent user as stated in Section
12(3) of 1958 Act for securig the concurrent registration is not a valid G
defence for the infringement of copyright. For all these reasons we are
~ unable to support the judgments of the High Court under appeal. We
reiterate that on the material on record as is available at present the denial
of injunction, once the infringement of trade mark, copyright and design is
established, cannut be supported. Pending suit, there will be an injunction H
734 SUPREME COURT REPORTS [1994] 1 S.C.R.

A in favour of the appellants (the plaintiffs). All the civil appeals will stand
allowed. No cost.

We request the High Court to try the suits with utmost expedition.

39. We make it clear that whatever we have observed herein will have
B absolutely no.. bearing in the trial of the suits which have to be decided
independently on their respective merits.

R.P. Appeals allowed. ·~·