Registering a trademark is only the first step. What is more challenging is to be wary all those conflicting marks out there in the market trying to make a place for themselves. At the outset, in a suit of trademark infringement or passing-off, the two probable reliefs that can be sought are an injunction and then damages. This is apart from an account of profits (any likely profit that the defendant has made by using the infringing mark) and delivery of any goods (goods in the possession of the defendant containing the infringing mark) with the infringing mark which can also be prayed for in such cases. I hope to bring clarity through this three-part post dealing extensively with conditions for grant of temporary injunction and various kinds of damages granted by courts in cases relating to trademark infringement and passing-off.

At the outset, it is pertinent to note that the Supreme Court from time to time has been instrumental in ensuring that matters relating to trademarks, copyrights and patents are dealt with in a speedy manner. In this particular case, they opined that most cases relating to intellectual property are fought between parties solely for the purpose of temporary injunction and that the matter goes on for years until the suit is finally heard. The Bench stated that such matters should be finally decided very expeditiously (normally within 4 months from the date of filing) by the Trial Court instead of merely granting or refusing to grant injunction.

Types of trademark injunctions

In due course of time, we do hope that matters are resolved within the time frame as suggested by the Supreme Court. So, to begin with, injunctions are common to every branch of law and are governed by the Specific Relief Act. However, the procedure for seeking an injunction is laid down in the Civil Procedure Code. There are essentially two types of injunctions as contemplated under the Specific Relief Act – temporary and perpetual.

A perpetual injunction is generally granted upon merits of the suit when the suit is finally decreed. By virtue of this decree, the plaintiff can assert exclusive rights over the mark in comparison to the defendant who is completely prohibited from use of the mark or commission of any act which would go against the rights to be enjoyed solely by the plaintiff.

Temporary injunction, as the name suggests, is for a stipulated period of time or until any further court order and can be granted at any stage of the suit. This would be of utmost concern to any aggrieved party because unless the court grants temporary injunction, the other party can continue to use the mark and this would go against the very purpose of filing a suit of infringement or passing-off. As we know, time is of essence in such cases because there is the fear of losing out on reputation and goodwill. However, getting an order for temporary injunction from the court isn’t a child’s play. The plaintiff has to make out a case with the following elements.

Prima Facie Case

It is a Latin phrase meaning a legal presumption on the face of it or at first sight. In general, the courts require the plaintiff to show that there is a case at hand which needs to be tried. In 1958, the Supreme Court in a case relating to industrial disputes noted that a prima facie case does not mean a case proved to the hilt but a case which can be said to be established if the evidence which is led in support of the same were believed. While determining whether a prima facie case had been made out the relevant consideration is whether on the evidence led it was possible to arrive at the conclusion in question and not whether that was the only conclusion which could be arrived at on that evidence. This view holds good for any branch of law while interpreting the phrase ‘prima facie case’.

While contesting a suit for trademark infringement, if the plaintiff can show that they are the prior users of the mark or that they have acquired reputation and goodwill in due course of time, the Courts may consider these as factors while deciding whether a prima facie case has been made out or not.

The object of granting interlocutory injunction was discussed by the Supreme Court in this particular case where it was stated that since rights and violation alleged by the plaintiff are uncertain, the court has to act based on well settled principles in this connection. The object, in the opinion of the court, is to protect the plaintiff in case he could not be adequately compensated by way of damages.

The Indian courts have followed the tests laid down in the American Cynamid and Series 5 cases. According to the former, one must look at the whole case to see whether there is a question to be tried and, if there is, then look at the balance of convenience between the parties, bearing in mind that there is good reason why the status quo should be preserved. It was also clarified that there it is not necessary to prove a probability or even a strong probability. In the latter, the view that was taken was that if it is apparent from that material that one party’s case is much stronger than the other’s then that is a matter the court should not ignore.

The other two factors, which are balance of convenience and irreparable injury, shall be dealt with in Part-Two of this post.

This article has been authored by Nikita, an IP Law practitioner.

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