In a trademark suit, the case is often won or lost long before trial — at the temporary injunction. This first part of a three-part series covers the kinds of injunction, and the first ingredient a plaintiff must establish: the prima facie case.
The reliefs available
Registering a mark is only the start; the harder job is watching the market for conflicting marks. In a suit for infringement or passing off, the main reliefs are an injunction and damages — alongside an account of profits (profit the defendant made from the infringing mark) and delivery up of infringing goods.
The Supreme Court has repeatedly pushed for speed, noting that most IP cases are fought only over the temporary injunction while the suit itself drags on for years. It has urged trial courts to decide such matters expeditiously — normally within four months of filing — rather than merely granting or refusing an injunction.
Two kinds of injunction
Injunctions are governed by the Specific Relief Act, with procedure under the Civil Procedure Code. There are two types:
- Perpetual injunction — granted on the merits when the suit is finally decreed; the plaintiff’s exclusive rights are affirmed and the defendant is wholly prohibited from using the mark.
- Temporary injunction — for a fixed period or until further order, grantable at any stage. This is what matters most: without it, the defendant keeps using the mark while reputation and goodwill bleed away — and time is of the essence.
Getting a temporary injunction is no small thing. The plaintiff must make out three elements — the first being a prima facie case.
The prima facie case
Prima facie means “on the face of it” — the plaintiff must show there is a case fit to be tried. In 1958 the Supreme Court (in an industrial-disputes case) explained that a prima facie case is not a case proved to the hilt, but one that would be established if the supporting evidence were believed. The question is whether the evidence could lead to the conclusion — not whether it’s the only possible conclusion.
In trademark suits, showing you are the prior user of the mark, or that you’ve built reputation and goodwill, can help establish a prima facie case. The object of an interlocutory injunction, the Supreme Court has said, is to protect the plaintiff where damages alone couldn’t adequately compensate.
Indian courts follow the American Cyanamid and Series 5 tests:
- American Cyanamid: look at the whole case for a serious question to be tried, then weigh the balance of convenience, keeping in mind good reason to preserve the status quo — without needing to prove a probability, or even a strong probability, of success.
- Series 5: if the material shows one party’s case is much stronger, the court should not ignore that.
Coming up
The other two ingredients — balance of convenience and irreparable injury — are covered in Part Two, and the kinds of damages in Part Three.
Frequently asked questions
What reliefs can I seek in a trademark infringement suit? Injunction and damages, plus an account of profits and delivery up of the infringing goods.
What’s the difference between a temporary and perpetual injunction? A temporary injunction lasts for a fixed period or until further order and can be granted at any stage; a perpetual injunction is granted on the merits when the suit is finally decreed.
What is a prima facie case for an injunction? A case fit to be tried — not proved to the hilt, but one that would be established if the supporting evidence were believed.
Which tests do Indian courts apply? The American Cyanamid test (serious question to be tried, balance of convenience, status quo) and the Series 5 test (a much stronger case should not be ignored).
Legislation referred to
- The Trade Marks Act, 1999
- The Specific Relief Act, 1963