Permanent injunction of trademark

Permanent injunction is granted or
denied at the discretion of the Court
after investigation of all the facts.
It must be governed by the rule not
by the humor.
It must not be arbitrary, vagile and
fanciful, but legal and regular”.
http://www.onlinetrademarkregistration.in/

 The permanent injunction should be no broader than
is necessary to prevent deception and protect
complainant’s rights and, on the other hand, should
be broad enough to afford him all the protection to
which he is entitled.
 Suit was filed for permanent injunction against
defendant’s trademark. It is alleged that the mark of
the plaintiff and the defendant are similar and would
cause confusion and deception in the minds of the
public. The defendant contended that the application
suffered from delay and laches.
 It was held that the product of the defendant is
under construction and as such there was no delay in
filing the application. Plaintiff filed a suit for
permanent injunction against defendant. Balance of
convenience would lie in favor defendant.

 permanent injunction applying to future conduct will
not be denied because of delay.
 A corporation may enjoin another corporation from
using plaintiff’s name in a like business, even though
defendant has no yet engaged in business under such
name.
 Where defendant was arranging to put out an article
bearing a name similar to plaintiff’s trade name,
plaintiff may sue for the injunction without waiting
until the article is put on the market by defendant.
 The court need not wait for the appropriation of one’s
property by use of a similar trade name, if it clearly
appears that such wrongful appropriation is extremely
probable and plainly likely to occur.

 The court refused to relieve the defendant of this
obligation, saying that if what the defendant,
asserted was true and the defendant could not use
the name as directed, then it must cease to use the
name together.
 On a re-hearing, the defendant asserted that it was a
physical impossibility to print this phrase in
the manner provided in the decree on the wrappers
around the individual pieces of the confection.
 The court refused to relieve the defendant of this
obligation, saying that if what the defendant,
asserted was true and the defendant could not use
the name as directed, then it must cease to use the
name together.

 Where the infringement lies, not in the simulation of
another’s trademark ,but it is improper use ,by
others than the owner, the remedy is not to enjoin all
use of it ,but to regulate such use so that it will be
honest and truthful.
 The court held “when a person so misrepresents the
quality of the goods are of a different quality from
what is being sold, the use of the manufacturer’s
name may be restrained altogether, in order to
prevent what is in effect a continued representation
that the goods are other than they really are in fact”.

 In respect of corporate rules, the same rule applies
as to the name of business or individuals, and
permanent injunction lies to restrain the simulation
and use by one corporation of the name of a prior
corporation tends to create confusion and enables
the later corporation to obtain, by reason of the
similarity of names ,the business of the prior one.
 There is no distinction between corporations and
natural persons in the principle, which is to prevent
fraud. An individual who has been doing business
under his own name is not deprived of the right to
use his own name because he brings a partner into his
business, or incorporates

 The permanent injunction in a
suit for infringement of a
trademark, and unfair
competition, consisting of the
use of plaintiff’s trademark as
the part of defendant’s
corporate name, since a sale of
the property would include the
asserts, goodwill and corporate
name.
 So an injunction restraining
further use of a name as part of
the corporate name of a
corporation will not be denied on
the ground of hardship, I f any,
arose from the acts of the
corporation after expiration on
the contracts authorizing the use
of such name.

 This subject has already been dealt with under the
heading of ‘preliminary injunction’.Mr.Kerr lays it
down as a rule in regard to bills to restrain violation
of trademarks that the owner of a trademark, where
the marks have been illegally taken by another, is not
bound to rely upon his assurance or premises not to
repeat the illegal appropriation of the trademark,
but is entitled to the protection of the court
by permanent injunctions.
 But the rules does not seem to be an absolute one
and it is in the discretion of the court, when
considering the issue of an injunction, give such
weight to the discontinuance as it may consider
proper in the circumstances of the case and where it
is satisfied that the menace is not likely to continue,
the relief may be denied.

 Discontinuance of the use of the trademark or
name constituting infringement or unfair
competition, before commencement of this suit,
is not a bar, where defendant contests the suit
and still claims the right to use such mark or
name, and there are no grounds to believe that
the discontinuance was in good faith and without
an intention to resume the wrongful use.
 An permanent injunction may be denied where
the infringement or unfair competition was
discontinued in good faith ,and there is no
reason to believe it will be resumed.

 A defendant guilty of deliberate and intentional fraud will
be dealt with more strictly than one who has acted with
innocence and good faith.
 Drastic relief will be granted in such cases to prevent the
continuing effect of defendant act. In one case Judge
Denison said:”A defendant whose business enterprise is
based on an express and deliberate fraud will not find a
court of equity strenuous to preserve all the rights he
might have had if his conducts and motive had been
honest".
 For example in Coca-Cola Company v. Gay-Ola Co.,
caramel was not used to color a beverage, and the color of
that beverage came to identify the manufacturer. A
competitor used caramel as an ingredient of his beverage
in order to get the same color, and so facilitate passing-
off. By so doing he forfeited his abstract right to use
caramel as an infringement of a beverage.

 Where the plaintiff’s trade is fraudulent relief will be
denied. It will also be denied where defendant has been
misled by the plaintiffs conduct. In Burgoyne and
Co.v.Godfrec and Co., the plaintiffs, who were the
registered proprietors of the trademark ‘Burgoyne’ for
wine, sold by action wine in cakes bearing the inscription
‘Burgoyne London’.
 The wine had been consigned to the plaintiffs on approval
and rejected by them, and was sold on account of the
growers. The defendants purchased the wine at the
auction, and re-sold it as Burgoyne’s “Superior Australian
Burgundy.
 The permanent injunction and an account were justified
and coming to the conclusion that the wine was Burgoyne’s
wine, and that they were so justified by the reason of the
conduct of the plaintiffs in the matter, and that the
plaintiffs were not entitled to any relief. The appeal was
allowed with costs.

 Where the defendant is guilty of unfair use of his own
name he may be restrained by the permanent injunction.
This may be illustrated by the case in Rodgers and Sons
v.Joseph Rodgers Simpson.
 In this case the plaintiff’s Joseph Rodgers and Sons Ltd.,
manufacturers of Cutlery,brought an action against Joseph
‘Rodgers’ Simpson to restrain the defendant from passing-
off cutlery not being their goods as and for such goods, and
from trading under the name Joseph Rodgers Simpson and
Son, or any other name comprising the name ‘Rodgers’, so
as to be calculated to deceive.
 The defendant was carrying on a grocer’s business, but he
was also ,as the plaintiffs alleged that they had recently
ascertained, selling knives marked as above mentioned.
The defendant claimed that he had the right to use the
name Joseph Rodgers Simpson and Son, and Contended
that his use of it was fair.

 In determining the scope of the permanent
infringement for infringement of a trade name the
manner in which the plaintiff is harmed, possible
means by which harm can be avoided justification
advanced for defendant’s conduct, inconvenience
that would be caused by defendant by each of the
several means of avoidance and their effects on
competition between goods of plaintiff and those of
defendant are generally important factors;
 And, while infringement of a trade name does not
necessarily call for broader permanent injunction
than does infringement of trade name, in assigning
values to factors considered in determining the scope
of the permanent injunction ,differences between
trade name are to be taken into account.

Permanent injunction of trademark

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