Permanent injunction is granted or denied at the discretion of the court after investigation of all the facts at the trial. This discretion “when applied to a court of law means discretion guided by law. It must be governed by rule and not by humor. It must not be arbitrary, vagile and fanciful, but legal and regular”.

1. What is a Permanent injunction for a trademark? –
Trademark Registration
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2. • Permanent injunction is granted or
denied at the discretion of the court
after investigation of all the facts at the
trial.
• This discretion “when applied to a court
of law means discretion guided by law.
• It must be governed by rule and not by
humour.
• It must not be arbitrary, vagile and
fanciful, but legal and regular”. *
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3. • But a permanent injunction at
the final hearing is a matter of
course and of right when the
plaintiff’s right and title and
an infringement or a passing
off is clearly established and
there are no countervening
equities.
• In formulating a final
injunction in trademark and
unfair competition cases the
object of the court is to
eliminate confession and
unfair dealing.
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4. • The 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.
• A court will not, by way of an injunction, undertake to revise a contract with respect to
the use of a trade name nor will it grant such relief to prevent the violation of an
agreement which is too indefinite.
This principle is of very real importance in cases
of this sort for oftentimes the decrees finally
granted, leave the defendant in position to
continue to harass the plaintiff unfairly or to
continue a practical use of the methods
condemned in the court’s opinion.
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5. • It happens not infrequently that the relief provided for in the opinion is
pared down in formulating the decree to such an extent as to deprive
plaintiff of much of the relief to which the court, in its opinion, had
held him entitled.
• Many unfair competition and trademark cases, the trial of which has
cost litigants substantial sums, have ended in weak, impractical,
compromise decrees of little practical value as a protection of either the
plaintiff or the public.
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6. • Suit was filed for permanent injunction against defendant’s trademark.
• It is alleged that the marks 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.
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7. Commercially impracticable – No ground to refuse:
• The fact that a decree proves commercially
impracticable from the defendant’s point of
view does not mean that plaintiff will be
deprived of protection.
• In a case involving the use of a personal
name on confections the second circuit
court directed that a special explanatory
phrase be used by the defendant in
juxtaposition to the personal name.
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8. • 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 altogether.
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9. Unfair use of trademark on the trademark owner’s goods:
Where the infringement lies, not in the simulation of another’s trademark,
but in its 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.
Only in cases of extreme and continuing fraud an injunction against the use
of the trademark will be issued.
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10. Corporate names:
In respect of corporate names the same rule applies to the name of firms or individuals, and
an injunction lies to restrain the simulation and use by one corporation of the name of a prior
corporation which tends to create confusion and enables the later corporation to obtain, by
reason of the similarity of names, the business of the prior one.
No distinction between the natural persons and the corporation 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
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11. Bankruptcy:
The fact that defendant’s assets are in-charge of a
trustee in bankruptcy is no ground for refusing an
injunction in a suit for infringement of a
trademark and unfair competition, consisting of
the use of plaintiff’s trademark as a part of
defendant’s corporate name, since a sale of the
property would include the assets, 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, where
the hardship, if any, arose from the acts of the
corporation after expiration of the contracts
authorizing the use of such name.
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12. Discontinuance prior to suit:
• Discontinuance of the use of the mark 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 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.
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13. Defendant guilty of deliberate fraud:
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’s acts.
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 are might have had if his conducts
and motive had been honest.
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14. Plaintiff guilty of fraudulent
trade:
Where the plaintiff’s trade is fraudulent relief will be
denied. It will also be denied where the defendant has
been misled by the plaintiff’s conduct.
On the trial of an action, to restrain the defendants
from infringing the plaintiff’s trademark, and from
passing off the wine in question as being the
plaintiff’s wine, it was held, that the wine was not the
plaintiff’s wine, and that the plaintiff were
not estopped by their conduct from restraining the
sale of the wine as their wine.
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15. An injunction and an account of profits were granted. The defendants appealed.
Held, that the defendants were justified in coming to the conclusion that the wine was
Burgoyne’s wine, and that they were so justified by 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.
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