SpicyIP Tidbit: Acquiesce, Copyright Infringement, and Pending Suits in Trial Courts: Highlighting SC’s Recent Remarks

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The Supreme Court in Brihan Karan Sugar Syndicate Private Limited vs Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana dealing with issues of passing off, acquiescence, underscored the pendency of suits in the Trial Courts in the State of Maharashtra and urged the Bar members’ cooperation with the Trial Courts. The case contains a few notable points that I found worth tidbit-ing.

Let’s unfurl the facts: The case involves an appeal challenging an order of the High Court of Judicature at Bombay, which stayed the execution of the injunction order of the District Court. The background is that the appellant (originally, the plaintiff) uses “Tango Punch” for selling liquor whereas the respondent (originally the defendant) uses “Two Punch Premium” for similar goods. The appellant contended that its copyright in the artistic label displayed on the liquor bottles was infringed by the respondent. Accordingly, it sought a permanent injunction to restrain the respondent. The District Court, while finding copyright infringement and passing off, passed a permanent injunction. The High Court, however, put a stay on this order, which was also upheld by the Supreme Court through the present case. 

The points that, I believe, need highlighting are: 

One, regarding passing off, the Court, while reinforcing the triple test (i.e., goodwill, misrepresentation, and damage), made an important remark that – if a plaintiff fails to establish goodwill, there’s no need to delve into any other facets to ascertain the plaintiff’s passing-off action. This idea needs highlighting. As is observed in several cases, the passing off action is a standard claim in trademark litigations. However, it’s oft observed that the question of goodwill/reputation, which composes the core of passing off claims, is often not deeply delved into (e.g. see here and here). The present case is a resounding reminder to take that question more seriously. In this regard, the Court also accentuated that “For establishing goodwill of the product, it was necessary for the appellant to prove not only the figures of sale of the product but also the expenditure incurred on promotion and advertisement of the product.” (Sidenote: It is noteworthy that goodwill and reputation are not the same things, as the Court seems to have suggested. e.g. see here)

Two, on the acquiescence issue, the Court reaffirmed that acquiescence is a defense available for copyright infringement. Relying on the case of Power Control Appliances v. Sumeet Machines Pvt. Ltd, it read the concept of acquiescence broadly (i.e., beyond the rights over a mark) and noted that “… acquiescence is a course of conduct inconsistent with the claim for exclusive rights and it applies to positive acts and not merely silence or inaction such as is involved in laches.” In this context, the Court regarded the appellant’s withdrawal of its objection to the respondent’s request for permission to use ‘Two Punch Premium’ labels from the State Excise Commissioner as a form of acquiescence.

Besides these claims, the present Court laid special emphasis on the trial court hearing raising two pertinent points: first, it said that in a passing-off suit’s temporary injunction application, the plaintiff’s signed account statements by a Chartered Accountant may support a prima facie case. Still, at the final hearing, legal proof of these figures is required. Second, the Court particularly acknowledged the trial Court’s remark regarding the objection of the plaintiff’s advocate who raised objections to each and every question during cross-examination. Although the present order does not delineate the specific facts/questions/objections that prompted this recording by the trial Court, it noted that such behavior (of asking too many objections without justified reasons) makes it infeasible for the court to record every objection and delays the trial. In this context, the Court, citing the huge pendency of suits in the Maharastra’s Trial Courts, noted that “the members of the Bar are expected to act as officers of the Court” who “are expected to conduct themselves in a reasonable and fair manner” Thus, it urged the advocates to cooperate with the trial courts.

All in all, this case, although not establishing any new guidelines or providing an in-depth explanation of any legal principles, serves as a relevant reminder for maintaining efficiency and professionalism throughout the litigation process.

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