National Garments, Kaloor vs. National Apparels, Ernakulam

Citation: AIR 1990 Ker 119

Facts:

The Respondent was a firm of which the Appellant was a partner till her retirement on 1st September, 1987. The Respondent had applied for the registration of its Mark ‘Tonoform’. The Appellant after retirement from the firm, started an identical business and the trade name used by her was ‘Tonoform’. The Respondent filed a suit for passing off. The District Court gave a temporary injunction in favour of the Respondent. Aggrieved by the order, the Appellant preferred the present appeal.

Issue: Whether the Court below was justified in granting the temporary injunction?

Observations in Appeal:

Definition of the word ‘passing off.

“It is an actionable wrong for the defendant to represent, for trading purposes, that his goods are those or that his business is that of the plaintiff, and it makes no difference whether the representation is effected by direct statements, or by using some of the badges by which the goods of the plaintiff are known to be his, or any badges colourably resembling these, in connection with goods of the same kind, not being the goods of the plaintiff, in such a manner as to be calculated to cause the goods to be taken by ordinary purchasers for the goods of the plaintiff.” (Kerly’s Treatise on Law of Trade Marks and Trade Names)

“In an action for passing off, a plaintiff need not prove any malice unlike the plaintiff in a tortious action for injurious falsehood. Likewise proof of damage as such is not essential to enable the plaintiff to maintain an action for passing-off.”

To put it briefly “the plaintiff in an action for passing off must show, if not that he has some sort of business which is threatened by the defendant’s activities, at least that his interest is something akin to that of the owner of a business”. (Kean v. Mc Given, (1982) FSR 119).

For a temporary order in an action for passing off, the plaintiff need not in general show a strong prima facie case. However the prima facie case that is required to be shown must be something more than a case that will avoid the action being struck out as frivolous or vexatious. Generally stated “even if the chance of success at the trial are only 20 per cent”, the interim relief sought for is required to be granted. (Kerly’s Law of Trade Marks and Trade Names, Twelfth Edition).

There is another reason for the grant of the interlocutory injunction under such circumstances. Such an order would stop the infringement without delay. Not only that from experience it is clear that a successful motion for interlocutory injunction “normally puts an end to the litigation and the infringement, with a great saving in expense compared with a full trial” and that is the reason why the law insists upon a hearing of such a motion in every case. It is also clear from this treatise of Kerley that “in extremely urgent cases an ex parte injunction may be obtained before the full hearing of the motion or an “Anton Piller” order, for inspection of the defendant’s premises without prior warning and discovery of his records, may be obtainable”. This Anton Piller’ order is similar to the ex parte interlocutory order to take an inventory of the articles etc. passed in an ordinary suit.

The Appeal was dismissed.