Setting Out Two Separate Prayers For Injunction, One For Infringement And Other For Passing Off A Singularly Unwise Practice: Bombay High Court

Describing the practice as singularly unwise, Justice GS Patel remarked,

"I would venture to suggest as a matter of law that the operative injunction order should only be as an injunction without a restriction specifying infringement or passing off".

The Court's order, stated to be issued to address a question of both form and substance that seems to me to generally arise in applications and suits of this nature, examines whether it made sense to seek injunction as a separate relief when infringement and passing off of trademarks were being argued.

Pointing out that both the claims of infringement and passing off sought only an injunction, the Court opined that such an approach would be incorrect, even venturing to state that it could be counter-productive.

The Court explained that there was no one-to-one correspondence between a cause of action and a relief.

Continuing, the Court elaborated on this proposition, saying,

"A single cause of action might yield a large number of prayers or reliefs, as we see very often in partition suits, for example. Equally, multiple cause of actions can be coalesced into a single prayer. When it comes to infringement and passing off, the reliefs is simply an injunction. It is inconceivable that a defendant would be under an injunction not to infringe, but would be set at liberty to pass off, or vice versa. The correct form, therefore, is simply to seek an injunction."

Therefore, whether a relief of injunction is obtained on the ground of infringement or on the ground of passing off (either or both) is immaterial to the framing of the relief, the Court stated.

Additionally, specifically in the context of trademark infringement suits, trademark law does not create any new rights, Justice Patel observed, with reference to Dr Justice AK Sikri's dictum in S Syed Mohideen v P Sulochana Bai

"S Syed Mohideen tells us that in a conflict between two registered proprietors, there must be an evaluation of which of the two has better rights in common law, to enable the court to determine whose rights are better and superior — in common law (and which common law rights have received statutory recognition by the provisions for registration)", the Court stated.

Even the examination of which proprietor had the better right, was only to obtain the relief of injunction, it was highlighted. To seek this relief, either infringement, passing off, or both could be asserted, Justice Patel notes.

In other reliefs in trademark suits, such as prayer for the appointment of Court Receiver or damages no separate relief of injunction was sought for the two distinct causes of action, the Court stated.

In this light, having separate prayers for injunction for infringement and copyright were unwise, the Court stated.

Against this backdrop, the Court urged Advocates to reconsider the manner in which they frame these prayers.

In the concluding portion of its Order, the Court states,

"I would venture to suggest as a matter of law that the operative injunction order should only be as an injunction without a restriction specifying infringement or passing off. That consideration is to be returned as a judicial finding, i.e., there is a case made out on the cause of action in infringement or passing off, but without affecting the framing of the injunction."