Principles applicable for grant of temporary injunction in trademark cases
Prima facie case principle followed while granting a temporary injunction
Before American Cyanamid Co. v. Ethicon Ltd., (1975) 1 All ER 504 (HL) it was customary for the Courts to go into prima facie case in trade mark cases for grant or refusal of temporary injunction. But in American Cyanamid, it was observed that it was sufficient if a “triable issue” was presented by the plaintiff and the merits need not be gone into. The said judgment was referred to by this Court in Wander Ltd. v. Antox India (P) Ltd., (1990) Suppl. SCC 727. The judgment in Wander Ltd. was followed in Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448 . But in Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545 this Court again adverted to the prima facie case principle while granting temporary injunction.
All these rulings have been reviewed recently in Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd., (1999) 7 SCC 1. It was pointed to this Court that there was considerable criticism of the principles laid down in American Cyanamid (1975 (1) All ER 504). (See also Floyd, Interlocutory Injunctions since Cyanamid (1983 E 1 PR 238), (Cole, Interlocutory Injunctions in U.K. Patent cases (1979 E 1 PR 71) (see also Edenborough M and Tritton, American Cyanamid revisited (1998 E1 PR 234) and Philipps in 1997 JBL 486). This Court referred to the recent judgment of Laddie in UK.
In U.K., Laddie, J. reconsidered the principle recently and explained American Cyanamid in his judgment in Series 5 Software v. Clark, (1996) 1 All ER 853 (Ch D). The learned Judge observed that in American Cyanamid, Lord Diplock did not lay down that the relative strength of the case of each party need not be gone into. Thereafter, this Court in Palmolive case (supra) has referred to Laddie J’s view and said that the view of Laddie, J. is correct and that American Cyanamid cannot be understood as having laid down anything inconsistent with the ‘old practice’. We may also add that now the Courts in England go into the question whether the plaintiff is likely or unlikely to win in the suit i.e. into the comparative strength of the case of the rival parties – apart from the question of balance of convenience. (See again Laddie, J. in Barclay’s Bank Inc v. R.B.S. Advanta, 1998 RPC 307 where such a question is posed and where Series 5 Software was followed.
Therefore, in trade mark matters, it is now necessary to go into the question of ‘comparable strength’ of the cases of either party, apart from balance of convenience.