In the matter of :-
Brihan Karan Sugar Syndicate Private Limited …..Appellants
versus
Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana ………Respondents
Date of Order:-04.09.2023
The appellant–plaintiff was engaged in selling country liquor with the label “Tango Punch”.
The respondent– defendant was engaged in selling country liquor with the label “Two Punch Premium”.
The case of the appellant was that it has a copyright in the artistic label displayed on the bottles of country liquor sold by it.
The appellant claimed permanent injunction restraining the respondent from infringing copyright in its artistic label and decree of injunction for trademark label and passing off against the defendant. After a complete trial, the learned District Judge decreed the suit by passing a decree in favour of appellant/plaintiff for permanent injunction allowing prayers of injunction for copyright and trademark and damages for passing off.
Being aggrieved by the said decree, the defendant/ respondent herein preferred an appeal before the High Court. By the impugned judgment and order,
The appellant, who is the original plaintiff has preferred this appeal before Supreme Court for challenging the impugned judgment and order dated 23rd June 2021 passed by the learned Single Judge of the High Court of Judicature at Bombay (Aurangabad Bench).
By the impugned judgment, the High Court has stayed the execution and operation of the judgment and decree dated 24th May 2021 passed by the learned District Judge, Osmanabad, in a suit filed by the appellant till the pending of the appeal before High Court.
Submissions of Counsel for Appellant /Plaintiff
Counsel for Appellant /Plaintiff said that after considering the oral and documentary evidence, the learned Trial Judge held that (a) the plaintiff was the owner of copyright in “Tango Punch” label. (b) The label used by defendant/respondent were deceptively similar to the labels used by the plaintiff/appellant. (c) defendant has infringed has infringed the copyright of the appellant. Counsel urged that since after a complete trial, a decree was passed in favour of the appellant, it ought not to have been stayed.
The learned counsel for appellant has produced, for the perusal of the Court, the specimen bottles in which country liquor is being sold by the appellant and the respondent. He contended that there are striking similarities in the labels used by the appellant and the respondent.
Submissions of Counsel for Respondent/Defendant
Counsel appearing for the respondent submitted that no evidence was adduced to establish that the brand and label of the appellant were well established in the market. He submitted that apart from the fact that there is no similarity between the labels used by the parties, the appellant has not adduced evidence to prove its figures of sale, turnover, advertisement expenses, etc. Mere production of a certificate of a Chartered Accountant was not sufficient and in fact, it was necessary to examine the Chartered Accountant and other witnesses to prove the documents.
Observation of Hon’ble Supreme Court of India
First Observation was about passing off
Supreme Court said, one of the relevant factors which was considered by the High Court was that in the suit filed by the appellant, the relief of temporary injunction was denied to the appellant. The said relief was denied by the Trial Court by the order dated 12th April 2019, which was confirmed by the High Court by the judgment and order dated 7th January 2020. Thus, during the pendency of the suit, there was no prohibitory order operating in favour of the appellant.
Supreme Court said that as per the Judgment Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd. the volume of sale and the extent of advertisement made by the appellant of the product in question will be a relevant consideration for deciding whether the appellant had acquired a reputation or goodwill for passing off relief.
Second Observation about goodwill by Hon’ble Supreme Court
In the impugned judgment the documents are mentioned that are statement of sales as well as advertisement and sale promotion expenses certified by a Chartered Accountant. However, Court found that the Chartered Accountant was not examined to prove the statements.
Prima facie, it appears that at the time of final hearing of the suit, it was incumbent upon the appellant/plaintiff to actually prove the figures of sales and expenditure incurred on the advertising and promotion of the product. Only by producing the statements without proving the contents thereof, the appellant could not have established its reputation or goodwill in connection with the goods in question.
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. Prima facie, there is no evidence on this aspect.
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.
Prima facie, there is no evidence on this aspect. However, at the time of the final hearing of the suit, the figures must be proved in a manner known to law.
Third Observation about acquiescence by Hon’ble Supreme Court
In the facts of the case, it appears that when permission was sought by the respondent to use the impugned labels, the appellant raised objections in writing to the grant of permission to the respondent to use the said labels. It is not as if those objections were not pursued, but there was a positive act on the part of the appellant of withdrawing the said objections by submitting the letters of withdrawal in which, admittedly, it was not mentioned that the withdrawal was conditional. This important factual aspect supports the order of stay granted by the High Court as regards the decree in respect of the infringement of copyright.
A prima facie case of acquiescence by the appellant was made out by the respondent.
Fourth Observation by Hon’ble Supreme Court, about raising objections during cross examination
Court said that there are certain disturbing features about the conduct of a member of the Bar while the trial was being conducted in this case. During the course of the cross examination of the witness– by the appellant, the following portion has been recorded by the learned Trial Judge:
“Ld.Adv.Mr.XXX (name masked) for plaintiffs is taking objections for each and every question while noting down the same also his objection continues. In this way series of objections taken by him is going on. Every time it is not possible for the Court to record each and every objection, therefore, the Court has adopted the procedure to record at important place, the question put to the witness and answer given by him, in question-answer manner as it is. Even then Ld.Adv. Shri XXX (name masked) continued objecting the questions. In this background Ld. Adv. Shri XXX (name masked) is requested to listen carefully the question put up to the witness and thereafter to carefully listen to answer given by the witness. Even then if the witness is confused, he should state about the same to the Court. However, no such confusion appears on the part of witness, therefore, the objections of Ld. While a trial is being conducted,
the members of the Bar are expected to act as officers of the Court. They are expected to conduct themselves in a reasonable and fair manner. The members of the Bar must remember that fairness is a hallmark of great advocacy. If the advocates start objecting to every question asked in the cross examination, the trial cannot go on smoothly. The trial gets delayed. In the facts of the case, looking at the persistent objections raised by the learned advocate, the Court was required to record a substantial part of the cross examination in question and answer form which consumed a lot of time of the Court.Adv. Shri XXX (name masked) that the question should be clearly put up to the witness, are not relevant. Ld. Adv. Shri XXX (name masked) shall not raise such objection henceforth. As frequency of his taking objections is increased, the Court finds it to be noted as such .. .. .. .. .. .. .. .. .. .. .. .. “
To conclude, the High Court was justified in granting the order of stay pending till the final disposal of the appeal before High Court.
The appeal before Supreme Court is, accordingly, dismissed.
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