Permanent injunction

1
Permanent Injection of Trademark
2
In general Permanent Injunction

• Permanent injunction is granted or denied at the
  discretion of the Court after investigation of
  all the facts.
• It must be governed by the rule not by the humor.
• It must not be arbitrary, vagile and fanciful,
  but legal and regular.

3

• The permanent injunction should be no broader
  than is necessary to prevent deception and
  protect complainants rights and, on the other
  hand, should be broad enough to afford him all
  the protection to which he is entitled.
• Suit was filed for permanent injunction against
  defendants trademark. It is alleged that the
  mark of the plaintiff and the defendant are
  similar and would cause confusion and deception
  in the minds of the public. The defendant
  contended that the application suffered from
  delay and laches.
• It was held that the product of the defendant is
  under construction and as such there was no delay
  in filing the application. Plaintiff filed a suit
  for permanent injunction against defendant.
  Balance of convenience would lie in favor
  defendant.

4
Action in the Nature of Permanent injunction 
5
Action in the Nature of Permanent injunction 

• permanent injunction applying to future conduct
  will not be denied because of delay.
• A corporation may enjoin another corporation from
  using plaintiffs name in a like business, even
  though defendant has no yet engaged in business
  under such name.
• Where defendant was arranging to put out an
  article bearing a name similar to plaintiffs
  trade name, plaintiff may sue for the injunction
  without waiting until the article is put on the
  market by defendant.
• The court need not wait for the appropriation of
  ones property by use of a similar trade name, if
  it clearly appears that such wrongful
  appropriation is extremely probable and plainly
  likely to occur.

6
Commercially impracticable -No ground to refuse

• The court refused to relieve the defendant of
  this obligation, saying that if what the
  defendant, asserted was true and the defendant
  could not use the name as directed, then it must
  cease to use the name together.
• On a re-hearing, the defendant asserted that it
  was a physical impossibility to print this phrase
  in the manner provided in the decree on the
  wrappers around the individual pieces of the
  confection.
• The court refused to relieve the defendant of
  this obligation, saying that if what the
  defendant, asserted was true and the defendant
  could not use the name as directed, then it must
  cease to use the name together.

7
Unfair use of the trademark on the Trademark
owners Goods

• Where the infringement lies, not in the
  simulation of anothers trademark ,but it is
  improper use ,by others than the owner, the
  remedy is not to enjoin all use of it ,but to
  regulate such use so that it will be honest and
  truthful.
• The court held when a person so misrepresents
  the quality of the goods are of a different
  quality from what is being sold, the use of the
  manufacturers name may be restrained altogether,
  in order to prevent what is in effect a continued
  representation that the goods are other than they
  really are in fact.

8
Corporate Names

• In respect of corporate rules, the same rule
  applies as to the name of business or
  individuals, and permanent injunction lies to
  restrain the simulation and use by one
  corporation of the name of a prior corporation
  tends to create confusion and enables the later
  corporation to obtain, by reason of the
  similarity of names ,the business of the prior
  one.
• There is no distinction between corporations and
  natural persons in the principle, which is to
  prevent fraud. An individual who has been doing
  business under his own name is not deprived of
  the right to use his own name because he brings a
  partner into his business, or incorporates

9
Bankruptcy

• The permanent injunction in a suit
  for infringement of a trademark, and unfair
  competition, consisting of the use of
  plaintiffs trademark as the part of defendants
  corporate name, since a sale of the property
  would include the asserts, goodwill and corporate
  name.
• So an injunction restraining further use of a
  name as part of the corporate name of a
  corporation will not be denied on the ground of
  hardship, I f any, arose from the acts of the
  corporation after expiration on the contracts
  authorizing the use of such name.

10
Voluntary discontinuance-How Far will affect the
issue of permanent injunction

• This subject has already been dealt with under
  the heading of preliminary injunction.Mr.Kerr
  lays it down as a rule in regard to bills to
  restrain violation of trademarks that the owner
  of a trademark, where the marks have been
  illegally taken by another, is not bound to rely
  upon his assurance or premises not to repeat the
  illegal appropriation of the trademark, but is
  entitled to the protection of the court
  by permanent injunctions.
• But the rules does not seem to be an absolute one
  and it is in the discretion of the court, when
  considering the issue of an injunction, give such
  weight to the discontinuance as it may consider
  proper in the circumstances of the case and where
  it is satisfied that the menace is not likely to
  continue, the relief may be denied.

11
Discontinuance prior to Suit of permanent
injunction 

• Discontinuance of the use of the trademark or
  name constituting infringement or unfair
  competition, before commencement of this suit, is
  not a bar, where defendant contests the suit and
  still claims the right to use such mark or name,
  and there are no grounds to believe that the
  discontinuance was in good faith and without an
  intention to resume the wrongful use.
• An permanent injunction may be denied where the
  infringement or unfair competition was
  discontinued in good faith ,and there is no
  reason to believe it will be resumed.

12

13
Defendant Guilty of Deliberate Fraud

• A defendant guilty of deliberate and intentional
  fraud will be dealt with more strictly than one
  who has acted with innocence and good faith.
• Drastic relief will be granted in such cases to
  prevent the continuing effect of defendant act.
  In one case Judge Denison saidA defendant whose
  business enterprise is based on an express and
  deliberate fraud will not find a court of equity
  strenuous to preserve all the rights he might
  have had if his conducts and motive had been
  honest".
• For example in Coca-Cola Company v. Gay-Ola Co.,
  caramel was not used to color a beverage, and the
  color of that beverage came to identify the
  manufacturer. A competitor used caramel as an
  ingredient of his beverage in order to get the
  same color, and so facilitate passing-off. By so
  doing he forfeited his abstract  right to use
  caramel as an infringement of a beverage.

14
Plaintiff Guilty of Fraudulent Trade

• Where the plaintiffs trade is fraudulent relief
  will be denied. It will also be denied where
  defendant has been misled by the plaintiffs
  conduct. In Burgoyne and Co.v.Godfrec and Co.,
  the plaintiffs, who were the registered
  proprietors of the trademark Burgoyne for wine,
  sold by action wine in cakes bearing the
  inscription Burgoyne London.
• The wine had been consigned to the plaintiffs on
  approval and rejected by them, and was sold on
  account of the growers. The defendants purchased
  the wine at the auction, and re-sold it as
  Burgoynes Superior Australian Burgundy.
• The permanent injunction and an account were
  justified and coming to the conclusion that the
  wine was Burgoynes wine, and that they were so
  justified by the reason of the conduct of the
  plaintiffs in the matter, and that the plaintiffs
  were not entitled to any relief. The appeal was
  allowed with costs.

15
Representations through Agents

• Where the defendant is guilty of unfair use of
  his own name he may be restrained by the
  permanent injunction. This may be illustrated by
  the case in Rodgers and Sons v.Joseph Rodgers
  Simpson.
• In this case the plaintiffs Joseph Rodgers and
  Sons Ltd., manufacturers of Cutlery,brought an
  action against Joseph Rodgers Simpson to
  restrain the defendant from passing-off cutlery
  not being their goods as and for such goods, and
  from trading under the name Joseph Rodgers
  Simpson and Son, or any other name comprising the
  name Rodgers, so as to be calculated to
  deceive.
• The defendant was carrying on a grocers
  business, but he was also ,as the plaintiffs
  alleged that they had recently ascertained,
  selling knives marked as above mentioned. The
  defendant claimed that he had the right to use
  the name Joseph Rodgers Simpson and Son, and
  Contended that his use of it was fair.

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Factors to be taken into Account Generally
Stated for Permanent Injunction

• In determining the scope of the permanent
  infringement for infringement of a trade name the
  manner in which the plaintiff is harmed, possible
  means by which harm can be avoided justification
  advanced for defendants conduct, inconvenience
  that would be caused by defendant by each of the
  several means of avoidance and their effects on
  competition between goods of plaintiff and those
  of defendant are generally important factors
• And, while infringement of a trade name does not
  necessarily call for broader permanent injunction
  than does infringement of trade name, in 
  assigning values to factors considered in
  determining the scope of the permanent
  injunction ,differences between trade name are to
  be taken into account.