Case: Wander Limited and Another Vs. Antox India P. Limited

its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial courts exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph : (SCR 721)".... These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton .. the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well settled principle in an individual case. "The appellate judgment does not seem to defer to this principle15. We may now examine the tenability of the grounds on which a Division Bench reversed the Single Judges refusal. The passing-off action was based on the asserted right to a trademark said to have been acquired by continuous user. According to the appellate bench the user by Antox pursuant to the Drug Controllers licence and after the undertaking given by Wander Ltd." * .. was not registered user under Sections 48 and 49 of the Trade and Merchandise Marks Act nor was it a manufacture carried out in pursuance of a loan because...". In a passing-off action this would be relevant only in a negative way. Positively, the plaintiff must establish a prior user of his own. Prime facie. Antoxs case appears silent on this requirement in the context of a specific finding of the Single Judge as to user by Wander Ltd. prior to June 1986. Antoxs user is admittedly after June 1986 16. An infringement action is available where there is violation of specific property right acquired under and recognised by the statute. In a passing-off action, however, the plaintiffs right in independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trader to his prospective customers calculated to injuries, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader. Speaking of the legal clarification of this form of action, Lord Diplock said"Unfair trading as a wrong actionable at the suit of other traders who thereby suffer loss of business or goodwill may take a variety of forms, to some of which separate labels have become attached in English law, Conspiracy to injure a person in his trade or business is one, slander of goods another, but most protean is that which is generally and nowadays, perhaps misleadingly, described as "passing-Off: ". The form that unfair trading takes will alter with the ways in which trade is carried on and business reputation and goodwill acquired. Emersons maker of the better mousetrap of secluded in his house built in the woods would today be unlikely to find a path beaten to his door in the absence of a costly advertising campaign to acquaint the public with the excellence of his wares." * 17. Antox says that it is free from the inhibitions of the terms of that agreement dated March 28, 1986 on the ground that agreement is itself void for all purposes and, therefore, do not attach to or diminish the quality of its user, though commenced under that agreement. Antox says its user is referable to the Drug Controllers licence. But even assuming that the terms of the agreement dated March 28, 1986 are not to be put into the scales to determine the title to and character of the user by Antox, two crucial positions still stare Antox in the face.18. The first is that the Drug Controllers licence claimed by Antox as the source of its right to the user of the trademark, itself expressly stipulates that the goods to be manufactured pursuant to the said licence shall be goods under the registered trademark of Wander Ltd. The effect of this on the quality of the user has not been examined by the appellate bench.19. Secondly, even if a prior registration of a trademark is not necessarily evidence of prior user as contended by Sri Rao, Antox cannot, prima facie, explain how in a passing-off action its user subsequent to June 1986 would prevail over the prima facie finding that Wander Ltd. was manufacturing Calcium Gluconate tablets under the trademark "Cal-De-Ce" at its own factory in Bombay from August 1983 to June 1986. The appellate bench does not dislodge this finding nor does it recognise the crucial effect of prior use by the defendant on the plaintiffs case in a passing-off action, It appears to us that it was not an appropriate case where the appellate bench could have interfered with the discretion exercised by the learned Single Judge.

Decision (1 = appeal accepted, 0 = rejected): 1

Explanation:
1[ds]13. On a consideration of the matter, we are afraid, the appellate bench fell into error on two important propositions. Thefirst is a misdirection in regard to the very scope and nature of the appeals before it and the limitations on the powers of the appellate court to substitute its own discretion in an appeal preferred against a discretionary order. The second pertains to the infirmities in the ratiocination as to the quality of Antoxs alleged user of the trademark on which the passing off action isfounded. We shall deal with these two separately.14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial courts exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph : (SCR 721)".... These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton .. the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well settled principle in an individualappellate judgment does not seem to defer to this principle15. We may now examine the tenability of the grounds on which a Division Bench reversed the Single Judges refusal. Theaction was based on the asserted right to a trademark said to have been acquired by continuous user. According to the appellate bench the user by Antox pursuant to the Drug Controllers licence and after the undertaking given by Wander Ltd."was not registered user under Sections 48 and 49 of the Trade and Merchandise Marks Act nor was it a manufacture carried out in pursuance of a loan because...". In aaction this would be relevant only in a negative way. Positively, the plaintiff must establish a prior user of his own. Prime facie. Antoxs case appears silent on this requirement in the context of a specific finding of the Single Judge as to user by Wander Ltd. prior to June 1986. Antoxs user is admittedly after JuneAn infringement action is available where there is violation of specific property right acquired under and recognised by the statute. In aaction, however, the plaintiffs right in independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception.is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort ofinvolves a misrepresentation made by a trader to his prospective customers calculated to injuries, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader. Speaking of the legal clarification of this form of action, Lord Diplock said"Unfair trading as a wrong actionable at the suit of other traders who thereby suffer loss of business or goodwill may take a variety of forms, to some of which separate labels have become attached in English law, Conspiracy to injure a person in his trade or business is one, slander of goods another, but most protean is that which is generally and nowadays, perhaps misleadingly, described asThe form that unfair trading takes will alter with the ways in which trade is carried on and business reputation and goodwill acquired. Emersons maker of the better mousetrap of secluded in his house built in the woods would today be unlikely to find a path beaten to his door in the absence of a costly advertising campaign to acquaint the public with the excellence of his wares."Antox says that it is free from the inhibitions of the terms of that agreement dated March 28, 1986 on the ground that agreement is itself void for all purposes and, therefore, do not attach to or diminish the quality of its user, though commenced under that agreement. Antox says its user is referable to the Drug Controllers licence. But even assuming that the terms of the agreement dated March 28, 1986 are not to be put into the scales to determine the title to and character of the user by Antox, two crucial positions still stare Antox in the face.18. The first is that the Drug Controllers licence claimed by Antox as the source of its right to the user of the trademark, itself expressly stipulates that the goods to be manufactured pursuant to the said licence shall be goods under the registered trademark of Wander Ltd. The effect of this on the quality of the user has not been examined by the appellate bench.19. Secondly, even if a prior registration of a trademark is not necessarily evidence of prior user as contended by Sri Rao, Antox cannot, prima facie, explain how in aaction its user subsequent to June 1986 would prevail over the prima facie finding that Wander Ltd. was manufacturing Calcium Gluconate tablets under the trademarkat its own factory in Bombay from August 1983 to June 1986. The appellate bench does not dislodge this finding nor does it recognise the crucial effect of prior use by the defendant on the plaintiffs case in aaction, It appears to us that it was not an appropriate case where the appellate bench could have interfered with the discretion exercised by the learned Single Judge.