Case: Power Control Appliances Vs. Sumeet Machines Pvt. Ltd

1. All these appeals can be dealt with under a common judgment. The civil appeal Nos.are by the first plaintiff while Civil appeal No. 2553/93 by the second plaintiff2. The plaintiffs filed three suits on the file of the High Court of Madras(i) C.S. No. 343 of 1992 complaining of infringement of the copyright of the first plaintiff (Power ControlAppliances Company)(ii) C.S. No. 431 of 1992 alleging the violation of the registered trade mark Sumeet No. 263836 inin Class 7 for machines (electric) for kitchen use;(iii) C.S. No. 432 of 1992 claiming the design registration in the Whipper Blade of the power operated mixies3. Pending these suits, four applications No. 226, 227, 271 and 272 of 1992 were taken out, two in C.S. No. 343 of 1992 and one each in C.S. Nos. 431 and 432 of 1992, respectively4. The facts are common to all the suits and the applications. In C.S. No. 343 of 1992 in the applications No. 226227/1992, the plainitiffs prayed for an interim injunction to restrain the respondents (defendants) from using, distributing, printing or causing to be printed the work as contained in Documents No. (1) recipe book and instruction manual, (2) guarantee card and (3) outer carton and the work as found in Document, No. 4, 5 and 65. In C.S. No. 431 of 1992 in application No. 271/92 an interim in junction was sought to restrain the respondent from using the registered trade mark6. In C.S. No. 432 of 1992 in application No. 272/92 the injunction was sought to restrain the respondents from using the design registration in manufacturing the mixies7. Admittedly, Mrs. Madhuri Mathur is the sole proprietrix of M/s. Power Control and Appliances Company. She started manufacturing power operated kitchen mixces, for domestic use since 1963. They are marketed since 1964 under the brand name of Sumeet. The mixy was packed in a cardboard box and at the top the pictorial and photograph display of the appliance in different colours showing the different purposes for which the mixy could be used was shown. A booklet was enclosed bearing the title Sumeet DomesticInstructions and Recipe Book. That consisted of 80 pages bound spirally in hard art paper cover. A guarantee card was also issued. All these were devised, conceived and made by the 1st plaintiff in 1982 with the assistance of artists, photographers, printers and executives employed by the 1st plaintiff for valuable considerations fully paid. As such the 1st plaintiff is the owner copyright in respect of all the above items interims of Section 17 of the Copyright Act, 1957. Sumeet mixy came to be in great demand in India and abroad. The business expanded. To cope, up with the demand, the 1st plaintiff had to float three more concerns for the manufacturing of the same appliances. The companies are(i) Power Control and Appliances (Bombay) Ltd(ii) Mathur Micro Motors and Appliances Ltd(iii) Power Control Appliances (Kandla)8. All these concerns except Power Control and Appliances (Bombay) Limited buy electric motors for their mixies from the second plaintiff Sumeet Research and Holdings Limited. That is deemed to be a public limited company. Mrs. Madhuri Mathur is the Chairman and Director. She holds 59.25% shares9. The artistic manner in which the word Sumeet is written was conceived and published by the first plaintiff. It was registered as a trade mark with effect from 18.4.1970. This trade mark was assigned to the second plaintiff on 1.1.1981. The second appellant is the owner of the copyright10. The first defendant was incorporated in 1984. It has been manufacturing and selling mainly washing machines and vacuum clearners from Septemper/October 1991. It has started manufacturing domestic mixies exactly similar to plaintiffs mixer with identical specifications excepts for power rating. The package and the pictorial display are identical. Even the booklet is pagewise reproduction including an error with respect to Design No. 146781, a design number not belonging to the plaintiffs. The contents of the guarantee card are also identical. The first defendant is affixing on each of the appliances the registered trade mark Sumeet belonging to the second plaintiff in the same artistic manner in which it is registered. On these allegations, it was urged that the first defendant had committed infringement of the exclusive copyright of the first plaintiff in the artistic material and trade literature displayed on thebox. Similarly, the operating instructions and recipe book and the guarantee card issued by them11. With regard to the components of the mixer. Mrs. Madhuri Mathur had obtained registration of their design under Part II of the Designs Act, 1911. Those components are(i) Dry grinding blade(ii) Whipper blade(iii) Polycarbonate dome(iv) Stainless steel jar with rim12. Each one of them has a specific registration number. Though the statutory period of 15 years or the validity of the copyright had elapsed onconcerning items (i), (ii) and (iv), as regards whipper blade the validity of registration is up to 5.4.1994. Therefore it is not open to any one, to infringe the same. Thus, the applications on the grounds came to be preferred13. The first defendant did not file the written statement. However, he filed hisThe stand taken by him is that he (Ajay Parkash Mathur) is the eldest son of Mrs. Madhuri Mathur. On his return from United States, the family business, mainly kitchen appliances and mixer machines under the trade name of Sumeet had picked up by the innovative ideas and dynamic marketing strategies evolved by him. The family of Mathurs included the plaintiffs, the first defendant and others. The family was selling Sumeet Mixies since 1963. It is true that three other companies were floated. In fact, he was the director of Power Control and Appliances (Bombay) Limited until recently. Because of inter se disputes, he was obliged to leave the said company14. The first defendant company was incorporated in 1984 as Sumeet Machines Private Limited for the purpose of manufacture of market kitchen appliances under the trade name of Sumeet and other products such as washing machines. The said company itself was incorporated with the knowledge and approval of theWhen Sumeet Machines Private Limited was sought to be registered before the Registrar of Companies, Maharashtra, a letter of no objection from the owners of the trade mark Sumeet had to be produced. The first defendant obtained letters both from the first and second plaintiff on 7.5.1984. It was only on this the company came to be registered on 5.9.1984. As a matter of fact, Mrs. Madhuri Mathur is a shareholder in first defendant, she having been allotted 5000 shares. Likewise the father of first defendant also owns 5000 shares15. Since 1986, the first defendant has been manufacturing and marketing mixies under the trade name of Sumeet. This was done with the knowledge and consent of the plaintiffs openly and concurrently. Further, Mrs. Madhuri Mathur and the father of first defendant have signed and given personal guarantees to the State bank of Hyderabad on behalf of the first defendant. The loans were secured on that basis in short, the reply of the first defendant is that the copyright trade mark and the copyright design is that of the first defendant who was conceived as a family concern. The word Sumeet was given with the blessings and consent of Madhuri Mathur and S. P. Mathur. Therefore, he has been an honest and concurrent user. In any event, the plaintiffs applications were not entitled to the reliefs on the ground of acquiescence16. The learned Single Judge as seen from the report of decision in Power Control and Appliances Co. and another v. Sumeer Machines Private Ltd. and another, held that the copyright with respect to operative instructions and recipe book, guarantee card and the outer carton of the Sumeet Kitchen Mixies vested in Power Control Appliances Company represented by the Sole Proprietrix Mrs. Madhuri Mathur, Equally, the copyright in the design registration No. 148246 in relation to whipper blade was also accepted as belonging to the plaintiff. The trade mark in the name of Sumeet with the particular artistic design registered in the name of Sumeet Research and Holdings Limited was accepted as claimed by the plaintiffs. Notwithstanding all these, the relief of injunction was not granted in view of acquiescence by the plaintiffs in the honest and concurrent user of the first defendant. Against this judgment, O.S.A. No.came to be preferred17. The Division Bench by the impugned judgment datedheld that the learned Single Judge was not wrong in holding that the plaintiffs have acquiesced in the use of the trade literature and the trade mark by the first defendant. The relief in equity of injunction, if granted, will affect the interest of not only Ajay Mathur but also other members of the family who are shareholders of the first defendants company. Accordingly the appeals were dismissed. It is under these circumstances, these civil appeals have been preferred. Civil Appeal No. 2551/1993 against applications No. 226 and 227/1992 in C.S. No. 343/1992, Civil Appeal No. 2552/1993 against application No. 271/1992 in C.S. No. 432/1992 and Civil Appeal No. 2553/93 against application No. 272/1992 in C.S. No. 431/92

Reasoning: 21. Under Sections 19 and 54 of the Copyright Act reproduction of the copyright itself is infringement unless there is specific assignments in writting by the proprietor. In this case, there is not even a plea that Mrs. Madhuri Mathuri assigned the copyright in the outer carton, handbook and guarantee card. The concept of honest and concurrent user found in Section 12(3) of the 1958 Act for securing concurrent registration is totally irrelevant as defence in a suit for infringement and copyright arising out of a different Act namely, 1957 Act. Therefore, there can be no honest and concurrent user of ones copyright by another. After 1958 Act, the plea of acquiescence is not available at all.So, as such there is no evidence of manufacture. As rightly contended by Mr. Chidambaram, learned counsel, marketing may not advance the case of the firstWe do not think, as is urged by Mr. Soli J. Sorabjee, learned counsel, either the criminal complaint or the averment in the plaint would amount to implied consent, more so, when no oral evidence has been let in, the parties having chosen to proceeding on affidavit and counterWe find considerable difficulty in appreciating the conclusion of the Division Bench which had failed to note that the proprietor of the trade mark is Sumeet Research and Holdings Ltd. Again, the complaint of infringement of trade mark is not against Ajay Mathur but against Sumeet Machines Private Limited and M/s. Sekar and Sagar44. It is a settled principle of law relating to trade mark that there can be only one mark, one source and one proprietor. It cannot have two origins. Where, therefore, the firsthas proclaimed himself as a rival of the plaintiffs his claim as joint owner is impermissible in law. Even then, the joint proprietors must use the trade mark jointly for the benefit of all. It cannot be used in rivalry and in competition with each other45. The plea ofwas never urged in the pleading. As regards copyright there is no plea of assignment. The High Court had failed to note that the plea of honest and concurrent user as stated in Section 12(3) of 1958 Act for securing the concurrent registration is not a valid defence for the infringement of copyright. For all these reasons we are unable to support the judgments of the High Court under appeal. We reiterate that on the material on record as is available at present the denial of injunction, once the infringement of trade mark copyright and design is established, cannot be supported.