E.A. ABOOBACKER & ORS. versus STATE OF KERALA & ORS.
[2018] 12 S.C.R. 263, Supreme Court of India, 2018
Outcome: Rejected
Segment: Issues
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E.A. ABOOBACKER & ORS.
v.
STATE OF KERALA & ORS.
(Civil Appeal No. 2772 of 2011)
SEPTEMBER 27, 2018
[MADAN B. LOKUR AND DEEPAK GUPTA, JJ.]
Land Acquisition Act, 1894 – ss.3(c), 4(1), 17(1) and 17(4) –
Special Tahsildar if empowered to perform the functions of the
Collector under the Act – State Government acquired land in its
district for purpose of the Infopark and invoked the urgency clause
u/s.17(1) of the Act – Thereafter, notification was issued u/s.4(1) of
the Act – According to appellants their separate land was sought to
be acquired along with the land of others – Appellants contended
that Special Tahsildar was not entitled to perform the functions of
Collector in respect of other acquisitions for which he was not
empowered under the Act – Held: A notification dated 21.08.1989
was issued by the State Government appointing Special Tahsildar
to perform the functions of a Collector only in respect of any land
within his jurisdiction for the acquisition of which a notification
under sub-section(1) of s.4 of the Act was published – Special
Tahsildar was not empowered by the notification to issue any fresh
notification in respect of other land – Notification dated 21.08.1989
was followed by an explanatory note, which resolved the ambiguity
– It clearly indicated that notification was issued only to empower
the officer to act as Collector in respect for which the notification
under sub-section(1) of s.4 had already been issued – If the State
wanted him
to act as Collector in respect of other acquisitions,
nothing prevented the State from issuing a fresh notification in this
regard, but relying upon the notification dated 21.08.1989 the
Special Tahsildar could not have acted as Collector in respect of
other acquisitions.
Allowing the appeals, the Court
HELD: 1. On perusal of the notification dated 21.08.1989
it is apparent that by the said notification the Government of
Kerala had appointed an officer by the name of Special Tahsildar
(LA), K.R.L., to perform the functions of a Collector under the
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Act only within the area of Ernakulam District, only in respect of
any land within his jurisdiction for the acquisition of which a
notification under sub-section (1) of Section 4 of the Land
Acquisition Act, 1894 has been published. [Para 8] [268-G]
2.  On a careful analysis of the said notification, the State
has empowered the specified officer i.e. the Special Tahsildar
(LA), K.R.L. only in respect of the land for which the notification
under sub-section (1) of Section 4 had already been issued.  The
Special Tahsildar (LA) K.R.L. was not empowered by the
notification of 21.08.1989 to issue any fresh notification in respect
of other land.  Though the explanatory note may not be part of
the notification the same can definitely be used to resolve the
ambiguity, in the notification. The explanatory note clearly
indicates that the notification has been issued only to empower
the officer to act as Collector in respect of 320 acres of land.
[Para 9] [269-A-C]
3.  The High Court erred in taking the view that since public
interest is concerned a liberal view has to be taken and when
acquisition proceedings are completed or going on for acquiring
large portions of lands required for public purpose, such
acquisition cannot be stopped on “cryptic hyper-technical
ground”.  It is a settled position of jurisprudence that when the
law prescribes a procedure to be followed for doing any act or
thing then that procedure has to be
followed and any violation of
such procedure would make the act voidable, if not void.  There
is no doubt that the State is empowered to appoint any officer
other than a Collector or Deputy Commissioner to act as
Collector.  However, the notification should be clear as to for
what purpose such Collector is being appointed.  As far as the
present case is concerned the Special Tahsildar (LA), K.R.L.
was appointed as Collector only in respect of the acquisition of
land relating to Cochin Refineries Limited within Ernakulam
District.  If the State wanted him to act as Collector in respect of
other acquisitions, nothing prevented the State from issuing a
fresh notification in this regard, but relying upon the notification
dated 21.08.1989 the Special Tahsildar (LA), K.R.L. cannot act
as Collector in respect of other acquisitions.  This is not a hyper-
technical ground. When the State wants to acquire the property
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of a citizen which is a constitutional right of any citizen under
Article 300(A) of the Constitution of India it must strictly follow
the procedure prescribed by law.  It cannot urge that because
the acquisition is in public interest a more liberal view is to be
taken.  There is no question of taking a liberal or conservative
view.  The only view which has to be taken is the legal view.  The
Special Tahsildar (LA), K.R.L. was not authorized to act as
Collector for the entire District of Ernakulam and is empowered
only in respect of acquisitions for which notification had already
been issued for acquiring land for the Cochin Refineries Limited.
[Para 11] [289-D-H; 270-A-B]
CIVIL APPELLATE JURISDICTION : Civil Appeal No. 2772
of 2011.
From the Judgment and Order dated 06.01.2009 of the High Court
of  Kerala at Ernakulam in W.A. No. 2446 of 2008
WITH
Civil Appeal Nos. 2773-2774 and 2775 of 2011.
R. Venkataramani, Sr. Adv., Ms. Bindu K. Nair, Shinu J. Pillai,
Yashraj Bundela, Praveen Vignesh, Sushant Singh, Babby Augustine,
V. K. Sidharthan, Ranjith K. C., Mayilsam K, Ninargam R. Maurya
(for V. N. Raghupathy), Advs. for the Appellants.
Basant R., K. N. Balgopal, Sr. Advs., Sajith P., Mohd. Monish,
G. Prakash, Jishnu M. L.,  Ms. Priyanka Prakash, Ms. Beena Prakash,
Advs. for the Respondents.
The Judgment of the Court was delivered by
DEEPAK GUPTA, J. 1. The short question which arises in these
appeals is whether the Special Tahsildar (Land Acquisition), Cochin
Refineries Limited, Ernakulam, Vytilla, Cochin-19 [hereinafter referred
to as “the Special Tahsildar (LA), K.R.L.”] was empowered to act as
Collector under the Land Acquisition Act, 1894 (hereinafter referred to
as “the Act”), in respect of lands acquired by the State for an Infopark.
2. On 05.12.2005, the Government of Kerala accorded
administrative sanction to acquire 177.79 acres of land in Ernakulam
district for the purpose of the Infopark.  The Government also accorded
sanction to invoke the urgency clause under Section 17(1) of the Act.
Thereafter, on 15.12.2005, the District Collector, Ernakulam issued a
Government Order appointing the Special Tahsildar (LA), K.R.L. as the
E.A. ABOOBACKER & ORS. v. STATE OF KERALA & ORS.
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Land Acquisition Officer for the acquisition of land for the Infopark.
Thereafter, a notification was issued under Section 4(1) of the Act.   In
the said notification, it is mentioned that in view of the order of the
Government, application of Section 5(A) of the Act has been exempted
by invoking the powers under Section 17(4) of the Act.  According to
the appellants 23.92 acres of land belonging to them was sought to be
acquired along with the land of others.  The appellants filed objections
under Section 5A(1) of the Act.  According to them no action was taken
on their objections and, thereafter, they filed Writ Petition No.9735 of
2008 in the High Court of Kerala seeking various reliefs including
quashing of the notification issued under Section 4(1) and 17(4) of the
Act.  The main ground raised was that the Special Tahsildar (LA), K.R.L.
was not entitled to perform the functions of Collector under the Act.
The stand of the State was that the Special Tahsildar (LA), K.R.L. was
entitled to act as Collector for the entire Ernakulam District and was
therefore empowered to act as Collector even in relation to land acquired
for the Infopark.  The writ court dismissed the writ petition in so far as
this objection was concerned.  The appellants filed Writ Appeal No.2446
of 2008 which was also dismissed on 06.01.2009.
3. We have heard Shri R. Venkataramani, learned senior counsel
for the appellants, Shri Basant R.,
learned senior counsel appearing for
Infopark and Shri K.N. Balgopal, learned senior counsel appearing for
the State of Kerala.
4. Collector has been defined under Section 3(c) of the Act as
follows :-
“(c) the expression “Collector” means the Collector of a district,
and includes a Deputy Commissioner and any officer specially
appointed by the appropriate Government to perform the functions
of a Collector under this Act;”
A bare reading of the provision makes it amply clear that the
Collector and the Deputy Commissioner of a District are, by virtue of
their office, deemed to be “Collector” within the meaning of the Act.
The appropriate Government is also empowered under Section 3(c) to
specially appoint any other officer to perform the functions of a Collector.
It is obvious that the State has to issue a specific notification to appoint
any other officer to perform the duties of Collector.  The State may in its
wisdom appoint such officer for the entire district or for a special project.
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   5.     Section 4(1) of the Act reads as follows :-
4. Publication of preliminary notification and powers of
officers thereupon.- (1)  Whenever it appears to the appropriate
Government that land in any locality is needed or is likely to be
needed for any public purpose or for a company a notification to
that effect shall be published in the Official Gazette and in two
daily newspapers circulating in that locality of which at least one
shall be in the regional language, and the Collector shall cause
public notice of the substance of such notification to be given at
convenient places in the said locality (the last of the dates of such
publication and the giving of such public notice, being hereinafter
referred to as the date of publication of the notification).
6. In the present case, the controversy revolves around the
notification dated 21.08.1989, which reads as follows:
  Government of Kerala
Revenue (B) Department
      NOTIFICATION
No.51590/BI/89/RD         Dated, Trivandrum, 21st August, 1989
S.R.O No. 1743/89-In exercise of the powers conferred by
clause(c) of Section 3 of the Land Acquisition Act, 1894 (Central
Act 1 of 1894) the Government of Kerala hereby appoint the
Special Tahsildar (Land Acquisition), Cochin Refineries Limited,
Ernakulam Vytilla, Cochin-19 to perform the functions of a collector
under the said Act within the area of Ernakulam District and under
sub section 2 of section 4 of the said Act, authorize him, his servants
and
workmen in exercise of the powers conferred under the said
sub section in respect of any land within his jurisdiction for the
acquisition of which a notification under sub-section (i) of section
4 has been published.
By order of the Governor
T . Sankaran,
Additional Secretary to Government
     Explanatory Note
(This does not form part of the notification but is intended to
           indicate its general purport.)
E.A. ABOOBACKER & ORS. v. STATE OF KERALA & ORS.
[DEEPAK GUPTA, J.]
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As per the Government Order (MS) No. 1/89/ID dated 15.04.1989
Government have sanction creation of new special Land Acquisition
Unit with 30 staff for the acquisition of 320 acres of land for the expansion
of Cochin Refineries Limited, Ambalamugal.  In order to perform the
function of a ‘Collector’ under the Land Acquisition Act, the Land
Acquisition Officer has to be authorized under Section 3 (c) of the Land
Acquisition Act.  Hence the notification.
It has been urged by the State that the explanatory note not being
part of the notification should not be taken into consideration.
7. According to the appellants the language of the notification is
very clear that the Special Tahsildar (LA), K.R.L. has been appointed
as Collector only in respect of those lands for which the notification of
acquisition under Section 4 has already been published.  Therefore,
according to the appellants, the Special Tahsildar (LA), K.R.L. has no
power to act as Collector in respect of other acquisitions for which he is
not empowered under the notification.  The appellants also place reliance
on the explanatory note and submit that though it may not be part of the
notification but it clearly indicates that the appointment of the Special
Tahsildar (LA), K.R.L. was only in respect of 320 acres of land involved
in the expansion of Cochin Refineries Limited and not for any other
purpose.  On the other hand, the stand of the respondents is that
by this
notification the Special Tahsildar (LA) K.R.L. has been specifically
appointed as “Collector” for Ernakulam District and is, therefore,
empowered to act as Collector for all acquisitions of land in Ernakulam
District.  It has been submitted on behalf of the State that the words
“has been” cannot be read only in the past tense and the words “has
been” may be read as “is”.  It is also contended that the District Collector
has distributed the work to the Special Tahsildar (LA), K.R.L. vide order
dated 15.12.2005.
8. On perusal of the notification it is apparent that by the said
notification the Government of Kerala had appointed an officer by the
name of Special Tahsildar (LA), K.R.L., to perform the functions of a
Collector under the Act only within the area of Ernakulam District, only
in respect of any land within his jurisdiction for the acquisition of which
a notification under sub-section (1) of Section 4 of the Act has been
published.
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9. On a careful analysis of the notification,  in our opinion, the
State has empowered the specified officer i.e. the Special Tahsildar
(LA), K.R.L. only in respect of the land for which the notification under
sub-section (1) of Section 4 had already been issued. The Special Tahsildar
(LA) K.R.L. was not empowered by the notification of 21.08.1989 to
issue any fresh notification in respect of other land. Though the
explanatory note may not be part of the notification the same can
definitely be used to resolve the ambiguity, if any, in the notification. The
explanatory note clearly indicates that the notification has been issued
only to empower the officer to act as Collector in respect of 320 acres
of land.
10.  As far as the G.O. dated 15.12.2005 is concerned, all that we
need to say is that under Section 3(c) of the Act, it is only the appropriate
Government which can specifically appoint any other officer as Collector.
The District Collector has no power to do so.
11. The High Court took the view that since public interest is
concerned a liberal view has to be taken and when acquisition proceedings
are completed or going on for acquiring large portions of lands required
for public purpose, such acquisition cannot be stopped on “cryptic hyper
technical ground”.  We are not at all in agreement with this view of the
High Court.  It is a settled position of jurisprudence that when the law
prescribes a procedure to be followed for doing any act or thing
then
that procedure has to be followed and any violation of such procedure
would make the act voidable, if not void.  There is no doubt that the
State is empowered to appoint any officer other than a Collector or
Deputy Commissioner to act as Collector.  However, the notification
should be clear as to for what purpose such Collector is being appointed.
As far as the present case is concerned the Special Tahsildar (LA),
K.R.L. was appointed as Collector only in respect of acquisition of land
relating to Cochin Refineries Limited within Ernakulam District.  If the
State wanted him to act as Collector in respect of other acquisitions,
nothing prevented the State from issuing a fresh notification in this regard,
but relying upon the notification dated 21.08.1989 the Special Tahsildar
(LA), K.R.L. cannot act as Collector in respect of other acquisitions.
This is not a hyper technical ground.  When the State wants to acquire
the property of a citizen which is a constitutional right of any citizen
E.A. ABOOBACKER & ORS. v. STATE OF KERALA & ORS.
[DEEPAK GUPTA, J.]
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under Article 300(A) of the Constitution of India it must strictly follow
the procedure prescribed by law. It cannot urge that because the
acquisition is in public interest a more liberal view is to be taken.  There
is no question of taking a liberal or conservative view.  The only view
which has to be taken is the legal view.  In our considered opinion the
Special Tahsildar (LA), K.R.L. was not authorized to act as Collector
for the entire District of Ernakulam and is empowered only in respect of
acquisitions for which notification had already been issued for acquiring
land for the Cochin Refineries Limited.
12. It has been urged by Shri K.N. Balgopal that Special Tahsildar
(LA), K.R.L. has acted as Collector not only in the case of Infopark but
in many other cases and many land owners have accepted the award
and if we decide the matter against the State many complications may
arise.  We, therefore, make it clear that if any land owners have, without
any objection to the authority of the Special Tahsildar (LA) K.R.L.,
accepted the award of the Collector or have filed objections with regard
to quantum and area only and have not disputed the authority of the
Special Tahsildar (LA) K.R.L. to act as Collector, such land owners
cannot take benefit of this decision.  As far as this decision is concerned
it will only enure for the benefit of the appellants before us.
13. The appeals are accordingly allowed.   Pending
application(s)
if any is also allowed. The judgments and orders of the High Court in
Writ Appeal No.2446 of 2008 dated 06.01.2009 and Writ Petition No.9735
of 2008 dated 25.11.2008 are set aside in the aforesaid terms.  We also
make it clear that no other point was raised before us and, therefore, the
State can take appropriate action in accordance with law if it still wants
to acquire the land.
Ankit Gyan
                               Appeals allowed.
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WOCKHARDT LIMITED
v.
TORRENT PHARMACEUTICALS LTD. AND ANR.
(Civil Appeal No. 9844 of 2018)
SEPTEMBER 12, 2018
[R. F. NARIMAN AND INDU MALHOTRA, JJ]
Trademark: Infringement and passing off – Respondent
having a trade mark ‘CHYMORAL and CHYMORAL FORTE, a drug
administered post surgically for swellings/wounds – Expression
CHYMO comes from the generic name of drug which is
CHYMOTRYPSIN-TRYPSIN – In 2014, the appellant acquired
trademark CHYMTRAL with full notice of respondent no 1’s
registration – Suit for infringement and passing off by respondent
– Injunction refused by the Single Judge of the High Court holding
that confusion may be assumed, but not deceit or deception and no
misrepresentation by appellant as to source, even assuming there is
similarity – Division Bench held that the substitution of letter “T’
for the letter “O’ is the only difference between the two trade names,
confusion on the ground of deceptive similarity would ensue,
misrepresentation in law also made out, thus granted temporary
injunction – On appeal, held: Though passing off is, in essence, an
action based on deceit, fraud is not a necessary element of a right
of action, and that the appellant’s state of mind is wholly irrelevant
to the existence of a cause of action for passing off, if otherwise
the appellant has imitated or adopted the respondent’s mark – On
facts, after 17.11.2017, the appellant started to sell the same product
under a new
trade name, ‘CHYMOWOK’ and sales figure for the
last 10 months under this new trade name amounted to Rs. 2.71
Crores – This trade name was registered in the name of the appellant
way back on 14.11.2009 with effect from a date in 2008, but had
not been utilized till the Division Bench judgment was passed against
the appellant – Remaining stock of material has been disposed of
under the trade name “CHYMTRAL”, and that material
manufactured after the Division Bench judgment is not being sold
under the said trade name despite the stay granted in favour of the
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appellant – In view of the appellant’s sale under the “new” trade
name being substantial, the discretionary jurisdiction u/Art. 136 is
not exercised in favour of the appellant – Constitution of India –
Art. 136.
Wander Limited And Another v. Antox India P. Ltd. 1990
(Supp) SCC 727; Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd. (2001) 5 SCC 73; Laxmikant v.
Patel v. Chetanbhai Shah and Another (2002) 3 SCC
65; S. Syed Mohideen vs. P. Sulochana Bai (2016) 2
SCC 683; Satyam Infoway Ltd. v. Siffynet Solutions Pvt.
Ltd. (2004) 6 SCC 145– referred to.
Case Law Reference
1990 (Supp) SCC 727
referred to
Para 6
(2001) 5 SCC 73
referred to
Para 7
(2002) 3 SCC 65
referred to
Para 9
(2016) 2 SCC 683
referred to
Para 9
(2004) 6 SCC 145
referred to
Para 9
CIVIL APPELLATE JURISDICTION: Civil Appeal No. 9844
of 2018
From the Judgment and Order dated  17.11.2017 of the High Court
of Judicature at Bombay in Commercial Appeal No. 125 of 2017.
Mukul Rohatgi, Guru Krishna Kumar, Dr. A. M. Singhvi, Sr. Advs.,
Ninad Laud, Ms. Smriti Churiwal, Ivo D’Costa, Aman Varma, Asim
Sood, Nandan Pendsey, Ms. Madhavi Khanna, Ms. Bhargavi Kannan,
Rythm B., Ms. Aishwarya Modi, Ms. Liz Mathew,  Advs. for the
appearing parties.
The Judgment of the Court was delivered by
R. F. NARIMAN, J. 1. Leave granted.
2. The present Appeal arises from a Suit that was filed based on
both infringement and passing off.  However, at the time of the argument
on
the interim injunction before the learned Single Judge, the arguments
were confined to passing off only.
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3. The skeletal facts necessary to decide this Appeal are that the
Plaintiff/Respondent has a trade mark called “CHYMORAL” and
“CHYMORAL FORTE”, which is a drug administered post-surgically
for swellings that may arise and/or wounds that may arise.  It is interesting
to note that the expression “CHYMO” comes from the generic name of
the drug which is CHYMOTRYPSIN-TRYPSIN.  The learned Single
Judge ultimately found, after a copious reference to the facts and case
law, as follows:-
“45. In the present case, I am not satisfied that any of these tests
are met.  Reputation as to source is not sufficiently demonstrated.
The rival products have long co-existed and I  cannot and will not
presume misrepresentation by Wockhardt as to source, even
assuming there is similarity.  There is no explanation at all for
Torrent’s past conduct and the inaction with knowledge, or deemed
knowledge, of Wockhardt’s trade mark registration application,
its advertisement and subsequent registration, with not a single
objection from Torrent or is predecessor-in-title.  There is no
answer about the caveats or about the co-existence of other
players in the market.  There is simply no misrepresentation shown
as required by law, at this prima facie stage.  There being no
prima facie case made out, I cannot grant the injunction.  The
balance of convenience seems to me to favour entirely the
Defendants; after all, to the Plaintiff’s knowledge, they have had
their product in the market
for a very long time, at the very least
for five years, possibly more, and an injunction at this stage is far
removed from the prima facie status quo that Wander v Antox
tells us is the primary objective.  There is no injury, let alone an
irreparable one, to the Plaintiff that I can tell if an injunction is
refused.  It has not had one all this time while the Defendants’
business has grown into crores.  To grant the injunction would be
unfairly monopolistic.”
4. The Division Bench, in an order of reversal, ultimately found
that each one of the triple tests for passing off had been made out on the
facts, namely, the establishment of reputation, misrepresentation as
understood in law and likelihood of injury or damage caused to the
Plaintiff.  On the first count, the Division Bench held that the Plaintiff
had obtained the mark by way of assignment in the year 2014, from one
WOCKHARDT LIMITED v. TORRENT PHARMACEUTICALS
LTD. AND ANR. [R. F. NARIMAN, J.]
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Elder and Company, which, in turn, had obtained the said mark from one
Armour Pharmaceutical Company.  The user that is claimed on behalf
of the Plaintiff is at least from the year 1988 as and when Elder
Pharmaceuticals Ltd. actually sold drugs under the two trade names as
aforesaid.  The Division Bench also referred to the Plaint  which, in turn,
referred to sales figures of Rs. 59 Crores and Rs. 95 Crores for the
years 2014-15 and 2015-16 respectively.  Having thus found, the Division
Bench then went on to state that it is clear that reputation has been
established.  When it came to misrepresentation, the Division Bench
found that confusion was likely to ensue despite the fact that the
purchasers of the drug, which is a Schedule-H Drug, may be persons
who are Doctors and other patients who are literate.  It found that the
substitution of  the  letter ‘T’ for the letter ‘O’ is the only difference
between the two trade names, and therefore, found that, in law, since
confusion on the ground of deceptive similarity would ensue,
misrepresentation in law is also made out.  On the third count, it said,
undoubtedly, there would be likelihood of damage to the Plaintiff.
5. The Division Bench interfered with the conclusion of the learned
Single Judge by ultimately finding that wrong tests had been applied in
law as a result of which the judgment was “vitiated by errors of law
apparent on the face of the record”.  It further
went on to hold as follows:-
“102. After referring to the order of the learned single Judge, in
the backdrop of the settled principles, we are of the view that it is
vitiated by errors of law apparent on the face of the record. The
impugned order is, ex-facie, erroneous and illegal. It ignores
admitted factual materials and settled tests while denying relief to
the appellant-plaintiff.  For these reasons, it is unsustainable and
we have no alternative, but to quash and set aside the same.  It is,
accordingly, quashed and set aside.”
It, therefore, upset the judgment of the learned Single Judge and granted
the temporary injunction asked for.  It went on to stay the order for a
period of 12 weeks, which stay has been continued by this Court till
date.
6. Mr. Guru Krishna Kumar, learned Senior Counsel appearing
on behalf of the appellant, has vehemently contended that the Division
Bench judgment should be set aside as it has disregarded this Court’s
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judgment in Wander Limited And Anothervs. Antox India P. Ltd.1990
(Supp) SCC 727, in particular, para 14 thereon, which reads as under:-
“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 court’s exercise of discretion. After
referring to these principles Gajendragadkar, J. in Printers
(Mysore) Private Limited vs. Pothan
Joseph, 1963 SCR 713
at 721:
“... These principles are well established, but as has been
observed by Viscount Simon in Charles Osenton & Co. v.
Jhanaton, 1942 AC 130, ‘…... 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 established, and any difficulty
that arises is due only to the application of well settled principles
in an individual case.’
The appellate judgment does not seem to defer to this principle.”
According to learned Senior Counsel, the Single Judge Bench summation
at para 45 could not have been interfered with by the Division Bench
because the law had been looked at threadbare, and ultimately it was
found that not only had none of the three tests being satisfied but that
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there was clearly a case of acquiescence made out, for which the Plaintiff
has to be denied interim relief.  He referred to several judgments to
buttress his submissions.
7. On the other hand, Dr. A.M. Singhvi, learned Senior Counsel
appearing on behalf of the respondents, has supported the judgment
passed by the Division Bench, also, by copiously referring to various
judgments and by stating that the Division Bench judgment, in fact, upset
the learned Single Judge because of errors of law and, therefore,
interfered on principle and not on fact.  He was at pains to point out that
reputation had been established by the sales figures from 1988 onwards;
“misrepresentation” had been made out in the said sense understood in
law, that is,  that absence of an intention to deceive is not a defence in
law,  and that the defendant’s state of mind is wholly irrelevant to the
existence of the cause of action in passing off.  He stressed the fact that
as reputation had been made out, and as the learned Single Judge himself
had said that  “confusion” had been made out, the learned Single Judge
was wholly wrong in stating that a further requirement was necessary,
namely, fraud or deceit.  On the third aspect, it was also pointed out that
it is obvious that there would be likelihood of damage to the Plaintiff.
Assuming that there was no damage caused to the general public, because
the drug being sold unlike in Cadila Health Care
Ltd. vs. Cadila
Pharmaceuticals Ltd. (2001) 5 SCC 73 consisted of the same
formulation, yet this would not deny them the right to interim relief, and
that is only a further factor that needs to be taken into account , also to
combat the plea of acquiescence.
8. Having heard learned Senior Counsel for some time, we  may
point out that the learned Single Judge, after referring to the case law,
pointed out in para 27 as follows:- “I think I must accept Mr. Dwarkadas’s
submission that confusion may be assumed, but not deceit or deception.”.
In para 45, the learned Single Judge went on to state that he would not
presume misrepresentation by Wockhardt as to source, even assuming
there is similarity.
9. We may indicate, at this juncture, that insofar as the second
test is concerned, this Court has in a plethora of judgments held that
though passing off is, in essence, an action based on deceit, fraud is not
a necessary element of a right of action, and that the defendant’s state
of mind is wholly irrelevant to the existence of a cause of action for
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passing off,  if otherwise the defendant has imitated or adopted the
Plaintiff’s mark.  We need only state the law from one of our judgments,
namely, in Laxmikant V. Patel vs. Chetanbhai Shah  and Another,
(2002) 3 SCC 65, which reads as under:-
“13In an action for passing-off it is usual, rather essential, to seek
an injunction, temporary or ad-interim. The principles for the grant
of such injunction are the same as in the case of any other action
against injury complained of. The plaintiff must prove a prima
facie case, availability of balance of convenience in his favour
and his suffering an irreparable injury in the absence of grant of
injunction. According to Kerly (ibid, para 16.16) passing-off cases
are often cases of deliberate and intentional misrepresentation,
but it is well-settled that fraud is not a necessary element of the
right of action, and the absence of an intention to deceive is not a
defence, though proof of fraudulent intention may materially assist
a plaintiff in establishing probability of deception. Christopher
Wadlow in Law of Passing-Off (1995 Edition, at p.3.06) states
that the plaintiff does not have to prove actual damage in order to
succeed in an action for passing-off. Likelihood of damage is
sufficient. The same learned author states that the defendant’s
state of mind is wholly irrelevant to the existence of the cause of
action for passing-off (ibid, paras 4.20 and 7.15). As to how the
injunction granted by the Court would
shape depends on the facts
and circumstances of each case. Where a defendant has imitated
or adopted the plaintiff’s distinctive trade mark or business name,
the order may be an absolute injunction that he would not use or
carry on business under that name. (Kerly, ibid, para 16.97).”
This judgment has been followed in S. Syed Mohideen vs. P. Sulochana
Bai, (2016) 2 SCC 683 at 699-700.  Also, in Satyam Infoway Ltd. vs.
Siffynet Solutions Pvt. Ltd., (2004) 6 SCC 145, this Court held:-
“14The second element that must be established by a plaintiff in
a passing-off action is misrepresentation by the defendant to the
public.  The word misrepresentation does not mean that the plaintiff
has to prove any mala fide intention on the part of the defendant.
Of course, if the misrepresentation is intentional, it might lead to
an inference that the reputation of the plaintiff is such that it is
worth the defendant’s while to cash in on it.  An innocent
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misrepresentation would be relevant only on the question of the
ultimate relief which would be granted to the plaintiff [Cadbury
Schweppes  v. Pub Squash, 1981 RPC 429 : (1981) 1 AllER 213
: (1981) 1 WLR 193 (PC); Erven Warnink v. Townend, 1980
RPC 31 : (1979) 2 AllER 927 : 1979 AC 731 (HL)]…..”
10. The Division Bench essentially interfered with the judgment
of the learned Single Judge on this score and also found that the learned
Single Judge was incorrect in stating that “reputation as to source is not
sufficiently demonstrated”.  It found that reputation was established from
the sales figures, and the fact that the Plaintiff was clearly a prior user
would make it clear that the first pre-requisite for the action in passing
off was made out.  Where the Division Bench and the learned Single
Judge really locked horns was on the point of acquiescence.  The learned
Single Judge found that not only was there a lying by for a long period,
but that there was positive action on the part of the Plaintiff in leading
the defendant to believe that he could build up his business, at which
point the Plaintiff swooped in to interdict and throttle that business as it
was rising just as sales were rising.  On this count, the Division Bench
interfered with the learned Single Judge as follows:-
“89. The learned Judge then attributes acquiescence to the plaintiff.
The plaintiff’s predecessor in title did not object to the trademark
registration application.  It allowed others to do so and it is the
plaintiff’s failure to bring a suit on service of a caveat.  Thus,
there is no objection from the plaintiff.  It only means that the
plaintiff kept quiet when the application for registration was made
by the defendant.  They failed to object to the advertisement of
the defendant’s application or when the defendant brought its
project in market.  They did not object to other entities introducing
their products in the market either. This is enough to assume
acquiescence.  We do not think this to be the position on facts and
in law.  A plea of acquiescence to be raised in defence so as to
succeed ought to be supported by weighty materials to that effect.
Since the learned single Judge has referred to the judgment of the
Hon’ble Supreme Court in the case of M/s Power Control
Appliances and Ors. vs. Sumeet Machines Pvt. Ltd., (1994) 2
SCC 448, we would refer to it in some details.  Paras 4, 5, 7, 11,
12, 13, 14, 15 and 16 of this judgment were heavily relied upon by
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Mr. Tulzapurkar. In that, the facts and the submissions are
summarised. Then, in para 20, the argument of the respondents
before the Hon’ble Supreme Court was set out.  In paras 27, 28,
29 and 30, the English judgments were noted and up to para 31.
Thereafter, the decisions rendered by our Hon’ble Supreme Court
and other courts have been noted.
90. We are in agreement with Mr. Tulzapurkar that even at this
prima facie stage, there is no positive act which can be attributed
to the plaintiff so as to deny the relief. There is no acquiescence
which can be culled out.  Beyond referring to some general
principles, we do not find any material placed before the learned
single Judge from which an inference of acquiescence can be
drawn.  Mr. Dwarkadas has, on this point, relied upon certain
judgments and even in the written submissions, there is reference
to general principles.  All that the first defendant says is as under:-
“(ii) The defence of the acquiescence is available to Respondent
No. 1 since the plaintiff was aware of its right and the defendant
was ignorant of its own right and despite the same, the plaintiff
assents to or lays by in relation to the acts of the defendant and in
view of the same, it would be unjust in all circumstances to grant
the relief of injunction to the plaintiff. It is submitted that the
requirements stand duly fulfilled and on the above set of facts
where from 2009/11, the Appellant/its predecessors are duly aware
of Respondent
No. 1’s trademark; the use of Respondent No. 1’s
mark openly and on an extensive scale; and at no point for over 7
years did the appellant or its predecessors contest the same.  On
the contrary, the appellant’s 2014 acquisition of the trademark is
with full notice of the adoption and use and registration of
Respondent No. 1’s trademark. As  such, the principles of
acquiescence and waiver apply with full vigour.
(iii) Acquiescence is a species of estoppel and therefore both a
rule of evidence and a rule in equity.  It is an estoppel in pais: a
party is prevented by his own conduct from enforcing a right to
the detriment of another who justifiably acted on such conduct.
(iv) The ‘positive act’ as referred to in the decision of the Hon’ble
Apex Court in M/s Power Control Appliances and Ors. vs.
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Sumeet Machines Pvt. Ltd. reported in (1994) 2 SCC 448 (relied
upon by the appellant) cannot mean that the plaintiff ‘green lighting’
the defendant’s action only to later complain of it.  The ‘positive
act’ is the ‘sitting by’ or ‘laying by’ i.e., not mere silence or inaction
but a refusal or failure to act despite knowledge of invasion and
opportunity to stop it.  In the present case, from 2009, the appellant
and/or its predecessors have been at notice of Respondent No.
1’s adoption, use and registration of its trademark and against that
there has been a complete failure to register any protest or
objection.  In 2014, the appellant acquired the trademark with full
notice of Respondent No. 1’s registration and use of the trademark
“CHYMTRAL”. This qualifies for both acquiescence and estoppel
defences.”
91. Thus, the attempt is to equate delay with acquiescence and
which is not correct.  We do not think that because the appellants
stepped in the year 2014 with notice of the first respondent’s
registration and use of the mark that means the appellant-plaintiff
has acquiesced in the same.  That is not a positive act and which
is required to deny the relief on the ground of acquiescence.”
11. We are of the view that this is not a case where Wander Ltd.
(supra) has not been heeded.  On the contrary, the Division Bench has
interfered on a matter of principle, pointing out errors of law by the
learned Single Judge.  We may
also point out one other significant fact
that has occurred in the meanwhile.  After 17.11.2017, despite the fact
that the Division Bench of the High Court stayed its own order, which
stay was continued by this Court till date, the Appellant has started to
sell the same product under a new trade name, namely, ‘Chymowok’.
We have been shown sales figures in the last 10 months of sales made
by the Appellant under this new trade name which amounts to a figure
of Rs. 2.71 Crores from 17.12.2017 till 18.08.2018.
12. We may also state, that this trade name was registered in the
name of the Appellant way back on 14.11.2009 with effect from a date
in 2008, but had not been utilized till the Division Bench judgment was
passed against the Appellant.  We are also told that the remaining stock
of material has been disposed of under the trade name “CHYMTRAL”,
and that material manufactured after the Division Bench judgment is not
being sold under the said trade name despite the stay granted in favour
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of the Appellant.  Seeing the sales figures of ‘Chymowok’ from
December, 2017 till August, 2018 and the fact that the Appellant’s sales
under the “new” trade name are substantial, we do not think that we
should exercise our discretionary jurisdiction under Article 136 of the
Constitution of India in favour of the Appellant, seeing that the balance
of convenience is well served by the judgment under appeal.  The Appeal
is, therefore, rejected.
Nidhi Jain
  Appeal rejected.
WOCKHARDT LIMITED v. TORRENT PHARMACEUTICALS
LTD. AND ANR. [R. F. NARIMAN, J.]