(1.) Both appeals arise out of an order passed on 28.9.1999 by learned Single Judge disposing of IA Nos. 9365/98 and 10313/98. FAO (OS) No. 306/99 is plaintiff's appeal against a part of the order on the ground that when plaintiff No. 1 was held to be the proprietor of trade mark MALOXINE, temporary injunction, as prayed for in the application, ought to have been granted and ought not have been declined on the ground of delay in bringing the action. FAO (OS) No. 331/99 is defendants' appeal against that part of the impugned order by which learned Single Judge restrained it from using the colour combination holding that prima facie plaintiff No. 1 had got right herein under Section 17(b) of the Copyright Act, 1957 and as regards the finding of learned Single Judge that prima facie plaintiff is the proprietors of trade mark MALOXINE and owner of copyright in the carton.
(2.) Facts in brief are that the plaintiff on 26.10.1998 filed a suit claiming decree for permanent prohibitory injunction restraining the defendants from passing off and infringing its copyr ight. Alongwith the suit, an application (IA 9365/98) was also filed seeking temporary injunction against the defendant from using the trademark MALOXINE and also the carton bearing the word "MALOXINE" in the colour combination, in a manner amounting to passing off and infringing plaintiffs' copyright in MALOXINE carton. In brief, it was urged that plaintiff No. 1 adopted trademark MALOXINE in July, 1991 and in October, 1991 plaintiff No. 1 entered into a sub- contract with defendant No. 2 of manufacturing arrangement for manufacture of MALOXINE pharmaceutical preparations. MALOXINE tablets manufactured by defendant No. 2 were thereafter exported to plaintiff No. 1 through an offshore of Eupharma in U.K. by the name of Britlodge Ltd. It was further alleged that on 23.11.1991 plaintiff No. 1 terminated the sub-contract due to deterioration in quality standards and specifications. Despite this, defendant No. 2 continued exporting MALOXINE preparations to its agent Moore Associates in Nigeria. Plaintiff No. 1 alleged that this fact was discovered only in April, 1996 when the office of the National Agency of Flood and Drug Administration Control, Niger ia informed plaintiff No. 1 that it was processing the product license application of another entity for the manufacture and marketing of a pharmaceutical preparation under the trademark MALOXINE. M/s St. Michael Pharmaceuticals Ltd., the agent of plaintiff No. 1 in Nigeria investigated the matter and found that the application for the pharmaceutical preparation license was of M/s. Moore Associates Ltd. As such plaintiff No. 1 filed suit before the Federal High Court of Nigeria against M/s. Moore Associates Ltd. At that point of time, plaintiff No. 1 discovered that defendant No. 2 continues to export MALOXINE tablets to M/s. Moore Associates Ltd. despite termination of sub- contract manufacturing arrangement.
(3.) It is further alleged that after termination of the arrangement in November, 1991 plaintiff No. 1 entered into another sub contract with plaintiffs No. 2 and 3. In November, 1992 defendants No. 2 had issued to plaintiff No. 1 a cease and desist letter calling upon plaintiff No. 1 to cease and desist from manufacturing pharmaceutical preparation under the trademark MALOXINE. There was an exchange of correspondence and plaintiff No. 3 had categorically denied right of defendant No. 2 while reiterating the proprietary rights of plaintiff No. 1 in respect of brand name MALOXINE. Nothing was heard thereafter from defendant No. 2 and on 19.5.1998 defendant No. 2 issued a fresh cease and desist notice to plaintiff No. 2, which was forwarded to plaintiff No. 1 and instructions were thereafter issued to its attorney to send reply. On 4.6.1998, attorney of plaintiff No. 1 replied to the notice of defendant No. 2 dated 19.5.1998, inter alia, calling upon defendant No. 2 to concede the right of plaintiff No.1 in trademark MALOXINE and also its copyright in MALOXINE carton. No response was received from defendant No. 2, therefore, suit was filed in this Court.