VIDYUT METALLICS LIMITED Vs. MALHOTRA INTERNATIONAL PRIVATE LIMITED

JUDGEMENT

(1.) WE have heard the learned counsel for the appellants as well as the respondents at length. With the assistance of the learned counsel on both sides, we have gone through the pleadings and the order impugned. Mr.Chinoy, learned counsel for the appellants, submitted that the facts and circumstances of the case and the material on record clearly show that, apart from the agreement of registered use in favour of his clients, there was and there is a common law licence for use of trade mark 'Topaz' in favour of his clients i.e. the appellants. Both sides read out the judgment of the apex Court in the matter of Coca Cola.

(2.) AFTER perusing the order impugned, it is clear to us that the learned Judge prima facie held that the appellants have failed to prove that there is any such alleged licence under the common law. The learned Judge also held that such licence, if any, has to be in writing. Referring to various provisions of the Trade and Merchandise Marks Act, 1958, the learned Judge further held that in the face of a written agreement of the registered user in favour of the appellants and the same having been terminated and as the respondents are admittedly the registered owners or proprietors of the trade mark, once the agreement is terminated, an injunction must issue as a matter of course.

(3.) IN our opinion, reading of the judgment of the Apex Court by the learned Judge in his impugned order does not appear to be accurate. Mr.Chagla also submitted that, in the absence of any such written licence, it will be difficult to know as to what are the terms and in the absence of any terms, it would not be possible for the proprietor of the trade mark to take any action even if there is breach thereof. Prima facie, we are of the opinion that even if the licence under the common law is oral and unwritten, as pleaded in this case, the requirements mentioned in para 13 of the apex Court's judgment in Coca Cola's case will have to be read into that and whether those requirements are being complied with or not can be tested on the basis of objective facts of the particular case.