What is a Permanent injunction for a trademark?

–
Trademark Registration

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• Permanent injunction is granted or
denied at the discretion of the court
after investigation of all the facts at the
trial.

• This discretion “when applied to a court

of law means discretion guided by law.

• It must be governed by rule and not by

humour.

• It must not be arbitrary, vagile and

fanciful, but legal and regular”. *

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 • But a permanent injunction at
the final hearing is a matter of
course and of right when the
plaintiff’s right and title and an
infringement or a passing off is
clearly established and there
are no countervening equities.

• In formulating a final
injunction in trademark and
unfair competition cases the
object of the court is to
eliminate confession and unfair
dealing.

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• The injunction should be no broader than is necessary to prevent deception and protect
complainant’s rights and on the other hand, should be broad enough to afford him all the
protection to which he is entitled.

• A court will not, by way of an injunction, undertake to revise a contract with respect to the
use of a trade name nor will it grant such relief to prevent the violation of an agreement
which is too indefinite.
This principle is of very real importance in cases of
this sort for oftentimes the decrees finally granted,
leave the defendant in position to continue to
harass the plaintiff unfairly or to continue a
practical use of the methods condemned in the
court’s opinion.

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• It happens not infrequently that the relief provided for in the opinion is
pared down in formulating the decree to such an extent as to deprive
plaintiff of much of the relief to which the court, in its opinion, had held
him entitled.

• Many unfair competition and trademark cases, the trial of which has cost
litigants substantial sums, have ended in weak, impractical, compromise
decrees of little practical value as a protection of either the plaintiff or the
public.

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• Suit was filed for permanent injunction against defendant’s trademark.

• It is alleged that the marks of the plaintiff and the defendant are similar and
would cause confusion and deception in the minds of the public.

• The defendant contended that the application suffered from delay and laches.

• It was held that the product of the defendant is under construction and as such
there was no delay in filing the application.

• Plaintiff filed a suit for permanent injunction against defendant.

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 Commercially impracticable – No ground to refuse:

• The fact that a decree proves commercially

impracticable from the defendant’s point of
view does not mean that plaintiff will be
deprived of protection.

• In a case involving the use of a personal name

on confections the second circuit
court directed that a special explanatory
phrase be used by the defendant in
juxtaposition to the personal name.

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• On a re-hearing, the defendant asserted that it was a physical impossibility
to print this phrase in the manner provided in the decree on the wrappers
around the individual pieces of the confection.

• The court refused to relieve the defendant of this obligation, saying that if,
what the defendant, asserted was true and the defendant could not use the
name as directed, then it must cease to use the name altogether.

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Unfair use of trademark on the trademark owner’s goods:

Where the infringement lies, not in the simulation of another’s trademark,

but in its improper use, by others than the owner, the remedy is not to enjoin
all use of it, but to regulate such use so that it will be honest and truthful.

Only in cases of extreme and continuing fraud an injunction against the use of
the trademark will be issued.

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Corporate names:

In respect of corporate names the same rule applies to the name of firms or individuals, and an
injunction lies to restrain the simulation and use by one corporation of the name of a prior
corporation which tends to create confusion and enables the later corporation to obtain, by
reason of the similarity of names, the business of the prior one.

No distinction between the natural persons and the corporation in the principle which is to
prevent fraud.

An individual who has been doing business under his own name is not deprived of the right to
use his own name because he brings a partner into his business, or incorporates

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Bankruptcy:

The fact that defendant’s assets are in-charge of a

trustee in bankruptcy is no ground for refusing an
injunction in a suit for infringement of a trademark
and unfair competition, consisting of the use of
plaintiff’s trademark as a part of
defendant’s corporate name, since a sale of the
property would include the assets, goodwill and
corporate name.
So an injunction restraining further use of a name
as part of the corporate name of a corporation will
not be denied on the ground of hardship, where
the hardship, if any, arose from the acts of the
corporation after expiration of the contracts
authorizing the use of such name.

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Discontinuance prior to suit:

• Discontinuance of the use of the mark or name constituting infringement or unfair

competition, before commencement of this suit, is not a bar, where defendant contests
the suit and still claims the right to use such mark or name,

• and there are no grounds to believe that the discontinuance was in good faith and without
an intention to resume the wrongful use.

• An injunction may be denied where the infringement or unfair competition was

discontinued in good faith, and there is no reason to believe it will be resumed.

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Defendant guilty of deliberate fraud:

A defendant guilty of deliberate and

intentional fraud will be dealt with more
strictly than one who has acted with
innocence and good faith.

Drastic relief will be granted in such

cases to prevent the continuing effect of
defendant’s acts.

A defendant whose business enterprise is based on an express and deliberate fraud will not find
a court of equity strenuous to preserve all the rights are might have had if his conducts and
motive had been honest.

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 Plaintiff guilty of fraudulent trade:

Where the plaintiff’s trade is fraudulent relief will be

denied. It will also be denied where the defendant has
been misled by the plaintiff’s conduct.

On the trial of an action, to restrain the defendants

from infringing the plaintiff’s trademark, and from
passing off the wine in question as being the plaintiff’s
wine, it was held, that the wine was not the plaintiff’s
wine, and that the plaintiff were not estopped by their
conduct from restraining the sale of the wine as their
wine.

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An injunction and an account of profits were granted. The defendants appealed.

Held, that the defendants were justified in coming to the conclusion that the wine was
Burgoyne’s wine, and that they were so justified by reason of the conduct of the plaintiffs
in the matter, and that the plaintiffs were not entitled to any relief.

The appeal was allowed with costs.

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