In 1979, Austrian company Samperit Aktiengesellschaft (respondent/plaintiff), holder of registered Indian trademark "Matador" for combs manufactured in Austria, sued Indian manufacturer Synthetic Moulders (appellant/defendant) for using the identical mark "Matador" on combs produced locally since 1966.
The trial court granted temporary injunction against the defendant restraining use of the mark. On appeal, the Delhi High Court set aside the interim injunction, holding that while the plaintiff had exclusive rights under Section 28 of the Trade & Merchandise Marks Act, 1958, grant of temporary injunction is equitable and governed by Order 39 CPC principles of prima facie case, balance of convenience, and irreparable injury rather than automatically following statutory rights. The Court found no real deception or confusion likely due to the common, low-value nature of combs where purchase decisions depend on look and feel rather than brand name, the plaintiff's products being banned from import since 1954 and virtually unknown in India, potential total damage to defendant's established business if injunction continued, absence of substantial damage to plaintiff from continued use, and unexplained delay by plaintiff in challenging the use from 1966 until 1978. The observations were limited to interim stage and not to bind the final decision on merits for permanent injunction.
Crisp bullet points of law settled in the case
Registration under Section 28 of the Trade & Merchandise Marks Act, 1958 grants exclusive right to use the registered trademark, but temporary injunction is an equitable remedy governed by Order 39 CPC principles (prima facie case, balance of convenience, irreparable injury) and not automatically granted merely on proof of statutory rights. (Para 1–2)
Balance of convenience for temporary injunction requires weighing relative damage if injunction is granted but plaintiff ultimately fails (potential total loss to defendant using mark since long) against damage to plaintiff if refused (minimal where plaintiff's goods banned from import since 1954 and unknown in market), per Kerley on Trade Marks (10th Ed., para 15.65). (Para 3)
For common, low-value, everyday articles like combs purchased based on look, feel and quality rather than brand name, deception or confusion is unlikely where foreign plaintiff's mark is virtually unknown in India due to import ban, unlike special/high-value goods from renowned makers. (Para 4)
Unexplained long delay by plaintiff in challenging defendant's use (from 1966 to 1978) weakens case for interim relief. (Para 5)
Observations on balance of convenience and delay for temporary injunction do not influence final decision on permanent injunction in the pending suit on merits. (Para 6)
Case Title: Synthetic Moulders Vs Samperit Aktiengesellschaft
Order date: October 22, 1979
Case Number: First Appeal No. 66 of 1979
Neutral Citation: (1979) 10 DEL CK 0025; (1980) RLR 263
Name of court: Delhi High Court
Name of Judge: V.S. Deshpande, C.J. (Single Bench, though appeal heard as full appeal)
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
