The case at hand revolves around a copyright infringement dispute between the
Plaintiff/Appellant [referred to as the Plaintiff] and the Defendant/Respondent
[referred to as the Defendant], both of whom operate in the liquor sale
industry. The Plaintiff claimed that the Defendant's trademark, "TWO PUNCH
Premium Label," infringed upon their own trademark, "TANGO PUNCH Label." The
Plaintiff not only sought remedies for passing off but also claimed copyright
The lower court, in so far as relief of passing off was concern, initially ruled
in favor of the Plaintiff but was later stayed by the Hon'ble High Court of
Mumbai, a decision upheld by the Hon'ble Supreme Court. One of the critical
aspects leading to this outcome was the doctrine of acquiescence on the part of
Acquiescence and its Implications in an action for Copyright Infringement:
Acquiescence is a legal doctrine that arises when a party, through its actions
or inactions, appears to accept or tolerate a situation or conduct that would
otherwise constitute an infringement of their rights. In this case, the
Defendant had applied for permission to use the "TWO PUNCH Premium" label in
March 2016. Initially, the Plaintiff objected to this application but later
withdrew the objection. This change in stance by the Plaintiff was deemed as
Acquiescence is based on the principle that a party cannot lead another party to
believe that their conduct is acceptable and then later claim infringement. By
withdrawing the objection, the Plaintiff essentially communicated to the
Defendant that they did not consider the use of the label as a violation of
their rights. This change in position weakened the Plaintiff's claim of
copyright infringement, as they had, in effect, given their tacit approval to
the Defendant's use of the similar label.
Proof of Goodwill and Expenditure:
Another pivotal issue in this case was the Plaintiff's failure to establish
goodwill associated with their product. To prove goodwill, it is not sufficient
to merely present sales figures; one must also demonstrate the expenditure
incurred on the promotion and advertisement of the product. Goodwill, in the
context of trademark and copyright cases, refers to the reputation and public
perception built around a brand or product. In this case, the Plaintiff's
inability to substantiate their claim of goodwill weakened their position.
The Plaintiff presented statements of accounts, signed by their Chartered
Accountant, which indicated expenses related to advertising and promotion, as
well as sales figures. While such documents may serve as prima facie evidence at
the initial stages of a case, they must be rigorously proven during the final
hearing. The Plaintiff failed to meet this burden of proof in a manner
acceptable under the law. Without a solid demonstration of goodwill and related
expenditures, their claim was further compromised.
Cooperation in Cross-Examination:
Lastly, the Hon'ble Supreme Court also noted the importance of cooperation
between advocates during cross-examination. Objections raised during
cross-examination can indeed be crucial in determining the truth, but excessive
or frivolous objections can unduly prolong trials and impede the administration
of justice. The Court emphasized the need for a cooperative approach from
members of the Bar to ensure that trials proceed smoothly and efficiently.
The Concluding Note:
In the case of the Plaintiff/Appellant challenging the order of the Hon'ble High
Court of Mumbai, the doctrine of acquiescence played a significant role in the
ultimate decision of the Hon'ble Supreme Court. The Plaintiff's change in
position regarding the Defendant's trademark application weakened their claim of
copyright infringement. Additionally, their failure to establish goodwill and
related expenditure further undermined their case.
This case serves as a reminder of the legal principles surrounding copyright
infringement, trademark disputes, and the importance of careful legal strategy.
Parties involved in such disputes must be diligent in preserving their rights
and be prepared to meet the burden of proof required by the law. Cooperation
between advocates during legal proceedings is also crucial to ensure the
efficient functioning of the justice system.
Case Law Discussed:
Date of Judgement:14/09/2023
Case No.Civil Appeal No. 2768 of 2023
Neutral Citation No: N. A.
Name of Hon'ble Court: Supreme Court
Name of Hon'ble Judge: Abhay S Oka Vs Rajesh Bindal, H.J.
Case Title: Brihan Karan Sugar Syndicate
Private Limited Vs Yashwantrao Mohite Krushna
Sahakari Sakhar Karkhana Sahakari Karkhana
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539