In general – Permanent Injunction

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 the rule not by the humor.It must not be arbitrary,vagile and fanciful,but legal and regular”.But a permanent injunction at the final hearing is the 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 permanent 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 permanent 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 he way of the permanent 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.The following passage in Harry D. Nim’s book brings out the necessity to grant the plaintiff” a practical and workable order”.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.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.

Suit was filed for permanent injunction against defendant’s trademark.it is alleged that the mark 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.Balance of convenience would lie in favor defendant.The suit was dismissed.

Action in the Nature of Permanent injunction 

Threatened future injury is sufficient to base an action in the nature.where no actual damage has been suffered,and no accounting for profits or damages is in order,an injunction may nevertheless be granted.Usually, permanent injunction applying to future conduct will not be denied because of delay,unless  the elements of estoppel exist.A corporation may enjoin another corporation from using plaintiff’s name in a like business,even though defendant has no yet engaged in business under such name.Where defendant was arranging to put out an article bearing a name similar to plaintiff’s trade name ,plaintiff may sue for the injunction without waiting until the article is put on the market by defendant.The court need not wait for the appropriation of one’s property by use of a similar trade name actually to take place,if it clearly appears that such wrongful appropriation is extremely probable and plainly likely to occur.

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Commercially impracticable -No ground to refuse

The fact that the 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.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 together.

Unfair use of the trademark on the Trademark owner’s Goods

Where the infringement lies,not in the simulation of another’s trademark ,but it is 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 the permanent injunction against the use of the trademark will be issued.The court held “when a person so misrepresents the quality of the goods are of a different quality from what is being sold,the use of the manufacturer’s name may be restrained altogether,in order to prevent what is in effect a continued representation that the goods are other than they really are in fact”.In this case the defendant was enjoined from advertising Cheney’s goods as such,but was permitted to state that Cheney was the manufacturer ,to customers who enquired.

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Corporate Names

In respect of corporate rules, the same rule applies as to the names of business or individuals,and permanent injunction lies to restrain the simulation and use by one corporation of the name of a prior corporation tends to create confusion and enables the later corporation to obtain,by reason of the similarity of names,the business of the prior one.There is no distinction between corporations and natural persons 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.

Bankruptcy

The fact that defendant’s asserts are in-charge of a trustee in bankruptcy is no ground for refusing  the permanent injunction in a suit for infringement of a trademark,and unfair competition,consisting of the use of plaintiff’s trademark as the part of defendant’s corporate name,since a sale of the property would include the asserts,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,if any,arose from the acts of the corporation after expiration on the contracts authorizing the use of such name.

Voluntary discontinuance-How Far will affect the issue of permanent injunction

This subject has already been dealt with under the heading of ‘preliminary injunction’.Mr.Kerr lays it down as a rule in regard to bills to restrain violation of trademarks that the owner of a trademark,where the marks have been illegally taken by another,is not bound to rely upon his assurance or premises not to repeat the illegal appropriation of the trademark,but is entitled to the protection of the court by permanent injunctions.But the rules does not seem to be an absolute one and it is in the discretion of the court,when considering the issue of an injunction, give such weight to the discontinuance as it may consider proper in the circumstances of the case and where it is satisfied that the menace is not likely to continue,the relief may be denied.In Champion Spark Plug Co.v.Reich,the court below had found that the defendant in good faith had inaugurated such changes in his practices that he was no longer infringing nor engaging in unfair competition,and had denied relief as to these practices.

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Discontinuance prior to Suit of permanent injunction 

Discontinuance of the use of the trademark 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 permanent 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.

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.In one case Judge Danison said:”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 he might have had if his conducts and motive had been honest”.For example in Coca-Cola Company v.Gay-Ola Co., caramel was not used to color a beverage,and the color of that beverage came to identify the manufacturer.A competitor used caramel as an ingredient of his beverage in order to get the same color,and so facilitate passing-off.By so doing he forfeited his abstract  right to use caramel as an infringement of a beverage.

Plaintiff Guilty of Fraudulent Trade

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Where the plaintiff’s trade is fraudulent relief will be denied.It will also be denied where defendant has been misled by the plaintiffs conduct. In Burgoyne and Co.v.Godfrec and Co.,the plaintiffs,who were the registered proprietors of the trademark ‘Burgoyne’ for wine,sold by action wine in cakes bearing the inscription ‘Burgoyne London’.The wine had been consigned to the plaintiffs on approval and rejected by them,and was sold on account of the growers.The defendants purchased the wine at the auction,and re-sold it as Burgoyne’s “Superior Australian Burgundy”.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 plaintiff’s wine ,and that the plaintiffs were not stopped by their conduct from restraining the sale of the wine as their wine.The permanent injunction and an account were justified and coming to the conclusion that the wine was Burgoyne’s wine,and that they were so justified by the 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.

Representations through Agents

where the defendant is guilty of unfair use of his own name he may be restrained by the permanent injunction.This may be illustrated by the case in Rodgers and Sons v.Joseph Rodgers Simpson.In this case the plaintiff’s Joseph Rodgers and Sons Ltd.,manufacturers of Cutlery,brought an action against Joseph ‘Rodgers’ Simpson to restrain the defendant from passing-off cutlery not being their goods as and for such goods,and from trading under the name Joseph Rodgers Simpson and Son,or any other name comprising the name ‘Rodgers’,so as to be calculated to deceive. They alleged that the defendant was ,using the said firm-name so as to suggest that the first name in it was Joseph Rodgers. The defendants was on his knives using the device of a crown which was placed over the name Rodgers in which position the plaintiffs had a  crown on their knives,they having also the words ‘Cutlers to her majority”. The defendant alleged that his son,who was thirty-one year of age,assisted him in his business,but the defendant also alleged that he had used the said firm name or knives twenty years previously. The defendant was carrying on a grocer’s business,but he was also ,as the plaintiffs alleged that they had recently ascertained,selling knives marked as above mentioned. The defendant claimed that he had the right to use the name Joseph Rodgers Simpson and Son,and Contended that his use of it was fair.

Factors to be taken into Account : Generally Stated for Permanent Injunction

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In determining the scope of the permanent infringement for the infringement of a trade name the manner in which the plaintiff is harmed,possible means by which harm can be avoided justification advanced for defendant’s conduct,inconvenience that would be caused by defendant by each of the several means of avoidance and their effects on competition between goods of plaintiff and those of defendant are generally important factors;and,while infringement of a trade name does not necessarily call for broader permanent injunction than does infringement of trade name,in  assigning values to factors considered in determining the scope of the permanent injunction ,differences between trade name are to be taken into account. 

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