IP Background
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infringement of a
trademark, the owner of the mark has a right
to sue for every infringement of the mark
until the mark becomes publici juri , that
is to say until the proprietor of it has
effect thrown open the use of it to the
public by allowing his right to be so
habitually infringed that trademark no
longer conveys to those who see it the
impression that the goods to which it is
attached are the manufacture of one
manufacturer, or the goods of one person or
firm, who originally adopted the mark”. And
was also held: “ therefore, the suit for an
injunction was not barred by limitation.”
Besides the question of
limitation, how the Courts approach or
consider the question on whether injunction
would be granted or not is interesting. In
the case Saya U Nyo Zeint Vs. Saya
Shein18, it was held: “That if a party
makes out a prima facie case, i.e. a case of
a clear colour of title as distinguished
from proof of real title, he is entitled to
a temporary injunction if other conditions
are satisfied.” And held also: “That in
order to obtain temporary injunction
restraining the use of a trademark or label,
the plaintiff must show that the case is of
some urgency, that he has a clear colour of
title and the granting of injunction will
not cause irreparable damage to the
defendant if it be later proved that the
defendant has a right.”
It was followed in the
most recent case of U Tin Latt (a) U Sai
Latt and one other Vs. U Kyaw Nyein19,
it was held:” There were examples of
granting temporary injunction prior to be
permanent had the suit based on what seems
to be so without further or deeper
investigation. To consider the matter of
whether or not should temporary injunction
be granted, it needs not to prejudge on the
title of trademark, imitation but only to
bear in mind that the suit is prima facie or
not.”
In one of the most
prominent cases, John Walker and Sons Ltd
Vs. U Than Shwe,* there arose a question
about maintainability of the suit inasmuch
as the defendant respondent asserted that an
action for infringement of a trademark is
unknown to Burma. Hon’ble Mr. Justice Thet
Pe observed; “ So far as India is concerned,
prior to the introduction of the Trade Marks
Act, 1940, the Chancery Law of England
regarding the infringement action was
embodied in section 54 Specific Relief Act,
which is still in force in this Country up
to the present moment. The relevant portion
of this section reads:
“When the defendant
invades or threatens to invade the
plaintiff’s right to or enjoyment of
property the Court may grant a perpetual
injunction. Explanation. – For the purpose
of this section a trademark is property.
Illustrations
(w) A improperly uses the
trademark of B . B may obtain an injunction
to restrain the user, provided that B’s use
of the trademark is honest.
It is true that the late
High Court of Rangoon had in Gaw Kan Lye
Vs. Saw Kyone Saing20 held that in the
absence of a Trade Mark Act no action could
be brought for infringement of a trademark
in this country. The learned judges therein,
with due respects, must have overlooked the
provisions of section 54 Specific Relief
Act, which clearly authorize the Courts in
Burma to grant injunctions in infringement
suits. * * *I am therefore of the opinion
that the trial Court is correct in coming to
the conclusion that the appellant’s suit for
infringement of his trademark is
maintainable.”
17 India Act IX, 1908 (1st January
1909.)
18 1948 Burma Law Reports. P. 134.
19 2001 Burma Law Reports pp.
216-232.
* vide 2
20 1939 Rangoon Law Reports p. 488. |
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