IP Background
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Important facts that a
plaintiff must prove in a passing-off action
i.e. violation of the rights to enjoyment of
property can be observed in the case of
O.K.Mohideen Bawa Vs. Rigaud Perfume
Manufacturers22 and it was held: “ In a
passing off case the plaintiff must
establish that the goods sold under his
label and get up had a reputation in the
market as being goods manufactured or sold
by him of which the label and get-up was
distinctive and well-known in the particular
market, and that the label and get-up of the
defendant on his goods of a similar
character is a colourable imitation of that
of the plaintiff.”
In such a case the
defendant sometimes pleaded the defense of
acquiescence. In the abovementioned case
plea of acquiescence was held; “If the
defendant plea is that the plaintiff
acquiesced in the infringement of his label
the defendant must prove that he was
ignorant of the plaintiff’s rights and was
deluded into thinking that his wrongful
action was assented to by the plaintiff with
knowledge of the infringement. But this
defense is of no avail to the defendant if
he is aware of the legal rights of the
parties, and deliberately or fraudulently
infringes the plaintiffs rights.”
In that case, Sir Arthur
Page the then Chief Justice of the High
Court of Judicature held further: “ A
plaintiff does not lose his remedy on
account of delay in filing the suit if he
has good ground for not filing the suit
immediately on becoming aware of the
infringement.”
So far as such cases are
concerned the civil Courts usually sustain a
temporary injunction during the trial to
restrain the defendant from using the
trademark in dispute, when the plaintiff
makes out a prima facie case. It can be
observed by the cases of Saya U Nyo Zeint
Vs. Saya Shein* and U Tin Latt (a) U Sai
Latt and one other Vs. U Kyaw Nyein**.
Apart from section 54
which is clearly provided for granting
relief relating to infringement of a trade
mark we may observe other relief whether it
might be granted or not by the same Act.
If there exists a bona
fide dispute to the right to use a trademark
or a rival claim to ownership of a trademark
party considered himself to be the real or
first owner of such mark prefers to
institute the suit under section 42 of the
Specific Relief Act which reads:
“Any person entitled to
any legal character or to any right as to
any property may institute a suit against
any person denying or interested to deny his
title to such character or right, and the
Court may in its discretion make therein a
declaration that he is so entitled, and the
plaintiff need not in such suit ask for any
further relief.
Provided that no Court shall make any such
declaration where the plaintiff being able
to seek further relief than a mere
declaration of title, omits to do so.”
Any right as to any
property referred to in section 42 is
included the ownership of a trademark or
other I.P as well, had it been read with the
explanation provided in section 54 of the
same Act.
With reference to those
cases it might be enough to cite two cases
out of others. In the case of U Chit Swe Vs
Ma Than and three others”23, the appellant U
Chit Swe, the eldest son of one U Hla Gyaw
(deceased and was a manufacturer of
slippers, bearing a trade mark known as Saun
gauk, “ harp “ ) claims that he has acquired
the exclusive right to the use of
abovementioned trademark but his claim was
strenuously
22 All India Law Reports (Rangoon
Series) Vol 10. P. 133.
* vide 18
** vide 19
23 1958 Burma Law Reports 377 (High
Court) |
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