Appellants: The Hearst Corporation
Vs.
Respondent: Dalal Street Communications Ltd.
Decided On: 21.07.1995
1996 PTR 1 (Cal)
Facts: The plaintiff publishes a monthly magazine by the name 'Esquire' and has been doing so since 1933. The magazine is sold internationally. Sales of the magazine are also affected in India. The plaintiff is the registered proprietor of the Trade Mark 'Esquire' in India. Registration of the trademark was granted in 1942 by the Trade Mark Registry at Calcutta in respect of inter alia magazines and periodicals. The trademark is still valid. The plaintiff also owns the copyright in the script, get-up and style in which the trademark 'Esquire' is retailed.
Since October 1994 the monthly magazine with the name 'E-square' has been publishing by the defendant.
The plaintiff has filed this suit claiming that the defendant has thereby infringed the plaintiffs, trademark and copyright of the trademark 'Esquire'. An application for interim relief was filed and an ad-interim order was passed on 10th May 1995 restraining the defendant from publishing the June issue of 'E--square' until 18.5.95 without the leave of the Court. The May issue was also directed not to be marketed and sold till 18th May 1995 if it had not already been done. On 18th May 1995, the interim order was directed to continue as the defendant did not appear. According to the defendant it was not served in time. The defendant preferred an appeal from the ad-interim order. No stay was granted. The defendant has now applied for modification and/or modification of the ad- interim orders and stay of the trial of the suit. The defendant has also filed an application for security for costs. Plaintiff filed suit claiming that Defendant had thereby infringed Plaintiffs, trademark and copyright of trademark 'Esquire'.
Held: Statute does not require actual deception or confusion to found an action for infringement. Where there is proof of infringement the Plaintiff should be entitled to an injunction as a matter of course. Under Section 106 in any suit of infringement or for passing off, a Court may grant relief including an injunction and damages together with or without an order for delivery up of the infringing marks for destruction or erasure. Agreement between Defendant and Citibank also showed that Defendant was required to supply Credit Card Members of Citibank with copies of its magazine free of charge for a period of 12 months after meeting which Defendant was entitled to sell magazine commercially to the public at large. The bulk of circulation was on a complimentary basis; Plaintiff's mark was much before the Defendant. Plaintiff was entitled to an injunction as prayed for, rule proceeds on the presumption that there is a real possibility of Plaintiff being directed to pay costs of Defendant at the time of final disposal of the suit. The rule does not take away the discretion of Court concerning quantum - Word security implies a possible liability. Plaintiff was directed furnish security to an extent of Rs 50,000/- either by way of bank guarantee through a nationalised bank in favour of Defendant or deposit of Rs. 50,000/- in cash with its Advocate on Record within six weeks from date of receipt of the signed copy of minutes of this order.
