One of the significantly used defences against the issuance of injunctions in intellectual property cases is the exercise of delay on the part of the plaintiff. As it is said, “equity aids the vigilant and not those who slumber on their rights.”
Not enforcing one’s right at the opportune time may also rebut the existence of an irreparable injury or harm resulting from the non-grant of injunction as is the requirement under Order XXXIX of the Civil Procedure Code 1908. Delay in seeking a remedy by way of injunction tends to indicate that there is no urgency propagated by the infringement and consequently, no irreparable injury. However, it is within the discretion of the courts to condone the delay, if sufficient reason is cited.
Laches applies when there is prejudice caused to the other party as a result of such delay, which bars an action for infringement. The party asserting laches must prove that it was prejudiced by the delay. If the passage of time can be shown to have lulled the defendant into a false sense of security and the defendant acts in reliance thereon, then the doctrine can be applied. Inordinate delay is not equivalent to laches and the two ought not to be used interchangeably.
The courts have recognised the defence of delay and laches, and there are a number of judgments that have clarified the application of the doctrine depending on the facts and circumstances of each case. In Indian Network of people living with HIV AIDS and TNN v. UOI1, a pre-grant opposition was held to be not barred by delay and no irreparable harm or injury was considered to follow if the plaintiffs were given an opportunity of hearing. The court held that its discretion was “governed by the objective of promoting public interest and good administration and on that basis it cannot be said that discretion would not be exercised in favour of interference where it is necessary to prevent continuance of usurpation of office or perpetuation of an illegality.”
A different stance was taken in Pernod Ricard France and Anr. v. Rhizome Distilleries and Ors, where there was delay in filing action against the registration and subsequent marketing of a deceptively similar trademark. It was held that the delay in approaching the court came in the way of the plaintiff to seek an interim injunction; however, inordinate delay does not defeat an action for the grant of a temporary injunction where the use of the mark by the defendant is fraudulent. The court regarding that the delay was not inordinate, held the plaintiffs to be entitled to injunction and, based on its findings, confirmed the decree of passing off.
Perhaps the most important case in the last few years where the defence of delay and laches was upheld and successfully defeated an action for infringement was that of Khoday Distilleries v. The Scotch Whisky Association. The verdict in this case hinged upon acquiescence coupled with delay, and it was pronounced that “in order to put forth the plea of acquiescence by a party, the owner of a legal right ought to have done something beyond mere delay to encourage the party to believe that they do not intend to rely on their strict legal rights and the party must have acted to its prejudice in that belief.” The appellants were using the word ‘SCOT’ as a part of their trademark, which was objected to by the Scotch Whisky Association as being similar to Scotch and hence amounted to passing off. The respondents were not able to secure relief, their rectification application being barred by laches and acquiescence.
The principles applied in according the defence of delay and laches thus hinge on the test of whether equitable relief should be withheld in the case of a continuing legal wrong on the ground of delay by the plaintiff in enforcing his rights is that the facts must be such that the owner of the legal right has done something beyond mere delay to encourage the wrongdoer to believe that he does not intend to rely on his strict rights, and the wrongdoer must have acted to his prejudice in that belief; that is to say, the case approximates to what would totally destroy his right.
The case of Pratyush Kumar Jana and Anr v. New Howrah Bakery (Bapuji) brings forth the aspect of dishonest adoption of a mark in relation to confectionary items. In such a circumstance, the court justified condonation of delay by asserting that “merely because an action for infringement is delayed, would not lead to the conclusion that the Court will require the plaintiff to get his injunction at the trial even if the facts otherwise warrant the grant of interlocutory injunction. In our opinion, the learned single Judge correctly came to the conclusion conclusion that if the adoption of the mark is as deliberate and dishonest as it tentatively appears on the materials now shown, mere prolonged delay in asserting the rights in respect of a registered mark would not disentitle the plaintiff to interim protection.”
Similarly, in Cable News Network v. Cam News Network, when the defendant claimed the defence of delay and laches, the court prevented him from taking advantage of his own dishonest conduct and resolved the issue by averring that, with the onus of proof resting on the defendant, he failed to establish that there was prejudice because of the delay, laches and acquiescence on the part of plaintiffs. The defendant also failed to establish itself as an honest and concurrent user of the registered trademark CNN.
Delay and laches being a defence in equity, an equitable defence cannot be taken up by a party whose conduct is vitiated by fraud and dishonesty. A person who is guilty of violating the law or infringing or usurping somebody else’s right cannot claim the continued misuse of the usurped right. Mere delay after the knowledge of the infringement comes up is not sufficient to call the statute of limitations into operation, or where the infringement continues, is not, it seems, a bar to the right of an injunction at the trial.
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