JUDGMENT
V.S. Deshpanda, C.J.
(1) Counsel had requested that the whole appeal itself may be heard. We accordingly heard it. After having heard the learned counsel we think the real question at issue is this. Under Section 28 of the Trade & Merchandise Mark Act, 1958, the respondent- plaintiff has the exclusive right to use the registered trade mark ‘Matador’ in respect of the combs manufactured by it in Austria inasmuch as the said trade mark has been registered in India. The grant of temporary injunction is governed by the well-known considerations of prima facie case, irreparable injury and balance of convenience. A prima facie case is made out in respect of a legal right. But injunction is an equitable remedy. It need not follow invariably on the proof of legal rights. Had that been so the whole distinction between law and equity which is now codified in the Indian statutes would disappear. The grant of temporary injunction has to be in accordance with order 39 of C.P.C. and not according to the provisions of the Trade Mark Act. Similarly, the grant of permanent injunction has to be according to the provisions of the Specific Relief Act.
(2) We sympathise with the case of the respondent that it was unfair on the part of the appellant to have chosen the word ‘Matador’ for the combs manufactured by the appellant and thus there may have been intention on the part of the appellant to take advantage of the goodwill which existed in favor of the combs manufactured by the respondent. Unfortunately, the right established u/s 28 and the use of the very word ‘Matador’ by the appellant for his combs when the same word had been registered as trade mark in favor of the plaintiff-respondent, are not sufficient for the grant of temporary injunction in the present case.
(3) Firstly, according to the statement of law in Kerley on Trade Marks and Trade Names, 10th Edition, paragraph 15.65 the balance of convenience in granting temporary injunction is to be determined by relative amount of damage which is likely to result after the injunction is granted and the plaintiff ultimately fails. The damage which would be caused to the appellant could be total. On the contrary no damage would be caused to the respondent-plaintiff for the simple reason that from 1954 onwards, the import of the plaintiff respondent’s combs has been banned in India. The legal injury by the infringement of the trade mark of the respondent is a question of law while the amount of damage that can: be caused to the respondent is a question of equity. The strength of the plaintiff’s case on the former is not reflected in the latter.
(4) Secondly, the nature of the article is such that it is of common use by almost every person in this country. For such a common article of small value what one sees is the article itself and the feel of the article in combing the hair. It is only the look and the feel and not the name of the plaintiff’s article ‘Matador’ which make the purchasers wish to buy a comb. The respondent-plaintiff is almost totally unknown in India and one will be surprised that a substantial number of persons in this country could be shown to go to the market to buy the comb made by the plaintiff- respondent. If an article of special nature and , of higher value made by a renowned manufacturer were concerned, then it would be possible to hold that the purchasers in buying the article made by the appellant would be misled into thinking that they were purchasing the article made by such renowned maker. In view of the nature of this particular article, no such decepion can be envisaged.
(5) Lastly, the appellant has been making this article from 1966 onwards while the respondent has come to challenge this use only in 1978. It is doubtful if the respondent would be able to explain satisfactorily the very .great delay on its part in vindicating its right.
(6) We are of the view that the above provisions were not given adequate weight in the grant of the temporary injunction. We further make it quite clear that the suit is pending fo,r decision on merits and none of the above observations regarding the grant of temporary injunction are to be taken into account in deciding the question of the grant of permanent injunction to the plaintiff-respondent in the pending suit.
