Indian Hume Pipe Co Ltd v Vendra Venkanna (1961)

Summary

“The appeals are presented against common judgment of the Court of the District Judge, West Godavari at Eluru in O.S. Nos. 30, 53 and 54 of 1954” ... “The suits were instituted claiming reliefs for an alleged infringement of the trade mark of the plaintiff in relation to cement concrete pipes manufactured and sold by the plaintiff and of the patent registered in relation to the said cement concrete pipes.” (para 1) The plaintiff had registered “the said trade marks with the Registrar of Trade Marks under the Trade Marks Act of 1940” and “its patent in relation to the said cement pipes as an invention in or relating to cages or drums for forming thereon reinforcement of concrete pipes as patent No. 20709 on 19-3-1934 under the Patents and Designs Act of 1911” (para 2). The trial court found that “the said patent was not subsisting on the date of the suit” (para 10) and that “The plaintiff-company was entitled to recover only nominal damages for infringement of their trade mark, awarded at Rs. 100/-.” (para 11) The appellant urged “that the court below has erred in awarding only nominal damages when the question of ascertaining the quantum of damages was left open for investigation by a Commissioner and report.” (para 17)

The Court held that “a patentee has a right of action to restrain the infringement of a patent during the continuance of the patent only” (para 24) and that “the defendants have made good their plea with reference to section 30 of the Patents and Designs Act, 1911, which effectively precludes the claim of the plaintiff for damages.” (para 26) On the trade mark it held that “the use of the word “Hume Pipes” in relation to R.C.C. pipes manufactured and sold by the defendant, constituted an infringement of the trade mark” (para 40), but that “In view, of the substantial difference between the nominal and substantial damages, the award of nominal damages only is clearly an error.” (para 46) “A.S. 140 of 1957 is, therefore allowed to this extent only viz., the judgment awarding nominal damages of Rs. 100/- is set aside and the matter is remitted to the lower Court for disposal on the lines indicated.” (para 50) “A.S. 154 and 170 of 1957 are dismissed” (para 53).

What the court decided

1. The scheme of the 1911 Act. “A combined reading of these provisions would show that a patentee has a right of action to restrain the infringement of a patent during the continuance of the patent only, that among other things, the validity of the patent could be raised by way of defence and that when damages are claimed in respect of infringement, the action could be successfully resisted on the ground that the defendant was not aware of the patent or had no reasonable means of making himself aware of the existence of the patent. It may also be noticed in this context that where the validity of the patent is questioned, Section 33 of the Act provides for the transmission of such Court’s decree and order to the Controller who will cause entry thereof to be made in the register of patents.” (para 24)
2. The term of the patent. The certificate gave “the exclusive privilege of making, selling and using the invention throughout British India and of authorising others so to do for a period of 16 years from 19-3-1934” and “The patent according to the certificate, was due to expire on 19-3-1950.” (para 18) “by virtue of Ordinance No. 26 of 1948” ... “the term limited in the patent No. 20700 for the duration thereof shall be 21 years from the date of the patent, viz., 19-3-1934.” (para 19) “the petition for the extension of the term of patent No. 20769 has been rejected by the Central Government.” (paras 18–20)
3. The claim confined to damages. “In the instant case the plaintiff would appear to have restricted his claim to damages only, in view of the fact that the patent was not extended” ... “we are of the view that the claim of the plaintiff for damages could be effectively considered with reference to the plea that the defendants were not aware of the existence of the patent on the assumption that the patent had not expired on the date of the institution of the suit.” (para 25)
4. The burden under section 30. “Section 30 of the Act, set out supra, is clear that the defendant has to prove that on the date of the infringement, he was not aware of the existence of the patent, nor had he reasonable means of making himself aware of the existence of such patent.” (para 25)
5. Ignorance of the patent. “The plea of the defendants that they were utterly ignorant of the patent and had no means of knowing the existence of such patent, in our view, has been rightly accepted. That would mean that the defendants have made good their plea with reference to section 30 of the Patents and Designs Act, 1911, which effectively precludes the claim of the plaintiff for damages.” (paras 26–27)
6. Ignorance of the trade-mark registration. “The provisions of the Trade Marks Act to which we shall presently refer do not seem to admit of a plea that the defendant had used the trade mark unaware of the fact of its registration.” (para 31) Of section 21, “The obvious words of this provision do not admit of the answer that the defendant did not know the registration of the trade mark and so he has infringed.” (paras 31–32)
7. “Hume Pipes” in the market. The Court was “unable to accede to the contention that in the market R.C.C. pipes of any make are referred to as Hume Pipes” (para 31), held “We therefore reject this plea as unsound in law and untrue in fact” (para 39), and that “There can be no doubt that the use of the word “Hume Pipes” in relation to R.C.C. pipes manufactured and sold by the defendant, constituted an infringement of the trade mark.” (para 40) “We affirm the finding of the learned District Judge that there was an infringement of the plaintiff’s trade mark.” (paras 31, 39–40, 42)
8. The mark as a whole. “The question of infringement must be answered to the plaintiff’s trade mark as a whole and not to particular parts of it. Vide Subbiah Nadar v. Kumaraval Nadar, AIR 1946 PC 109.” (para 41)
9. Damages left to a Commissioner. “It seems to us clear from the above that the quantum of damages was left open for ascertainment by the Commissioner and determination thereafter by the Court. The plaintiffs claim for damages cannot, therefore, be legitimately disposed of by awarding only nominal damages.” (para 43)
10. Nominal and substantial damages. “‘Nominal Damages’ is a technical phrase which means that the Court has negatived anything like real damage, but is affirming by nominal damages that there is an infraction of a legal right” (para 44). “‘Substantial damages’ on the contrary are those damages which a plaintiff with a good cause of action, is entitled to receive as a fair and adequate compensation for the damage he has suffered from the wrongful act of the defendant.” (para 45) “In view, of the substantial difference between the nominal and substantial damages, the award of nominal damages only is clearly an error.” (paras 44–46)
11. The measure of trade-mark damages. “The damages in an action for infringement of trade mark are in proportion to the injury done. Vide Swadeshi Mills Co., Ltd. v. Juggilal Kamlapat Cotton Spinning and Weaving Mills Co., Ltd., AIR 1927 All 81. But, as the Privy Council has observed in Juggilal Kamlapat Cotton Spinning and Weaving Mills Co., Ltd. v. Swadeshi Mills Co., Ltd., AIR 1929 PC 11, there is no cut and dried rule which can be laid down by a Court of law in estimating damages for infringement of trade mark.” (para 47)
12. Procedure. Costs of the patent suit. “We have held that the plaintiff could not claim damages as the plea of the defendant that he was not aware of the patent or had no reasonable means of being aware of such a patent, was accepted, though the plaintiff had shown that it had patented its machines. Under the circumstances, we do not consider that we should interfere with the discretion of the trial Court in disallowing costs.” (para 52)
13. Procedure. Disposition. “We would, therefore, remit the said matter for adjudication by the Court after a Commissioner is appointed to investigate about the measure of damages and submit a report to the Court.” (para 49) “We affirm the injunction against the infringement of the trade mark of the plaintiff in future.” (para 50) “In the result, the cross-objections filed in A.S. Nos. 140 and 170 of 1957 are dismissed; but we make no order as to costs. A.S. 154 and 170 of 1957 are dismissed, but we do not propose any order as to costs. A.S. 140 of 1957 is allowed to the extent indicated above.” (paras 49–50, 53)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.