J.S. Verma ORDER
1. Appellants in these appeals by Special Leave, are the Defendants in Civil Suit No. 1220 of 1988 on the original side of the High Court of Madras and assail the order dated 19-1-1990 of the Division Bench of the High Court granting in appeal and in reversal of the order dated 2-3-1989 of the learned single Judge trying the suit an injunction restraining appellants from passing-off their medicinal product Cal-De-Ce as that of the Respondent-Plaintiff, Respondent claimed to have acquired a right in that Trade-mark by continuous user. The temporary injunction was refused by the learned Single-Judge. But in appeals, O.S.A. Nos. 111 and 112 of 1989, preferred against the refusal, the division bench granted the temporary injunction in appeal,
2. The appeals have come up for orders on the prayer for stay. As the considerations relevant for decision on the prayer for stay, by and large, conclude the subject-matter of the main appeals, we proceed to dispose of the main appeals themselves.
We have heard Sri F.S. Nariman, learned Senior Counsel for the appellants and Sri U.N.R. Rao, learned Senior Counsel for the respondents. We have been taken through the orders of the learned trial-Judge and of the Division Bench in appeal.
3. Wander Ltd., first appellant, claiming to be registered proprietor of the Registered Trade-mark Cal-De-Ce entered into an agreement dated 28-3-1986 with Antox India (P) Ltd. (Antox), the respondent, under which Antox agreed to manufacture vitaminsed Calcium Gluconate Tablets under the said registered Trade-Mark Cal-De-Ce and sell the entire production to the Wander Ltd. It would appear that pursuant to and in implementation of these arrangements Antox applied for the requisite manufacturing-license from the Drug Controller under the Drugs and Cosmetics Act, 1940, in the course of the processing of which Wander Ltd. furnished before the Drug Controller an undertaking that Wander Ltd., would not authorize the use of its Trade-Mark Cal-De-Ce by any other company and further not to manufacture Cal-De-Ce with effect from 1st July, 1986, either by itself or under sole licenses from it. The Drug Controller issued the manufacturing licence to Antox.
The working of the agreement dated 28-3-198.6 between the parties, however, appears to have run into serious troubles. It is not necessary to advert to the rival contentions of the parties on the merits of this controversy as they may have to be gone into by the High Court in the pending suit. The disputes culminated in Wander Ltd., purporting to rescind the agreement by its notice dated 30th November, 1988 and calling upon Antox to stop manufacture of Cal-De-Ce under the Trade-mark. It would also appear that Wander Ltd., entered into a separate manufacturing arrangement with Alfred Berg & Co. (I) Pvt. Ltd., the second appellant, at Madras, under licenses issued to the second appellant by the authority administering the Drug and Cosmetics Act, 1940 in that State.
It is at this stage that the Antox came forward with the present suit and sought temporary injunction.
4. The case of Antox is that its agreement dated 28-2-1986 with Wander Ltd., was itself void in that its object was one forbidden by law ; that it would, if permitted defeat and violate several statutory provisions and prohibitions, that the agreement thus, out of way, the undertaking furnished on 21st June 1986 by Wander Ltd., to the Drug Controller in Karnataka, had the effect, in law, of and amounte........