John Beaumont, Kt., C.J.
1. This is an appeal against a decision of Mr. Justice Somjee which raises a pure point of law.
2. The facts are not in dispute. The plaintiffs are the registered proprietors of a design registered under the Indian Patents and Designs Act of 1911, which is for use on textile goods. The design was registered on April 2, 1936, and accordingly, under Section 47 of the Act, the plaintiffs have copyright in the design for five years from that date.
3. A firm of merchants in Bombay called M.S. Mustak & Co. admittedly handed over to the defendants, who are a Japanese firm with an office in Bombay, a design which infringed the plaintiffs' copyright. The object of Mustaks was to have the design placed on textile goods which were to be imported by the defendants from Japan and sold to Mustaks.
4. The contract between Mustaks and the defendants, which is exhibit C, makes it clear that they were contracting as principals, that is to say, aa buyers and sellers. Under the contract the buyers were to give full instructions regarding ticketing, stamping, and so forth, of the articles to be sold, but in the description of the articles the space under the heading of ' designs ' is left blank. It is clear, however, from exhibit D, which is a sale report made by the defendants to their head office in Tokio, that the buyers' design would be sent by air mail.
5. It is not disputed that the defendants did send from Bombay to their Tokio office the design which they had obtained from Mustaks, and in due course the articles, the subject of the contract, were shipped to Bombay with the design infringing the plaintiffs' trade mark upon them. They were stored at the Customs in Bombay at the instance of the plaintiffs, so that in fact they were never sold by the defendants to Mustaks, or of course by Mustaks to the public.
6. The plaintiffs then started two suits in this Court, one against Mustaks, and the present suit against the defendants. The matters complained of in both the suits were infringements of Section 53 of the Patents and Designs Act. That section, as pointed out by Mr. Justice Warrington (as he then was) in an English case, John Haddon & Co. v. R.P. Bannerman & Son (1912) 2 Ch. 602 dealing with a corresponding section in the English Act, creates three separate acts which are unlawful. The first is to apply the design in the way described ; the second is to do anything with a view to enable the design to be applied in the way described in the statement of the first of the offences; and the third is to expose or cause to' be exposed for sale the article under the conditions specified under head (b).
7. Now in the suit against Mustaks they were charged with having committed the three offences, but in respect of the second offence the plea is in quite general terms, viz., that the defendants had acted with a view to enable the said design or a fraudulent or obvious imitation thereof to be so applied, but the plea does not give any particulars of the actions alleged. We do not know when the act complained of took place or what the character of the action was. That suit against Mustaks was not contested. The defendants submitted to judgment by consent, and the material part of the judgment is that an injunction was granted in terms of the plaint and included an injunction against doing anything with a view to enable the said design to be so applied.
8. In the present suit against the defendants the plaint is in almost similar terms to the plaint in the suit against Mustaks, and in particular, the second offence of ' doing anything with a view to enable the said design to be so applied' is again pleaded in quite general terms, without any particulars as to the acts which are complained of. Now Sir Kenneth Kemp on behalf of the plaintiffs in this suit says that all that he is complaining of here, or at any rate, the only matter in respect of which he can ask for relief, relates to what I have referred to as the second of the offences, that is, acting with a view to enable the said design to be applied to these goods, and he says that the defendants committed acts of that nature first of all when they sent the design from Bombay to Tokio, and, secondly, when they received the goods in Bombay with the offending design upon them. It is not disputed that the acts referred to in the Patents and Designs Act must be committed in British India, and the actual application of the design to these goods was made in Japan, and therefore is not an offence under the Act.
9. Mr. Justice Somjee would have given judgment for the plaintiffs, but he held that in law he was unable to do so because of the judgment already obtained against Mustaks. The learned Judge discussed the law, and I agree with him in the view he expressed as to the law, though I differ from him in the application of the law to the facts of this particular case. It is quite clear that a judgment against one of two joint tort-feasors operates as a bar to a suit against the other joint tort-feasor. There have been many cases in which the question of what amounts to a joint tort has been discussed, and extracts from cases and text-books are discussed by the learned Judge, I may take as a sufficient statement for the present purpose a passage from Clerk and Lindsell on Torts at p. 59, which the learned Judge has quoted, viz.,
Who are joint tortfeasors within this rule One way of answering this question is : ' Is the cause of action against them the same ' If the same evidence would support an action against each, they are jointtortfeasors. They will be jointly liable for a tort which they both commit or for the commission of which they are both responsible, but not for a tort where each is responsible for a different injuria and the two injuria happen to produce the same damnum.
10. There must undoubtedly be a single tortious act in order that the perpetrators may be joint tort-feasors, though one of them may take a more active part than the other, and one of them may be acting as the agent for the other. Two questions arise here. First, were the defendants joint tort-feasors in respect of the particular tort which is relied on and, secondly, is it proved that the judgment against Mustaks was in respect of that tort? Now, as I have said, some of the tortious acts which were relied on in the plaint were not established. The goods were never sold in Bombay, and the only acts which the plaintiffs rely on are the sending of the design to Japan by the defendants and the importing of the goods into Bombay with the offending trade mark upon them. In my view it is impossible to say that those acts were the joint acts of the defendants and Mustaks, because under the contract between the parties they were in the relation of principal and principal, sellers and buyers, and in acting as they did the defendants were acting as independent contractors. It is quite true that the object of their action was to enable them to sell these goods to Mustaks, and it is also true that they acted as they did in order to satisfy Mustaks, but I do not think that the action amounted to a common action. The rule as to that is stated in the 27th volume of Halsbury, para. 948, as follows :-
Where a tortious act is committed in the performance of some term of a contract, that fact does not of itself render liable the person for whose benefit such performance enures. If the performance of that term is undertaken by an independent contractor who acts as such, and not as a servant or agent of the other party to the contract, the liability attaches to such independent contractor, but if such other party retains in his own hands the control over or interferes with such performance he remains responsible.
11. I think that the action which the defendants took in respect of this design after it came into their hands is an action entirely independent of Mustaks, although it may have been an action which they were asked to take by Mustaks. Mustaks had no power to send this design to Japan. It was open to the defendants to get the design placed on the goods in Bombay, and I think in sending the design to Japan the defendants were acting quite independently of Mustaks.
12. But if I am wrong in that, and if the action complained, of in this suit were a joint action of Mustaks and the defendants, in my view it is not proved that the judgment against Mustaks was in respect of this joint action. As I have pointed out, we do not know from the plaint in the suit against Mustaks what the actions complained of were, or when they were committed. No evidence was given in the suit, and no written statement was put in. All we know is that the defendants submitted to an injunction against acting with a view to enable this design to be placed on the goods. But it is quite possible that they submitted to that injunction because they realised that they could not contest the fact that they had handed over the infringing design to the defendants, and that alone would render them liable to an injunction. The defendants here are relying on a purely technical defence, and the burden is upon them to establish the facts necessary to constitute that defence. Even if the defendants in sending the design to Japan were acting jointly with Mustaks, it is not proved that that joint act was one of the acts covered by the judgment in the suit against Mustaks. On both these grounds, although I agree generally with the law as discussed by the learned Judge, I think the actual conclusion he came to was wrong. The appeal, therefore, must be allowed with costs including costs in the lower Court.
13. There will be a permanent injunction restraining the defendants, their servants and agents, from doing anything with a view to enable the plaintiffs' registered design mentioned in the plaint or any fraudulent or obvious imitation thereof to be applied without the licence or written consent of the plaintiffs to textiles for the purpose of sale during the period of the plaintiffs' copyright in the said design. Argument as to the plaintiffs' right to1 an order in terms of prayer (b) of the plaint in respect of the seven cases admitted in the written statement to have been imported to be heard on Monday next.
14. Liberty to apply.
B.J. Wadia, J.
15. I am of the same opinion. The onus is on the defendants to show that the decree obtained by the plaintiffs in suit No. 1907 of 1936 filed by them against Mustak & Co. is a bar to the plaintiffs' proceeding with and/or obtaining any relief in this suit. It is contended on behalf of the -defendants that the decree is a bar to the present suit on the ground that the defendants and Mustak & Co. were joint tort-feasors or wrong doers, and the plaintiffs have proceeded to judgment against Mustak & Co.
16. In order to constitute two persons joint wrong-doers they must act together in furtherance of a common design, or one of them must aid, counsel or direct the other, or one must be the servant or agent of the other, or as was held in some cases, one man has allowed another to meddle negligently in an act for which the former was really answerable. But it is a well-known rule that not all concurrent wrong-doing is necessarily joint. When the wrongful acts are separate and independent and yet combine to cause the same damage, there is a separate injuria in respect of each wrongful act, though they produce one damnum, and each of the two persons who has committed an injuria is independently liable on that injuria, as on a distinct cause of action.
17. The important question therefore is, whether there is an independent tort committed by the defendants, that is, independent of the tort committed by Mustak & Co. All that the defendants allege in their written statement is that they and Mustak & Co. were joint tort-feasors, but no ground is alleged on which this defence is based. It is alleged in paragraph 7 of their written statement that the defendants under instructions from Mustak & Co. agreed to import seven cases of voil from Japan, and that the design printed on those goods was given to the defendants by Mustak & Co. which design the defendants forwarded to Japan. This, in my opinion, is not sufficient to sustain the allegation that Mustak & Co. and the defendants were joint tort-feasors. It is not alleged that the defendants did so as the agents of Mustak & Co. The defendants cannot say that they were agents in face of the indent in which the contract is described as being between principal and principal, and in which it is further provided inter alia that the sellers shall have a lien on contract goods for moneys not paid to them, that they will be entitled to re-sell the goods in certain contingencies, and that they will also be entitled to charge interest on the price of the goods not taken delivery of by the buyers within the period of time mentioned in the indent. All these terms clearly show that the relationship was that of principal and principal, and not that of principal and agent. It cannot also be said that the act committed by the defendants was in furtherance of a common design between them and Mustak & Co. to commit a tortious act, nor is there any allegation nor evidence that one helped the other nor that they conspired together in committing it. The mere fact that they acted in reference to the same subject-matter, viz., the infringement of the copyright by application of the design to the goods in the seven cases, is not enough. The cause of action in the two suits need not necessarily be the same, because the words used in the two plaints, taken bodily from the statute, viz., the Indian Patents and Designs Act, are the same. The important question is whether the cause of action in each suit which is embodied in those words, viz., the doing of a thing with a view to enable the design to be applied unlawfully as stated in Section 53(1)(a) of the Act, is based on the same act or on different acts. I am of opinion that the acts are different, and therefore the causes of action are different. It was enough for the plaintiffs to show as against Mustak & Co. that Mustak & Co. handed over the design to the defendants for the purpose of being unlawfully applied to the goods. It would be enough for the plaintiffs to show as against the defendants that the defendants forwarded the design to Japan for the same purpose, without any reference to what Mustak & Co. did These, in my opinion, are different and independent acts, though they may have happened one after the other, and in reference to the same subject matter.
18. Under the circumstances I am of opinion that the defendants have not teen able to prove that Mustak & Co. and the defendants were joint tort-feasors as alleged. In the result the appeal is allowed with costs.
19. After further arguments the following judgment was delivered on March 14, 1938.
20. In this appeal we allowed the appeal and granted an appropriate injunction. Sir Kenneth Kemp, on behalf of the appellants, asked for the usual order that the gooda be delivered up to be destroyed, and the matter stood over till to-day to be more fully argued. The facts of this case are rather peculiar. The defendants are innocent infringers, as there is no charge that when they imported these offending goods they knew that they had on them a trade mark which would be an infringement. When the goods arrived application was made to the Court for the appointment of a Receiver, and the defendants gave an undertaking to place the goods in a warehouse under the provisions of the Sea Customs Act, which involved their getting the duty assessed, and entering into a bond to pay such duty as might become payable. The duty is heavy, about fifty per cent, of the value of the goods. So that, if we make an order that the goods be delivered up to be destroyed, that will involve the defendants in paying this large sum for duty, and I think we ought not to make that order unless we are absolutely satisfied that it is essential for the protection of the appellants. The defendants are willing to undertake to re-ship the goods as soon as practicable to Japan, and there to have the offending design bleached out after giving notice of the occasion on which they propose to bleach it out to the plaintiffs, and allowing them to appoint a representative to attend the proceeding. I think on that undertaking being given we ought not to make an order for delivery up. There is no practical risk of the goods being re-importedl after the plaintiffs' copyright in the design has expired, because these goods are piece goods and the design has over three years to run. It is obvious that the goods cannot be kept and re-imported three years hence. On that undertaking by the defendants there will be no order for delivery up. The defendants undertake to give notice of the ship by which the goods will be sent to Japan, and the approximate date of its arrival, and to give notice of the time when the designs will be bleached out to the plaintiffs' representatives in Japan.