Imagine you are a tenant whose landlord agrees to keep you at home for twelve months. After some days, at midnight, he says he doesn’t want any tenants in his house. That’s where estoppel[1] comes in. No person should take contradictory positions to take advantage of both sides. Here, the tenant took the advance rent for twelve months, and on the present date, he is backing out from his own words.
Think of it like a person who wants to take the benefits of both sides he can’t take because the “doctrine of estoppel” will apply to it.
Likewise, the Doctrine of Approbate and reprobate is the legal principle that one must either fully accept or entirely reject something. The law does not allow you to selectively receive only the advantageous parts while rejecting those that are disadvantageous or offer no benefit.
The doctrine of Approbate and Reprobate is closely related to the “Doctrine of Election”[2] Deriving its name on the basis that the person has the right to obtain two reliefs and he elects the one as an opportunity and takes the benefit of that, then he cannot go back on that Election and claim the alternative relief to obtain its benefit as well.
Imagine, Mr. X is an employee of the company but gives a false statement that he is not the employee so he cannot file a case against his boss to recover the salary in the future.
What is Intellectual Property Rights?
In the context of intellectual property law, the Doctrine of Approbate and Reprobate assures that parties cannot simultaneously approve and disapprove on the same matter. For example, if a company licenses a trademark to another entity, it cannot later deny the validity of that trademark to suit its interests.
Application of the Doctrine in Intellectual Property Rights
Courts apply this principle to preserve decency in legal agreements and guarantee that parties cannot take contrary positions that could result in discriminatory outcomes. In the spheres of IPR, where the protection and enforcement of rights are necessary, the “approbate and reprobate” doctrine plays a critical role in promoting unbiased conduct among parties.
Understand its Applicability with different examples
Here are some examples that how the doctrine of approbate and reprobate is used in different IPR contracts-
Parallel Proceedings
An opposed trademark device is being challenged in two jurisdictions by Company A and Company B. In Jurisdiction 1, Company A claims that the device mark is valid and intends to enforce it against Company B. Meanwhile, in Jurisdiction 2, Company A claims that the same device mark is invalid to prevent a counterclaim filed by Company B. Company A’s conflicting legal approach might damage its credibility, affecting its position in both processes.
Trademark disputes
A company, “BrighLight” wins a trademark infringement case, obtaining protection for most products under their “BrightGlow” trademark, but not for certain specific items, they cannot later attempt to sue for those excluded items, by doing so, they would be trying to accept the favorable part of the court’s ruling while disregarding the unfavorable part, which the doctrine disallows to ensures fairness and consistency to legal proceedings.
Generic trademark
Company ‘A’ authorizes Company ‘B’ to use its trademark. Company ‘B’ uses the trademark to build a brand but later claims a trademark is generic. Company ‘B’ wants a benefit from the trademark while also discrediting it. The doctrine of approbate and reprobate would prevent this contradictory statement.
Copyright Disputes
An author obtains the rights to a novel to a film production, allowing them to turn it into a film. The author gains royalties from the film’s prosperity as well as from the novel’s enriching popularity. The author decided to sue the production business, claiming that the movie adaptation infringed the author’s copyright by making illegal changes to the story. The doctrine of “approbate and reprobate” would prevent the author from criticizing the alterations while benefiting from them. If the author claims to assert infringement, they must first indulge the benefits obtained through the licensing agreement.
Legislation on Approbate and Reprobate
In Indian Hotels Company Limited & Anr. v. Jiva Institute of Vedic Science & Culture[1][3], – “In the case court rejected the defendant’s argument that the trademark ‘JIVA’ was generic because the defendant had already sought its registration. This ruling demonstrates that parties cannot take inconsistent positions to suit their interests. Following the judgment in Automatic Electric Limited v. R.K. Dhawan[2}[4], the contention of the appellant of the trademark ‘JIVA’ being descriptive and hence, non-registerable, was rejected by the Court on the ground that the appellant itself had applied for registration of the mark ‘JIVA’ as a trademark and therefore, it did not lie in the mouth of the appellant to say that the aforesaid mark was a generic expression”.
To the same effect is the finding of the Division Bench of this Court in PEPS Industries Private Limited v. Kurlon Limited[3][5], “wherein it was observed that when the defendant has sought registration of the same mark as that of the plaintiff (NO TURN’ in the said case), such a defendant is estopped from raising a question on the validity of the said mark on the ground of it being descriptive”.
In Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals Ltd.[4][6], “the contention of the plaintiff therein that the mark ‘ZEST’ was being used by various third parties and hence, the same is a public Juris expression, was rejected by the Court on the ground that the plaintiff itself had sought and obtained registrations of the same mark and therefore, it does not lie in the mouth of the plaintiff to state that the word ‘ZEST’ is a public juris or a generic expression.”
Further, in the case of Hindustan Pencils (P) Ltd. v. India Stationery Products Co. and Ors[5][7], “the court had propounded that if it is decided that the party’s acceptance of the mark has not been reliable and true, then the court would be justified in granting an order of Injunction. Therefore, in light of the said averments and cases, the instant application must be thrown out at the very outset and other applications of the applicant must also be rejected to proceed further, as the same will cause monetary harm as well as harm to his reputation.”
Conclusion
In short, the Doctrine of approbate and reprobate serves as a safeguard against duplicity and ensures that parties can act in good faith in the realm of Intellectual Property. The doctrine upholds the integrity of legal processes and reinforces the principle of Intellectual Property Rights. In IPR disputes, the idea of approbate and reprobate guarantees that parties take consistent positions, promoting judicial integrity and fair competition. The application of this concept reinforces the balance between innovation, economic progress, and ethical business practices, thereby protecting intellectual property law’s primary objectives.
[1] Doctrine of estoppel, sections 115 to 117 of the Indian Evidence Act, 1872.
[2] Doctrine of election, section 35 of the Transfer of Property Act, 1882.
[3] Indian Hotels Company Limited & Anr. v. Jiva Institute of Vedic Science & Culture, (2020) SCC Online SC 34.
[4] Automatic Electric Limited v. R.K. Dhawan, (1999)
[5] PEPS Industries Private Limited v. Kurlon Limited, 2022 SCC Online
[6] Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals Ltd., 2022 SCC Online
[7] Hindustan Pencils (P) Ltd. v. India Stationery Products Co. and Ors., (1990) 3 SCC 24.
Author: Manika Saluja, Fourth Year (B.Com.LL.B) student at Jiwaji University, Institute of Law, Gwalior, (M.P.)
