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2012 Supreme(Del) 1826
High Court of Delhi
THE HONOURABLE MR. JUSTICE V.K. JAIN
Subhash Chand Bansal
Versus
Khadim’s & Another
CS(OS). 2392 OF 2006
Decided on : 22-08-2012
For the Plaintiff:Mohan Vidhani, Mahir Malhotra & Rahul Vidhani, Advocates.
For the Defendants:Sayantan Basu & Atish Ghosh, Advocates.
The main legal point established in the judgment is the interpretation and application of Section 17 of the Trademarks Act, 1999, regarding the exclusive right of the proprietor to use the trademark taken as a whole and the limitations on separate registration of parts of a mark.
Headnote:
KHAZANA - Trademark Infringement - Trademarks Act, 1999, Section 17 - The court discussed the interpretation of Section 17 of the Trademarks Act, 1999, and its application to the case. It highlighted the exclusive right of the proprietor to use the trademark taken as a whole and the limitations on separate registration of parts of a mark. The court emphasized that the registration obtained by the plaintiff did not contain distinct parts capable of separate registrations, thus not falling under the purview of Section 17(2). The judgment also referenced relevant case laws to support its interpretation of the legal provisions.
Fact of the Case:
The plaintiff, engaged in the business of manufacturing and selling boots, shoes, and slippers under the trademark 'KHAZANA', claimed infringement by the defendants who applied for trademarks similar to 'KHAZANA'. The plaintiff sought injunction, damages, rendition of accounts, and delivery up of infringing materials.
Finding of the Court:
The court found that the defendants' use of the trademark 'KHADIM'S KHAZANA' was deceptively similar to the plaintiff's registered trademark 'KHAZANA' and constituted infringement under Section 29(1) of the Trade Marks Act. It also held that even if the impugned trademark was not deceptively similar, it still constituted infringement under Section 29(2) as it was used in respect of the same products covered by the plaintiff's registered trademark and was likely to cause confusion.
Issues: The issues framed included infringement of the plaintiff's trademark, entitlement to injunction, damages, rendition of accounts, and delivery up of infringing materials. The court found in favor of the plaintiff on the issues of trademark infringement and entitlement to injunction.
Ratio Decidendi: The court's decision was based on the interpretation of Section 17 of the Trademarks Act, 1999, and relevant case laws. It emphasized the exclusive right of the proprietor to use the trademark taken as a whole and the limitations on separate registration of parts of a mark. The court also considered the likelihood of confusion and association with the plaintiff's trademark in determining infringement.
Final Decision: The court restrained the defendants from using the impugned trademark 'KHADIM'S KHAZANA' or any mark identical or deceptively similar to the plaintiff's registered trademark in respect of shoes, boots, and slippers. It also prohibited the defendants from selling, advertising, or storing for sale any products bearing the impugned trademark or any mark identical or deceptively similar to the plaintiff's mark.
V.K. JAIN, J.
1. The plaintiff before this Court is engaged in the business of manufacturing and sale of boots, shoes and slippers, which he is selling under the trademark “KHAZANA”. The plaintiff claimed to be using the aforesaid mark since 1.1.1990 and also claims that his products are well known for their intrinsic quality and enjoy tremendous goodwill and reputation in the market. The plaintiff is also the proprietor of the registered trademark KHAZANA, registered vide registration number 1070231 in Class: 25 in respect of boots, shoes and slippers.
The defendants applied for trademarks “Khadim”s Sriman KHAZANA (label), “Khadim”s Girls KHAZANA”(label), “Khadim”s Srimati KHAZANA”(label) and “Khadim”s Boy KHAZANA”(label) under applications numbers 1312611, 1312619, 1312623 and 1312621 respectively in class 25 for clothing, footwear and headgear which were opposed by the plaintiff. The defendants, while seeking registration of the above referred marks, claimed user since 18.09.2004, whereas the plaintiff has been using the mark KHAZANA since 1.1.1990. The defendants filed two other applications bearing number 1365971 and 1365977 for registration of the trademark Khadim”s Baby KHAZANA and Khadims Boy KHAZANA for clothing including boots, shoes, hawai chappals and slippers and headgear included in class 25. In these applications also the defendants claimed user since 18.9.2004. The plaintiff had filed opposition to these applications as well. The plaintiff has accordingly sought an injunction restraining the defendants from using the trademark KHAZANA or any other mark which is identical or deceptively similar to that of the plaintiff”s mark. The plaintiff has also claimed damages to the extent of Rs.20 lac, besides delivery up of the infringing material and rendition of accounts.
2. 2. The defendants have contested the suit. It has been stated in their counter affidavit/ written statement that defendant no.1 has no independent juristic existence, it being only an outlet owned by defendant no.2 and even that outlet is not functioning any more. It is further alleged that plaintiff did not apply for registration of the word mark KHAZANA and sought registration only in a stylized manner in which the word
KHAZANA has been represented in the Trademark Journal and the application for registration. It was also alleged that defendant no.2 was in the process of applying for rectification of the registration obtained by the plaintiff. It is also alleged that defendants have at all material times representing the mark KHAZANA with the prefix KHADIM”S so as to distinguish their mark from other marks. It is also claimed that use of prefix KHADIM”S is sufficient to distinguish the goods of the defendants from the goods of the plaintiff. It is also stated in the written statement/ counter affidavit that the defendant No.2 intend to sell the goods with KHAZANA suffix from its own departmental stores and, therefore, there is no possibility of any confusion amongst public. It is further alleged that the sale of the defendants from KHAZANA product was Rs.121,251,927/-as against the plaintiff”s sale of Rs.11,87,830/-in the year 2005-06 and the defendants incurred publicity expenses amounting to Rs.32,49,666/-, in respect of the mark KHAZANA for the year 2005-06.
The defendants have placed on record attested photocopies of as many as five registrations in class 25 in respect of boots, shoes, hawai chappals, slippers and headgears. In three of them, the word KHAZANA in conjunction with other word(s) has been used on the labels which have been registered by Trademark Registry. The remaining two are word mark registration of the words “KHADIM”S KHAZANA”and “KHADIM KA KHAZANA”. The defendants were directed to file legal proceedings certificates in respect of the aforesaid registrations. On 21.04.2011, the learned counsel for the plaintiff stated that the plaintiff proposed to challenge registration/ application Nos.1365976, 1341765, 128137
