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High Court of Delhi
PRADEEP NANDRAJOG & MANMOHAN SINGH, JJ.
Precious Jewels & Another
Versus
M/s Varun Gems
FAO (OS) No. 609 of 2012
Decided On : 16-01-2013
RAKYAN - TRADE MARK - SUIT FOR INFRINGEMENT OF TRADE MARK, PASSING OFF, UNFAIR TRADE DEALING, RENDITION OF ACCOUNTS OF PROFITS, DAMAGES ETC. - INJUNCTION - [SECTIONS 2(M), 28, 29(1), 29(2), 31, 34, 35, 69(2)] - THE COURT HELD THAT THE PLAINTIFF HAS MADE OUT A PRIMA FACIE CASE OF INFRINGEMENT OF TRADE MARK AND PASSING OFF. THE COURT ALSO HELD THAT THE DEFENDANTS ARE NOT ENTITLED TO USE THE NAME RAKYAN IN RELATION TO SIMILAR BUSINESS IN ANY MANNER WHATSOEVER ON THE SIGNBOARD AS WELL AS ADVERTISEMENT MATERIAL. HOWEVER, THE DEFENDANTS ARE NOT PRECLUDED TO USE THE NAME NEENA AND RAVI RAKYAN IN THEIR INVOICES, ACCOUNT BOOKS, STATIONERY AND PACKING MATERIALS BUT THE DEFENDANTS SHALL USE THE SAME AS EXPRESSION ONLY “A UNIT OF NEENA AND RAVI RAKYAN” BEING A BONA FIDE DESCRIPTION BUT NOT AS A TRADE MARK AND TRADE NAME.
Fact of the Case:
THE SUIT WAS FILED BY THE PLAINTIFF FOR INFRINGEMENT OF TRADE MARK, PASSING OFF, UNFAIR TRADE DEALING, RENDITION OF ACCOUNTS OF PROFITS, DAMAGES ETC. AGAINST TWO DEFENDANTS NAMELY PRECIOUS JEWELS AND RAVI RAKYAN. THE SUIT ALONG WITH THE INTERIM APPLICATION WAS LISTED BEFORE COURT ON JUNE 01, 2012. SUMMONS IN THE SUIT WERE ISSUED AND IN THE INTERIM APPLICATION, A DETAILED ORDER WAS PASSED AGAINST THE DEFENDANTS BY ISSUANCE OF AN EX PARTE AD-INTERIM INJUNCTION WHEREBY THEY WERE RESTRAINED FROM USING THE NAME RAKYAN AND/OR ANY OTHER DECEPTIVELY SIMILAR TRADE MARK TO THE PLAINTIFF’S TRADE MARK. UPON SERVICE, THE DEFENDANTS ON AUGUST 1, 2012 FILED THE WRITTEN STATEMENT, REPLY TO THE INJUNCTION APPLICATION ALONG WITH THREE APPLICATIONS, BEING I.A.NO.14054/2012 UNDER SECTION 34 OF THE TRADE MARKS ACT, 1999 AND ORDER XXXIX, RULE 4 CPC, I.A.NO.14055/2012 UNDER ORDER VII, RULE 11 CPC AND I.A.NO.14056/2012 UNDER SECTION 124 OF THE TRADE MARKS ACT, 1999.
Finding of the Court:
THE COURT HELD THAT THE PLAINTIFF HAS MADE OUT A PRIMA FACIE CASE OF INFRINGEMENT OF TRADE MARK AND PASSING OFF. THE COURT ALSO HELD THAT THE DEFENDANTS ARE NOT ENTITLED TO USE THE NAME RAKYAN IN RELATION TO SIMILAR BUSINESS IN ANY MANNER WHATSOEVER ON THE SIGNBOARD AS WELL AS ADVERTISEMENT MATERIAL. HOWEVER, THE DEFENDANTS ARE NOT PRECLUDED TO USE THE NAME NEENA AND RAVI RAKYAN IN THEIR INVOICES, ACCOUNT BOOKS, STATIONERY AND PACKING MATERIALS BUT THE DEFENDANTS SHALL USE THE SAME AS EXPRESSION ONLY “A UNIT OF NEENA AND RAVI RAKYAN” BEING A BONA FIDE DESCRIPTION BUT NOT AS A TRADE MARK AND TRADE NAME.
Issues: WHETHER THE PLAINTIFF HAS MADE OUT A PRIMA FACIE CASE OF INFRINGEMENT OF TRADE MARK AND PASSING OFF.
Ratio Decidendi: THE COURT HELD THAT THE PLAINTIFF HAS MADE OUT A PRIMA FACIE CASE OF INFRINGEMENT OF TRADE MARK AND PASSING OFF. THE COURT ALSO HELD THAT THE DEFENDANTS ARE NOT ENTITLED TO USE THE NAME RAKYAN IN RELATION TO SIMILAR BUSINESS IN ANY MANNER WHATSOEVER ON THE SIGNBOARD AS WELL AS ADVERTISEMENT MATERIAL. HOWEVER, THE DEFENDANTS ARE NOT PRECLUDED TO USE THE NAME NEENA AND RAVI RAKYAN IN THEIR INVOICES, ACCOUNT BOOKS, STATIONERY AND PACKING MATERIALS BUT THE DEFENDANTS SHALL USE THE SAME AS EXPRESSION ONLY “A UNIT OF NEENA AND RAVI RAKYAN” BEING A BONA FIDE DESCRIPTION BUT NOT AS A TRADE MARK AND TRADE NAME.
Final Decision: THE COURT HELD THAT THE PLAINTIFF HAS MADE OUT A PRIMA FACIE CASE OF INFRINGEMENT OF TRADE MARK AND PASSING OFF. THE COURT ALSO HELD THAT THE DEFENDANTS ARE NOT ENTITLED TO USE THE NAME RAKYAN IN RELATION TO SIMILAR BUSINESS IN ANY MANNER WHATSOEVER ON THE SIGNBOARD AS WELL AS ADVERTISEMENT MATERIAL. HOWEVER, THE DEFENDANTS ARE NOT PRECLUDED TO USE THE NAME NEENA AND RAVI RAKYAN IN THEIR INVOICES, ACCOUNT BOOKS, STATIONERY AND PACKING MATERIALS BUT THE DEFENDANTS SHALL USE THE SAME AS EXPRESSION ONLY “A UNIT OF NEENA AND RAVI RAKYAN” BEING A BONA FIDE DESCRIPTION BUT NOT AS A TRADE MARK AND TRADE NAME.
MANMOHAN SINGH, J.
1. Plaintiff Varun Gems filed the suit for permanent injunction restraining the infringement of trade mark, passing off, unfair trade dealing, rendition of accounts of profits, damages etc. against two defendants namely Precious Jewels and Ravi Rakyan. The suit along with the interim application was listed before Court on June 01, 2012. Summons in the suit were issued and in the interim application, a detailed order was passed against the defendants by issuance of an ex parte ad-interim injunction whereby they were restrained from using the name RAKYAN and/or any other deceptively similar trade mark to the plaintiff’s trade mark. Upon service, the defendants on August 1, 2012 filed the written statement, reply to the injunction application along with three applications, being I.A.No.14054/2012 under Section 34 of the Trade Marks Act, 1999 and Order XXXIX, Rule 4 CPC, I.A.No.14055/2012 under Order VII, Rule 11 CPC and I.A.No.14056/2012 under Section 124 of the Trade Marks Act, 1999. Notice of these applications was issued for August 30, 2012. Time was granted to file the replies to the fresh applications filed by the defendants. The matter was also heard by the learned Single Judge from time to time. When the matter was listed on November 30, 2012, it was renotified for March 5, 2013. Aggrieved with the said order as well as ex-parte ad-interim order granted on June 1, 2012, the defendants have filed the present appeal, inter alia, on the ground that they are suffering tremendous loss because of continuation of interim order passed against them which otherwise is not sustainable. The prayer in the appeal is made to set aside the impugned ex-parte order dated June 1, 2012 passed in I.A.No.11250/2012 under Order XXXIX, Rule 1 & 2 CPC.
2. The appeal was listed before us on December 19, 2012 along with the interim application. Dasti notice was issued for service of the plaintiff who appeared before us on December 21, 2012. Learned counsel for both the parties made a statement that instead of hearing of the present appeal, the pending interim applications, being I.A.No.11250/2012 and I.A.No.14054/2012, be heard by this Bench and order be passed on those applications.
3. After hearing the learned counsel for the parties, the order was reserved on January 04, 2013. There are certain admitted facts between the parties, the details of which are given as under:
a. That in the year 1951 Sh.Sital Dass Rakyan started his jewellery business as sole proprietorship concern in the name and style of ‘Sital Dass and Sons’. The same was converted into a partnership firm with Sital Dass Rakyan and his 4 sons Surendra Rakyan, Rajendra Rakyan, Virendra Rakyan and Jitendra Rakyan all being partners of the said firm.
b. In the year 1962 Shri Surendra Rakyan (now deceased) shifted to Jaipur and opened “RAKYAN JEWELLERS” in partnership with his uncles. The said shop mainly catered to foreign tourists and was restricted to Jaipur only. In 1970 Surendra Kumar Rakyan separated from this partnership with his uncles and started a new business under the name “SURENDRA RAKYAN” at Hotel Ashok, Jaipur and “DEEPAK BROTHERS” also at Jaipur. The shop “SURENDRA RAKYAN” closed down after few years. He also retired from his parent firm M/s Sital Dass & Sons in the year 1990.
c. In the year 1978 Rajendra Rakyan, Virendra Rakyan and Jitendra Rakyan started partnership business in the name and style of “M/S. VIRENDRA KUMAR & CO.” at Connaught Place, New Delhi which was closed down within a year. In 1982, “M/S. VIRENDRA KUMAR & CO.” took a shop (L-79) in Hotel Hyatt Regency, New Delhi, on licence, however, started the shop there in 1983 by changing its name to “SITAL DASS SONS”. In the year 1984, the said firm obtained a license of another shop at L-81, Hotel Hyatt Regency, New Delhi.
d. In January, 1986, Ravi Rakyan (defendant No.2 herein), son of Rajendra Rakyan, started his independent business in partnership with his mother Trishla Rakyan w
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