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2012 Supreme(Del) 2108
HIGH COURT OF DELHI NEW DELHI
MANMOHAN SINGH, J.
M/S BHAGWAN DASS KHANNA JEWELLERS - Plaintiff
Versus
BHAGWAN DAS KHANNA JEWELLERS PVT. LTD & ORS - Defendants
I.A.No.6779/2008 in CS(OS) No.1061/2008
Decided On : December 10, 2012
Mr. Pravin Anand, Adv. with Mr. Shantanu Sahay and Ms. Jaya Negi, Advs.
Mr. Sudhir Chandra, Sr. Adv. with Mr. Ashok Chhabra, Advocate CORAM:
Headnote:
The court ruled in favor of the plaintiff, Bhagwan Dass Khanna Jewellers, and granted an interim injunction against the defendants, Bhagwan Das Khanna Jewellers Private Limited, restraining them from using the plaintiff's registered trademarks and trade name. The court found that the defendants' use of the plaintiff's trademarks and trade name was likely to cause confusion and deception among consumers and that the defendants had no legitimate reason to use the plaintiff's marks.
Fact of the Case:
The plaintiff, Bhagwan Dass Khanna Jewellers, is a partnership firm registered in 1992. The plaintiff has been carrying on business as a running partnership since the year 1963. The plaintiff owns a showroom located at G-17, South Extension Market, Part-I, New Delhi and apart from the sale and manufacture of gold and diamond jewellery, is also engaged in the export of jewellery items and has participated in various Gold Jewellery Exhibitions overseas. The plaintiff's name ?Bhagwan Dass Khanna and ?B.D K., either used individually or in conjunction with each other have become distinctive and well known in the jewellery business markets and have earned substantial reputation and goodwill in the jewellery business market with which it has been associated for over a period of 45 years who have also incurred a substantial amount on advertising and promoting their jewellery business and other related activities year after year. The plaintiff is the registered proprietor of the abovementioned trademarks. The plaintiff's registrations for the said marks are in Class 14, for the word mark ?B.D K. Bhagwan Dass Khanna bearing registration No.1166569, for the mark ?B.D K. along with the accompanying device bearing registration No.1166570, and for the word mark ?B.D K. bearing registration No.1166568. The abovementioned marks were registered in the name of the plaintiff claiming user since the year 1963. The defendant No.1 ?BHAGAWAN DAS KHANNA JEWELLERS PRIVATE LIMITED having its registered office at E-91, South Extension, Part-I, New Delhi and also trading at M-2, M-Block Market, Greater Kailash-I, New Delhi is a company incorporated under the Indian Companies Act, 1956 and is engaged in the business of manufacture and sale of jewellery and related articles. The defendants are using the said trade name which is deceptively similar to the plaintiff's registered trade mark ?BHAGWAN DASS KHANNA for a similar business activity i.e. jewellery business. Defendant No.2, Mr. Deepak Khanna and defendant No.3 Ms. Deepti Khanna are the Directors of defendant No.1.
Finding of the Court:
The court found that the defendants' use of the plaintiff's trademarks and trade name was likely to cause confusion and deception among consumers. The court noted that the defendants' business was located in the same vicinity as the plaintiff's business and that the defendants were using the plaintiff's trademarks and trade name in a manner that was likely to lead consumers to believe that the defendants' business was associated with or affiliated with the plaintiff's business. The court also found that the defendants had no legitimate reason to use the plaintiff's marks, as they had not obtained the plaintiff's permission to use the marks and they were not using the marks in a descriptive or fair use manner.
Issues: 1. Whether the defendants' use of the plaintiff's trademarks and trade name was likely to cause confusion and deception among consumers? 2. Whether the defendants had a legitimate reason to use the plaintiff's marks?
Ratio Decidendi: The court applied the following legal principles in reaching its decision: 1. A registered trademark is a valuable property right that is protected by law. 2. The owner of a registered trademark has the exclusive right to use the mark in connection with the goods or services for which it is registered. 3. The use of a trademark that is identical or confusingly similar to a registered trademark is an infringement of the trademark owner's rights. 4. A court may grant an injunction to prevent the infringement of a trademark.
Final Decision: The court granted an interim injunction against the defendants, restraining them from using the plaintiff's registered trademarks and trade name. The court also ordered the defendants to pay the plaintiff's costs.
MANMOHAN SINGH, J.
1. By this order, I propose to decide the pending interim application being I.A. No.6779/2008 filed by the plaintiff under Order XXXIX, Rules 1 & 2 read with Section 151 CPC. The plaintiff has filed the suit for permanent injunction restraining infringement of as well as dilution of trademarks, delivery up, rendition of accounts of profits, damages etc.
2. The case of the plaintiff is that M/s Bhagwan Dass Khanna Jewellers is a partnership firm registered in the year 1992. The said firm has been carrying on business as a running partnership since the year 1963. Mr. Bhagwan Dass Khanna had six sons, namely Mr. Ramesh Dass Khanna, Mr. Shankar Lal Khanna, Mr. Mahesh Dass Khanna, Mr. Naresh Dass Khanna, Mr. Rajesh Dass Khanna and Mr. Ganesh Dass Khanna.
3. In the year 1963, Mr. Bhagwan Dass Khanna along with Mr. Ramesh Dass Khanna started the jewellery business and later on, Mr. Mahesh Dass Khanna, Mr. Naresh Dass Khanna and Mr. Ganesh Dass Khanna also joined the said business. In the year 1992, a partnership firm was incorporated in the name of ?M/S BHAGWAN DASS KHANNA JEWELLERS to conduct the said jewellery business comprised of partners namely Mr. Bhagwan Dass Khanna, Mr. Ramesh Dass Khanna, Mr. Mahesh Dass Khanna, Mr. Naresh Dass Khanna and Mr. Ganesh Dass Khanna as partners. It is stated that Mr. Shankar Lal Khanna was never the partner of the said partnership of the plaintiff, nor the part of the plaintiff‘s jewellery business.
4. Mr. Bhagwan Dass Khanna expired in the year 1999. As the partnership business was at will, the above said business was continued and a fresh partnership deed dated 23rd October, 1999 was executed by the partners. They have been engaged in the business of manufacture and sale of gold and diamond jewellery and related articles like precious/semi-precious stones etc. since the year 1963. The plaintiff owns a showroom located at G-17, South Extension Market, Part-I, New Delhi-110049 and apart from the sale and manufacture of gold and diamond jewellery, is also engaged in the export of jewellery items and has participated in various Gold Jewellery Exhibitions overseas.
4.1 The plaintiff‘s name ?Bhagwan Dass Khanna and ?B.D K., either used individually or in conjunction with each other have become distinctive and well known in the jewellery business markets and have earned substantial reputation and goodwill in the jewellery business market with which it has been associated for over a period of 45 years who have also incurred a substantial amount on advertising and promoting their jewellery business and other related activities year after year.
4.2 The plaintiff is the registered proprietor of the abovementioned trademarks. The plaintiff‘s registrations for the said marks are in Class 14, for the word mark ?B.D K. Bhagwan Dass Khanna bearing registration No.1166569, for the mark ?B.D K. along with the accompanying device bearing registration No.1166570, and for the word mark ?B.D K. bearing registration No.1166568. The abovementioned marks were registered in the name of the plaintiff claiming user since the year 1963. 4.3 It is alleged that the said trademarks have become extremely prominent and well known in the jewellery business market and are exclusively identified and recognized by the purchasing public as relating to the high quality goods and services of the plaintiff and the plaintiff alone.
5. The case set up by the plaintiff against the defendants is that defendant No.1 ?BHAGAWAN DAS KHANNA JEWELLERS PRIVATE LIMITED having its registered office at E-91, South Extension, Part-I, New Delhi and also trading at M-2, M-Block Market, Greater Kailash-I, New Delhi is a company incorporated under the Indian Companies Act, 1956 and is engaged in the business of manufacture and sale of jewellery and related articles. The defendants are using the said trade name which is deceptively similar to the plaintiff‘s registered trade mark ?BHAGWAN DASS KHANNA for a similar business activ
