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IN THE HIGH COURT OF DELHI AT NEW DELHI
Vibhu Bakhru, Amit Mahajan, JJ.
Varun Gems - Appellant
Versus
Precious Jewels & Anr. - Respondents
RFA(OS)(Comm) 6 of 2019
Decided On : 06-10-2022
TRADEMARK - Infringement - Sections 35, 28, 29 of the Trade Marks Act - The court discussed the provisions of Sections 35, 28, and 29 of the Trade Marks Act, emphasizing the exclusive right of the proprietor of a trademark, infringement by using identical or deceptively similar marks, and the saving for use of name, address, or description of goods or services. The court highlighted the requirement of bona fide use of one's own name and the protection of surnames under the Act. The court also emphasized that preliminary findings in interim orders do not impinge upon the legal rights of the parties on the principle of res judicata.
Fact of the Case:
The appellant, M/s. Varun Gems, filed an appeal against the dismissal of their suit to restrain the respondent from using the name 'RAKYAN' or any similar mark. The dispute arose from the use of the name 'RAKYAN' in the jewelry business, with both parties belonging to the same family.
Finding of the Court:
The court found that the use of the name 'RAKYAN' by the respondent was not bona fide and was causing confusion among the public, leading to infringement of the appellant's registered trademark. The court also emphasized that preliminary findings in interim orders do not have any bearing on the final decision.
Issues: The issues revolved around the bona fide use of the name 'RAKYAN' by the respondent, the protection of trademarks and surnames under the Trade Marks Act, and the impact of preliminary findings in interim orders on the final decision.
Ratio Decidendi: The court held that the use of the name 'RAKYAN' by the respondent was not bona fide and caused confusion among the public, leading to infringement of the appellant's registered trademark. The court also emphasized that preliminary findings in interim orders do not have any bearing on the final decision.
Final Decision: The court set aside the judgment of the learned Single Judge and granted an injunction restraining the respondent from using the name 'RAKYAN' or any similar mark within a radius of two kilometers of the appellant's premises.
JUDGMENT
Amit Mahajan, J. - The appellant, M/s. Varun Gems, has filed the present appeal being aggrieved by the impugned judgment and decree dated 06.04.2018, whereby the suit filed by the appellant praying for restraining the respondent from using the name 'RAKYAN' and/or any other mark which is identical or deceptively similar to the appellant/ plaintiff's registered trademark 'RAKYAN'S FINE JEWELLERY', was dismissed.
2. The appellant has been running its business of selling jewellery under the registered trademark 'RAKYAN'S FINE JEWELLERY' from the premises M-31 M-Block Market, Greater Kailash-I, New Delhi-110048.
3. Mr. Jitendra Kumar Rakyan is the managing partner of the appellant and is the paternal uncle of respondent No. 2 (defendant No.2).
4. The facts in the present case relevant for deciding the present appeal are that, in the year 1951, one late Sh. Sital Dass Rakyan (Defendant No. 2's grandfather and father of Mr. Jitendra Rakyan) started a jewellery business in Connaught Place, New Delhi under the name of M/s. SITAL DASS & SONS. Subsequently, in the year 1961, Mr. Sital Dass Rakyan formed a partnership firm with four partners namely, Mr. Surendra K. Rakyan, Mr. Rajendra K. Raykan, Mr. Virendra K. Rakyan and Mr. Jitendra K. Rakyan as partners.
5. In the year 1962, Mr. Surendra K. Rakyan (now deceased) retired from the family business. He shifted to Jaipur, and opened 'RAKYANS JEWELLERS' in partnership with his uncles. While the other partners remained in Delhi and continued with the same jewellery business under different names as each of them constituted different firms over a period of time.
6. In the year 1978, all the partners of M/s. SITAL DASS & SONS except Mr. Surendra K. Rakyan formed a new partnership firm named Virendra Kumar and Co., which and was subsequently reRFA( constituted as SITAL DASS SONS in the year 1982. This firm was also dissolved in the year 1991. Thereafter each partner of newly constituted SITAL DASS SONS started separate businesses under the same name Sital Dass Jewellers and opened shops at various places within Delhi.
7. Mr. Jitendra K. Rakyan, in the year 2000, opened a shop at M- 31 M-Block Market, Greater Kailash-I, New Delhi-110048 and in the year 2005, got the trademark 'RAKYAN'S FINE JEWELLERY' registered in the name of partnership firm 'Varun Gems'.
8. In the year 2011, Ravi Rakyan, son of Mr. Rajendra K Rakyan, opened a shop at M-32, M-Block Market, Greater Kailash-I, New Delhi-110048 under the name 'DIAMEZ'. Subsequently, in the year 2012, they changed the name from 'DIAMEZ' to 'NEENA & RAVI RAKYAN'.
9. Initially, an interim ex-parte injunction was granted in terms of the order dated 01.06.2012, whereby the respondents were restrained from using the name 'RAKYAN' or any other mark which is identical or deceptively similar to the registered trademark 'RAKYAN'S FINE JEWELLERY'.
10. The respondents appealed the said decision to the Division Bench and thereafter, to the Supreme Court. The said injunction was vacated by the Hon'ble Apex Court by an order dated August 4, 2014 passed in SLP(C)No.9942 of 2013. The said order reads as under:
'11. We have perused, the hoardings of the shops where they are doing the business and upon perusal of the hoardings, we do not find any similarity between them.
12. In our opinion, looking at the provisions of Section 35 of the Act, there is no prima facie case in favour of the plaintiff and therefore, the defendants could not have been restrained from doing their business. We, therefore, quash and set aside the impugned order granting interim relief in favour of the plaintiff and the appeal is allowed with no order as to costs.
13. We clarify that we have only expressed our prima facie view and the observations, if any, made in this judgment shall not be treated as final and the trial court shall decide the case on the basis of the, evidence which might be adduced before it and on the facts of the case.'
11. The respondents did not participate in the said pro
The main legal point established in the judgment is the requirement of bona fide use of one's own name under Section 35 of the Trade Marks Act and the protection of trademarks and surnames under the ....
Registered trademarks must be protected against use that causes consumer confusion; bona fide use under Section 35 requires no intent to deceive.
The defendant was entitled to the benefit of defense under Section 35 of the Act as it had been using the mark 'VASUNDHARA' in a bona fide manner since 2001.
Infringement of trade mark and passing off - Permanent injunction - Appellants/defendants are bound down to their statement, till disposal of suit before Commercial Court. Readiness with which appell....
Point of Law : Trade mark – Copyright - delay per se may not always be sufficient to disentitle the plaintiff to grant of an interim order.
Section 35 of the Trade Marks Act, 1999 protects bonafide use of one's own name or surname in business, emphasizing the need for honesty and bonafide intentions in using a surname as a trademark.
In trademark disputes, a plaintiff must establish goodwill to succeed in passing off actions, and demonstrating bona fide use prevails over prior use claims where underlying rights are transferred.
The main legal point established in the judgment is the lack of merit in the appellant's contentions regarding the family association with the trade mark Jain Shikanji, the maintainability of the sui....
The combination of common words can be distinctive and unique as a trade mark, and the appellate forum has a limited role and cannot entertain new issues or documents at the appellate stage.
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