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IN THE HIGH COURT OF DELHI AT NEW DELHI
Manmohan, J.
Jain Shikanji Private Limited – Appellant
Versus
Satish Kumar Jain – Respondent
FAO (COMM) 185 of 2022 & CM APPLs.52334-52335 of 2022
Decided On : 01-03-2023
Trade Mark Dispute - Jain Shikanji - The Code of Civil Procedure, 1908 - The Companies Act, 2013 - Trade Marks Act, 1999
Fact of the Case:
The dispute involved inter-se 'Jain' family members, with the respondent claiming proprietorship of the registered trade mark Jain Shikanji and the appellant engaging in a similar business under the same trade mark. The respondent filed a suit for infringement of trade marks, passing off, dilution of trade marks, unfair competition, damages and delivery up against the appellant.
Finding of the Court:
The court found that the appellant's claims of family association and generic nature of the words 'Jain' and 'Shikanji' were meritless. The court also dismissed the appellant's reliance on previous suits and trade mark applications, and rejected the appellant's attempt to introduce new documents at the appellate stage. The court emphasized that the appellant could not set up a new case at the appellate stage and dismissed the appeal.
Issues: The issues involved the validity of the trade mark Jain Shikanji, the appellant's family association claims, and the admissibility of new documents at the appellate stage.
Ratio Decidendi: The court held that the combination of the words 'Jain' and 'Shikanji' could be distinctive and unique as a trade mark, and dismissed the appellant's claims of family association and generic nature of the words. The court also emphasized the limited role of the appellate forum and the inadmissibility of new documents at the appellate stage.
Final Decision: The appeal was dismissed with no order as to costs, leaving the parties to bear their own costs.
JUDGMENT
Saurabh Banerjee, J. The three elements essential for adjudication of trade mark disputes, like the present one, involve `Name' (Jain), `Work' (Shikanji) and `Identity' (Jain Shikanji).
2. Present dispute is inter-se `Jain' family members, who amongst other products, deal in Shikanji under the name and style of Jain Shikanji. By virtue of the present appeal, appellant belonging to one `Jain' family member is calling upon this Court to adjudicate upon the legality of the impugned order whereby it has been restrained from using the trade mark Jain Shikanji of respondent, the other `Jain' family member. The details thereof are elucidated hereinunder.
3. Appellant (original defendant) by this appeal seeks to impugn order dated 05.11.2022 passed by the learned Trial Court whereby an application under Order XXXIX rules 1 & 2 of The Code of Civil Procedure, 19081[Henceforth referred as "CPC"] of the respondent (original plaintiff) has been allowed in his favour and the appellant along with other persons claiming through it have been restrained from selling, offering for sale any goods, advertising or promoting any product under the trade mark Jain Shikanji/Jain Shikanji Restaurant or any other trade mark similar or deceptively similar to the trade mark of the respondent namely Jain Shikanji till the disposal of the said suit.
4. Records reveal that the respondent, an individual, claiming himself to be proprietor of the registered trade mark Jain Shikanji and running several outlets in different parts of the country under the name and style of Jain Shikanji and Jain Shikanji Restaurant for selling shikanji drink, shikanji powder and other food products under the said registered mark, instituted a suit for permanent and mandatory injunction for infringement of trade marks, passing off, dilution of trade marks, unfair competition, damages and delivery up etc. with respect to his trade mark/logo/device Jain Shikanji and other Jain Shikanji formative/containing marks in addition to other ancillary reliefs<$Henceforth referred as "Suit"/> against the appellant, a company incorporated under the provisions of the Companies Act, 2013 and engaged in the business of selling and manufacturing similar products as that of the respondent under the trade mark Jain Shikanji before the learned Trial Court.
5. As per respondent, the dispute involved herein has a history which started from the father of respondent, Late Sh. Parmatma Sharan Jain2[Henceforth referred as "late Sh. Jain"], who began by opening a Shikanji Shop under the name and style of Jain Shikanji at Vikas Nagar Colony, Kadrabad, Delhi-Meerut Road, Modinagar, District Ghaziabad, Uttar Pradesh more than five decades ago. With time, the said trade mark Jain Shikanji became distinctive of the said late Sh. Jain and his sons, including the respondent and gained immense popularity and goodwill.
6. Respondent claimed that after the demise of said late Sh. Jain in 1991, he along with his four other surviving brothers systematically devised a manner to carry forward the said business under the name and style of Jain Shikanji. Resultantly, over a period of time, the said trade mark Jain Shikanji acquired a secondary meaning. The respondent also opened several outlets under the name and style of Jain Shikanji from time to time after obtaining requisite food licenses, which are being renewed from time to time and also after obtaining registrations for the trade mark Jain Shikanji from time to time with appropriate statutory tax authority, which are also being paid from time to time.
7. Respondent claimed to have filed several applications for registration of the mark Jain Shikanji in Class 29, 32, 35, 42 amongst other classes claiming user since 14.06.1996 from 26.05.2008 onwards and as few such registrations are valid and subsisting in its name, it has the exclusive right to use the same in respect of goods or services for which they are registered.
8. Respondent claimed to have le
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.
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 main legal point established in the judgment is the court's consideration of deceptive similarity of trademarks, acquisition of distinctiveness and secondary meaning of a name, and the use of a s....
The central legal point established in the judgment is the requirement for distinctiveness of a mark for registration under Section 9(1)(a) of the Trade Marks Act, and the need for the Registrar to p....
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....
A plaintiff cannot file multiple suits for the same cause of action concurrently in different jurisdictions; it constitutes forum shopping and is impermissible under Order II Rule 2 CPC.
The court held that the concealment of material facts by the respondents did not warrant the dismissal of the suit or the vacation of the interim injunction, as the equities lay in favor of the respo....
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