The main legal point established in the judgment is the protection of trademarks based on continuous use, distinctiveness, and secondary meaning, as well as the consideration of change in circumstances due to the registration of new trademarks.

JUDGMENT

Saurabh Banerjee, J.

1. The appellant (defendant) by this appeal has impugned order dated 19.04.2017 passed by the learned Single Judge in CS(COMM) 1381/2016 whereby an application under Order XXXIX rules 1 & 2 of The Code of Civil Procedure, 1908 [Henceforth referred as "CPC"] filed by the respondents (plaintiffs) has been allowed in their favour and the appellant has been restrained from using the word "Darzi" in its trademark/logo/label.

2. The respondents, claiming to be the registered proprietor of the logo mark
[IMG]
in Class 24 instituted a suit for permanent injunction restraining infringement, passing off and for rendition of accounts against the appellant seeking to restrain it from using the word "Darzi/ The Darzi" along with other relief(s). As per respondents, they were operating under the concern "Darzi/ The Darzi" since 1981 to provide bespoke tailoring and have been continuously using the said trademark/ label "Darzi/ The Darzi" bona fidely since its adoption whereafter, they have filed various applications for registration of the same in different classes and have also obtained copyright registrations and the word "Darzi/ The Darzi" is forming the most prominent part of their trademark.

3. When the suit came up for hearing on 05.10.2016, the appellant was restrained from using the trademark or trade name having as component thereof the word "Darzi/ The Darzi" or any other trademark or trade name similar or deceptively similar thereto, till further orders. However, when the suit came up for hearing on 07.12.2016, the appellant was permitted to use the following marks:

[IMG]

4. Thereafter, appellant contended that since the respondents were owners of a composite logo mark comprising of the words "Darzi/ The Darzi" they did not have any rights on the individual components therein and that the respondents never claimed protection for the words "Darzi/ The Darzi" as it was common to the trade. Also, even though the respondents applied for the wordmark "The Darzi" vide TM No.900352 dated 28.01.2000, the same was abandoned and so they cannot assert any rights over the word "Darzi".

5. Learned Single Judge after hearing both sides, vide the impugned order, restrained the appellant from using the said word "Darzi" as the respondents were able to make out a prima facie case with the balance of convenience in their favor and against the appellant as the respondents were using the said trademark for at least twenty years prior to the appellant. Further, it was observed that, the appellant was using a different trademark than what was in consideration since the last six months of passing of the impugned order and as the prejudice to the appellant would be negligible as compared to the respondents by non-grant of injunction, a prima facie case was found in favor of the respondents and that they will suffer irreparable injury from the continuous use of the impugned mark by the appellant.

6. Being aggrieved, appellant chose to challenge the impugned order vide the present appeal primarily contending that the word "Darzi/ The Darzi" is `generic. as it refers to a profession and thus cannot be monopolized. Also, relying upon various judgments, learned counsel for appellant contended that the learned Single Judge has wrongly relied upon the various third-party documents on record and also that as the respondents have admitted that their `logo. mark is different from the word mark "Darzi" owned by third parties as per their own contention before the Trade Mark Registry, they cannot approbate and reprobate to now contend that the mark of the appellant is similar to their logo mark though they are very different from each other. According to learned counsel for the appellant, the trademark of the respondents has to be considered as a whole and they are estopped from claiming independent rights in any part of the composite logo mark in view of Section 17 of the Trade Marks Act, 1999 [Hereinafter referred as "TM Act"].