Orissa High Court has held that where marks are of the nature that they can confuse the consumer, such marks would not get Trademark Act protection. Additionally, if an agreement is between the parties for such use then it should be exclusive use for entitlement of prior use.
This case came before the court as an appeal against an impugned order granting permanent injunction for using the mark "Khimji Jewels" or "Khimji" until the suit is disposed of. Respondent is the plaintiff and his suit was for decree of permanent injunction against the defendant from using the Trademark.
Brief Facts of the Case:
The plaintiff was a partnership firm had a jewellery business and it registered its Trademark “KHIMJI”/ “KHIMJI & SONS JEWELLERS” including all kinds of logos and the Trademark is valid till 2029. With time the business has gained a great reputation and goodwill. Defendant a company that started its business in 2020 used the mark “Khimji Jewels” which is found to be confusing with the plaintiff's brand. Meanwhile, the defendant also has applied for registration of a trademark which is pending consideration before the competent authority under the Trademark Act. Before this, the defendant's request for registration of the Trademark "KHIMJI DAYABHAI & Co” was refused by the examiner of the Trademark because of deceptive similarity with the plaintiff's Trademark. The plaintiff claims that the defendant using the name is infringing its Trademark rights.
Contentions of the Appellant:
They have been running the partnership firm since 1/4/1992 in the name of the "Khimji Dayabhai and Brothers". Both the parties in the present case are cousins from the same family. When the Partnership dissolved they agreed to use word Khimji with addition and deletion. According to the Trade name user agreement both parties decided to have no objection to the use of M/S Khimji Dayabhai Brothers with proper prefixes and suffixes as long it creates a separate identity and doesn't harm the other financially. Therefore as per the dissolution of the partnership agreement and the Name user agreement the Respondent in the present appeal is not entitled for any equitable relief and an order for restraining is invalid.
The court order granting a temporary injunction is contrary to the family settlement arrived in the Dissolution of Partnership and Trade Name User Agreement, hence the order is not sustainable in the eye of the law. Additionally, the parties previously had a joint family business and they were using the brand name “Khimji Dayabhai and Brothers” Therefore the mark was in prior use hence no case is made out in the favour of the respondent for equitable relief and Section 34 of the Trademark Act protects such use.
Observations by the Court:
Both parties have accepted that they all belong to the same family having a common ancestor Dayabai Ramjibhai Nanda, who had four sons. The plaintiff's business is presently run by the grandsons of Khimji Dayabhai and the defendant's business was run by the grandsons of Chaturbhuj Dayabhai Nandha. They had a jewellery business since 1936 by the name of Khimji Dayabhai and Brothers. On 1/4/1992 the partnership firm was registered. In 1999 the said firm dissolved by agreement and the partners were free to do the same kind of business and they could use the word Khimji Dayabhai with addition or subtraction. Father of both the defendant and the plaintiff were party to the said agreement. A name agreement was executed by the partners, in which the name can be used with proper addition of prefixes or suffixes. The name of the plaintiff's business; the defendant's business and the refusal of a trademark to the company business were not in dispute.
Section 29 of the Trade Marks Act prohibits the use of identical, similar or deceptively similar Trademark, where the use of such marks has a likelihood of confusion. Putting reliance on Laxmikant v Chetanbhai Sah in which the apex court in para 10 held that after some time a business acquires a reputation/ goodwill and this is associated with the name of the business. Anyone using a name which can confuse the mind of the consumer, would not be permitted by the law.
The plaintiff has their independent business by the name Khimji/Khimji and Sons Jewellers and they have registered the Trademark and the defendants have their independent business. The appellant submitted that the word was in prior use but it is not convincing because the plaintiff has registered the trademark since 1999, it is not exclusively that the defendants were using the word Khimji. Therefore no right accrues in favour of the Defendants. So the prima facie case is established in favour of the plaintiff. The defendants have never used the word exclusively whereas the plaintiff has used the word as Khimji/ Khimji Sons, therefore utilizing the word now exclusively by the company would cause the plaintiff inconvenience. Since the mark earns a reputation, it is now the plaintiff's property. The main point of contention is whether the defendant's use of the terms “Khimji” or “Khimji Jewels” would be confusingly similar to the trademarks “Khimji” and “Khimji and Sons Jewellers”? It is important to note that the use of a deceptively similar mark need not be identical. According to Section 2(h) of the Trade Marks Act, 1999, a mark is defined as one that nearly reassembles another mark in such a way as to be likely to deceive or cause confusion. In this instance, the mark “Khimji Jewellers” with its get-up would undoubtedly fail the test and may be construed as confusing buyers based on how it appears.
It is well established that, in a suit of this kind for infringement, it may not be necessary to prove irreparable harm beyond the loss of goodwill and reputation if the plaintiffs establish a prima facie case and the balance of convenience is in their favour. Irreparable harm may be assumed to have occurred in trade mark cases if the first two requirements are met [see para. 122, Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel and others].
Decision of the Court:
The appeal is dismissed because the plaintiff's business has earned goodwill and reputation and the defendant's use of the word would cause him irreparable injury and the plaintiff has made a case for injunction.
Case Title: KD Gold and Diamonds Private Limited vs. M/s Khimji & Sons
Case No.: FAO No.105 of 2023
Coram: Hon'ble Justice B.P. Routray
Advocates for the Petitioner: Mr. Prafulla Kumar Rath
Advocates for the Respondent: Mr. Gautam Mukherjee
Read Judgment @latestlaw.com
Picture Source :
